Trials@uspto.gov
`571-272-7822
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`
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`Paper 13
`Date: July 17, 2020
`
`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.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Google LLC (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–4, 6, 9, and 12–14
`of U.S. Patent No. 8,949,954 B2 (“the ’954 patent”). Paper 1 (“Pet.”).
`Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`
`
`571-272-7822
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`
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`
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`Paper 13
`Date: July 17, 2020
`
`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.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`Google LLC (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–4, 6, 9, and 12–14
`of U.S. Patent No. 8,949,954 B2 (“the ’954 patent”). Paper 1 (“Pet.”).
`Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
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`(“Prelim. Resp.”). In accordance with authorization the Board provided by
`email correspondence to the parties, Petitioner filed a Reply and Patent
`Owner filed a Sur-Reply, limited to addressing the Board’s recently
`designated precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Papers 7
`(“Reply”), 8 (“Sur-Reply”). After a related district court proceeding
`involving the ’954 patent was transferred from the Eastern District of Texas
`to the Northern District of California, we requested, and the parties filed,
`further simultaneous briefing regarding the impact of that transfer on our
`evaluation of the Fintiv factors. Papers 10–12.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we grant the Petition and institute an
`inter partes review. The Board has not made a final determination regarding
`the patentability of any claim.
`
`
`I. BACKGROUND
`A. The ’954 Patent
`1. Overview
`The ’954 patent “relates to a method and system for providing
`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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`Figure 7 is a “transaction flow diagram” that illustrates how a remote
`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
`customer or a hacker requesting remote access to . . . bank account
`information.” Id. at 9:46–50.
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`At step 702, remote computing device 104 transmits a request for
`remote access to customer account information. Id. 9:55–56. The request
`can include a “device fingerprint” and a “requesting location” of remote
`computing device 104. Id. at 9:57–59. “For example, a person can request
`remote access to the bank account information from a laptop in a different
`state. Such a laptop can be an authorized laptop or an unknown laptop.” Id.
`at 9:59–62. An “unknown laptop” differs from an “authorized laptop”
`because “[t]he authorized laptop can be a system in which the customer with
`authority to access the bank account information has approved for use in
`obtaining access to the bank account information” and because “[t]he
`authorized laptop’s device fingerprint may be stored as an authorized device
`fingerprint.” Id. at 9:63–67. The “unknown laptop,” by contrast, “can be a
`system that the customer with authority to access the bank account
`information has not approved for use in obtaining access to the bank account
`information.” Id. at 9:67–10:3. Accordingly, the unknown laptop’s device
`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
`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
`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.
`But if no match is found, server 102 proceeds to step 708. “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 of the
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`unknown laptop utilized will not match an authorized device fingerprint.”
`Id. at 10:33–36.
`At step 708, server 102 transmits a notification of the request to
`customer-specified system 106, indicating “the request, identity of the
`remote computing device 104, and the requesting location.” Id. at 10:37–41.
`“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.
`Figure 8 of the ’954 patent is reproduced below.
`
`
`Figure 8 is a “transaction flow diagram [that] illustrates additional steps to
`the transactional flow diagram 700 (FIG. 7).” Id. at 10:60–65. At step 802,
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`customer-specified system 106 transmits a reply to the notification, which
`“may include an approval or disapproval to the server 102.” Id. at 11:3–5.
`“Thus, the customer can approve or disapprove the request for remote access
`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.
`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
`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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`(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
`In the version of independent claim 1 originally filed as part of the
`application that matured into the ’954 patent, the emphasized language
`above was presented as “sending . . . a notification of the request to a
`customer-specified address.” Ex. 1004, 568. After initial rejection of the
`claim, the Applicant argued that the prior art cited by the Examiner “teaches
`sending customer notification only to the same device, not a separate device
`specified by the consumer.” Id. at 164 (emphasis added). In doing so, the
`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
`(ones that are used to commit fraud for the first time).” Id. “By contrast,”
`the Applicant explained to the Examiner, “applicant’s invention teaches use
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`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
`that claim 1 moreover does not recite ‘sending alert notifications to
`separately specified user devices.’ . . . Accordingly, applicant herein
`amends claim 1 to overcome this position.”).
`Ultimately, independent claim 1 was allowed after further amendment
`that added limitations “(d)” and “(e)” of the issued claim, reproduced above.
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`Id. at 33–41 (Notice of Allowability with Examiner’s Amendment and
`Interview Summary).
`
`
`B. Evidence
`Petitioner relies on the following references:
`Ex. 1005
`Steinberg
`US 2007/0136573 A1
`June 14, 2007
`Ex. 1006
`Oberheide
`US 2011/0219230 A1
`Sept. 8, 2011
`Ex. 1008
`McDowell
`US 2009/0260064 A1 Oct. 15, 2009
`Yasushi
`JP 2010-262532
`Nov. 18, 2010 Ex. 10091
`
`
`
`In addition, Petitioner relies on a Declaration by Fabian Monrose,
`Ph.D. Ex. 1002.
`
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–4, 6, 9, and 12–14 on the following
`grounds. Pet. 3.
`Claims
`Challenged
`1–4, 6, 12, 14
`
`35 U.S.C. §2
`
`References
`
`103(a)
`
`Steinberg, Oberheide
`
`
`1 Exhibit 1010 includes both the original published Japanese application and
`an English translation, with an affidavit by the translator attesting to the
`accuracy of the translation.
`2 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.
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`Claims
`Challenged
`1–4, 6, 9, 12, 143
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`35 U.S.C. §2
`
`References
`
`103(a)
`103(a)
`103(a)
`
`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
`XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.,” but asserts that
`“XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this
`proceeding.” Pet. 1. Patent Owner additionally discloses that it “is owned
`by CF Uniloc Holdings LLC.” Paper 4, 1.
`
`
`E. Related Matters
`Both parties identify Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-
`00504 (E.D. Tex.) (“the Texas litigation proceeding”) as involving the
`’954 patent. Pet. 1; Paper 4, 2. Recently, on June 8, 2020, the district court
`in Texas granted a motion to transfer venue to the Northern District of
`California. Ex. 1034. The transferred case is Uniloc 2017 LLC v. Google
`
`
`3 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.
`
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`LLC, No. 5:20-cv-04355 (N.D. Cal.). Ex. 3001. We sometimes refer below
`to both proceedings collectively as “the related litigation proceedings.”
`As summarized above, we invited the parties simultaneously to
`address the impact of that transfer on our evaluation of discretionary factors
`that bear on whether we should deny the Petition in light of the related
`litigation proceedings. Paper 10. We have considered both parties’
`positions in our assessment below. See Papers 11 (filing by Patent Owner),
`12 (filing by Petitioner).
`The parties additionally note that Uniloc 2017 LLC v. Google LLC,
`No. 2:18-cv-00458 (E.D. Tex.) also involved the ’954 patent, but was
`dismissed without prejudice. Pet. 1; Prelim. Resp. 3.
`
`
`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
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`indicia of nonobviousness, i.e., secondary considerations.4 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
`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
`
`
`4 At this time, the parties do not address objective indicia of nonobviousness,
`which accordingly do not form part of our analysis.
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`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).
`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.” Prelim. Resp. 24–25.
`Nevertheless, Patent Owner declines to offer its own proposal at this time.
`For purposes of this Decision, we adopt Petitioner’s proposed
`articulation. Our Decision does not 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
`For petitions filed on or after November 13, 2018, as here, 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). Petitioner
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`proposes constructions for several terms, but nevertheless asserts that it
`“believes that no express constructions of the claims are necessary to assess
`whether the prior art reads on the challenged claims (and even as to the
`proposed constructions, resolution at this stage is not necessary given that
`Patent Owner’s constructions are broader).” Pet. 7–14.
`Patent Owner contends that certain of Petitioner’s proposed
`constructions were rejected by the district court in the Texas litigation
`proceeding, and highlights those that Patent Owner considers “fatal” to
`Petitioner’s position. Prelim. Resp. 26–29 (“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.”). Patent Owner does not specifically advocate
`that we adopt the district court’s constructions, but instead “reserves the
`right to propose more specific constructions of one or more claim terms.”
`Id. at 26.
`Because the Petition advocates for certain claim-construction
`positions that differ from the constructions adopted by the district court,
`Patent Owner contends that “the Petition is impermissibly keyed to multiple
`erroneous claim constructions” and that that provides “an independent basis
`for denying institution.” Id. at 26–27 (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)). We have
`reviewed the decisions cited by Patent Owner and disagree that it would be
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`prudent to deny the Petition merely because Petitioner has emphasized
`proposed constructions that differ from those adopted by the district court.
`See Exs. 2001 (district court preliminary Claim Construction Memorandum
`and Order), 2002 (district court adopting preliminary constructions). In this
`instance, 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. See
`Pet. 10–13, 38, 43–44, 47.
`We provide the following guidance based on the positions of the
`parties as expressed in the Petition and Preliminary Response. We
`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 construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`1. “an address of a separate device specified by the customer”
`Independent claim 1 recites “sending . . . a notification of the request
`to an address of a separate device specified by the customer.” Ex. 1001,
`12:19–23. Petitioner proposes that “an address of a separate device
`specified by the customer” be construed as “an address specified by the
`customer, where the address is for a separate device.” Pet. 10. Petitioner
`contends that this proposed construction is “supported by” the Specification
`of the ’954 patent because of certain references therein to a “customer-
`specified address.” Id. at 10–11 (citing Ex. 1001, Abst., 4:57–5:9).
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`Petitioner also contends that its proposed construction is “consistent with”
`the prosecution history because of the amendment to claim 1 summarized
`above. Id. at 11.
`Notwithstanding these positions, and as Patent Owner points out, the
`district court construed the phrase to mean “an address of a separate device,
`the separate device having been specified by the customer.” See Prelim.
`Resp. 29; Ex. 2001 (preliminary construction by magistrate judge), 62–65;
`Ex. 2002 (adoption of preliminary construction by district judge). That is,
`rather than the address being specified by the customer as in Petitioner’s
`proposed construction, the district court construed the phrase as requiring
`that the separate device be specified by the customer.
`At this preliminary stage, we apply the district court’s construction.
`We agree with the district court that “the most natural reading of the
`disputed term is that the phrase ‘specified by the customer’ modifies the
`closest noun phrase, namely ‘a separate device.’” Ex. 2001, 64. In addition,
`the district court noted that dependent claim 20 of the ’954 patent
`“reinforces this natural reading because Claim 20 relies on Claim 1 for
`antecedent basis for ‘the customer-specified separate device.’” Id.; see
`Ex. 1001, 14:42–44. We also note the specific distinction between
`claim 20’s recitation and that of independent claim 15, which recites “a
`customer-specified address.” Ex. 1001, 13:35–36. Viewed as a whole, the
`claims specifically distinguish between a customer-specified address and a
`customer-specified separate device.
`Petitioner observes that the Specification of the ’954 patent includes
`references to a “customer-specified address,” a fact acknowledged by the
`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
`referring to a “customer-specified address”). But as the district court
`observed, the Specification also “use[s] ‘customer-specified’ with reference
`to a ‘device’ or a ‘system.’” Ex. 2001, 64 (citing Ex. 1001, 3:39–43, 5:41–
`43, 5:48–49, 8:30–32).
`We also agree at this preliminary stage with the district court that,
`“even if [Petitioner] were correct that the specification only referred to a
`‘customer specified address,’ ‘it is improper to read limitations from a
`preferred embodiment described in the specification—even if it is the only
`embodiment—into the claims absent a clear indication in the intrinsic record
`that the patentee intended the claims to be so limited.’” Ex. 2002 (quoting
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)).
`Petitioner has identified no such indication in the intrinsic record.
`In addition to these considerations, we find that the prosecution
`history more strongly supports the district court’s construction than
`Petitioner’s proposed construction. As noted in our summary of the
`prosecution history above, the claim language was amended during
`prosecution from reciting “to a customer-specified address” to reciting “to
`an address of a separate device specified by the customer.” See Ex. 1004,
`45. Such amendment addressed the Examiner’s concerns that the original
`claim language did not support the Applicant’s patentability arguments
`because it did not recite “a separate device specified by the consumer” and
`did not recite “sending alert notifications to separately specified user
`devices.” Id. at 52. In the context provided by those concerns, it appears
`that the amendment shifted claim scope to encompass the separate device
`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
`as involving an amendment “to specify that the device is customer-
`specified.” Pet. 11 (citing Ex. 1004, 45).
`Accordingly, for purposes of this decision, we apply a construction of
`“an address of a separate device specified by the customer” in the same
`manner as in the Texas litigation proceeding, namely as “an address of a
`separate device, the separate device having been specified by the customer.”
`
`
`2. “identifying . . . the remote computing device fingerprint
`and by a requesting location”
`
`Independent claim 1 recites “identifying . . . the remote computing
`device fingerprint and by a requesting location.” Ex. 1001, 12:12–14. On
`its face, this recitation is grammatically awkward. Petitioner proposes that
`we construe the phrase by inserting the words “by a device” as follows:
`“identifying . . . the remote computing device by a device fingerprint and by
`a requesting location.” Pet. 11. According to Petitioner, “[t]his construction
`clarifies the apparent erroneous deletion of ‘by a device’ because ‘by a
`device’ was present in claim 1 as originally filed.” Id. at 11–12 (citing
`Ex. 1004, 568). Patent Owner does not address construction of this phrase
`in its Preliminary Response.
`A district court may “correct an error in a patent by interpretation of
`the patent where no certificate of correction has been issued . . . only if (1)
`the correction is not subject to reasonable debate based on consideration of
`the claim language and the specification and (2) the prosecution history does
`not suggest a different interpretation of the claims.” Novo Indus., LP v.
`Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also CBT
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`Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir.
`2011) (holding obvious errors in a claim may be corrected in construing the
`claim). We have applied this same standard in Board proceedings. E.g.,
`Research Prods. Corp. v. Honeywell Int’l Inc., IPR2018-00976, Paper 6 at
`13 (PTAB Nov. 7, 2018); Apple Inc. v. Achates Reference Publ’g, Inc.,
`IPR2013-00080, Paper 22 at 10–12 (PTAB June 3, 2013); Fitbit, Inc. v.
`Valencell, Inc., 2020 WL 3815662 at *6 (Fed. Cir. July 8, 2020) (explaining
`that “there is foundation for such authority [of the Board to correct errors] in
`the America Invents Act . . . and precedent has provided guidelines for
`district courts to correct errors in issued patents”) (citing Novo Indus., 350
`F.3d at 1354). Further, “[t]he preferable agency action is to seek to serve the
`agency’s assignment under the America Invents Act, and to resolve the
`merits of patentability.” Fitbit, 2020 WL 3815662 at *6. But “courts may
`not redraft claims, whether to make them operable or to sustain their
`validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
`Cir. 2004). The burden is on Petitioner to show that a claim contains the
`kind of error that may be corrected in construing the claim. 37 C.F.R.
`§ 42.20(c).
`In this instance, and on the record before us, we agree with Petitioner
`that the recitation results from an evident error and that Petitioner’s proposed
`construction is supported by the Specification. Pet. 12 (citing Ex. 1001,
`10:7–20, Fig. 7). Petitioner’s proposed construction is therefore a
`reasonable construction of the claim language. Furthermore, the district
`court also adopted such a construction, which the parties agreed to in the
`Texas litigation proceeding. Id.; Ex. 2001, 9. Accordingly, for purposes of
`this Decision, we adopt Petitioner’s proposed construction.
`
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`D. Steinberg
`Steinberg describes “improved authentication of interacting parties
`comprising the use of two or more forms of authentication, each of which
`uses at least two methods of authenticating users.” Ex. 1005 ¶ 44.
`Figure 11A of Steinberg is reproduced below.
`
`
`Figure 11A depicts an exemplary process flow described by Steinberg. Id.
`¶ 48. When a user visits a site at step 1110 and logs into a system that does
`not recognize the user’s computer as known to be associated with the user at
`step 1112, two-factor authentication is initiated. Id. Thus, at step 1114, the
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`user enters a username and “he asks for a one-time password to be sent to
`the cell phone in his possession previously identified to the owner of the
`system.” Id. At step 1116, a one-time password is sent to the cell phone so
`that the user may enter it with his password at step 1118 to log in at step
`1112 (with a visual cue optionally generated at step 1120). Id.
`At some time during the logged-in session, the user may identify his
`computer as “trusted” for subsequent login attempts, as indicated at
`step 1124. Id. Thereafter, the system sends an identifier, such as in the form
`of a cookie or certificate, to the user’s computer at step 1126, with the user
`continuing the session at step 1128. Id.
`
`
`E. Oberheide
`Oberheide relates “specifically to a new and useful system and
`method of notifying mobile devices to complete transactions in the digital
`security field.” Ex. 1006 ¶ 2. Figure 1 of Oberheide is reproduced below.
`
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`Figure 1 illustrates a method for authenticating a transaction. Id. ¶ 4. Six
`steps are illustrated in the drawing: (1) registering an “authority device” for
`an account on an “auth platform” at step S110; (2) receiving a transaction
`request from an initiator to the auth platform at step S120; (3) messaging the
`authority device with the transaction request at step S130; (4) receiving an
`authority agent response from the authority device to the auth platform at
`step S140; and, if the authority agent response confirms the transaction,
`(5) communicating a confirmed transaction to the initiator at step S150; or, if
`the authority agent response denies the transaction, (6) communicating a
`denied transaction to the initiator at step S152. Id. ¶ 9.
`Two points with respect to this authentication method are relevant to
`Petitioner’s challenges. First, registration step S110 “preferably occurs prior
`to a transaction request, and is preferably performed during an initial setup
`of a
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