The District Court Mischaracterized and Overgeneralized the Claims at a High Level of Abstraction and Ignored the Claimed Advance Over Prior Art Systems
Pages 44-45: This Court has explained that “describing [] claims at ... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. But that is exactly what the court did here—and why its step one analysis was flawed from the outset. Under Alice step one, the court is required to look at the character of the claims as a whole, in light of the specification. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). But, here, the district court ignored the plain language of the claims and teachings of the specification, and instead summarily concluded “that the Asserted Patents ... address an abstract idea of providing restricted access to resources.” Appx7. As is apparent from the plain reading of the claims, this is a gross oversimplification. As the bulleted list above demonstrates, supra p. 12, the claims require an ordered combination of elements that combine to form a particular way of performing completely out-of-band authentication. The specification explains that the separation of channels solves the “technical problem” in prior art systems (including those that “provid[e] restricted access to resources”) where “the hacker is in a self-authenticating environment.” Appx32 (2:20-22). In the prior art, both user name and authentication information were “sent along the same pathway and any improper accessor into this channel ha
the opportunity to monitor and/or enter both identifiers.” Appx34 (5:52-55). In contrast, the claimed invention prevents the host computer from receiving user name and login information and requires that “authentication occurs in the out-of-band security network.” Appx34 (6:18-19). The invention thus stands “in contradistinction to present authentication processes as the out-of-band security network [] is isolated from the corporate network [] and does not depend thereon for validating data.” Appx34 (6:20-23). In settling on its overgeneralized description, moreover, the district court further erred by ignoring (among other things) the “claimed advance” over prior art systems to “determine whether the claims are directed to an abstract idea.” Here, the Asserted Patents expressly describe in their specification and explicitly claim advances over multiple prior art patents and systems, all of which “show a portion of the authentication protocol and the data transferred in the same channel or ‘in-band’.”
Case: 18-1470 Document: 17 Page: 45 Filed: 03/26/2018
Page 49-50: "The concept of interception is important, as it contributes to the invention’s unique architecture by both shielding the host computer and facilitating the out-of-band authentication. Indeed, as even the defendants in the prior Delaware action recognized, “[n]o aspect of the invention is more critical to understand than the fact that the interception device diverts the login identification and the demand for access to the security computer.”
Parties’ Joint Claim Construction Brief at 4, StrikeForce Techs., Inc. v. PhoneFactor, Inc., No. 1:13-cv-00490-RGA-MPT, 2014 WL 12690048 (D. Del. filed Nov. 6, 2014). Indeed, the District of Massachusetts relied upon claim 1 of the ’698 Patent, which expressly includes this limitation, as “emblematic.” Appx1932. Case: 18-1470
Document: 17 Page: 49 Filed: 03/26/2018
At the very least, it was erroneous for the district court to invalidate all 43 of the Asserted Claims without assessing any claim that expressly included those elements"
Conclusion: "StrikeForce respectfully requests that this Court: reverse the decision dismissing StrikeForce’s Complaint with prejudice; find that the Asserted Claims are in fact patent-eligible under 35 U.S.C. § 101; and remand for trial. At the very least, this Court should vacate the district court’s ruling and remand for further factual findings as to whether the claimed combination of elements was well-understood, routine, and conventional".
Case: 18-1470 Document: 17 Page: 69 Filed: 03/26/2018
Pages 44-45: This Court has explained that “describing [] claims at ... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Enfish, 822 F.3d at 1337. But that is exactly what the court did here—and why its step one analysis was flawed from the outset. Under Alice step one, the court is required to look at the character of the claims as a whole, in light of the specification. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). But, here, the district court ignored the plain language of the claims and teachings of the specification, and instead summarily concluded “that the Asserted Patents ... address an abstract idea of providing restricted access to resources.” Appx7. As is apparent from the plain reading of the claims, this is a gross oversimplification. As the bulleted list above demonstrates, supra p. 12, the claims require an ordered combination of elements that combine to form a particular way of performing completely out-of-band authentication. The specification explains that the separation of channels solves the “technical problem” in prior art systems (including those that “provid[e] restricted access to resources”) where “the hacker is in a self-authenticating environment.” Appx32 (2:20-22). In the prior art, both user name and authentication information were “sent along the same pathway and any improper accessor into this channel ha
the opportunity to monitor and/or enter both identifiers.” Appx34 (5:52-55). In contrast, the claimed invention prevents the host computer from receiving user name and login information and requires that “authentication occurs in the out-of-band security network.” Appx34 (6:18-19). The invention thus stands “in contradistinction to present authentication processes as the out-of-band security network [] is isolated from the corporate network [] and does not depend thereon for validating data.” Appx34 (6:20-23). In settling on its overgeneralized description, moreover, the district court further erred by ignoring (among other things) the “claimed advance” over prior art systems to “determine whether the claims are directed to an abstract idea.” Here, the Asserted Patents expressly describe in their specification and explicitly claim advances over multiple prior art patents and systems, all of which “show a portion of the authentication protocol and the data transferred in the same channel or ‘in-band’.”
Case: 18-1470 Document: 17 Page: 45 Filed: 03/26/2018
Page 49-50: "The concept of interception is important, as it contributes to the invention’s unique architecture by both shielding the host computer and facilitating the out-of-band authentication. Indeed, as even the defendants in the prior Delaware action recognized, “[n]o aspect of the invention is more critical to understand than the fact that the interception device diverts the login identification and the demand for access to the security computer.”
Parties’ Joint Claim Construction Brief at 4, StrikeForce Techs., Inc. v. PhoneFactor, Inc., No. 1:13-cv-00490-RGA-MPT, 2014 WL 12690048 (D. Del. filed Nov. 6, 2014). Indeed, the District of Massachusetts relied upon claim 1 of the ’698 Patent, which expressly includes this limitation, as “emblematic.” Appx1932. Case: 18-1470
Document: 17 Page: 49 Filed: 03/26/2018
At the very least, it was erroneous for the district court to invalidate all 43 of the Asserted Claims without assessing any claim that expressly included those elements"
Conclusion: "StrikeForce respectfully requests that this Court: reverse the decision dismissing StrikeForce’s Complaint with prejudice; find that the Asserted Claims are in fact patent-eligible under 35 U.S.C. § 101; and remand for trial. At the very least, this Court should vacate the district court’s ruling and remand for further factual findings as to whether the claimed combination of elements was well-understood, routine, and conventional".
Case: 18-1470 Document: 17 Page: 69 Filed: 03/26/2018
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