Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`DATAVANT, INC.
`Petitioner
`
`v.
`
`MANAGEMENT SCIENCE ASSOCIATES, INC.
`Patent Owner
`
`________________________
`
`U.S. Patent No. 9,614,814
`Issue Date: April 4, 2017
`Title: System and Method for Cascading Token Generation
`and Data De-Identification
`
`Case No. IPR2020-01672
`________________________
`
`DECLARATION OF PAUL C. CLARK, D.SC. IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,614,814
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DATAVANT, INC. EXHIBIT NO. 1003
`Page 1 of 189
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`

`

`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`Page
`
`II.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A.
`Introduction .......................................................................................... 1
`B. Qualifications and Experience ............................................................. 2
`C. Materials Considered ............................................................................ 5
`LEGAL PRINCIPLES .................................................................................... 6
`A.
`Prior Art ................................................................................................ 6
`B.
`Claim Construction .............................................................................. 6
`C. Anticipation .......................................................................................... 8
`D. Obviousness .......................................................................................... 9
`III. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 11
`IV. THE ’814 PATENT ...................................................................................... 13
`A. Overview of the ’814 Patent ............................................................... 13
`B.
`Prosecution History ............................................................................ 18
`C.
`The Challenged Claims ...................................................................... 21
`V. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 26
`A.
`Brief Summary of Prior Art ............................................................... 27
`1.
`Landi (Ex. 1005) ...................................................................... 27
`2.
`Pommerening (Ex. 1006) ......................................................... 34
`3.
`Stevens (Ex. 1007) ................................................................... 37
`4.
`Knowledge of Person of Ordinary Skill in the Art as
`Evidenced by Denning 1982 (Ex. 1008) .................................. 42
`
`i
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`B. Ground 1: Claims 1, 9, 10, and 18-20 Are Anticipated By
`Landi ................................................................................................... 46
`1.
`Independent Claim 1 ................................................................ 46
`2.
`Dependent Claim 9 .................................................................. 66
`3.
`Independent Claim 10 .............................................................. 70
`4.
`Dependent Claim 18 ................................................................ 74
`5.
`Independent Claim 19 .............................................................. 78
`6.
`Dependent Claim 20 ................................................................ 85
`C. Ground 2: Claims 1–20 Are Rendered Obvious by
`Pommerening. ..................................................................................... 86
`1.
`Independent Claim 1 ................................................................ 86
`2.
`Dependent Claim 2 ................................................................ 100
`3.
`Dependent Claim 3 ................................................................ 101
`4.
`Dependent Claim 4 ................................................................ 102
`5.
`Dependent Claim 5 ................................................................ 104
`6.
`Dependent Claim 6 ................................................................ 105
`7.
`Dependent Claim 7 ................................................................ 106
`8.
`Dependent Claim 8 ................................................................ 108
`9.
`Dependent Claim 9 ................................................................ 110
`10.
`Independent Claim 10 ............................................................ 113
`11. Dependent Claim 11 .............................................................. 116
`12. Dependent Claim 12 .............................................................. 117
`13. Dependent Claim 13 .............................................................. 118
`14. Dependent Claim 14 .............................................................. 118
`15. Dependent Claim 15 .............................................................. 119
`
`ii
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`16. Dependent Claim 16 .............................................................. 119
`17. Dependent Claim 17 .............................................................. 120
`18. Dependent Claim 18 .............................................................. 120
`19.
`Independent Claim 19 ............................................................ 124
`20. Dependent Claim 20 .............................................................. 129
`D. Ground 3: Claims 1–20 Are Rendered Obvious by Stevens in
`View of Pommerening ..................................................................... 130
`1. Motivation to Combine Stevens and Pommerening .............. 130
`2.
`Independent Claim 1 .............................................................. 134
`3.
`Dependent Claim 2 ................................................................ 149
`4.
`Dependent Claim 3 ................................................................ 151
`5.
`Dependent Claim 4 ................................................................ 152
`6.
`Dependent Claim 5 ................................................................ 154
`7.
`Dependent Claim 6 ................................................................ 155
`8.
`Dependent Claim 7 ................................................................ 155
`9.
`Dependent Claim 8 ................................................................ 156
`10. Dependent Claim 9 ................................................................ 158
`11.
`Independent Claim 10 ............................................................ 162
`12. Dependent Claim 11 .............................................................. 166
`13. Dependent Claim 12 .............................................................. 167
`14. Dependent Claim 13 .............................................................. 167
`15. Dependent Claim 14 .............................................................. 168
`16. Dependent Claim 15 .............................................................. 169
`17. Dependent Claim 16 .............................................................. 169
`18. Dependent Claim 17 .............................................................. 170
`
`iii
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`19. Dependent Claim 18 .............................................................. 171
`20.
`Independent Claim 19 ............................................................ 175
`21. Dependent Claim 20 .............................................................. 182
`VI. CONCLUSION ........................................................................................... 183
`
`iv
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`I, Paul Clark, D.Sc., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A.
`Introduction
`1.
`I am the President of Paul C. Clark LLC.
`
`2.
`
`I have been retained by Goodwin Procter LLP, counsel for Datavant,
`
`Inc. (“Datavant”) as a technical expert witness in connection with the petition for
`
`inter partes review of U.S. Patent No. 9,614,814 (“’814 patent”). I understand that
`
`the ’814 patent claims priority to June 3, 2013. For purposes of my analysis
`
`herein, I have used this date as the relevant time period.
`
`3.
`
`I have been asked by Datavant to offer opinions regarding the ʼ814
`
`patent, including the construction of certain claim terms and the patentability of the
`
`claims in view of certain prior art references and the knowledge of a person of
`
`ordinary skill in the art. This declaration sets forth the opinions I have reached to
`
`date regarding these matters.
`
`4.
`
`In preparing this Declaration, I have reviewed the ’814 patent, its
`
`prosecution history, and each of the documents I reference herein. In reaching my
`
`opinions, I have relied upon my experience in the field and have also considered
`
`the viewpoint of a person of ordinary skill in the art at the time of the ’814 patent’s
`
`priority date. As explained below, I am familiar with the level of skill of a person
`
`1
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`of ordinary skill in the art regarding the technology at issue as of that time frame.
`
`5.
`
`I receive $590 per hour for my services. I do not have any personal
`
`or financial stake or interest in the outcome of the present proceeding, and my
`
`compensation is not dependent on the outcome of this IPR and in no way affects
`
`the substance of my statements in this declaration.
`
`B. Qualifications and Experience
`6. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae. My curriculum vitae is Exhibit 1004.
`
`7.
`
`I received a Bachelor of Science in Mathematics from the University
`
`of California Irvine, a Master of Science in Electrical Engineering and Computer
`
`Science from the University of Southern California, and a Doctor of Science in
`
`Computer Science from The George Washington University with concentrations in
`
`Security, Graphics and Intellectual Property Law. My doctoral dissertation
`
`included advanced solutions to network and information security.
`
`8.
`
`From the late 1980’s to the mid-1990’s I was a Senior Security
`
`Engineer at Trusted Information Systems. In that role, I participated in the design
`
`and implementation of several cryptographic systems providing integrity,
`
`authentication, and encryption services.
`
`2
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`9.
`
`Between Jan 1994 and July 1999, I was Chief Scientist for DynCorp
`
`Network Solutions. In that role, I designed and directed the implementation of
`
`several secure database systems including the IRS’s Secure Submission and
`
`Retrieval System. That secure database system received three Al Gore Hammer
`
`Awards for improving Government.
`
`10.
`
`In the mid 1990’s I served as a member of the Federal Advisory
`
`Committee for Key Management Infrastructure and as Chairman of the
`
`Interoperability Working Group for Cryptographic Key Recovery.
`
`11. Also in the mid 1990’s I served as a Cooperative Research and
`
`Development Agreements partner in a joint effort between the National Institute of
`
`Standards and Technology and several companies to begin development of the
`
`elements of a public key infrastructure.
`
`12.
`
`I published several articles on computer security and encryption in
`
`the years prior to June 2013, including “BITS – A Smartcard Protected Operating
`
`System,” with Lance Hoffman, Communications of the ACM, November 1994;
`
`“Service Layering Promotes Secure Data Exchange in Diverse Environments,”
`
`Computer News, October 23, 1995; and “Threats Posed to Cryptographic
`
`Applications by Random Numbers,” presented to the RSA Data Security
`
`Conference, January 1996.
`
`3
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`13. Between 1994 and 1999 I also gave several presentations at technical
`
`conferences relating to database security including field encryption, record
`
`partitioning and linkage topics concerning the subject matter of the ’814 Patent.
`
`14.
`
`I have also been called to provide expert testimony before Congress
`
`on issues related to encryption, authentication and secure database technology, and
`
`asked to speak at various conferences and consult on topics related to the ’814
`
`Patent in the years surrounding its priority date.
`
`15. My academic and professional background are closely related to the
`
`subject matter of the ’814 Patent, and include extensive experience with methods
`
`of information security and encryption as well as their application in database
`
`systems. I have served as an adjunct professor in the Electrical Engineering and
`
`Computer Science Department at The George Washington University, teaching
`
`doctoral level cryptography and computer security courses. Since receiving my
`
`doctorate in 1994, I have worked in the computer and networking field specializing
`
`in the design, implementation, and deployment of advanced secure network
`
`applications for commercial, Department of Defense, and government clients.
`
`16.
`
`I am the named inventor on four security related U.S. patents:
`
`5,448,045; 5,892,902; 8,695,066; and 10,129,214.
`
`
`
`4
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`C. Materials Considered
`17. The analysis that I provide in this Declaration is based on my
`
`education and experience in the field of computer security and encryption, as well
`
`as the documents I have considered, including the ’814 patent (Ex. 1001) and its
`
`prosecution history (Ex. 1002). The ’814 patent states on its face that it issued
`
`from an application filed on February 17, 2016, as a continuation of Application
`
`No. 14/291,805, filed on May 30, 2014 and now U.S. Patent No. 9,292,707, which
`
`claimed the benefit of U.S. Provisional Application No. 61/830,345, filed on June
`
`3, 2013. For the purposes of this Declaration, I have assumed June 3, 2013 as the
`
`effective filing date for the ’814 patent. I have cited to the following documents in
`
`my analysis below:
`
`Exhibit #
`1001
`1002
`1005
`1006
`
`1007
`1008
`
`Description
`
`U.S. Patent No. 9,614,814
`Prosecution History of U.S. Patent Application No. 15/046,202
`U.S. Patent No. 7,519,591 to Landi (“Landi”)
`“Pseudonyms for Cancer Registries,” Methods of Information in Medicine,
`1996 (“Pommerening”)
`U.S. Patent No. 9,355,273 to Stevens (“Stevens”)
`Dorothy Elizabeth Robling Denning, “Cryptography and Data Security,”
`1982 (“Denning 1982”)
`
`5
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`
`1009 Management Science Associates, Inc. v. Datavant, Inc., Case No. 20-cv-502-
`CFC (D. Del.), Plaintiff’s Answering Brief in Opposition to Defendant’s
`Motion to Dismiss (D.I. 15)
`
`II. LEGAL PRINCIPLES
`18.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinions, as set forth below.
`
`A.
`19.
`
`Prior Art
`I understand that the prior art to the ʼ814 patent includes patents and
`
`printed publications in the relevant art that predate the ʼ814 patent’s priority date.
`
`As I explained previously, I have been instructed to assume for purposes of my
`
`analysis that June 3, 2013 is the relevant date for determining what is “prior art.”
`
`In other words, I should consider as “prior art” publications and general knowledge
`
`in the field publicly available prior to June 3, 2013. I further understand that, for
`
`purposes of this proceeding in the United States Patent Trial and Appeal Board,
`
`only patents and documents that have the legal status of a “printed publication”
`
`may be cited as prior art.
`
`B. Claim Construction
`20.
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term
`
`6
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application. I further
`
`understand that the person of ordinary skill in the art is deemed to read the claim
`
`term not only in the context of the particular claim in which a claim term appears,
`
`but in the context of the entire patent, including the specification and file history.
`
`21.
`
`I am informed by counsel that the patent specification, under the
`
`legal principles, has been described as the best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of
`
`those terms.
`
`22.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as
`
`to the meaning of a claim term. Because the claim terms are normally used
`
`consistently throughout the patent, the usage of a term in one claim can often
`
`illuminate the meaning of the same term in other claims. Differences among
`
`claims can also be a useful guide in understanding the meaning of particular claim
`
`terms.
`
`23.
`
`I understand that the prosecution history can further inform the
`
`7
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`meaning of the claim language by demonstrating how the inventors understood the
`
`invention and whether the inventors limited the invention in the course of
`
`prosecution, making the claim scope narrower than it otherwise would be.
`
`Extrinsic evidence may also be consulted in construing the claim terms, such as my
`
`experience and expert testimony.
`
`24.
`
`I have been informed by counsel that, in IPR proceedings, a claim of
`
`a patent shall be construed using the same claim construction standard that would
`
`be used to construe the claim in a civil action filed in a U.S. district court (which I
`
`understand is called the “Phillips” claim construction standard), 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.
`
`25.
`
`I understand that some claims are independent, and that these claims
`
`are complete by themselves. Other claims refer to these independent claims and
`
`are “dependent” from those independent claims. The dependent claims include all
`
`of the limitations of the claims on which they depend.
`
`C. Anticipation
`26.
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
`
`single asserted prior art reference must disclose each and every element of the
`
`8
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`claimed invention, either explicitly, implicitly, or inherently, to a person of
`
`ordinary skill in the art. There must be no difference between the claimed
`
`invention and the disclosure of the alleged prior art reference as viewed from the
`
`perspective of the person of ordinary skill in the art. Also, I understand that in
`
`order for a reference to be an anticipating reference, it must describe the claimed
`
`subject matter with sufficient clarity to establish that the subject matter existed and
`
`that its existence was recognized by persons of ordinary skill in the field of the
`
`invention. In addition, I understand that in order to establish that an element of a
`
`claim is “inherent” in the disclosure of an asserted prior art reference, extrinsic
`
`evidence (or the evidence outside the four corners of the asserted prior art
`
`reference) must make clear that the missing element is necessarily found in the
`
`prior art, and that it would be recognized as necessarily present by persons of
`
`ordinary skill in the relevant field.
`
`27.
`
`In my opinions below, when I say that a person of ordinary skill
`
`would understand, readily understand, or recognize that an element or aspect of a
`
`claim is disclosed by a reference, I mean that the element or aspect of the claim is
`
`disclosed explicitly to a person of ordinary skill in the art.
`
`D. Obviousness
`28.
`I understand that obviousness is a determination of law based on
`
`9
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`various underlying determinations of fact. In particular, these underlying factual
`
`determinations include (1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art at the time the claimed invention was made; (3) the
`
`differences between the claimed invention and the prior art; and (4) the extent of
`
`any proffered objective indicia of nonobviousness. I understand that the objective
`
`indicia which may be considered in such an analysis include commercial success
`
`of the patented invention (including evidence of industry recognition or awards),
`
`whether the invention fills a long-felt but unsolved need in the field, the failure of
`
`others to arrive at the invention, industry acquiescence and recognition, initial
`
`skepticism of others in the field, whether the inventors proceeded in a direction
`
`contrary to the accepted wisdom of those of ordinary skill in the art, and the taking
`
`of licenses under the patent by others, among other factors.
`
`29. To ascertain the scope and content of the prior art, it is necessary to
`
`first examine the field of the inventor’s endeavor and the particular problem for
`
`which the invention was made. The relevant prior art includes prior art in the field
`
`of the invention, and also prior art from other fields that a person of ordinary skill
`
`in the art would look to when attempting to solve the problem.
`
`30.
`
`I understand that a determination of obviousness cannot be based on
`
`the hindsight combination of components selectively culled from the prior art to fit
`
`10
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`the parameters of the patented invention. Instead, it is my understanding that in
`
`order to render a patent claim invalid as being obvious from a combination of
`
`references, there must be some evidence within the prior art as a whole to suggest
`
`the desirability, and thus the obviousness, of making the combination in a way that
`
`would produce the patented invention without undue experimentation and with
`
`predictable results.
`
`31.
`
`I further understand that in an obviousness analysis, neither the
`
`motivation nor the purpose of the patentee dictates. What is important is whether
`
`there existed at the time of the invention a known problem for which there was an
`
`obvious solution encompassed by the patent’s claims.
`
`32.
`
`I further understand that a single reference can support a finding of
`
`obviousness if it would been obvious to modify that reference to arrive at the
`
`patented invention. I understand that, when obviousness is based on a single prior
`
`art reference, there must be a showing of a suggestion or motivation to modify the
`
`teachings of that reference. This suggestion or motivation need not be expressly
`
`stated in the reference; rather, the suggestion or motivation can be based upon the
`
`knowledge of a person skilled in the art.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`33.
`I understand that an assessment of claims of the ’814 patent should be
`
`11
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is June 3, 2013. I have also been
`
`advised that to determine the appropriate level of a person having ordinary skill in
`
`the art, the following factors may be considered: (1) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (2) the
`
`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (3) the educational level of active workers in the
`
`field; and (4) the educational level of the inventor.
`
`34.
`
`In my opinion, a person of ordinary skill in the art at the time of the
`
`alleged invention of the ’814 patent in 2013 would have possessed at least a
`
`master’s degree in computer science, or equivalent work experience, and two
`
`years’ experience in secure systems implementation using commercial off-the-
`
`shelf (COTS) database systems.
`
`35. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my more than 30 years of experience in computer and data
`
`systems and security, my understanding of the basic qualifications that would be
`
`relevant to an engineer or scientist tasked with investigating methods and systems
`
`in the relevant area of de-identified databases, my knowledge and experience with
`
`the capabilities of COTS databases by 2013, and my familiarity with the
`
`12
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`backgrounds of colleagues and employees, both past and present. Although my
`
`qualifications and experience exceed those of the hypothetical person having
`
`ordinary skill in the art defined above, my analysis and opinions regarding the ’814
`
`patent have been based on the perspective of a person of ordinary skill in the art as
`
`of June 3, 2013.
`
`IV. THE ’814 PATENT
`A. Overview of the ’814 Patent
`36.
`The ’814 patent is entitled “System and Method for Cascading Token
`
`Generation and Data De-Identification.” ’814 patent (Ex. 1001).
`
`37.
`
`The ’814 patent generally relates to the de-identification of electronic
`
`data records,1 such as patient healthcare records, by using mathematical algorithms
`
`to create tokens that take the place of personally identifying information.2
`
`Consistent with the title and the Abstract of the ’814 patent, the majority of the
`
`
`1 De-identification of records entails removing an individual’s personally
`identifying information such that the individual cannot be re-identified. E.g., ’814
`patent at 1:37–41 (“By law, Protected Healthcare Information (PHI) cannot be
`freely disseminated. However, if properly de-identified to the point where the risk
`is minimal that an individual could be re-identified, the PHI can be disclosed by a
`covered entity or an entity in legal possession of PHI.”).
`2 A token is a unique placeholder generated to take the place of other information.
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`Page 18 of 189
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`specification discusses a cascading hashing algorithm for generating tokens to
`
`serve as unique identifiers for de-identified data records. The Abstract describes
`
`the cascading hashing algorithm:
`
`A computer-implemented method for de-identifying data by
`creating tokens through a cascading algorithm includes the steps of
`processing at least one record comprising a plurality of data
`elements to identify a subset of data elements comprising data
`identifying at least one individual; generating, with at least one
`processor, a first hash by hashing at least one first data element
`with at least one second data element of the subset of data elements;
`generating, with at least one processor, a second hash by hashing
`the first hash with at least one third data element of the subset of
`data elements; creating at least one token based at least partially
`on the second hash or a subsequent hash derived from the second
`hash, wherein the token identifies the at least one individual; and
`associating at least a portion of a remainder of the data elements
`with the at least one token.
`
`Id. at Abstract (emphasis added).
`
`38. As discussed below, because of prior art rejections raised by the
`
`examiner during prosecution, the original claims of the ’814 patent’s application
`
`were substantially amended, and the claims that issued in the ’814 patent do not
`
`require a cascading hashing algorithm at all. Instead, the focus of the claims as
`
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`issued is on the use of a “client tag” when generating a token to be associated with
`
`an individual. See ’814 patent, cl. 1 (“generating, with at least one processor, a
`
`token based at least partially on the plurality of data elements and a client tag
`
`uniquely identifying the client among the plurality of clients”).
`
`39.
`
`I understand that the patentee has taken the position that the “client
`
`tag” is the purported point of novelty of the ’814 patent claims. In particular, in
`
`opposition to a motion to dismiss under 35 U.S.C. § 101 brought by Datavant in
`
`parallel district court proceedings, the patentee repeatedly addressed the purported
`
`novelty of the “client tag.” See, e.g., Ex. 1009 (MSA’s § 101 opposition brief) at
`
`1–2 (“Through the use of a client tag in a token generation process, the claimed
`
`invention results in improved tokens unique for each client and individual that can
`
`be matched and linked to create an improved, linked data set in which records for
`
`different clients have unique tokens, even for the same individual.”); id. at 9
`
`(“Similarly, here, the claims of the ’814 Patent improve upon a token generation
`
`process with a novel and unconventional input parameter to a token generation
`
`process (the client tag), that is unique to a client and provides the improvements
`
`discussed by the specification.”).
`
`40. According to the patentee, the problem that the ’814 patent was
`
`attempting solve was allowing for the creation of unique tokens for each of a
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`Page 20 of 189
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`Declaration of Paul C. Clark, D.Sc. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,614,814
`
`plurality of clients where all clients were providing data records into the same
`
`database. The patentee argued the following in district court:
`
`The specification of the ’814 Patent identifies a technical problem
`concerning a de-identification engine being used by multiple different
`clients:
`[I]t is envisioned that many clients 106 may be licensed to
`use the de-identification engine 107, and that each client
`may have a number of data suppliers 103.
`D.I. 1, Ex. A at 6:19-21. In view of ma