`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 30
`Entered: July 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`IPR2020-00441
`Patent 8,949,954 B2
`____________
`
`
`Before PATRICK M. BOUCHER, STACY B. MARGOLIES, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`
`BOUCHER, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`

`

`IPR2020-00441
`Patent 8,949,954 B2
`
`
`In response to a Petition (Paper 1, “Pet.”) filed by Google LLC
`
`(“Petitioner”), we instituted an inter partes review of claims 1–4, 6, 9, and
`
`12–14 of U.S. Patent No. 8,949,954 B2 (Ex. 1001, “the ’954 patent”).
`
`Paper 13 (“Dec.”). During the trial, Uniloc 2017 LLC (“Patent Owner”)
`
`filed a (corrected) Response (Paper 17, “PO Resp.”), Petitioner filed a Reply
`
`(Paper 19, “Reply”), and Patent Owner filed a Sur-reply (Paper 21, “Sur-
`
`reply”). An oral hearing was held with the parties, and a copy of the
`
`transcript was entered into the record. Paper 29 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`
`claims on which we instituted trial. Based on the record before us, Petitioner
`
`has shown, by a preponderance of the evidence, that claims 1–4, 6, 9, and
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`12–14 are unpatentable.
`
`
`
`I. BACKGROUND
`
`A. The ’389 Patent
`
`1. Overview
`
`The ’954 patent “relates to a method and system for providing
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`customer notification and authorization of remote requests for access to
`
`customer account information.” Ex. 1001, 1:17–20. Figure 7 of the ’954
`
`patent is reproduced below.
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`IPR2020-00441
`Patent 8,949,954 B2
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`
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`Figure 7 is a “transaction flow diagram” that illustrates how a remote
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`computing device requests remote access to customer account information
`
`through a server. Id. at 9:42–46. For purposes of illustration, the
`
`’954 patent describes transaction flow diagram 700 “in the context . . . of a
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`customer or a hacker requesting remote access to . . . bank account
`
`information.” Id. at 9:46–50.
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`IPR2020-00441
`Patent 8,949,954 B2
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`At step 702, remote computing device 104 transmits a request for
`
`remote access to customer account information. Id. at 9:55–56. The request
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`can include a “device fingerprint” and a “requesting location” of remote
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`computing device 104. Id. at 9:57–59. “For example, a person can request
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`remote access to the bank account information from a laptop in a different
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`state. Such a laptop can be an authorized laptop or an unknown laptop.” Id.
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`at 9:59–62. An “unknown laptop” differs from an “authorized laptop”
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`because “[t]he authorized laptop can be a system in which the customer with
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`authority to access the bank account information has approved for use in
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`obtaining access to the bank account information” and because “[t]he
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`authorized laptop’s device fingerprint may be stored as an authorized device
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`fingerprint.” Id. at 9:63–67. The “unknown laptop,” by contrast, “can be a
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`system that the customer with authority to access the bank account
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`information has not approved for use in obtaining access to the bank account
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`information.” Id. at 9:67–10:3. Accordingly, the unknown laptop’s device
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`fingerprint is not indicated as an authorized device fingerprint. Id. at 10:3–6.
`
`At step 704, server 102 identifies remote computing device 104, such
`
`as by using the device fingerprint and requesting location of remote
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`computing device 104. Id. at 10:7–11. At step 706, server 102 determines
`
`whether the device fingerprint of remote computing device 104 matches an
`
`authorized device fingerprint, such as by performing a comparison with a
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`stored list of authorized device fingerprints. Id. at 10:21–27. If a match is
`
`found, server 102 may approve the remote access request. Id. at 10:52–56.
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`But if no match is found, server 102 proceeds to step 708. Id. at 10:31–33.
`
`“For example, in the case where the person is using the unknown laptop to
`
`request remote access to the bank account information, the device fingerprint
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`IPR2020-00441
`Patent 8,949,954 B2
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`of the unknown laptop utilized will not match an authorized device
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`fingerprint.” Id. at 10:33–36.
`
`At step 708, server 102 transmits a notification of the request to
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`customer-specified system 106, indicating “the request, identity of the
`
`remote computing device 104, and the requesting location.” Id. at 10:37–41.
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`“This allows the customer to determine whether to grant or deny access to
`
`the bank account information by the unknown laptop.” Id. at 10:46–48.
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`Figure 8 of the ’954 patent is reproduced below.
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`Figure 8 is a “transaction flow diagram [that] illustrates additional steps to
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`the transactional flow diagram 700 (FIG. 7).” Id. at 10:60–65. At step 802,
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`
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`IPR2020-00441
`Patent 8,949,954 B2
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`customer-specified system 106 transmits a reply to the notification, which
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`“may include an approval or disapproval to the server 102.” Id. at 11:3–5.
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`“Thus, the customer can approve or disapprove the request for remote access
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`by the unknown laptop. For example, if the customer knows that she or
`
`someone she wishes to access the bank account information is the one using
`
`the unknown laptop, she can approve the request.” Id. at 11:8–13.
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`Reply 802 can also include the device fingerprint of customer-specified
`
`system 106 so that server 102 can authenticate the reply. Id. at 11:14–17.
`
`
`
`At step 804, server 102 resolves the request, such as by approving or
`
`disapproving the request based on reply 802 received from customer-
`
`specified system 106. Id. at 11:18–21. At step 806, server 102 stores the
`
`device fingerprint as an authorized device fingerprint or an unauthorized
`
`device fingerprint in accordance with the approval or disapproval. Id. at
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`11:41–50.
`
`
`
`2. Illustrative Claim
`
`Independent claim 1 is illustrative of the challenged claims and is
`
`reproduced below with a key limitation emphasized.
`
`1. A system for authorizing a request for remote access
`to customer account information, comprising:
`a server configured to receive the request via a network
`from a remote computing device; a database storing the
`customer account information accessible by the server; and
`memory accessible by the server and storing a customer
`notification program which, when executed by the server,
`performs steps for
`
`(a) identifying, responsive to the server receiving
`the request, the remote computing device fingerprint and by a
`requesting location;
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`IPR2020-00441
`Patent 8,949,954 B2
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`
`(b) determining whether the device fingerprint
`
`matches any of a number of device fingerprints previously
`authorized to access the customer account information;
`(c) sending, responsive to determining a mismatch
`
`between the device fingerprint and each of the previously
`authorized device fingerprints, a notification of the request to
`an address of a separate device specified by the customer, the
`notification indicating (i) the request, (ii) identity of the remote
`computing device, and (iii) the requesting location;
`
`(d) resolving the request responsive to a reply to
`the notification; and
`
`(e) if resolving the request responsive to a reply to
`the notification results in permitting authorized access to the
`customer account information by the remote computing device,
`storing the device fingerprint as a previously authorized device
`fingerprint and associating the device fingerprint with the
`customer account information.
`
`Ex. 1001, 12:2–34 (emphasis added).
`
`
`
`3. Prosecution History
`
`When the application that matured into the ’954 patent was filed,
`
`independent claim 1 was presented in the following form:
`
`1. A system for authorizing a request for remote access to
`customer account information, comprising:
`a server configured to receive the request via a network
`from a remote computing device; a database storing the
`customer account information accessible by the server; and
`memory accessible by the server and storing a customer
`notification program which, when executed by the server,
`performs steps for
`
`(a) identifying, responsive to the server receiving
`the request, the remote computing device by a device
`fingerprint and by a requesting location;
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`IPR2020-00441
`Patent 8,949,954 B2
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`(b) determining whether the device fingerprint
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`matches any of a number of device fingerprints authorized to
`access the customer account information; and
`
`(c) sending, responsive to determining a mismatch
`between the device fingerprint and each of the previously
`authorized device fingerprints, a notification of the request to a
`customer-specified address, the notification indicating (i) the
`request, (ii) identity of the remote computing device, and (iii)
`the requesting location.
`
`Ex. 1004, 568. In a first Office Action, the Examiner rejected claim 1, as
`
`well as other claims, as unpatentable under 35 U.S.C. § 103(a) over U.S.
`
`Patent Publ. No. 2004/0254890 (“Sancho”) and U.S. Patent No. 8,370,265
`
`(“Coulter”). Id. at 492–506. After the Applicant traversed this prior-art
`
`rejection without amending the claims, id. at 140–156, the Examiner issued
`
`a Final Office Action maintaining the rejection, id. at 76–120.
`
`The Applicant responded to the Final Office Action by amending the
`
`claims, particularly amending step (c) of independent claim 1 to replace
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`“sending . . . a notification of the request to a customer specified address”
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`with “sending . . . a notification of the request to an address of a separate
`
`device specified by the customer.” Id. at 45 (emphases added).1 The
`
`Applicant argued that the prior art cited by the Examiner “teaches sending
`
`
`1 In reproducing independent claim 1 in this amendment, step (a) was recited
`as “identifying . . . the remote computing device fingerprint and by a
`requesting location,” rather than reproducing the original language of
`“identifying . . . the remote computing device by a device fingerprint and by
`a requesting location.” Ex. 1004, 45 (emphasis added). Although the words
`“by a device” were omitted, no markings were included to indicate any
`intent by the Applicant to remove those words from the claim language. See
`id. The omission apparently propagated to issued claim 1, which also does
`not include the words “by a device.” We address this omission as a matter
`of claim construction below.
`
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`IPR2020-00441
`Patent 8,949,954 B2
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`customer notification only to the same device, not a separate device
`
`specified by the consumer.” Id. at 164 (emphasis added). In doing so, the
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`Applicant sought to distinguish the prior art as “fail[ing] to address and . . .
`
`not solv[ing] the problem of initial transaction requests from stolen devices
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`(ones that are used to commit fraud for the first time).” Id. “By contrast,”
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`the Applicant explained to the Examiner, “applicant’s invention teaches use
`
`of alternate devices.” Id. at 165. After considering this argument, the
`
`Examiner asserted that “applicant’s argued feature of: ‘a separate device
`
`specified by the consumer’ [wa]s not presently recited in applicant’s
`
`claim 1.” Id. at 80.
`
`The Applicant similarly argued, in slightly different context, that the
`
`prior art “fails to teach sending alert notifications to separately specified user
`
`devices as taught by applicant’s claim 1.” Id. at 165. The Examiner found
`
`this argument equally unpersuasive because “applicant’s presently presented
`
`claim 1 does not recite the, ‘sending alert notifications to separately
`
`specified user devices.’” Id. at 80.
`
`The Applicant accordingly amended claim 1 to recite the language
`
`that appears in the challenged issued claim, namely “sending . . . a
`
`notification of the request to an address of a separate device specified by the
`
`customer.” Id. at 45. Although Petitioner highlights the Examiner’s latter
`
`comment that the original version of claim 1 did not recite “sending alert
`
`notifications to separately specified devices,” it is apparent from the
`
`prosecution history that both of the Examiner’s comments identified above
`
`contributed to the Applicant’s amendment. Id. at 52 (“The Final Action
`
`states further that ‘applicant’s argued feature of “a separate device specified
`
`by the consumer” [or, “customer”] is not presently recited [in] claim 1.’; and
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`9
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`IPR2020-00441
`Patent 8,949,954 B2
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`that claim 1 moreover does not recite ‘sending alert notifications to
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`separately specified user devices.’ . . . Accordingly, applicant herein
`
`amends claim 1 to overcome this position.” (first alteration in original)).
`
`Following an interview between the Examiner and Applicant,
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`independent claim 1 was further amended by the Examiner to place it in
`
`condition for allowance by adding steps (d) and (e) of the issued claim. Id.
`
`at 33–41 (Notice of Allowability with Examiner’s Amendment and
`
`Interview Summary).
`
`
`
`
`
`Petitioner relies on the following references:
`
`B. Evidence
`
`Steinberg
`Oberheide
`McDowell
`Yasushi
`
`June 14, 2007 Ex. 1005
`US 2007/0136573 A1
`Sept. 8, 2011
`Ex. 1006
`US 2011/0219230 A1
`US 2009/0260064 A1 Oct. 15, 2009
`Ex. 1008
`Nov. 18, 2010 Ex. 10092
`JP 2010-262532
`
`In addition, Petitioner relies on a Declaration by Fabian Monrose,
`
`Ph.D. Ex. 1002. No cross-examination testimony of Dr. Monrose was
`
`entered into the record.
`
`
`
`C. Instituted Grounds of Unpatentability
`
`Petitioner challenges claims 1–4, 6, 9, and 12–14 on the following
`
`grounds. Pet. 3.
`
`
`2 Exhibit 1009 includes both the original published Japanese application and
`an English translation, with an affidavit by the translator attesting to the
`accuracy of the translation.
`
`10
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`IPR2020-00441
`Patent 8,949,954 B2
`
`
`Claim(s)
`Challenged
`1–4, 6, 12, 14
`1–4, 6, 9, 12, 144
`13
`13
`
`
`
`35 U.S.C. §3
`
`References
`
`103(a)
`103(a)
`103(a)
`103(a)
`
`Steinberg, Oberheide
`Steinberg, Oberheide, McDowell
`Steinberg, Oberheide, Yasushi
`Steinberg, Oberheide, McDowell,
`Yasushi
`
`D. Real Parties in Interest
`
`The parties identify only themselves as real parties in interest. Pet. 1;
`
`Paper 4, 1. Petitioner additionally discloses that it “is a subsidiary of
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`XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.,” but asserts that
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`“XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this
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`proceeding.” Pet. 1 n.1. Patent Owner additionally discloses that it “is
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`owned by CF Uniloc Holdings LLC.” Paper 4, 1.
`
`
`
`E. Related Matters
`
`A related district court proceeding involving the ’954 patent, Uniloc
`
`2017 LLC v. Google LLC, No. 5:20-cv-04355 (N.D. Cal.), which originated
`
`as Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00504 (E.D. Tex.), has
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
`the ’954 patent was filed before March 16, 2013 (the effective date of the
`relevant amendment), the pre-AIA versions of those provisions apply.
`4 Petitioner identifies two separate grounds: (1) “Ground 2,” which
`challenges claim 9 as unpatentable under 35 U.S.C. § 103(a) over Steinberg,
`Oberheide, and McDowell; and (2) “Ground 4,” which challenges claims 1–
`4, 6, 9, 12, and 14 as unpatentable under 35 U.S.C. § 103(a) over Steinberg,
`Oberheide, and McDowell. Pet. 3. Because both grounds involve the same
`statutory basis and the same prior art, we identify them collectively in the
`table.
`
`11
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`IPR2020-00441
`Patent 8,949,954 B2
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`been dismissed for lack of subject-matter jurisdiction. See Pet. 1; Paper 4, 2;
`
`Ex. 3001; Paper 20 (citing Uniloc 2017 LLC v. Google LLC, No. 4:20-cv-
`
`5345) (N.D. Cal.)). In addition, Uniloc 2017 LLC v. Google LLC, No. 2:18-
`
`cv-00458 (E.D. Tex.), which also involved the ’954 patent, was dismissed
`
`without prejudice. Pet. 1; PO Resp. 4.
`
`
`
`II. ANALYSIS
`
`A. Legal Principles
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`
`the differences between the claimed subject matter and the prior art are
`
`“such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`
`indicia of nonobviousness, i.e., secondary considerations.5 Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`
`5 The parties do not address objective indicia of nonobviousness, which
`accordingly do not form part of our analysis.
`
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`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`
`
`B. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`
`resolving the level of ordinary skill in the art lies in the necessity of
`
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
`
`skill in the art” is a hypothetical construct, from whose vantage point
`
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`
`reference in negligence determinations” and “also presumes that all prior art
`
`references in the field of the invention are available to this hypothetical
`
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`
`1993)).
`
`Petitioner proposes that a person of ordinary skill in the art “would
`
`have had a bachelor’s degree in electrical engineering, computer science, or
`
`the equivalent thereof, and three or more years of experience with network
`
`security.” Pet. 4 (citing Ex. 1002 ¶¶ 17–19). According to Petitioner,
`
`“[s]ignificantly more practical experience could also qualify one not having
`
`the aforementioned education while, conversely, a higher level of education
`
`could offset a lesser amount of experience.” Id. (citing Ex. 1002 ¶¶ 17–19).
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`Petitioner supports its proposal with testimony by Dr. Monrose. Ex. 1002
`
`¶ 18.
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`Although Patent Owner contends that Petitioner’s proposal is
`
`“improper,” at least for failing to define thresholds for “significantly more
`
`practical experience” or “a higher level of education,” Patent Owner declines
`
`to offer its own proposal for the level of ordinary skill. PO Resp. 5–6.
`
`We adopt Petitioner’s proposed articulation. Our Decision does not
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`depend on nuanced distinctions in the degree to which additional education
`
`or experience may offset Petitioner’s proposed baseline articulation of the
`
`level of ordinary skill in the art.
`
`
`
`C. Claim Construction
`
`The Board uses “the same claim construction standard that would be
`
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`
`construing the claim in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and
`
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b)
`
`(2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
`
`(en banc). The specification may reveal a special definition given to a claim
`
`term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
`
`her own lexicographer, the definition must be set forth in the specification
`
`with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
`
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
`
`Although Petitioner “believes that no express constructions of the
`
`claims are necessary to assess whether the prior art reads on the challenged
`
`claims,” Petitioner nevertheless proposes constructions for several terms.
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`Pet. 7. Patent Owner instead “requests that the Board adopt the ordinary and
`
`customary meaning of the claim terms as understood by one of ordinary skill
`
`in the art.” PO Resp. 6. In addition, Patent Owner contends that certain of
`
`Petitioner’s proposed constructions were rejected in related district court
`
`litigation, and highlights those that Patent Owner considers “fatal” to
`
`Petitioner’s position. Id. at 8 (“Given the court’s preliminary constructions
`
`and the court’s remarks during the Markman hearing,[] it should have been
`
`clear, and indeed Google even acknowledged, that the court had decided
`
`against adopting Google’s untenable claim construction positions addressed
`
`herein.” (footnote omitted)); see also id. at 9–16 (discussing certain specific
`
`claim recitations).
`
`In particular, Patent Owner reiterates an argument that we considered
`
`during the preliminary phase of this proceeding, namely that “the Petition is
`
`impermissibly keyed to multiple erroneous claim constructions.” Id. at 7
`
`(citing Mentor Graphics Corp. v. Synopsys, Inc., 2015 WL 3637569 at *11
`
`(PTAB June 11, 2015), aff’d sub nom. Synopsys, Inc. v. Mentor Graphics
`
`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016); United Microelectronics Corp.
`
`v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 at 4–5, 6
`
`(PTAB May 22, 2018)); see Dec. 14–15. According to Patent Owner, the
`
`Petition is “tainted” by its emphasis on certain constructions that were
`
`rejected in related district court litigation, and this taint “appl[ies] with
`
`greater force at the post-institution stage.” PO Resp. 7–8; Sur-reply 5.
`
`Specifically, Patent Owner contends that Petitioner had an obligation to
`
`substantively address the district court’s constructions, and that Petitioner
`
`failed to meet that obligation. Sur-reply 1–2 (citing OrthoPediatrics Corp.
`
`v. K2M, Inc., IPR2018-01548, Paper 9 at 10–11 (PTAB May 1, 2019)).
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`But as we explained in our Institution Decision, “[w]e have reviewed
`
`the decisions cited by Patent Owner and disagree that it would be prudent to
`
`deny the Petition merely because Petitioner has emphasized proposed
`
`constructions that differ from those adopted by the district court.” Dec. 14–
`
`15 (citing Exs. 2001 (district court preliminary Claim Construction
`
`Memorandum and Order), 2002 (district court adopting preliminary
`
`constructions)); see also Tr. 25:15–26:11 (Patent Owner acknowledging that
`
`at least OrthoPediatrics is not binding authority). That determination, which
`
`we further determine applies as fully at this stage of the proceeding, resulted
`
`in significant part from the fact that “Petitioner argues, for each of its
`
`constructions that deviate from the district court’s construction, that its
`
`analysis applies both for the construction it advocates and for the
`
`construction adopted by the district court.” Dec. 15 (citing Pet. 10–13, 38,
`
`43–44, 47); see also Tr. 7:5–8 (Petitioner asserting that “[w]hat [Patent
`
`Owner’s] argument misses however is that our IPR petition addressed both
`
`our alternative constructions as well as the district court’s constructions”).
`
`We accordingly address construction of the following claim
`
`recitations, and determine that no further express constructions are required
`
`for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
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`construe terms ‘that are in controversy, and only to the extent necessary to
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`resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
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`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
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`IPR2020-00441
`Patent 8,949,954 B2
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`1. “device fingerprint”
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`Independent claim 1 recites a “device fingerprint,” which Petitioner
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`contends should be construed as “a bit string (or bit array) that uniquely
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`identifies the device, which includes or is derived from both user-
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`configurable and non-user-configurable data specific to the remote
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`computing device.” Pet. 9 (citing Ex. 1002 ¶ 50). This proposed
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`construction differs from the construction adopted by the district court,
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`which instead construed “device fingerprint” as “a bit string (or bit array)
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`that substantially uniquely identifies a device and that includes (or is derived
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`from) user-configurable data and non-user-configurable data specific to the
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`device.” Ex. 2001, 57–62 (preliminary construction by magistrate judge);
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`Ex. 2002 (adoption of preliminary construction by district judge).
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`Both Petitioner’s and the district court’s constructions require that the
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`bit string or array include or be derived from both “user-configurable” and
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`“non-user-configurable” data specific to the device. In particular, in
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`adopting its construction, the district court agreed, as do we, that the
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`specification of the ’954 patent and its prosecution history “discuss[] using
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`user-configurable data and non-user-configurable data to make a device
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`fingerprint.” Ex. 2001, 59 (citing Ex. 1001, 7:24–44; Ex. 1004, 149–150).
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`The principal difference in the constructions is that Petitioner’s
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`proposal requires that the bit string or array “uniquely identifies” the device,
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`while the district court’s adopted construction requires only that the bit
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`string or array “substantially uniquely identifies” the device. On this point,
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`the district court observed that “[t]he specification also refers to this data
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`string being ‘unique,’” and further noted that the specification of the ’954
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`patent “explains that ‘unique’ does not refer to absolute uniqueness but
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`17
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`IPR2020-00441
`Patent 8,949,954 B2
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`rather a probability of uniqueness.” See id. at 59, 61. In particular, the
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`specification states that “the desired degree of uniqueness may be set to a
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`practical level such as 99.999999% or higher, to achieve a probability of less
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`that 1 in 100,000,000 that any two remote computing devices will generate
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`identical fingerprints.” Ex. 1001, 7:51–55 (emphases added).
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`We apply the same claim-construction standard as the district court,
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`and we agree with the court’s analysis. Accordingly, we construe “device
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`fingerprint” in the same manner as the district court, i.e., as “a bit string (or
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`bit array) that substantially uniquely identifies a device and that includes (or
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`is derived from) user-configurable data and non-user-configurable data
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`specific to the device.”
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`
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`2. “an address of a separate device specified by the customer”
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`Independent claim 1 recites “sending . . . a notification of the request
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`to an address of a separate device specified by the customer.” Ex. 1001,
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`12:19–23. In deciding whether to institute this proceeding, we applied a
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`preliminary construction of this phrase as “an address of a separate device,
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`the separate device having been specified by the customer.” Dec. 15–18.
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`Patent Owner agrees that this is the “correct construction.” PO Resp. 14. In
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`contrast, Petitioner “stands by” the construction advocated by its Petition,
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`namely that the phrase refers to “an address specified by the customer,
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`where the address is for a separate device.” Reply 3; Pet. 10. That is, the
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`disagreement between the parties is whether the claim language requires that
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`the address of the separate device be specified by the customer rather than
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`requiring specification of the separate device itself.
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`18
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`IPR2020-00441
`Patent 8,949,954 B2
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`Although we have reconsidered our preliminary construction in light
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`of the parties’ further arguments, we adopt that preliminary construction for
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`this Final Written Decision and conclude that the claims require
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`specification of the separate device by the customer. In doing so, we note
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`that this is the same construction arrived at by the district court under the
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`same claim-construction standard that we apply. Ex. 2001 (preliminary
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`construction by magistrate judge), 62–65; Ex. 2002 (adoption of preliminary
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`construction by district judge).
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`First, we agree with the district court that “the most natural reading of
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`the disputed term is that the phrase ‘specified by the customer’ modifies the
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`closest noun phrase, namely ‘a separate device.’” Ex. 2001, 64. In addition,
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`the district court noted that dependent claim 20 of the ’954 patent
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`“reinforces this natural reading because Claim 20 relies on Claim 1 for
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`antecedent basis for ‘the customer-specified separate device.’” Id.; see
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`Ex. 1001, 14:42–44. We also note the specific distinction between
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`claim 20’s recitation and that of independent claim 15, which recites “a
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`customer-specified address.” Ex. 1001, 13:35–36. Viewed together, the set
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`of claims thus specifically distinguishes between a customer-specified
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`address and a customer-specified separate device.
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`Petitioner observes that the specification of the ’954 patent includes
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`references to a “customer-specified address,” a fact acknowledged by the
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`district court in the Texas litigation proceeding. See Pet. 10–11; Ex. 2001,
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`64; see also Ex. 1001, 2:13–24, 4:57–5:9, 5:62–6:1, 6:16–19, 6:34–40 (each
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`referring to a “customer-specified address”). But as the district court
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`observed, the specification also “use[s] ‘customer-specified’ with reference
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`19
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`IPR2020-00441
`Patent 8,949,954 B2
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`to a ‘device’ or a ‘system.’” Ex. 2001, 64 (citing Ex. 1001, 3:39–43, 5:41–
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`43, 5:48–49, 8:30–32).
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`We also agree with the district court that, “even if [Petitioner] were
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`correct that the specification only referred to a ‘customer specified address,’
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`‘it is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent
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`a clear indication in the intrinsic record that the patentee intended the claims
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`to be so limited.’” Ex. 2002, 2 (quoting Liebel-Flarsheim Co. v. Medrad,
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`Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)). Petitioner has identified no such
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`indication in the intrinsic record.
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`In addition to these considerations, we find that the prosecution
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`history more strongly supports the district court’s construction than
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`Petitioner’s proposed construction. As noted in our summary of the
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`prosecution history above, the claim language was amended during
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`prosecution from reciting “to a customer-specified address” to reciting “to
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`an address of a separate device specified by the customer.” See Ex. 1004,
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`45. Such amendment addressed the Examiner’s concerns that the original
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`claim language did not support the Applicant’s patentability arguments
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`because it did not recite “a separate device specified by the consumer” and
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`did not recite “sending alert notifications to separately specified user
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`devices.” Id. at 52. In the context provided by those concerns, it appears
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`that the amendment shifted claim scope to encompass the separate device
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`being specified by the customer, rather than the address being specified by
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`the customer. Indeed, even Petitioner characterizes that prosecution history
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`as involving an amendment “to specify that the device is customer-
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`specified.” Pet. 11 (citing Ex. 1004, 45).
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`20
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`IPR2020-00441
`Patent 8,949,954 B2
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`Accordingly, we adopt a construction of “an address of a separate
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`device specified by the customer” as “an address of a separate device, the
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`separate devic