`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`SMART AUTHENTICATION IP, LLC
`Patent Owner.
`
`Case IPR2017-02047
`Patent 8,082,213
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I. AUTHORIZATION ........................................................................................ 1
`
`II. PATENTABILITY OF CLAIMS 1-10 OVER VANDERGEEST AND
`DELANY ............................................................................................................... 1
`
`III. PATENTABILITY OF CLAIMS 1-11 OVER HARRIS AND OWEN ........... 6
`
`IV. CONCLUSION ............................................................................................... 8
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`CASES
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ....................................................................... 4, 8
`
`
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) ........................................................................... 1
`
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 3
`
`
`Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................... 6
`
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) ............................................................................... 3
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................................... 3
`
`
`TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008) ........................................................................... 4
`
`
`
`
`
`REGULATIONS
`37 CF.R. § 42.23(b) ............................................................................................ 6, 8
`
`
`OTHER AUTHORITIES
`Trial Practice Guide Update (Aug. 2018) ............................................................... 8
`
`
`
`
`
`
`
`ii
`
`
`
`I.
`
`AUTHORIZATION
`
`Authorization for this sur-reply was granted in an e-mail from Supervisory
`
`Paralegal Andrew Kellogg on behalf of the Board, dated September 4, 2018.
`
`
`
`II.
`
`PATENTABILITY OF CLAIMS 1-10 OVER VANDERGEEST
`AND DELANY
`
`Claims are to be construed as they are written. See, e.g., Chef America, Inc.
`
`v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). In its Reply,
`
`Petitioner, Unified Patents Inc. (“UPI”), defines the term “different” as “unlike in
`
`nature or quality,” “distinct,” and “another.” Reply at 9, citing Ex. 1009 at 217.
`
`UPI further suggests that this is how a person of ordinary skill in the art would
`
`understand the term’s use in claim 1 of the ’213 patent. Id. Patent Owner, Smart
`
`Authentication, argued the very same thing when noting that Vandergeest’s use of
`
`an alleged second communications medium—the “suitable communication link”
`
`between the second unit 302 and the authenticator 304—to both submit the
`
`authentication request to the authenticator 304, and to receive the authentication
`
`code to send to a user’s third unit as part of an authentication process, means that
`
`Vandergeest does not teach a third communications medium (the one used for
`
`communication between the user and the user-authentication service) different than
`
`first and second communications media (those used by the authentication-service
`
`client when submitting an authentication request). PO Response at 16-21. After all,
`
`
`
`1
`
`
`
`by using the “suitable communication link” as both a “second communications
`
`medium” and a communication medium used to pass an authentication code during
`
`communications between the user and the user-authentication service, then that
`
`“suitable communication link” is not a “distinct” or “another” communication link.
`
`UPI attempts to convince the Board that “different from” in claim 1 should
`
`not be read as “exclusive.” Reply at 7-11. But in doing so, UPI fails to reconcile
`
`“distinctiveness” or a difference in “nature and quality,” qualities necessitated by
`
`its own definition of “different,” with anything other than exclusivity. For
`
`example, UPI never adequately addresses Smart Authentication’s point that, “to be
`
`different the third communications medium cannot be the same communication
`
`medium that the authentication-service client uses to submit the authentication
`
`request.” PO Response at 20. For, if the third communications medium is the same
`
`communication medium that the authentication-service client uses to submit the
`
`authentication request, then the two are not, and cannot be, distinct. They would,
`
`instead, have no difference in nature or quality, and one would not be “another” of
`
`the other. Claim 1 makes this very point by requiring that the communications
`
`media be “different from” each other.
`
`Contrary to UPI’s argument, Reply at 9-11, Smart Authentication did not
`
`improperly seek to read in any new limitations to the claim. No such additional
`
`limitations are necessary inasmuch as the claim already requires that the various
`
`
`
`2
`
`
`
`communications media be different from—or, in UPI’s own words, distinct from—
`
`one another. Put otherwise, the claim requires the communications media be
`
`dissimilar from one another. This is exactly the sort of disparity the specification
`
`teaches. Ex. 1001 at 8:65 – 9:3.
`
`Notably, UPI does not contest Smart Authentication’s reading of
`
`Vandergeest. Nowhere in its Reply does UPI dispute that Vandergeest’s “suitable
`
`communication link”—that is, the same communications medium—is used both to
`
`submit an authentication request to the authenticator 304, and to receive an
`
`authentication code to send to the user’s third unit as part of the authentication
`
`process. This same communications medium is not “unlike in nature or quality”
`
`from itself. It is not “distinct” from itself. And, it cannot be “another” of itself. In
`
`other words, it is not “different from” itself and, therefore, Vandergeest cannot be
`
`read as teaching or even suggesting a third communications medium different from
`
`the first and second communications media as required by claim 1. Whether one
`
`reads the claim in accord with the “broadest reasonable construction in light of the
`
`specification of the patent in which it appears,” Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2142 (2016) (quoting 37 C.F.R. § 42.100(b)), or by giving its
`
`terms their “ordinary and customary meaning,” as required under Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005), no reading of the claim that omits a
`
`limitation is proper. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("All words
`
`
`
`3
`
`
`
`in a claim must be considered in judging the patentability of that claim against the
`
`prior art."); CFMT, Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed.
`
`Cir. 2003) (“obviousness requires a suggestion of all limitations in a claim”).
`
`Finally, as to UPI’s assertion that because embodiments in which an ASP-
`
`client can carry out portions of an authentication process are described in the
`
`specification and, therefore, claim 1 must be read as encompassing situations
`
`where ASP-user communications pass through an ASP-client, Reply at 12-13, that
`
`is simply not the case. First, patent claims need not encompass every disclosed
`
`embodiment in a specification. TIP Systems, LLC v. Phillips & Brooks/Gladwin,
`
`Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008) (“Our precedent is replete with
`
`examples of subject matter that is included in the specification, but is not
`
`claimed.”) (citations omitted). This is especially true where, as here, the claimed
`
`embodiment finds direct intrinsic support. Id., and see Ex. 1001 at 2:57-67 (“At
`
`another extreme, the user may be connected to the ASP client through one
`
`communications medium and to the ASP through one or more other
`
`communications medium, while the ASP client may be interconnected with the
`
`ASP through yet another, different communications medium. For certain types of
`
`authentication, including certain types of variable-factor authentication that
`
`represents one embodiment of the present invention and that is discussed below, a
`
`user needs to be interconnected with the ASP by at least two different types of
`
`
`
`4
`
`
`
`communications media.”).
`
`Second, there are good reasons why “[f]or certain types of authentication”
`
`ASP-user communications should not pass through an ASP-client and instead pass
`
`over communications mediums “different from” those used for ASP-client-to-ASP
`
`communications, as claimed. “Commercial entities, Internet service providers,
`
`users of commercial services provided through electronic media, and other parties
`
`and vendors involved in electronic transactions have all recognized the need for
`
`more reliable authentication of users of electronic-transaction services.” Ex. 1001
`
`at 1:56-61. Exposing an ASP-client to ASP-user communications would not meet
`
`the “need for more reliable authentication of users of electronic-transaction
`
`services,” because it introduces a potential susceptibility to a man-in-the-middle
`
`attack at which the ASP-client communication could be compromised. For that
`
`reason, “In certain embodiments, user authentication is carried out via a dialog
`
`between the ASP and user.” Id. at 7:49-50. This highlights the desire to maintain
`
`communication paths between the SP and the user that do not include the ASP-
`
`client. Indeed, it is only in alternative embodiments that “the ASP can proactively
`
`push information to ASP clients so that authentication routines running on the ASP
`
`clients, using information provided beforehand by the ASP. may carry out all or a
`
`portion of the authentication process.” Id. at 7:51-54.
`
`Accordingly, claim 1 and its dependent claims are not unpatentable in view
`
`
`
`5
`
`
`
`of Vandergeest and Delany.
`
`
`
`III. PATENTABILITY OF CLAIMS 1-11 OVER HARRIS AND
`OWEN
`
`For the first time in its Reply, UPI now argues that Harris discloses or at
`
`least renders obvious claim 1’s recitation of “an authentication interface by which,
`
`following initiation of a transaction by the user with the authentication-service
`
`client, the authentication-service client submits an authentication service request.”
`
`Reply at 5, 18, 20-21, 23-26. The inclusion of this new argument is improper, 37
`
`CF.R. § 42.23(b), and alone is grounds for the Board to refuse to consider the
`
`Reply in its entirety. Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc., 821
`
`F.3d 1359, 1369-70 (Fed. Cir. 2016).
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
`
`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
`
`that supports the grounds for the challenge to each claim.’” Id. at 1369. In this
`
`case, UPI argued in its petition that,
`
`Harris discloses [the authentication interface] limitation by
`describing that a service provider (i.e., the claimed “client”)
`submits an authentication request through a second
`communications medium to the authenticating service, via an
`authentication interface, to authenticate the user. (EX1003 at ¶
`77). Figure 7, annotated below and discussed above in §
`
`
`
`6
`
`
`
`IX.A.1, shows how Harris discloses the claimed authentication
`service, service provider, and a number of interfaces used to
`authenticate the user.
`
`For example, Harris discloses the PC communication interface
`serves as an authentication-interface (as claimed) between the
`service provider (i.e., client) and authentication modules after a
`user makes a request for resources of the service provider,
`disclosing “[w]hen the user makes a request [to the service
`provider], it may be made to a portion of the site that PC
`communication interface 720 identifies as a request, and so [the
`service provider, via] PC communication interface 720
`forwards the request to request manager 740 [which is part of
`the authentication service]… [If authentication is successful,
`r]equest manager 740 then provides the request and user
`identifier to [the service provider], which provides the service.”
`(EX1004 at 19:19-30). Thus the PC communication interface
`discloses the claimed authentication interface, as it submits
`an authentication request to the authentication-service (i.e., the
`authentication-interface routine).
`
`Pet. at 25-27 (emphasis added) (reproduction of Fig. 7 omitted here). Nowhere in
`
`the petition did UPI argue that Harris at least renders obvious the authentication
`
`interface limitation or seek to rely on third-party testimony to that effect. Instead,
`
`for the first time in the Reply and the accompanying declaration of Mr. Gray, Ex.
`
`1010, UPI introduces this argument.
`
`
`
`7
`
`
`
`
`
`The inclusion of new arguments and evidence in a Reply is forbidden. 37
`
`CF.R. § 42.23(b). Nothing in the Patent Owner’s Response invited such an
`
`argument and even under the procedures adopted in the new Trial Practice Guide,
`
`“Petitioner may not submit new evidence or argument in reply that it could have
`
`presented earlier, e.g. to make out a prima facie case of unpatentability.” Trial
`
`Practice Guide Update August 2018 at p. 14 (announced at 83 Fed. Reg. 39989
`
`(Aug. 13, 2018)). Accordingly, the Board should confirm its initial determination
`
`that Petitioner has failed to show that claims 1-11 are unpatentable as obvious in
`
`view of Harris and Owen for at least the reasons set forth in the Institution
`
`Decision. CFMT, Inc., 349 F.3d at 1342 (“[O]bviousness requires a suggestion of
`
`all limitations in a claim.”).
`
`
`
`IV. CONCLUSION
`
`For at least the foregoing reasons, and those set forth in Patent Owner’s
`
`Response, the Board should find that UPI has not demonstrated by a
`
`preponderance of evidence that claims 1-11 are unpatentable.
`
`
`
`
`Date: Septembner 26, 2018
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`by:
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`8
`
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PATENT OWNER’S SUR-REPLY
`
`was served on September 26, 2018, by filing this document though PTAB E2E as
`
`well as delivering copies thereof via email directed to the attorneys of record for
`
`the Petitioner at the following address:
`
`
`
`
`
`Roshan S. Mansinghani
`Jonathan R. Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW
`Washington, DC 20009
`
`roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`Date: September 26, 2018
`
`
`
`by:
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: patents@ascendalaw.com
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`This paper complies with the requirements of 37 CF.R. § 42.24 and contains
`
`1758 words (exclusive of the table of contents, table of authorities, certificate of
`
`service, and this certification).
`
`This paper complies with the typeface requirements of 37 C.F.R. § 42.6 and
`
`has been prepared in 14-point Times New Roman proportionally spaced typeface
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`with normal spacing.
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 26, 2018
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
