Part 2: disclosure of transmitting an instruction
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disclosure of transmitting an instruction to a host computer to grant or deny access.
Pet. 45. Thus, Petitioner ignores its very basis for combining all three references
and instead cherry-picks from disparate disclosures in a failed attempt to try to
cobble together the claimed invention of the ’698 patent. This is a classic case of
improper hindsight analysis. See Kinetic Concepts, 688 F.3d at 1368 (“[W]e must
still be careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references would
be combined to produce the claimed invention.”); In re NTP, Inc., 654 F.3d 1279,
1299 (Fed. Cir. 2011) (“Care must be taken to avoid hindsight reconstruction by
using the patent in suit as a guide through the maze of prior art references,
combining the right references in the right way so as to achieve the result of the
claims in suit.”).
2. Petitioner’s proposed combination is based on impermissible
hindsight
Even assuming that Petitioner met its burden of demonstrating that a
POSITA would have been motivated to combine Feigen with Bulfer and Falk in
the manner proposed (it has not), Petitioner still fails to explain why a POSITA
would have chosen the specific elements of each reference relied upon by
Petitioner. Boehringer, IPR2015-00418, Pap. 14 at 17-18; see also Pers. Web, 848
F.3d at 981.
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In fact, nowhere does Petitioner explain why it cherry-picked the specific
elements identified in its Petition to meet the claims of the ’698 patent. Nor does
Petitioner explain why a POSITA would have combined the references in the
asserted manner. For example, as discussed in § IV.A.1, Feigen indisputably
discloses a single-channel system, so the “security host (26)” must reside in the
access channel. Ex. 1003, FIG. 1. Similarly, Bulfer’s “secured system (30)”
serves as both the security computer and the host computer—which means it too
resides in at least, the access channel. Ex. 1004, 2:38-40 (“In the illustrative
embodiment shown in FIG. 1 a user 10 requests access to secured system 30 via
communication link 20.”). Petitioner thus fails to explain why a POSITA would
have been motivated to remove Feigen’s security host (or Bulfer’s secured system)
from the access channel. Indeed, the only “evidence” that Petitioner points to for
why a POSITA would want to enact the claimed multichannel system is the ’698
patent itself and the conclusory testimony of its expert who parrots the Petition
verbatim:
The ’698 Patent describes a problem that was well-known in the field
at the time of the alleged invention in September 2000—namely, the
design of a multichannel security system for granting access to a host
computer. Ex. 1001 at Abstract. Ex. 1002 at ¶ 99.
Pet. 41. In fact, the Petition and Dr. McDaniel’s declaration fail to identify any
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other prior art reference attempting to solve the problem of designing a
multichannel security system for granting access to a host computer. Id.; Ex. 1002
¶ 99. Rather, Petitioner used the claims of the ’698 patent as a roadmap to
combine references and, in doing so, has failed to heed the Supreme Court’s and
the Federal Circuit’s repeated warnings against relying on hindsight to reconstruct
the claimed system of the ’698 patent. See, e.g., Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966) (warning against “the temptation to read into
the prior art the teachings of the invention in issue”); Grain Processing Corp. v.
Am. Maize-Products, 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to
avoid hindsight reconstruction by using the patent in suit as a guide through the
maze of prior art references, combining the right references in the right way so as
to achieve the result of the claims in suit.”).
3. Petitioner ignores Feigen’s statements that teach away from
Petitioner’s combination
Petitioner ignores express disclosures in Feigen criticizing (and, in fact,
teaching away from) the types of combinations asserted in the Petition. Petitioner
concedes that Feigen discloses only a single-factor authentication process. Pet. 41.
While Feigen acknowledges that “different systems may use different
authentication processes” (Ex. 1003, 6:66-67), Feigen also stresses the importance
of considering the expense, time, and practicality of any modification prior to
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incorporating it into an existing system. Ex. 1003, 2:1-12. Feigen states:
Unfortunately, these conventional security improvements suffer from
a limited applicability. An existing infrastructure of server and client
applications currently exist. These server and client applications for
the most part do not accommodate communication through a proxy or
encrypted communications. Consequently, the conventional security
improvement techniques cannot be used with the existing
infrastructure without significant infrastructure modifications. Such
modifications to an entire infrastructure of server and client
applications would be such an expensive and time consuming
undertaking that such modifications are not practical.
Id. Consistent with this, Feigen further states that “ he present invention may be
implemented in a relatively simple configuration of hardware and software at
relatively low cost.” Id.,7:64-67. Thus, Feigen is concerned with a simple system
that minimizes costs and changes to existing infrastructure and tells a POSITA that
more complicated systems—even ones using “conventional security
improvements”—should be avoided in favor of Feigen’s preferred embodiments.
Feigen’s comments criticizing overly complicated systems undercut Petitioner’s
obviousness arguments. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (a reference teaches away from a particular
combination when it “‘criticize, discredit, or otherwise discourage’
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investigation into the invention claimed”).
In contrast to Feigen’s express teachings, Petitioner’s proposed threereference
combination indisputably requires substantial modifications to Feigen’s
existing system. For example, Petitioner proposes modifying Feigen’s system to
incorporate at least Bulfer’s wireless communication device 70, wireless
communication system 50, and communication links 20, 40, and 60. Pet. 36-37
(illustrating proposed composite figure). In addition, Petitioner’s proposed threereference
combination also requires incorporating Falk’s “authentication center
(30)” and “service node (26).” Pet. 40.
Petitioner fails to even acknowledge this tension between what Feigen
desires (simplicity, minimal cost, minimal changes to infrastructure) and the
modification that its proposed combination would undoubtedly require (complexity,
additional cost, substantial modifications), let alone explain why, in view of this
tension, a POSITA would have extensively modified Feigen’s system as Petitioner
proposes. Ex. 1003, 2:1-12. Further, Petitioner’s failure to address this teaching
from Feigen leaves the Board with no evidence as to why a POSITA would have
any reason to modify Feigen to incorporate elements from both Bulfer and Falk if
such a system would result in a more expensive, impractical system. This is
especially true here where the very “conventional” improvements rejected by
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Feigen include adding new communication paths between a remote user and the
local application servers. Id.
Dr. McDaniel’s declaration also is unhelpful here. Ex. 1002 ¶¶ 101-113. Dr.
McDaniel does not address the disclosures in Feigen which are inconsistent with
the proposed modifications or offer any reasons why a POSITA would have
ignored this teaching and combined Feigen with Bulfer and Falk to create a system
requiring the very changes in infrastructure and communication that Feigen
criticizes as expensive, time consuming and not practical. Ex. 1003, 2:1-12.
Because Petitioner and Dr. McDaniel fail to address this inconsistent
disclosure—or explain why a POSITA would have ignored an express teaching
that is inconsistent with, and teaches away from, the alleged motivation to
combine—Petitioner has failed to meet its burden.
B. Petitioner’s Obviousness Arguments Rely Primarily on Its
Expert’s Conclusory Testimony about the State of the Art
Petitioner’s arguments about the alleged obviousness of its proposed
combinations rely on a fundamental belief about what was known in the state of
the art at the time of invention. In particular, Petitioner repeatedly relies on the
concepts of implementing security systems using (1) something the user knows; (2)
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something the user has; and (3) something the user is. See, e.g., Pet. 42, 43, 44,11
72, 73. Petitioner’s sole basis for claiming these concepts were “well known in the
art before September 5, 2000” is the testimony of Dr. McDaniel. E.g. Pet. 41-42.
But Dr. McDaniel’s testimony is not entitled to any weight at least because the
cited portions of his declaration fail to provide any evidentiary support or
explanation for his conclusory statements about what was purportedly well known
in the art. § 42.65(a) (“Expert testimony that does not disclose the underlying facts
or data on which the opinion is based is entitled to little or no weight.”).
For example, in setting forth its “Background of the State of the Relevant
Art in 2000,” Petitioner cites to paragraphs 48-53 of Dr. McDaniel’s declaration.
Pet. 21-22 (purporting to establish the concepts of “something the user
[has]/[knows]/[is]” as well known in the art). But, remarkably, Dr. McDaniel sets
forth multiple paragraphs purporting to lay out the state of the art in 2000 without
once citing to a single document or reference or otherwise indicating the basis for
his beliefs. In fact, nowhere in these paragraphs does Dr. McDaniel provide any
underlying facts or data supporting those beliefs. Ex. 1002 ¶¶ 48-53. Conclusory
11 In fact, Petitioner goes as far as inserting, via brackets, the concepts of
“something the user has” and “something the user knows” into the quoted language
from Falk. Pet. 44 (quoting Ex. 1005).
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testimony such as this is entitled to little to no weight. § 42.65(a).
Further, Petitioner bases its argument that a POSITA “would also understand
that higher security can be achieved by combining multiple authentication
mechanisms in the same system” on a concept that it refers to as “defense in depth.”
Pet. 41. Indeed, Petitioner claims that “defense in depth … is a guiding principle
of secure system design.” Pet. 41 (citing Ex. 1002 ¶ 102). But, once again, Dr.
McDaniel fails to provide any evidentiary basis for his testimony concerning
“defense in depth”—let alone his assertion that this is “a guiding principle of
secure system design.” Ex. 1002 ¶ 102. In fact, Dr. McDaniel’s declaration does
nothing more than parrot the language of the petition verbatim and therefore
should be ignored. TRW Auto. US LLC v. Magna Elecs., Inc., IPR2014-00258, Pap.
18 at 10-11 (Aug. 27, 2014) (Dec. for Rehearing) (giving little to no weight to
expert testimony that “did not elaborate on [Petitioner’s] position because it simply
repeated [Petitioner’s] conclusory statements verbatim”); § 42.65(a).
Petitioner’s extensive reliance on Dr. McDaniel’s insufficient testimony is
fatal to Petitioner’s arguments. For example, Petitioner relies on this “defense in
depth” concept to argue that a POSITA would have been motivated to combine
multiple authentication mechanisms into a single system. See Pet. 41. Without
this concept—offered without evidentiary support—Petitioner presents no
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evidence that a POSITA looking to implement higher security would have been
motivated to combine multiple authentication mechanisms in the same system, as
Petitioner claims.12
Similarly, Petitioner argues that “one of ordinary skill in the art would have
been motivated to combine Feigen and Bulfer to achieve Feigen’s suggestion of
stronger security by security host 26 [because the] combination would only require
known techniques of implementing Bulfer’s mobile device ‘something the user has’
approach as an additional step to Feigen’s ‘something the user knows’ password
authentication.” Pet. 42-43; see also Pet. 44, 72, 73 (Petitioner relying repeatedly
on “something the user knows” and/or “something the user has”). But should the
Board discount the unsupported testimony of Dr. McDaniel that these concepts
were well known in the art—as it should—then Petitioner has provided no
evidentiary basis for combining these multiple references.
In short, the Board should deny institution as to all grounds because
Petitioner fails to set forth a reasonable basis—supported by evidence—that a
12 Moreover, as discussed above in § IV.A, even were the Board to credit Dr.
McDaniel’s “defense in depth” concept, at most this provides a basis to create a
multifactor authentication system, but fails to provide a motivation to create the
claimed two-channel system of the ’698 patent.
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POSITA would have been motivated to combine multiple references, as suggested
in the Petition. Instead, Petitioner relies repeatedly on the testimony of its expert,
who offers his “opinions” without providing the underlying facts and evidence
supporting his conclusions. This is insufficient to meet Petitioner’s burden.
§ 42.65(a).
C. Petitioner Relies on Expert Testimony that Merely Parrots the
Petition Without Providing Further Elaboration
As noted above in § IV.B, Petitioner relies repeatedly—and in many
instances exclusively—on the declaration of its expert, Dr. McDaniel, to support
Petitioner’s assertions that a POSITA would understand the cited art to disclose
certain claim limitations. But Dr. McDaniel’s declaration, rather than providing
necessary supporting evidence and his own expert analysis, consists largely of
Petitioner’s arguments parroted almost verbatim. Thus, this testimony should be
given no evidentiary weight. See, e.g., Kinetic Techs., Inc. v. Skyworks Solutions,
Inc., IPR2014-00529, Pap. 8 at 15-16 (Sept. 23, 2014) (“Merely repeating an
argument from the Petition in the declaration of a proposed expert does not give
that argument enhanced probative value.”) (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); Wowza Media, LLC v. Adobe Sys. Inc., IPR2013-00054, Pap. 12
at 15 (Apr. 8, 2013); see also TRW Auto., IPR2014-00258, Pap. 18 at 10-11.
Tellingly, this copying frequently arises when Dr. McDaniel’s declaration is cited
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as purported support of the Petitioner’s assertions about what a POSITA would
understand—the very subject for which one would most expect a Petitioner to
provide specific testimony supported by detailed expert analysis and a rational
underpinning of evidence. Instead, Dr. McDaniel’s testimony simply parrots
Petitioner’s arguments and has no independent evidentiary value. See, e.g., Kinetic
Techs., IPR2014-00529, Pap. 8 at 15-16; Wowza Media, IPR2013-00054, Pap. 12
at 15; TRW Auto., IPR2014-00258, Pap. 18 at 10-11.
For example, Petitioner states that “y the year 2000, any commercial
institution with an online presence provided remote access to services (e.g., via
webservers), where that access was provided over a network via firewalls, routers
or gateways that filtered and routed user requests to servers and authentication
services.” Ex. 1002 ¶ 174; Pet. 56. But the cited portion of Dr. McDaniel’s
declaration mimics the language of the Petition verbatim without providing any
basis for his belief as to what “any commercial institution with an online presence”
was doing in the year 2000. See Ex. 1002 ¶ 174. Similarly, as the table below
shows, Dr. McDaniel again parrots the Petition in “opining” on how a POSITA
would have understood Feigen, without providing any basis for his “opinion” as to
what a POSITA would understand. Compare Pet. 41 with Ex. 1002 ¶ 102 (with
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exact or similar language shown in red and citation omitted)13:
Petition Declaration of Dr. McDaniel,
Ex. 1002 ¶102
A skilled artisan would understand that
Feigen teaches higher security
environments warrant the use of
additional or alternative authentication
technologies in security host (26).
A skilled artisan would also understand
that higher security can be achieved by
combining multiple authentication
mechanisms in the same system to
achieve a higher level of security—this
principle is known in the art as “defense
in depth,” which is a guiding principle
of secure system design.
One of ordinary skill in the art would
understand that Feigen teaches higher
security environments warrant the use of
additional or alternative authentication
technologies when implementing an
authentication mechanism in security
host (26). A skilled artisan would have
understood that higher security can be
achieved by combining multiple
authentication mechanisms in the same
system to achieve a higher level of
security—this principle is known in the
art as “defense in depth,” which is a
guiding principle of secure system
design.
13 There are numerous other examples in the Petition. Compare Pet. 41 with
Ex. 1002 ¶ 94; Pet. 41-42 with Ex. 1002 ¶ 103; Pet. 42 with Ex. 1002 ¶ 105; Pet.
42-43 with Ex. 1002 ¶ 107; Pet. 48-49 with Ex. 1002 ¶ 149; Pet. 56 with Ex. 1002 ¶
173; Pet. 56-57 with Ex. 1002 ¶ 174; Pet. 58-59 with Ex. 1002 ¶ 178; Pet. 61 with
Ex. 1002 ¶ 187; Pet. 71-72 with Ex. 1002 ¶ 119; Pet. 74 with Ex. 1002 ¶ 241.
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The declaration thus fails to explain in Dr. McDaniel’s own reasoned
opinion (i.e., fails to provide and support Dr. McDaniel’s own testimony as an
expert) why a POSITA would have had these understandings. Accordingly, it
should be given no weight. See InfoBionic, Inc. v. Braemer Mfg., LLC, IPR2015-
01704, Pap. 11 at 6 (Feb. 16, 2016) (denying institution where Board did “not find
the testimony of Petitioner’s expert to be persuasive or helpful as it repeats the
Petitioner’s arguments and offers little or no elaboration as to how one of ordinary
skill in the art would understand the [disputed] term”); see also § 42.65(a) (“Expert
testimony that does not disclose the underlying facts or data on which the opinion
is based is entitled to little or no weight.”).
The fact that these statements were simply copied from one document to the
other is demonstrated by numerous instances where the same typographical errors
appearing in the Petition also appear in Dr. McDaniel’s declaration. Compare, e.g.,
Pet. 48 with Ex. 1002 ¶ 145 (both missing period within “FIG 3”); Pet. 50-51 with
Ex. 1002 ¶ 150 (both missing period within “FIG 5”); Pet. 56-57 with Ex. 1002 ¶
174 (both stating “Falk makes clear that mechanisms for restricting access based
on authentication are associated with various commercial institutions by
referencing services such a [sic] cashless transaction and long distance phone
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services.”).14
In sum, as the Board has repeatedly found, Petitioner’s attempt here to
“expertize” its Petition arguments by having them repeated by a witness purporting
to give expert testimony cannot satisfy its evidentiary burden, or justify proceeding
to trial. See, e.g., Free-Flow Packaging Int’l, Inc. v. Automated Packaging Sys.,
Inc., IPR2016-00447, Pap. 7 at 10 (June 22, 2016) (denying institution where the
petitioner’s expert did “nothing more than parrot the language of the Petition word
for word”); InfoBionic, IPR2015-01704, Pap. 11 at 6; Kinetic Techs., Inc.,
IPR2014-00529, Pap. 8 at 16, 19; TRW Auto., IPR2014-00258, Pap. 18 at 10-11;
Wowza Media, IPR2013-00054, Pap. 12 at 15.
V. THERE IS NO REASONABLE LIKELIHOOD PETITIONER
WOULD PREVAIL ON ITS CONTENTION THAT THE PROPOSED
THREE-REFERENCE COMBINATION OF FEIGEN IN VIEW OF
BULFER AND FALK RENDERS THE CHALLENGED CLAIMS
OBVIOUS UNDER GROUND 1
As discussed above, Petitioner’s challenge rests on the unsupportable
premise that a POSITA would have taken the single-channel system of Feigen and
combined it with disparate portions of two other different security systems to
create the two-channel authentication system of the ’698 patent claims. Pet. 36.
14 Presumably, Petitioner and Dr. McDaniel meant to say “such as cashless
transaction and long distance phone services.”
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But, assuming arguendo that the required motivation exists, as demonstrated below,
Petitioner still fails in its burden for at least two reasons.
First, Petitioner fails to articulate clearly how the system of Feigen would be
combined with Bulfer and Falk to meet the requirements of each claim limitation.
Instead, Petitioner cites disparate evidence from one or more of the asserted prior
art references and fails to articulate clearly how these disclosures purportedly piece
together to render obvious the claimed limitations. See InfoBionic Inc. v. Braemer
Mfg., LLC, IPR2015-01705, Pap. 11 at 12 (denying institution where Petitioner
“has not articulated clearly Petitioner’s proposed combination” including “how
Petitioner proposes modifying [the prior art]”).
Second, Petitioner fails to demonstrate that the proposed combination meets
every limitation of the challenged claims. For example, Petitioner fails to explain
how the proposed combination discloses “receiving at an interception device in a
first channel a login identification demand to access a host computer also in the
first channel.” Infra § V.B.1(a).
A. Petitioner Fails to Articulate Clearly the Proposed Combination
Petitioner fails to articulate clearly the specific proposed combination it
relies upon to allegedly render obvious the elements of the ’698 patent claims.
Instead, Petitioner presents a “composite figure that has been generated by
Petitioner for illustrative purposes” and suggests—incorrectly—that this figure
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somehow demonstrates the obviousness of the claims. Pet. 36. In fact, even a
cursory examination of Petitioner’s composite figure and Petitioner’s subsequent
generalized explanations demonstrates that Petitioner has not clearly set forth how
the prior art would have been combined, as required.
In particular, Petitioner fails to show what particular portions of Feigen’s
security host are combined (and how they would be combined) with portions of
Bulfer’s secured system to render obvious the claimed “security computer.” For
example, in combining the systems of Feigen and Bulfer, Petitioner removes
Bulfer’s “Secured System 30” and simply pastes the remaining pieces into
Feigen’s system:
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Pet. 36-37 (illustrating the composite figure without Bulfer’s “secured system 30”);
see also Ex. 1002 ¶ 95. In so arguing, Petitioner—and its expert—suggest that a
POSITA would have combined Feigen and Bulfer by adding Bulfer’s “User,”
“Wireless Communication Device,” and “Wireless Communication System” to the
otherwise unmodified system of Feigen. But, in describing the operation of this
hypothetical combined system, Petitioner—and its expert—rely repeatedly on the
operation of the very component that was removed and is, therefore, not part of
Petitioner’s combined system—Bulfer’s “secured system (30).” See Pet. 39
(“secured system (30) outputs a prompt…”; “secured system (30) receives data…”;
“secured system (30) compares the data…”); Ex. 1002 ¶ 98 (presenting an identical
chart as is in the Petition). Petitioner’s unsubstantiated substitution does not
withstand scrutiny.
Similarly, Petitioner changes its invalidity theory between the general
discussion of the combination and the specific discussion of the claim limitations.
For example, in its general discussion, Petitioner relies on either Feigen’s security
host (26) or Bulfer’s secured computer (30) as providing the claimed functionality
of the claimed security computer. See, e.g., Pet. 38 (arguing that “security
computer (40) verifies the login identification of user (24)” of the ’698 patent is
met by “security host (26) verifies a password from the user of source host (24)”),
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39 (arguing that “security computer (40) receives data…” is met by “Bulfer:
secured system (30) receives data…”). But when Petitioner addresses the specific
claim limitations, Petitioner purports to rely on Feigen’s “security host (26), as
augmented by Bulfer” and “security host (26) combined with Bulfer.” Pet. 48, 49,
50. Moreover, Petitioner relies on the “augmented” (or “combined”) system
without explaining how the security host of Feigen is allegedly augmented by, or
combined with, Bulfer.
As a result, the Board and StrikeForce are left to speculate as to what
Petitioner’s proposed combination actually includes. For example, does Petitioner
suggest modifying all or some of Feigen’s system? Or, if only some, which parts?
Does Petitioner propose removing Bulfer’s secured system (30) as illustrated in its
composite figure? Or does Petitioner propose somehow including Bulfer’s
secured system (30) in Feigen’s system? If so, how?
Because Petitioner fails to articulate clearly how the proposed combination
should be effected, the Board should deny the Petition. See InfoBionic, IPR2015-
01705, Pap. 11 at 11 (denying institution where Petitioner “does not articulate
adequately to what extent and how Petitioner proposes [first prior art’s] method
would be incorporated into [second prior art’s] system,” leaving the Board to
“speculate as to how Petitioner’s combination of references’ teachings would
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render obvious” the challenged claims); Liberty Mutual Ins. Co. v. Progressive Cas.
Ins. Co., CBM2012-00003 Pap. 8 at 14 (Oct. 25, 2012) (“we address only the basis,
rationale, and reasoning put forth by the Petitioner and resolve all vagueness and
ambiguity in Petitioner’s arguments against the Petitioner”).
B. Petitioner Fails to Show that the Proposed Combination of Feigen,
Bulfer, and Falk Discloses Every Limitation of the Challenged
Claims under Ground 1
Petitioner fails to specify where each element of the claims is found in the
prior art. § 42.104(b)(3) (“The petition must specify where each element of the
claim is found in the prior art patents or printed publications relied upon….”).
Specifically, the Petition does not explain how the combined system of Feigen with
Bulfer and Falk meets the requirements of each claim limitation. Instead, for each
of the limitations below, Petitioner cites disparate evidence from one or more
references and conclusorily asserts that the limitations are obvious. But Petitioner
fails to address all aspects of the claimed limitations and fails to explain how such
a composite system might operate to allegedly render obvious the claims. See, e.g.,
Pers. Web Techs., 848 F.3d at 994 (remanding Board decision that “nowhere
clearly explained, or cited evidence showing, how the combination of the two
references was supposed to work”); Liberty Mutual, CBM2012-00003, Pap. 8 at 14
(“[W]e address only the basis, rationale, and reasoning put forth by the Petitioner
and resolve all vagueness and ambiguity in Petitioner’s arguments against the
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Petitioner. … It would be unfair to expect the Patent Owner to conjure up
arguments against its own patent and just as inappropriate for the Board to take the
side of the Petitioner to salvage an inadequately expressed ground proposing an
alternative rationale.”); InfoBionic, IPR2015-01705, Pap. 11 at 10-11 (denying
institution where “Petitioner does not explain how Petitioner’s proposal results in
the respective features of the claimed invention” and where “Petitioner, at most,
has identified where certain features of the claimed invention are disclosed in the
prior art [but] we are left to speculate as to how Petitioner’s combination of the
references teachings would render obvious” the challenged claims).
“In an inter partes review, the burden of persuasion is on the petitioner to
prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e) and
that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Petitioner’s failure to
demonstrate that the combined system allegedly renders obvious each claimed
limitation is fatal to its challenge. “f the fact trier of the issue is left uncertain,
the party with the burden loses.” Id.
1. Petitioner fails to establish that the proposed combination
would have disclosed or rendered obvious all the limitations
of Claim 1
(a) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious “receiving
at an interception device in a first channel a login
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identification demand to access a host computer also
in the first channel” (claim 1)
Claim 1 requires the step of “receiving at an interception device in a first
channel a login identification demand to access a host computer also in the first
channel.” Petitioner’s arguments with respect to this limitation fail for at least
three reasons.
First, Petitioner fails to provide evidence for the entirety of the claim
element, focusing instead on only a portion of it. In particular, Petitioner fails to
identify any evidence of a “first channel” in the proposed combination, as required
by the claims. Pet. 47. Notably, Petitioner does not assert that this limitation is
met by the combination of Feigen and Bulfer, but instead suggests that Feigen
alone (and Bulfer alone) would disclose various portions of the limitation.
Compare Pet. 47 (“Feigen’s filter (16) is an interception device…”) with Pet. 48
(“Security host (26), as augmented by Bulfer”). This is insufficient. Petitioner is
required to identify the claimed “first channel” within the proposed combination.
But no such evidence is presented. This failure is fatal under the Board’s Rules.
§ 42.104(b)(4) (“The Petition must specify where each element of the claim is
found in the prior art patents or printed publications relied upon.”); see Liberty
Mutual, CBM2012-00003 Pap. 8 at 14.
Second, Petitioner fails to articulate clearly which reference, Feigen or
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Bulfer, it relies on to show the claimed “login identification.” Pet. 47. When
discussing the proposed combination outside the context of this claim limitation,
Petitioner relies solely on Feigen’s user identification to show a login demand and
identification. Pet. 37-38 (citing only Feigen). However, when discussing this
specific claim limitation, Petitioner points to both Feigen’s user identification and
Bulfer’s “user identifying information to the secured system.” Pet. 47–48 (citing
Feigen at 6:50-55 and Bulfer at 1:46-53). It thus remains ambiguous whether
Petitioner relies on Feigen, Bulfer, or some combination of the two in support of its
contention that this limitation would be obvious. This is improper. See Liberty
Mutual, CBM2012-00003 Pap. 8 at 14.
(b) Petitioner fails to articulate clearly what portions of
the prior art it relies on and how these portions are
combined to show “verifying the login identification”
(claim 1[c])
Claim 1 requires the step of “verifying the login identification.” Petitioner
appears to rely on Feigen’s “ecurity host (26), as augmented by Bulfer,” to
perform this claimed verification, but fails to articulate clearly what portions of the
two systems are combined to meet this limitation. Pet. 48. In particular, Petitioner
initially points both to Feigen’s task 102 which “authenticates the user,” but also
argues that the proposed combination would use Bulfer’s “revalidation process
over wireless communication device (70’).” Pet. 48–49. Thus, it is unclear
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whether Petitioner is relying on Feigen or Bulfer for the claimed “verifying”
operation, and if both, how the two references are combined. This is improper.
See InfoBionic, IPR2015-01705, Pap. 11 at 11.
(c) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious “receiving
at a security computer in a second channel the
demand for access and the login identification” (claim
1[d])
Claim 1 requires “receiving at a security computer in a second channel the
demand for access and the login identification.” Petitioner’s arguments here fail
for at least two reasons.
First, Petitioner fails to articulate clearly what is the alleged “security
computer” of the combined Feigen-Bulfer-Falk system. For example, Petitioner
here relies on Feigen’s “ecurity host (26), as augmented by Bulfer” as allegedly
disclosing the claimed “security computer,” but fails to provide any explanation or
support as to what, and how, portions of Feigen’s security host (26) are
“augmented” by Bulfer’s secured system. Pet. 48–49. Again, the Board is left to
speculate what the proposed combination actually entails. For example, does it
involve (i) entirely replacing Feigen’s security host with Bulfer’s secured system;
(ii) replacing only a portion of Feigen’s security host with a portion (or all) of
Bulfer’s secured system; or (iii) maintaining the entirety of Feigen’s security host
and incorporating some unspecified portion of Bulfer’s secured system? The
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Petition offers no clarity in this regard and again improperly leaves it to the Board
to speculate what combination Petitioner has proposed, let alone whether it would
have been obvious. See InfoBionic, IPR2015-01705, Pap. 11 at 11.
Second, Petitioner does not contend that any of the three asserted prior art
references discloses a security computer in a “second channel” that is separate
from a first channel in which the host computer resides. Indeed, Petitioner does
not identify any prior art reference allegedly disclosing a security computer in a
channel separate from the one containing the host computer. E.g., Pet. 23-26
(discussing Feigen), 27-29 (discussing Bulfer), 29-32 (discussing Falk). Instead,
Petitioner relies on the combination of Feigen and Bulfer and argues without
explanation that this hypothetical system would somehow disclose a security
computer in a “second channel” as claimed. Pet. 48-49. But although Petitioner
claims that security host (26) “is a security computer located in a second
authentication channel and isolated from the host computer (destination host 28),”
Petitioner again fails to articulate what it considers to be the “second channel” of
the claimed system. Pet. 48. Moreover, taken together with Petitioner’s failure to
address the claimed “first channel,” the Board and Petitioner are left to guess as to
what Petitioner contends constitutes an access channel (or first channel) that is
separate from an authentication channel (or second channel). Petitioner has thus
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failed to meet its burden. See, e.g., Liberty Mutual, CBM2012-00003, Pap. 8 at 14.
2. Petitioner fails to establish that the proposed combination
would have rendered obvious all the limitations of claim 48
(a) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a “first
software module on an Internet-connected web
server” (claim 48)
Claim 48 requires a “first software module on an Internet-connected web
server in an access channel” wherein the software module receives and outputs a
User ID which is received by “a second software module on a security computer
different from the web server” that resides in the authentication channel. Petitioner
argues—without merit—that this limitation is met by Feigen’s filter which “could
be a web server.” Pet. 56. This is legally and factually wrong.
First, Petitioner fails to point to any explicit disclosure in the prior art of a
“web server.” Instead, Petitioner argues at most, that the filter could be a web
server. Thus, Petitioner fails to make clear whether it contends Feigen’s filter is
the claimed web server or whether it contends Feigen’s filter would render obvious
the claimed web server. Indeed, Petitioner appears to admit implicitly that the
prior art does not explicitly disclose the claimed web server, seeking instead to fill
gaps in the prior art with its expert’s own unsubstantiated assertions. This is
improper. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362-63 (Fed. Cir.
2016) (warning against using an expert’s conjecture to supply a missing limitation).
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Moreover, Dr. McDaniel’s conclusory testimony is insufficient. Dr.
McDaniel largely parrots the language of the Petition and also says—at most—that
a POSITA would have understood that a filter could be a web server; not that it is a
web server. Ex. 1002 ¶ 173. The only substance added by Dr. McDaniel is that
“Here, Feigen is talking about a standard network device that typically sits at the
edge of the network and processes incoming requests from the Internet (outside
network 12).” Id. But this conclusory statement—offered without evidentiary
support—still says nothing about the filter necessarily acting as or rendering
obvious the claimed web server. Petitioner and its expert have thus failed to
demonstrate that a POSITA would have combined Bulfer with Feigen to yield the
claimed invention; instead they have opined at most, that a POSITA could have
combined these references in the proposed manner. This is not enough. See
Huawei Device, IPR2015-00221, Pap. 13 at 16–17 (denying institution where
Petitioner’s expert testified that a POSITA “could” have made the proposed
substitution, “without sufficiently articulating what the benefit … would have
been”); Pers. Web Techs., 848 F.3d at 994.
Second, Petitioner’s arguments here conflict with its positions regarding
dependent claim 3, which requires that the host computer be a web server. There,
Petitioner argues that “the host computer (destination host 28) is a web server
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servicing Internet requests.” Pet. 52. But there is no suggestion or argument that
Feigen’s system includes multiple web servers working together; so it is unclear
how a POSITA would have understood here that filter (16) “could be” the web
server when it already concluded that “destination host 28” is the web server
servicing Internet requests. Indeed, Petitioner’s inconsistent application of the
prior art references underscores the degree to which Petitioner succumbs to
hindsight bias and presents arguments improperly reliant on ex post reasoning.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
(b) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a “second
software module on a security computer different
than the web server, wherein the security computer is
in an authentication channel” (claim 48[e])
As discussed above (supra § V.A), Petitioner fails to articulate clearly what
portions of Feigen are combined with portions of Bulfer to meet the claimed
“security computer.” Moreover, Petitioner also fails to identify what in Feigen,
Bulfer, or the proposed combination thereof constitutes the “second software
module,” and if the latter, how the portions of Feigen and Bulfer are combined to
yield the “second software module” on the security computer as required by claim
48[e]. See Pet. 57–58.
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(c) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a
“subscriber database” (claim 48[g])
Petitioner fails to articulate clearly its arguments regarding Bulfer’s alleged
disclosure of a “subscriber database,” as recited in claim 48[g]. Pet. 58-59. In
particular, Petitioner argues that “it would have been obvious to a person skilled in
the art that a database would be necessary in order to be able to retrieve a
(substantially) unique wireless remote communication device number using a user
association with the device.” Pet. 59 (emphasis added). By first suggesting
obviousness, then pivoting apparently to inherency (stating that “a database would
be necessary”), Petitioner has failed to articulate a clear theory of invalidity. 15
Thus, Petitioner improperly leaves it to the Board and StrikeForce to speculate as
to what Petitioner intended its theory to be. See Liberty Mutual, CBM2012-00003,
Pap. 8 at 14.
15 “[A] party must … meet a high standard in order to rely on inherency to
establish the existence of a claim limitation in the prior art in an obviousness
analysis.” Par Pharm. v. Twi Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir.
2014); see also In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) (“Inherency,
however, may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not sufficient.”).
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3. Petitioner fails to show that the proposed combination
would have rendered obvious all of the limitations of claim
53.
Rather than present evidence and argument for each limitation in claim 53,
Petitioner simply refers back to what it considers corresponding limitations from
claim 1. Pet. 63-64. Accordingly, Petitioner’s challenge to claim 53 fails for at
least all the same reasons its challenge to claim 1 fails.
Petitioner, moreover, effectively instructs the Board—for every limitation of
claim 53—to search through the record and identify the relevant evidence itself.
And, citing Ex. 1101 ¶¶ 195-212, Petitioner attempts to circumvent the rules and
incorporates by reference evidence and arguments about claim 53 that are
presented only in Dr. McDaniel’s declaration and nowhere within the Petition. See
Pet. 60-61. This is improper. § 42.6(a)(3); Cisco Sys. Inc. v. C-Cation Techs.,
LLC, IPR2014-00454, Pap. 12 at 9 (Aug. 29, 2014) (“Further, the Petition includes
citations to the Declaration to support conclusory statements for which the Petition
does not otherwise provide an argument or explanation….This practice of citing
the Declaration to support conclusory statements that are not otherwise supported
in the Petition also amounts to incorporation by reference.”); 10 (“‘A brief must
make all arguments accessible to the judges, rather than ask them to play
archeologist with the record’ Accordingly, we do not consider arguments not
made in the Petition.”).
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4. Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious the construed
structure for “a component for receiving the transmitted
data and comparing said transmitted data to predetermined
data” (claim 54[e])
Petitioner contends that claim 54 includes a means-plus-function limitation
subject to § 112, ¶ 6. Pet. 18. Accordingly, Petitioner must identify “the specific
portions of the specification that describe the structure, material, or acts
corresponding to each claimed function.” § 42.104(b)(3). Petitioner also “must
specify where each element of the claim is found in the prior art patents or printed
publications relied upon.” § 42.104(b)(4); see also Fresenius USA, Inc. v. Baxter
Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to
demonstrate that a means-plus-function limitation was present in the prior art must
prove that the corresponding structure—or an equivalent—was present in the prior
art.”). Although Petitioner purports to identify corresponding structure in the prior
art, Petitioner fails to demonstrate that the entire claimed structure it relies upon is,
in fact, present in the prior art.
According to Petitioner, the proper function for “a component for receiving
the transmitted data and comparing said transmitted data to predetermined data” is
“receiving the transmitted data and comparing said transmitted data to
predetermined data.” Pet. 18. Petitioner proposes that the corresponding structure
is “Ex. 1001 at FIG. 9C, steps 186-196, 10:46-65 and/or ‘698 patent, FIGs. 9C-9D,
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steps 200-208, 11:24-55.” Id. Notably, this structure includes step 186 of FIG. 9C
(“Prompt played by speech module to user”). Petitioner expressly acknowledges
that this structure includes the “prompt played by speech module to user,” but fails
to identify any such prompt or its equivalent in the prior art. See Pet. 65-66. Thus,
Petitioner fails to meet burden under § 42.105(b)(4). See also Fresenius, 582 F.3d
at 1299.
VI. THERE IS NO REASONABLE LIKELIHOOD PETITIONER
WOULD PREVAIL ON ITS CONTENTION THAT THE PROPOSED
FOUR-REFERENCE COMBINATION OF FEIGEN IN VIEW OF
BULFER, FALK, AND TURTIANEN RENDERS THE
CHALLENGED CLAIMS OBVIOUS UNDER GROUND 2
A. Petitioner Fails to Sufficiently Show Why a POSITA Would Have
Been Motivated to Combine Feigen, Bulfer, and Falk with
Turtianen
Petitioner’s Ground 2 relies on its contention that a POSITA would have
been motivated to further modify the proposed three-reference combination of
Ground 1 with a fourth reference—Turtianen—to yield the inventions of claims 50
and 52 of the ’698 patent. Pet. 71-72. But, as discussed above, Petitioner has
failed to properly establish any sufficient motivation to combine Feigen with
Bulfer and Falk as asserted by Petitioner. Supra § IV.A. Thus, Petitioner’s
Ground 2 must fail as well.
Further, even assuming arguendo that a POSITA would have been
motivated to combine Feigen with Bulfer and Falk as asserted (and without
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impermissibly relying on hindsight based on the ’698 patent), Petitioner still has
failed to establish that a POSITA would have been motivated to further modify the
three-reference combination to create the asserted four-reference combination. In
particular, other than arguing that the use of mobile telephones was known at the
time, Petitioner provides no reason why a POSITA would have chosen to
incorporate this teaching into its proposed three-reference combination. See Pers.
Web Techs., 848 F.3d at 991 (“[A] finding of obviousness cannot be predicated on
the mere identification in [the prior art] of individual components of claimed
limitations,” but also requires a showing that a POSITA “would have been
motivated to combine the prior art in the way claimed by the [challenged patent]
claims at issue.”); see also Huawei Device, IPR2015-00221, Pap. 13 at 16–17
(denying institution where Petitioner’s expert testified that a POSITA “could” have
made the proposed substitution, “without sufficiently articulating what the benefit
… would have been”).
B. Petitioner fails to demonstrate that the proposed four-reference
combination discloses all the limitations of claims 50 and 52
Petitioner’s arguments here rely on its prior analysis regarding claim 48. Pet.
73. Because Petitioner has failed to establish that the asserted combination
discloses each and every limitation of claim 48, Petitioner has necessarily failed to
demonstrate the invalidity of claims 50 and 52. Accordingly, for the same reasons
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discussed above, Petitioner’s grounds must fail. Supra § IV.B.2.
VII. CONSTITUTIONALITY OF INTER PARTES REVIEW
The Federal Circuit has held IPRs are constitutional. MCM Portfolio v.
Hewlett-Packard Co., 812 F.3d 1284, 1288-92 (Fed. Cir. 2015), cert. denied, 137 S.
Ct. 292. In light of the Supreme Court’s grant of certiorari as to this issue in Oil
States Energy Services, LLC v. Greene’s Energy Group, LLC, 2017 WL 2507340
(U.S. June 12, 2017), and to the extent Federal Circuit precedent is overturned,
StrikeForce reserves its right to raise these constitutional issues.
VIII. CONCLUSION
Because the Petition fails to show that there is a reasonable likelihood that
Petitioner will prevail in proving any challenged claim unpatentable, the Petition
should be denied, and, pursuant to § 314, no inter partes review should be
instituted.
disclosure of transmitting an instruction to a host computer to grant or deny access.
Pet. 45. Thus, Petitioner ignores its very basis for combining all three references
and instead cherry-picks from disparate disclosures in a failed attempt to try to
cobble together the claimed invention of the ’698 patent. This is a classic case of
improper hindsight analysis. See Kinetic Concepts, 688 F.3d at 1368 (“[W]e must
still be careful not to allow hindsight reconstruction of references to reach the
claimed invention without any explanation as to how or why the references would
be combined to produce the claimed invention.”); In re NTP, Inc., 654 F.3d 1279,
1299 (Fed. Cir. 2011) (“Care must be taken to avoid hindsight reconstruction by
using the patent in suit as a guide through the maze of prior art references,
combining the right references in the right way so as to achieve the result of the
claims in suit.”).
2. Petitioner’s proposed combination is based on impermissible
hindsight
Even assuming that Petitioner met its burden of demonstrating that a
POSITA would have been motivated to combine Feigen with Bulfer and Falk in
the manner proposed (it has not), Petitioner still fails to explain why a POSITA
would have chosen the specific elements of each reference relied upon by
Petitioner. Boehringer, IPR2015-00418, Pap. 14 at 17-18; see also Pers. Web, 848
F.3d at 981.
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In fact, nowhere does Petitioner explain why it cherry-picked the specific
elements identified in its Petition to meet the claims of the ’698 patent. Nor does
Petitioner explain why a POSITA would have combined the references in the
asserted manner. For example, as discussed in § IV.A.1, Feigen indisputably
discloses a single-channel system, so the “security host (26)” must reside in the
access channel. Ex. 1003, FIG. 1. Similarly, Bulfer’s “secured system (30)”
serves as both the security computer and the host computer—which means it too
resides in at least, the access channel. Ex. 1004, 2:38-40 (“In the illustrative
embodiment shown in FIG. 1 a user 10 requests access to secured system 30 via
communication link 20.”). Petitioner thus fails to explain why a POSITA would
have been motivated to remove Feigen’s security host (or Bulfer’s secured system)
from the access channel. Indeed, the only “evidence” that Petitioner points to for
why a POSITA would want to enact the claimed multichannel system is the ’698
patent itself and the conclusory testimony of its expert who parrots the Petition
verbatim:
The ’698 Patent describes a problem that was well-known in the field
at the time of the alleged invention in September 2000—namely, the
design of a multichannel security system for granting access to a host
computer. Ex. 1001 at Abstract. Ex. 1002 at ¶ 99.
Pet. 41. In fact, the Petition and Dr. McDaniel’s declaration fail to identify any
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other prior art reference attempting to solve the problem of designing a
multichannel security system for granting access to a host computer. Id.; Ex. 1002
¶ 99. Rather, Petitioner used the claims of the ’698 patent as a roadmap to
combine references and, in doing so, has failed to heed the Supreme Court’s and
the Federal Circuit’s repeated warnings against relying on hindsight to reconstruct
the claimed system of the ’698 patent. See, e.g., Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966) (warning against “the temptation to read into
the prior art the teachings of the invention in issue”); Grain Processing Corp. v.
Am. Maize-Products, 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to
avoid hindsight reconstruction by using the patent in suit as a guide through the
maze of prior art references, combining the right references in the right way so as
to achieve the result of the claims in suit.”).
3. Petitioner ignores Feigen’s statements that teach away from
Petitioner’s combination
Petitioner ignores express disclosures in Feigen criticizing (and, in fact,
teaching away from) the types of combinations asserted in the Petition. Petitioner
concedes that Feigen discloses only a single-factor authentication process. Pet. 41.
While Feigen acknowledges that “different systems may use different
authentication processes” (Ex. 1003, 6:66-67), Feigen also stresses the importance
of considering the expense, time, and practicality of any modification prior to
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incorporating it into an existing system. Ex. 1003, 2:1-12. Feigen states:
Unfortunately, these conventional security improvements suffer from
a limited applicability. An existing infrastructure of server and client
applications currently exist. These server and client applications for
the most part do not accommodate communication through a proxy or
encrypted communications. Consequently, the conventional security
improvement techniques cannot be used with the existing
infrastructure without significant infrastructure modifications. Such
modifications to an entire infrastructure of server and client
applications would be such an expensive and time consuming
undertaking that such modifications are not practical.
Id. Consistent with this, Feigen further states that “ he present invention may be
implemented in a relatively simple configuration of hardware and software at
relatively low cost.” Id.,7:64-67. Thus, Feigen is concerned with a simple system
that minimizes costs and changes to existing infrastructure and tells a POSITA that
more complicated systems—even ones using “conventional security
improvements”—should be avoided in favor of Feigen’s preferred embodiments.
Feigen’s comments criticizing overly complicated systems undercut Petitioner’s
obviousness arguments. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (a reference teaches away from a particular
combination when it “‘criticize
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investigation into the invention claimed”).
In contrast to Feigen’s express teachings, Petitioner’s proposed threereference
combination indisputably requires substantial modifications to Feigen’s
existing system. For example, Petitioner proposes modifying Feigen’s system to
incorporate at least Bulfer’s wireless communication device 70, wireless
communication system 50, and communication links 20, 40, and 60. Pet. 36-37
(illustrating proposed composite figure). In addition, Petitioner’s proposed threereference
combination also requires incorporating Falk’s “authentication center
(30)” and “service node (26).” Pet. 40.
Petitioner fails to even acknowledge this tension between what Feigen
desires (simplicity, minimal cost, minimal changes to infrastructure) and the
modification that its proposed combination would undoubtedly require (complexity,
additional cost, substantial modifications), let alone explain why, in view of this
tension, a POSITA would have extensively modified Feigen’s system as Petitioner
proposes. Ex. 1003, 2:1-12. Further, Petitioner’s failure to address this teaching
from Feigen leaves the Board with no evidence as to why a POSITA would have
any reason to modify Feigen to incorporate elements from both Bulfer and Falk if
such a system would result in a more expensive, impractical system. This is
especially true here where the very “conventional” improvements rejected by
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Feigen include adding new communication paths between a remote user and the
local application servers. Id.
Dr. McDaniel’s declaration also is unhelpful here. Ex. 1002 ¶¶ 101-113. Dr.
McDaniel does not address the disclosures in Feigen which are inconsistent with
the proposed modifications or offer any reasons why a POSITA would have
ignored this teaching and combined Feigen with Bulfer and Falk to create a system
requiring the very changes in infrastructure and communication that Feigen
criticizes as expensive, time consuming and not practical. Ex. 1003, 2:1-12.
Because Petitioner and Dr. McDaniel fail to address this inconsistent
disclosure—or explain why a POSITA would have ignored an express teaching
that is inconsistent with, and teaches away from, the alleged motivation to
combine—Petitioner has failed to meet its burden.
B. Petitioner’s Obviousness Arguments Rely Primarily on Its
Expert’s Conclusory Testimony about the State of the Art
Petitioner’s arguments about the alleged obviousness of its proposed
combinations rely on a fundamental belief about what was known in the state of
the art at the time of invention. In particular, Petitioner repeatedly relies on the
concepts of implementing security systems using (1) something the user knows; (2)
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something the user has; and (3) something the user is. See, e.g., Pet. 42, 43, 44,11
72, 73. Petitioner’s sole basis for claiming these concepts were “well known in the
art before September 5, 2000” is the testimony of Dr. McDaniel. E.g. Pet. 41-42.
But Dr. McDaniel’s testimony is not entitled to any weight at least because the
cited portions of his declaration fail to provide any evidentiary support or
explanation for his conclusory statements about what was purportedly well known
in the art. § 42.65(a) (“Expert testimony that does not disclose the underlying facts
or data on which the opinion is based is entitled to little or no weight.”).
For example, in setting forth its “Background of the State of the Relevant
Art in 2000,” Petitioner cites to paragraphs 48-53 of Dr. McDaniel’s declaration.
Pet. 21-22 (purporting to establish the concepts of “something the user
[has]/[knows]/[is]” as well known in the art). But, remarkably, Dr. McDaniel sets
forth multiple paragraphs purporting to lay out the state of the art in 2000 without
once citing to a single document or reference or otherwise indicating the basis for
his beliefs. In fact, nowhere in these paragraphs does Dr. McDaniel provide any
underlying facts or data supporting those beliefs. Ex. 1002 ¶¶ 48-53. Conclusory
11 In fact, Petitioner goes as far as inserting, via brackets, the concepts of
“something the user has” and “something the user knows” into the quoted language
from Falk. Pet. 44 (quoting Ex. 1005).
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testimony such as this is entitled to little to no weight. § 42.65(a).
Further, Petitioner bases its argument that a POSITA “would also understand
that higher security can be achieved by combining multiple authentication
mechanisms in the same system” on a concept that it refers to as “defense in depth.”
Pet. 41. Indeed, Petitioner claims that “defense in depth … is a guiding principle
of secure system design.” Pet. 41 (citing Ex. 1002 ¶ 102). But, once again, Dr.
McDaniel fails to provide any evidentiary basis for his testimony concerning
“defense in depth”—let alone his assertion that this is “a guiding principle of
secure system design.” Ex. 1002 ¶ 102. In fact, Dr. McDaniel’s declaration does
nothing more than parrot the language of the petition verbatim and therefore
should be ignored. TRW Auto. US LLC v. Magna Elecs., Inc., IPR2014-00258, Pap.
18 at 10-11 (Aug. 27, 2014) (Dec. for Rehearing) (giving little to no weight to
expert testimony that “did not elaborate on [Petitioner’s] position because it simply
repeated [Petitioner’s] conclusory statements verbatim”); § 42.65(a).
Petitioner’s extensive reliance on Dr. McDaniel’s insufficient testimony is
fatal to Petitioner’s arguments. For example, Petitioner relies on this “defense in
depth” concept to argue that a POSITA would have been motivated to combine
multiple authentication mechanisms into a single system. See Pet. 41. Without
this concept—offered without evidentiary support—Petitioner presents no
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evidence that a POSITA looking to implement higher security would have been
motivated to combine multiple authentication mechanisms in the same system, as
Petitioner claims.12
Similarly, Petitioner argues that “one of ordinary skill in the art would have
been motivated to combine Feigen and Bulfer to achieve Feigen’s suggestion of
stronger security by security host 26 [because the] combination would only require
known techniques of implementing Bulfer’s mobile device ‘something the user has’
approach as an additional step to Feigen’s ‘something the user knows’ password
authentication.” Pet. 42-43; see also Pet. 44, 72, 73 (Petitioner relying repeatedly
on “something the user knows” and/or “something the user has”). But should the
Board discount the unsupported testimony of Dr. McDaniel that these concepts
were well known in the art—as it should—then Petitioner has provided no
evidentiary basis for combining these multiple references.
In short, the Board should deny institution as to all grounds because
Petitioner fails to set forth a reasonable basis—supported by evidence—that a
12 Moreover, as discussed above in § IV.A, even were the Board to credit Dr.
McDaniel’s “defense in depth” concept, at most this provides a basis to create a
multifactor authentication system, but fails to provide a motivation to create the
claimed two-channel system of the ’698 patent.
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POSITA would have been motivated to combine multiple references, as suggested
in the Petition. Instead, Petitioner relies repeatedly on the testimony of its expert,
who offers his “opinions” without providing the underlying facts and evidence
supporting his conclusions. This is insufficient to meet Petitioner’s burden.
§ 42.65(a).
C. Petitioner Relies on Expert Testimony that Merely Parrots the
Petition Without Providing Further Elaboration
As noted above in § IV.B, Petitioner relies repeatedly—and in many
instances exclusively—on the declaration of its expert, Dr. McDaniel, to support
Petitioner’s assertions that a POSITA would understand the cited art to disclose
certain claim limitations. But Dr. McDaniel’s declaration, rather than providing
necessary supporting evidence and his own expert analysis, consists largely of
Petitioner’s arguments parroted almost verbatim. Thus, this testimony should be
given no evidentiary weight. See, e.g., Kinetic Techs., Inc. v. Skyworks Solutions,
Inc., IPR2014-00529, Pap. 8 at 15-16 (Sept. 23, 2014) (“Merely repeating an
argument from the Petition in the declaration of a proposed expert does not give
that argument enhanced probative value.”) (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); Wowza Media, LLC v. Adobe Sys. Inc., IPR2013-00054, Pap. 12
at 15 (Apr. 8, 2013); see also TRW Auto., IPR2014-00258, Pap. 18 at 10-11.
Tellingly, this copying frequently arises when Dr. McDaniel’s declaration is cited
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as purported support of the Petitioner’s assertions about what a POSITA would
understand—the very subject for which one would most expect a Petitioner to
provide specific testimony supported by detailed expert analysis and a rational
underpinning of evidence. Instead, Dr. McDaniel’s testimony simply parrots
Petitioner’s arguments and has no independent evidentiary value. See, e.g., Kinetic
Techs., IPR2014-00529, Pap. 8 at 15-16; Wowza Media, IPR2013-00054, Pap. 12
at 15; TRW Auto., IPR2014-00258, Pap. 18 at 10-11.
For example, Petitioner states that “y the year 2000, any commercial
institution with an online presence provided remote access to services (e.g., via
webservers), where that access was provided over a network via firewalls, routers
or gateways that filtered and routed user requests to servers and authentication
services.” Ex. 1002 ¶ 174; Pet. 56. But the cited portion of Dr. McDaniel’s
declaration mimics the language of the Petition verbatim without providing any
basis for his belief as to what “any commercial institution with an online presence”
was doing in the year 2000. See Ex. 1002 ¶ 174. Similarly, as the table below
shows, Dr. McDaniel again parrots the Petition in “opining” on how a POSITA
would have understood Feigen, without providing any basis for his “opinion” as to
what a POSITA would understand. Compare Pet. 41 with Ex. 1002 ¶ 102 (with
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exact or similar language shown in red and citation omitted)13:
Petition Declaration of Dr. McDaniel,
Ex. 1002 ¶102
A skilled artisan would understand that
Feigen teaches higher security
environments warrant the use of
additional or alternative authentication
technologies in security host (26).
A skilled artisan would also understand
that higher security can be achieved by
combining multiple authentication
mechanisms in the same system to
achieve a higher level of security—this
principle is known in the art as “defense
in depth,” which is a guiding principle
of secure system design.
One of ordinary skill in the art would
understand that Feigen teaches higher
security environments warrant the use of
additional or alternative authentication
technologies when implementing an
authentication mechanism in security
host (26). A skilled artisan would have
understood that higher security can be
achieved by combining multiple
authentication mechanisms in the same
system to achieve a higher level of
security—this principle is known in the
art as “defense in depth,” which is a
guiding principle of secure system
design.
13 There are numerous other examples in the Petition. Compare Pet. 41 with
Ex. 1002 ¶ 94; Pet. 41-42 with Ex. 1002 ¶ 103; Pet. 42 with Ex. 1002 ¶ 105; Pet.
42-43 with Ex. 1002 ¶ 107; Pet. 48-49 with Ex. 1002 ¶ 149; Pet. 56 with Ex. 1002 ¶
173; Pet. 56-57 with Ex. 1002 ¶ 174; Pet. 58-59 with Ex. 1002 ¶ 178; Pet. 61 with
Ex. 1002 ¶ 187; Pet. 71-72 with Ex. 1002 ¶ 119; Pet. 74 with Ex. 1002 ¶ 241.
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The declaration thus fails to explain in Dr. McDaniel’s own reasoned
opinion (i.e., fails to provide and support Dr. McDaniel’s own testimony as an
expert) why a POSITA would have had these understandings. Accordingly, it
should be given no weight. See InfoBionic, Inc. v. Braemer Mfg., LLC, IPR2015-
01704, Pap. 11 at 6 (Feb. 16, 2016) (denying institution where Board did “not find
the testimony of Petitioner’s expert to be persuasive or helpful as it repeats the
Petitioner’s arguments and offers little or no elaboration as to how one of ordinary
skill in the art would understand the [disputed] term”); see also § 42.65(a) (“Expert
testimony that does not disclose the underlying facts or data on which the opinion
is based is entitled to little or no weight.”).
The fact that these statements were simply copied from one document to the
other is demonstrated by numerous instances where the same typographical errors
appearing in the Petition also appear in Dr. McDaniel’s declaration. Compare, e.g.,
Pet. 48 with Ex. 1002 ¶ 145 (both missing period within “FIG 3”); Pet. 50-51 with
Ex. 1002 ¶ 150 (both missing period within “FIG 5”); Pet. 56-57 with Ex. 1002 ¶
174 (both stating “Falk makes clear that mechanisms for restricting access based
on authentication are associated with various commercial institutions by
referencing services such a [sic] cashless transaction and long distance phone
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services.”).14
In sum, as the Board has repeatedly found, Petitioner’s attempt here to
“expertize” its Petition arguments by having them repeated by a witness purporting
to give expert testimony cannot satisfy its evidentiary burden, or justify proceeding
to trial. See, e.g., Free-Flow Packaging Int’l, Inc. v. Automated Packaging Sys.,
Inc., IPR2016-00447, Pap. 7 at 10 (June 22, 2016) (denying institution where the
petitioner’s expert did “nothing more than parrot the language of the Petition word
for word”); InfoBionic, IPR2015-01704, Pap. 11 at 6; Kinetic Techs., Inc.,
IPR2014-00529, Pap. 8 at 16, 19; TRW Auto., IPR2014-00258, Pap. 18 at 10-11;
Wowza Media, IPR2013-00054, Pap. 12 at 15.
V. THERE IS NO REASONABLE LIKELIHOOD PETITIONER
WOULD PREVAIL ON ITS CONTENTION THAT THE PROPOSED
THREE-REFERENCE COMBINATION OF FEIGEN IN VIEW OF
BULFER AND FALK RENDERS THE CHALLENGED CLAIMS
OBVIOUS UNDER GROUND 1
As discussed above, Petitioner’s challenge rests on the unsupportable
premise that a POSITA would have taken the single-channel system of Feigen and
combined it with disparate portions of two other different security systems to
create the two-channel authentication system of the ’698 patent claims. Pet. 36.
14 Presumably, Petitioner and Dr. McDaniel meant to say “such as cashless
transaction and long distance phone services.”
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But, assuming arguendo that the required motivation exists, as demonstrated below,
Petitioner still fails in its burden for at least two reasons.
First, Petitioner fails to articulate clearly how the system of Feigen would be
combined with Bulfer and Falk to meet the requirements of each claim limitation.
Instead, Petitioner cites disparate evidence from one or more of the asserted prior
art references and fails to articulate clearly how these disclosures purportedly piece
together to render obvious the claimed limitations. See InfoBionic Inc. v. Braemer
Mfg., LLC, IPR2015-01705, Pap. 11 at 12 (denying institution where Petitioner
“has not articulated clearly Petitioner’s proposed combination” including “how
Petitioner proposes modifying [the prior art]”).
Second, Petitioner fails to demonstrate that the proposed combination meets
every limitation of the challenged claims. For example, Petitioner fails to explain
how the proposed combination discloses “receiving at an interception device in a
first channel a login identification demand to access a host computer also in the
first channel.” Infra § V.B.1(a).
A. Petitioner Fails to Articulate Clearly the Proposed Combination
Petitioner fails to articulate clearly the specific proposed combination it
relies upon to allegedly render obvious the elements of the ’698 patent claims.
Instead, Petitioner presents a “composite figure that has been generated by
Petitioner for illustrative purposes” and suggests—incorrectly—that this figure
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somehow demonstrates the obviousness of the claims. Pet. 36. In fact, even a
cursory examination of Petitioner’s composite figure and Petitioner’s subsequent
generalized explanations demonstrates that Petitioner has not clearly set forth how
the prior art would have been combined, as required.
In particular, Petitioner fails to show what particular portions of Feigen’s
security host are combined (and how they would be combined) with portions of
Bulfer’s secured system to render obvious the claimed “security computer.” For
example, in combining the systems of Feigen and Bulfer, Petitioner removes
Bulfer’s “Secured System 30” and simply pastes the remaining pieces into
Feigen’s system:
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Pet. 36-37 (illustrating the composite figure without Bulfer’s “secured system 30”);
see also Ex. 1002 ¶ 95. In so arguing, Petitioner—and its expert—suggest that a
POSITA would have combined Feigen and Bulfer by adding Bulfer’s “User,”
“Wireless Communication Device,” and “Wireless Communication System” to the
otherwise unmodified system of Feigen. But, in describing the operation of this
hypothetical combined system, Petitioner—and its expert—rely repeatedly on the
operation of the very component that was removed and is, therefore, not part of
Petitioner’s combined system—Bulfer’s “secured system (30).” See Pet. 39
(“secured system (30) outputs a prompt…”; “secured system (30) receives data…”;
“secured system (30) compares the data…”); Ex. 1002 ¶ 98 (presenting an identical
chart as is in the Petition). Petitioner’s unsubstantiated substitution does not
withstand scrutiny.
Similarly, Petitioner changes its invalidity theory between the general
discussion of the combination and the specific discussion of the claim limitations.
For example, in its general discussion, Petitioner relies on either Feigen’s security
host (26) or Bulfer’s secured computer (30) as providing the claimed functionality
of the claimed security computer. See, e.g., Pet. 38 (arguing that “security
computer (40) verifies the login identification of user (24)” of the ’698 patent is
met by “security host (26) verifies a password from the user of source host (24)”),
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39 (arguing that “security computer (40) receives data…” is met by “Bulfer:
secured system (30) receives data…”). But when Petitioner addresses the specific
claim limitations, Petitioner purports to rely on Feigen’s “security host (26), as
augmented by Bulfer” and “security host (26) combined with Bulfer.” Pet. 48, 49,
50. Moreover, Petitioner relies on the “augmented” (or “combined”) system
without explaining how the security host of Feigen is allegedly augmented by, or
combined with, Bulfer.
As a result, the Board and StrikeForce are left to speculate as to what
Petitioner’s proposed combination actually includes. For example, does Petitioner
suggest modifying all or some of Feigen’s system? Or, if only some, which parts?
Does Petitioner propose removing Bulfer’s secured system (30) as illustrated in its
composite figure? Or does Petitioner propose somehow including Bulfer’s
secured system (30) in Feigen’s system? If so, how?
Because Petitioner fails to articulate clearly how the proposed combination
should be effected, the Board should deny the Petition. See InfoBionic, IPR2015-
01705, Pap. 11 at 11 (denying institution where Petitioner “does not articulate
adequately to what extent and how Petitioner proposes [first prior art’s] method
would be incorporated into [second prior art’s] system,” leaving the Board to
“speculate as to how Petitioner’s combination of references’ teachings would
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render obvious” the challenged claims); Liberty Mutual Ins. Co. v. Progressive Cas.
Ins. Co., CBM2012-00003 Pap. 8 at 14 (Oct. 25, 2012) (“we address only the basis,
rationale, and reasoning put forth by the Petitioner and resolve all vagueness and
ambiguity in Petitioner’s arguments against the Petitioner”).
B. Petitioner Fails to Show that the Proposed Combination of Feigen,
Bulfer, and Falk Discloses Every Limitation of the Challenged
Claims under Ground 1
Petitioner fails to specify where each element of the claims is found in the
prior art. § 42.104(b)(3) (“The petition must specify where each element of the
claim is found in the prior art patents or printed publications relied upon….”).
Specifically, the Petition does not explain how the combined system of Feigen with
Bulfer and Falk meets the requirements of each claim limitation. Instead, for each
of the limitations below, Petitioner cites disparate evidence from one or more
references and conclusorily asserts that the limitations are obvious. But Petitioner
fails to address all aspects of the claimed limitations and fails to explain how such
a composite system might operate to allegedly render obvious the claims. See, e.g.,
Pers. Web Techs., 848 F.3d at 994 (remanding Board decision that “nowhere
clearly explained, or cited evidence showing, how the combination of the two
references was supposed to work”); Liberty Mutual, CBM2012-00003, Pap. 8 at 14
(“[W]e address only the basis, rationale, and reasoning put forth by the Petitioner
and resolve all vagueness and ambiguity in Petitioner’s arguments against the
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Petitioner. … It would be unfair to expect the Patent Owner to conjure up
arguments against its own patent and just as inappropriate for the Board to take the
side of the Petitioner to salvage an inadequately expressed ground proposing an
alternative rationale.”); InfoBionic, IPR2015-01705, Pap. 11 at 10-11 (denying
institution where “Petitioner does not explain how Petitioner’s proposal results in
the respective features of the claimed invention” and where “Petitioner, at most,
has identified where certain features of the claimed invention are disclosed in the
prior art [but] we are left to speculate as to how Petitioner’s combination of the
references teachings would render obvious” the challenged claims).
“In an inter partes review, the burden of persuasion is on the petitioner to
prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e) and
that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Petitioner’s failure to
demonstrate that the combined system allegedly renders obvious each claimed
limitation is fatal to its challenge. “f the fact trier of the issue is left uncertain,
the party with the burden loses.” Id.
1. Petitioner fails to establish that the proposed combination
would have disclosed or rendered obvious all the limitations
of Claim 1
(a) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious “receiving
at an interception device in a first channel a login
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identification demand to access a host computer also
in the first channel” (claim 1)
Claim 1 requires the step of “receiving at an interception device in a first
channel a login identification demand to access a host computer also in the first
channel.” Petitioner’s arguments with respect to this limitation fail for at least
three reasons.
First, Petitioner fails to provide evidence for the entirety of the claim
element, focusing instead on only a portion of it. In particular, Petitioner fails to
identify any evidence of a “first channel” in the proposed combination, as required
by the claims. Pet. 47. Notably, Petitioner does not assert that this limitation is
met by the combination of Feigen and Bulfer, but instead suggests that Feigen
alone (and Bulfer alone) would disclose various portions of the limitation.
Compare Pet. 47 (“Feigen’s filter (16) is an interception device…”) with Pet. 48
(“Security host (26), as augmented by Bulfer”). This is insufficient. Petitioner is
required to identify the claimed “first channel” within the proposed combination.
But no such evidence is presented. This failure is fatal under the Board’s Rules.
§ 42.104(b)(4) (“The Petition must specify where each element of the claim is
found in the prior art patents or printed publications relied upon.”); see Liberty
Mutual, CBM2012-00003 Pap. 8 at 14.
Second, Petitioner fails to articulate clearly which reference, Feigen or
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Bulfer, it relies on to show the claimed “login identification.” Pet. 47. When
discussing the proposed combination outside the context of this claim limitation,
Petitioner relies solely on Feigen’s user identification to show a login demand and
identification. Pet. 37-38 (citing only Feigen). However, when discussing this
specific claim limitation, Petitioner points to both Feigen’s user identification and
Bulfer’s “user identifying information to the secured system.” Pet. 47–48 (citing
Feigen at 6:50-55 and Bulfer at 1:46-53). It thus remains ambiguous whether
Petitioner relies on Feigen, Bulfer, or some combination of the two in support of its
contention that this limitation would be obvious. This is improper. See Liberty
Mutual, CBM2012-00003 Pap. 8 at 14.
(b) Petitioner fails to articulate clearly what portions of
the prior art it relies on and how these portions are
combined to show “verifying the login identification”
(claim 1[c])
Claim 1 requires the step of “verifying the login identification.” Petitioner
appears to rely on Feigen’s “
perform this claimed verification, but fails to articulate clearly what portions of the
two systems are combined to meet this limitation. Pet. 48. In particular, Petitioner
initially points both to Feigen’s task 102 which “authenticates the user,” but also
argues that the proposed combination would use Bulfer’s “revalidation process
over wireless communication device (70’).” Pet. 48–49. Thus, it is unclear
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whether Petitioner is relying on Feigen or Bulfer for the claimed “verifying”
operation, and if both, how the two references are combined. This is improper.
See InfoBionic, IPR2015-01705, Pap. 11 at 11.
(c) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious “receiving
at a security computer in a second channel the
demand for access and the login identification” (claim
1[d])
Claim 1 requires “receiving at a security computer in a second channel the
demand for access and the login identification.” Petitioner’s arguments here fail
for at least two reasons.
First, Petitioner fails to articulate clearly what is the alleged “security
computer” of the combined Feigen-Bulfer-Falk system. For example, Petitioner
here relies on Feigen’s “
disclosing the claimed “security computer,” but fails to provide any explanation or
support as to what, and how, portions of Feigen’s security host (26) are
“augmented” by Bulfer’s secured system. Pet. 48–49. Again, the Board is left to
speculate what the proposed combination actually entails. For example, does it
involve (i) entirely replacing Feigen’s security host with Bulfer’s secured system;
(ii) replacing only a portion of Feigen’s security host with a portion (or all) of
Bulfer’s secured system; or (iii) maintaining the entirety of Feigen’s security host
and incorporating some unspecified portion of Bulfer’s secured system? The
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Petition offers no clarity in this regard and again improperly leaves it to the Board
to speculate what combination Petitioner has proposed, let alone whether it would
have been obvious. See InfoBionic, IPR2015-01705, Pap. 11 at 11.
Second, Petitioner does not contend that any of the three asserted prior art
references discloses a security computer in a “second channel” that is separate
from a first channel in which the host computer resides. Indeed, Petitioner does
not identify any prior art reference allegedly disclosing a security computer in a
channel separate from the one containing the host computer. E.g., Pet. 23-26
(discussing Feigen), 27-29 (discussing Bulfer), 29-32 (discussing Falk). Instead,
Petitioner relies on the combination of Feigen and Bulfer and argues without
explanation that this hypothetical system would somehow disclose a security
computer in a “second channel” as claimed. Pet. 48-49. But although Petitioner
claims that security host (26) “is a security computer located in a second
authentication channel and isolated from the host computer (destination host 28),”
Petitioner again fails to articulate what it considers to be the “second channel” of
the claimed system. Pet. 48. Moreover, taken together with Petitioner’s failure to
address the claimed “first channel,” the Board and Petitioner are left to guess as to
what Petitioner contends constitutes an access channel (or first channel) that is
separate from an authentication channel (or second channel). Petitioner has thus
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failed to meet its burden. See, e.g., Liberty Mutual, CBM2012-00003, Pap. 8 at 14.
2. Petitioner fails to establish that the proposed combination
would have rendered obvious all the limitations of claim 48
(a) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a “first
software module on an Internet-connected web
server” (claim 48)
Claim 48 requires a “first software module on an Internet-connected web
server in an access channel” wherein the software module receives and outputs a
User ID which is received by “a second software module on a security computer
different from the web server” that resides in the authentication channel. Petitioner
argues—without merit—that this limitation is met by Feigen’s filter which “could
be a web server.” Pet. 56. This is legally and factually wrong.
First, Petitioner fails to point to any explicit disclosure in the prior art of a
“web server.” Instead, Petitioner argues at most, that the filter could be a web
server. Thus, Petitioner fails to make clear whether it contends Feigen’s filter is
the claimed web server or whether it contends Feigen’s filter would render obvious
the claimed web server. Indeed, Petitioner appears to admit implicitly that the
prior art does not explicitly disclose the claimed web server, seeking instead to fill
gaps in the prior art with its expert’s own unsubstantiated assertions. This is
improper. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362-63 (Fed. Cir.
2016) (warning against using an expert’s conjecture to supply a missing limitation).
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Moreover, Dr. McDaniel’s conclusory testimony is insufficient. Dr.
McDaniel largely parrots the language of the Petition and also says—at most—that
a POSITA would have understood that a filter could be a web server; not that it is a
web server. Ex. 1002 ¶ 173. The only substance added by Dr. McDaniel is that
“Here, Feigen is talking about a standard network device that typically sits at the
edge of the network and processes incoming requests from the Internet (outside
network 12).” Id. But this conclusory statement—offered without evidentiary
support—still says nothing about the filter necessarily acting as or rendering
obvious the claimed web server. Petitioner and its expert have thus failed to
demonstrate that a POSITA would have combined Bulfer with Feigen to yield the
claimed invention; instead they have opined at most, that a POSITA could have
combined these references in the proposed manner. This is not enough. See
Huawei Device, IPR2015-00221, Pap. 13 at 16–17 (denying institution where
Petitioner’s expert testified that a POSITA “could” have made the proposed
substitution, “without sufficiently articulating what the benefit … would have
been”); Pers. Web Techs., 848 F.3d at 994.
Second, Petitioner’s arguments here conflict with its positions regarding
dependent claim 3, which requires that the host computer be a web server. There,
Petitioner argues that “the host computer (destination host 28) is a web server
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servicing Internet requests.” Pet. 52. But there is no suggestion or argument that
Feigen’s system includes multiple web servers working together; so it is unclear
how a POSITA would have understood here that filter (16) “could be” the web
server when it already concluded that “destination host 28” is the web server
servicing Internet requests. Indeed, Petitioner’s inconsistent application of the
prior art references underscores the degree to which Petitioner succumbs to
hindsight bias and presents arguments improperly reliant on ex post reasoning.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
(b) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a “second
software module on a security computer different
than the web server, wherein the security computer is
in an authentication channel” (claim 48[e])
As discussed above (supra § V.A), Petitioner fails to articulate clearly what
portions of Feigen are combined with portions of Bulfer to meet the claimed
“security computer.” Moreover, Petitioner also fails to identify what in Feigen,
Bulfer, or the proposed combination thereof constitutes the “second software
module,” and if the latter, how the portions of Feigen and Bulfer are combined to
yield the “second software module” on the security computer as required by claim
48[e]. See Pet. 57–58.
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(c) Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious a
“subscriber database” (claim 48[g])
Petitioner fails to articulate clearly its arguments regarding Bulfer’s alleged
disclosure of a “subscriber database,” as recited in claim 48[g]. Pet. 58-59. In
particular, Petitioner argues that “it would have been obvious to a person skilled in
the art that a database would be necessary in order to be able to retrieve a
(substantially) unique wireless remote communication device number using a user
association with the device.” Pet. 59 (emphasis added). By first suggesting
obviousness, then pivoting apparently to inherency (stating that “a database would
be necessary”), Petitioner has failed to articulate a clear theory of invalidity. 15
Thus, Petitioner improperly leaves it to the Board and StrikeForce to speculate as
to what Petitioner intended its theory to be. See Liberty Mutual, CBM2012-00003,
Pap. 8 at 14.
15 “[A] party must … meet a high standard in order to rely on inherency to
establish the existence of a claim limitation in the prior art in an obviousness
analysis.” Par Pharm. v. Twi Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir.
2014); see also In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981) (“Inherency,
however, may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not sufficient.”).
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3. Petitioner fails to show that the proposed combination
would have rendered obvious all of the limitations of claim
53.
Rather than present evidence and argument for each limitation in claim 53,
Petitioner simply refers back to what it considers corresponding limitations from
claim 1. Pet. 63-64. Accordingly, Petitioner’s challenge to claim 53 fails for at
least all the same reasons its challenge to claim 1 fails.
Petitioner, moreover, effectively instructs the Board—for every limitation of
claim 53—to search through the record and identify the relevant evidence itself.
And, citing Ex. 1101 ¶¶ 195-212, Petitioner attempts to circumvent the rules and
incorporates by reference evidence and arguments about claim 53 that are
presented only in Dr. McDaniel’s declaration and nowhere within the Petition. See
Pet. 60-61. This is improper. § 42.6(a)(3); Cisco Sys. Inc. v. C-Cation Techs.,
LLC, IPR2014-00454, Pap. 12 at 9 (Aug. 29, 2014) (“Further, the Petition includes
citations to the Declaration to support conclusory statements for which the Petition
does not otherwise provide an argument or explanation….This practice of citing
the Declaration to support conclusory statements that are not otherwise supported
in the Petition also amounts to incorporation by reference.”); 10 (“‘A brief must
make all arguments accessible to the judges, rather than ask them to play
archeologist with the record’ Accordingly, we do not consider arguments not
made in the Petition.”).
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4. Petitioner fails to show that the proposed combination
would have disclosed or rendered obvious the construed
structure for “a component for receiving the transmitted
data and comparing said transmitted data to predetermined
data” (claim 54[e])
Petitioner contends that claim 54 includes a means-plus-function limitation
subject to § 112, ¶ 6. Pet. 18. Accordingly, Petitioner must identify “the specific
portions of the specification that describe the structure, material, or acts
corresponding to each claimed function.” § 42.104(b)(3). Petitioner also “must
specify where each element of the claim is found in the prior art patents or printed
publications relied upon.” § 42.104(b)(4); see also Fresenius USA, Inc. v. Baxter
Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to
demonstrate that a means-plus-function limitation was present in the prior art must
prove that the corresponding structure—or an equivalent—was present in the prior
art.”). Although Petitioner purports to identify corresponding structure in the prior
art, Petitioner fails to demonstrate that the entire claimed structure it relies upon is,
in fact, present in the prior art.
According to Petitioner, the proper function for “a component for receiving
the transmitted data and comparing said transmitted data to predetermined data” is
“receiving the transmitted data and comparing said transmitted data to
predetermined data.” Pet. 18. Petitioner proposes that the corresponding structure
is “Ex. 1001 at FIG. 9C, steps 186-196, 10:46-65 and/or ‘698 patent, FIGs. 9C-9D,
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steps 200-208, 11:24-55.” Id. Notably, this structure includes step 186 of FIG. 9C
(“Prompt played by speech module to user”). Petitioner expressly acknowledges
that this structure includes the “prompt played by speech module to user,” but fails
to identify any such prompt or its equivalent in the prior art. See Pet. 65-66. Thus,
Petitioner fails to meet burden under § 42.105(b)(4). See also Fresenius, 582 F.3d
at 1299.
VI. THERE IS NO REASONABLE LIKELIHOOD PETITIONER
WOULD PREVAIL ON ITS CONTENTION THAT THE PROPOSED
FOUR-REFERENCE COMBINATION OF FEIGEN IN VIEW OF
BULFER, FALK, AND TURTIANEN RENDERS THE
CHALLENGED CLAIMS OBVIOUS UNDER GROUND 2
A. Petitioner Fails to Sufficiently Show Why a POSITA Would Have
Been Motivated to Combine Feigen, Bulfer, and Falk with
Turtianen
Petitioner’s Ground 2 relies on its contention that a POSITA would have
been motivated to further modify the proposed three-reference combination of
Ground 1 with a fourth reference—Turtianen—to yield the inventions of claims 50
and 52 of the ’698 patent. Pet. 71-72. But, as discussed above, Petitioner has
failed to properly establish any sufficient motivation to combine Feigen with
Bulfer and Falk as asserted by Petitioner. Supra § IV.A. Thus, Petitioner’s
Ground 2 must fail as well.
Further, even assuming arguendo that a POSITA would have been
motivated to combine Feigen with Bulfer and Falk as asserted (and without
IPR2017-01041
U.S. Patent No. 8,484,698
63
impermissibly relying on hindsight based on the ’698 patent), Petitioner still has
failed to establish that a POSITA would have been motivated to further modify the
three-reference combination to create the asserted four-reference combination. In
particular, other than arguing that the use of mobile telephones was known at the
time, Petitioner provides no reason why a POSITA would have chosen to
incorporate this teaching into its proposed three-reference combination. See Pers.
Web Techs., 848 F.3d at 991 (“[A] finding of obviousness cannot be predicated on
the mere identification in [the prior art] of individual components of claimed
limitations,” but also requires a showing that a POSITA “would have been
motivated to combine the prior art in the way claimed by the [challenged patent]
claims at issue.”); see also Huawei Device, IPR2015-00221, Pap. 13 at 16–17
(denying institution where Petitioner’s expert testified that a POSITA “could” have
made the proposed substitution, “without sufficiently articulating what the benefit
… would have been”).
B. Petitioner fails to demonstrate that the proposed four-reference
combination discloses all the limitations of claims 50 and 52
Petitioner’s arguments here rely on its prior analysis regarding claim 48. Pet.
73. Because Petitioner has failed to establish that the asserted combination
discloses each and every limitation of claim 48, Petitioner has necessarily failed to
demonstrate the invalidity of claims 50 and 52. Accordingly, for the same reasons
IPR2017-01041
U.S. Patent No. 8,484,698
64
discussed above, Petitioner’s grounds must fail. Supra § IV.B.2.
VII. CONSTITUTIONALITY OF INTER PARTES REVIEW
The Federal Circuit has held IPRs are constitutional. MCM Portfolio v.
Hewlett-Packard Co., 812 F.3d 1284, 1288-92 (Fed. Cir. 2015), cert. denied, 137 S.
Ct. 292. In light of the Supreme Court’s grant of certiorari as to this issue in Oil
States Energy Services, LLC v. Greene’s Energy Group, LLC, 2017 WL 2507340
(U.S. June 12, 2017), and to the extent Federal Circuit precedent is overturned,
StrikeForce reserves its right to raise these constitutional issues.
VIII. CONCLUSION
Because the Petition fails to show that there is a reasonable likelihood that
Petitioner will prevail in proving any challenged claim unpatentable, the Petition
should be denied, and, pursuant to § 314, no inter partes review should be
instituted.
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