T. Rowe Price Investment Services, Inc.v.Secure Axcess

Patent Trial and Appeal Board

Jun 13, 2016

11423340 (P.T.A.B. Jun. 13, 2016)

Trials@uspto.gov Paper 31
571-272-7822 Entered: June 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

T. ROWE PRICE INVESTMENT SERVICES, INC.,
Petitioner,
v.

SECURE AXCESS, LLC,
Patent Owner.
____________

Case CBM2015-00027
Patent 7,631,191 B2
____________

Before BARBARA A. BENOIT, TRENTON A. WARD, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
This is a covered business method (“CBM”) patent review, under § 18
of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 331 (2011).1 We have jurisdiction to hear this review under
35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35
U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1–5, 16, and 29–32 of U.S. Patent No. 7,631,191 B2 (Ex. 1001;
“the ’191 patent”) are unpatentable.
A. Procedural History
T. Rowe Price Investment Services, Inc. (“T. Rowe Price” or
“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting a covered business
method patent review of claims 1–5, 16, and 29–32 (the “challenged
claims”) of the ’191 patent. Patent Owner, Secure Axcess, LLC, filed a
Preliminary Response opposing institution of a review. Paper 8. On
June 22, 2015, pursuant to 35 U.S.C. § 324(a), we instituted a covered
business method patent review for claims 1–5, 16, and 29–32 of the
’191 patent. Paper 9 (“Inst. Dec.”), 44. We instituted trial on the grounds
that claims 1, 3, 5, 16, and 29–32 are unpatentable under 35 U.S.C. § 102(b)

1 See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1310 (Fed. Cir. 2015)
(describing transitional program for review of covered business method
patent under 35 U.S.C. §§ 321–29, pursuant to the AIA).
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as anticipated by Houser2 and that claims 2 and 4 are unpatentable under
35 U.S.C. § 103(a) over Houser and Yoshiura.3,4 Id.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 17; “PO Resp.”), to which Petitioner filed a Reply
(Paper 20; “Reply”). Patent Owner filed observations on the cross-
examination of Petitioner’s expert witness, Mr. Kendyl A. Román
(Paper 24), to which Petitioner filed a response (Paper 27). Petitioner also
filed a Motion to Exclude certain evidence. Paper 22 (“Mot.”). Patent
Owner filed an Opposition (Paper 28; “PO Opp.”), to which Petitioner filed
a Reply (Paper 29; “Mot. Reply”). An oral hearing was held on March 15,
2016, and a transcript of the hearing was entered into the record. Paper 30
(“Tr.”).
B. Related Matters
Petitioner represents that the ’191 patent has been asserted against it
in Secure Axcess, LLC v. T. Rowe Price Investment Services, Inc., Case No.
6:13-cv-00787 (E.D. Tex). Pet. 78; see also Paper 6 (Patent Owner’s Notice
of Related Matters). Petitioner also identifies seventeen other court

2 U.S. Patent No. 5,606,609, issued Feb. 25, 1997 (Ex. 1004, “Houser”).
3 European Patent Application Publication Number EP 0 883 284 A2,
published Dec. 9, 1998 (Ex. 1005, “Yoshiura”).
4 Section 3(c) of the Leahy-Smith America Invents Act (“AIA”) amended 35
U.S.C. §§ 102, 103. Pub. L. No. 112-29, 125 Stat. 284, 285–288 (2011).
Because the challenged patent has a filing date before March 16, 2013
(effective date of section 3), the pre-AIA versions of §§ 102, 103 apply to
this proceeding. See id. § 3(n)(1), 125 Stat. at 293.
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proceedings in which Patent Owner has asserted the ’191 patent. See Pet.
78; see Paper 6 (Patent Owner’s Mandatory Notice).
In addition, the ’191 patent has been the subject of another covered
business method patent review for which an appeal to the United States
Court of Appeals for the Federal Circuit is pending. PNC Bank, N.A. v.
Secure Axcess, LLC, Case CBM2014-00100, (PTAB Sept. 8, 2015) (Paper
43) (finding claims 1–32 unpatentable). The Board also instituted an
additional covered business method patent review of the ’191 patent. Bank
of the West v. Secure Axcess, LLC, Case CBM2015-00009 (PTAB April 13,
2015) (Paper 21). The Bank of the West review was consolidated with the
PNC Bank review currently on appeal. Bank of the West, Case CBM2015-
00009 (PTAB May 12, 2015) (Paper 27) (granting unopposed motion for
consolidation). On July 10, 2015, the Board denied institution of a second
petition by PNC Bank, N.A. seeking another covered business method patent
review of the ’191 patent. See PNC Bank, N.A. v. Secure Axcess, LLC, Case
CBM2015-00039 (PTAB July 10, 2015; Paper 9). The ’191 patent also has
been the subject of an inter partes review for which an appeal to the United
States Court of Appeals for the Federal Circuit is pending. EMC Corp. v.
Secure Axcess, LLC, Case IPR2014–00475 (PTAB Sept. 8, 2015) (Paper 30)
(finding claims 1–23 and 25–32 unpatentable).
C. The ’191 Patent
The ’191 patent relates to authenticating data, such as a web page.
Ex. 1001, Abstract, 1:16–18; 12:9–18 (claim 1). The ’191 patent explains
that customers can be deceived by web pages that appear to be authentic but
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are not. See id. at 1:28–34. A web page that has been authenticated
according to the techniques described by the ’191 patent includes “all of the
information in the same format as the non-authenticated page.” Id. at 2:58–
60. The authenticated web page, however, also includes an “authenticity
stamp.” Id. at 2:60–62.
Figures 1 and 2 are set forth below:

Figure 1 Figure 2
Figures 1 and 2 each show web page 50 having title 52,
hyperlinks 54A, 54B, 54C, and 54D, textual information 56, and graphical
images 58A and 58B. Id. at 2:54–57. Figure 1 shows web page 50 has not
been authenticated, whereas Figure 2 shows web page 50 has been
authenticated. Id. at 2:54–61. The authenticated web page shown in
Figure 2, unlike the non-authenticated web page shown in Figure 1, includes
authenticity stamp 60. Id.
The ’191 patent discloses an exemplary environment using an
authentication server. Id. at Abstract; see id. at 3:26–55, Fig. 4. In that
embodiment, a web server at a web site receives a request for information
from user’s web browser and, prior to sending the requested web page to the
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user’s computer, the web server submits information to an authentication
server. Id. at 3:41–51. The authentication server adds authentication
information to the request for information. Id. at 3:50–53. “The information
which includes the authentication information is returned to the web
server[,] which then sends the web page including the authentication
information to the user [computer].” Id. at 3:52–55. The ’191 patent also
describes combining the logic of an authentication server with the logic of a
web server. Id. at 4:57–58.
The ’191 patent further discloses that an authentication server is not
always necessary. Id. at 8:17–18 (“In alternative embodiments, there is no
authentication server.”). In such an embodiment, for example, a web server
receives a request for a web page. Id. at 4:5–14. “If the [web] page is to be
authenticated, the page is dynamically signed with a private key and
additional information. . . .” Id. at 4:14–16. The signed web page then is
returned to the user’s computer, and the user’s computer verifies the
authenticity of the web page, using a public key to verify the digital
signature. Id. at 4:18–23. After verification of the digital signature, the user
computer “can validate the authentication of the [web] page.” Id. at 4:23–
24.
D. Illustrative Claims of the ’191 Patent
Of the challenged claims, claims 1, 29, 31, and 32 of the ’191 patent
are independent and generally relate to methods, authentication systems, and
a computer-readable medium for creating formatted data (claims 1, 31, 32),
and sending (or returning) formatted data having an authenticity key
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(claims 1, 29, 31). Each of the challenged independent claims is reproduced
below:

1. A method comprising:
transforming, at an authentication host computer, received
data by inserting an authenticity key to create formatted data; and
returning, from the authentication host computer, the
formatted data to enable the authenticity key to be retrieved from
the formatted data and to locate a preferences file,
wherein an authenticity stamp is retrieved from the
preferences file.

29. An authentication system comprising:
an authentication processor configured to send formatted
data having an authenticity key to a client, wherein the
authenticity key enables location of a preferences file, and
wherein an authenticity stamp is retrieved from the preferences
file.

31. A computer readable medium having stored thereon a
plurality of instructions, the plurality of instructions comprising:
instructions to format received data by inserting an
authenticity key to create formatted data; and
instructions to return the formatted data to a client,
wherein the authenticity key is retrieved from the formatted data
to locate a preferences file, and wherein an authenticity stamp is
retrieved from the preferences file.

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32. A method comprising:
receiving, at a client computer, formatted data from an
authentication host computer wherein the authentication host
computer receives the data to create received data, and
transforms the received data by inserting an authenticity key to
create the formatted data;
retrieving, by the client computer, the authenticity key
from the formatted data to locate a preferences file; and,
retrieving an authenticity stamp from the preferences file.
Ex. 1001, 12:9–18, 14:1–4, 14:14–31.
II. DISCUSSION
A. Covered Business Method Patent
AIA section 18 establishes a post-grant review proceeding “for review
of the validity of covered business method patents.” § 18(a)(a). The statute
defines a “covered business method patent” as “a patent that claims a
method or corresponding apparatus for performing data processing or other
operations used in the practice, administration, or management of a financial
product or service . . . .” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).
Congress provided a specific exception to this definition of a covered
business method patent—“the term does not include patents for
technological inventions.” AIA § 18(d)(1)
As a threshold matter in considering whether to institute a review, the
Board determined, after considering the Petition and Patent Owner’s
Preliminary Response (Paper 8), that the ’191 patent is a covered business
method patent and is eligible for a covered business method patent review.
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Inst. Dec. 13–18; see AIA § 18(a)(1)(E) (“[t]he Director may institute a
transitional proceeding [under § 18] only for a patent that is a covered
business method patent.”). In our analysis of whether the ’191 patent was
eligible for a covered business method patent review, we determined the
method and apparatus claimed by the ’191 patent perform operations used in
the practice, administration, or management of a financial product or service
and are incidental to a financial activity. Inst. Dec. 16. We also determined
that the technological features of the claimed steps are directed to using
known technologies, which does not render a patent a technological
invention. Id. at 16–19. Thus, we determined that the ’191 patent was
eligible for covered business method patent review. Id. at 19; see PNC
Bank, Case CBM2014-00100, slip op. at 8–17 (PTAB Sept. 8, 2015) (Paper
43, Final Written Decision); id., slip op. at 12–18 (PTAB Sept. 9, 2014)
(Paper 10, Decision to Institute); Bank of the West, Case CBM2015-00009,
slip op. at 10–16 (PTAB April 13, 2015) (Paper 21, Decision to Institute).
During the covered business method patent review, Patent Owner
again contested whether the ’191 patent is a covered business method patent.
PO Resp. 58–75. Therefore, after considering all the evidence of record, we
address below whether the ’191 patent is a covered business method patent
and is eligible for a covered business method patent review.
1. Financial Product or Service
First, Patent Owner contends the ’191 patent is ineligible for covered
business method patent review because its invention is not directed to a
financial product or service. PO Resp. 62–69. According to Patent Owner,
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the ’191 patent claims an authentication server that authenticates data (such
as a web page) from a server. Id. at 62. As such, Patent Owner contends the
’191 patent is not a covered business method patent, because (1) the claimed
method and apparatus is directed to techniques to distinguish authentic data
sent from authentic web sites from fraudulent data sent by fraudulent sites
(id.), (2) none of the claims mentions a financial product or service (id.
at 63), and (3) the claimed method and apparatus aid businesses in general
(id. at 67–68). Patent Owner further contends that asserting the ’191 patent
against financial institutions is not sufficient to demonstrate the ’191 patent
is directed to a financial product or service. Id. at 66–68. Patent Owner also
represents that the ’191 patent has been asserted against financial institutions
because of the manner in which they authenticate web pages and asserts that
companies other than financial institutions allegedly practice the techniques
claimed by the ’191 patent. Id. at 67.
The general reasoning of Patent Owner’s contentions was rejected
during rule-making. During rule-making, the Office stated:
The suggestion to clarify that the term “financial product or
service” is limited to the products or services of the financial
services industry is not adopted. Such a narrow construction of
the term would limit the scope of the definition of covered
business method patents beyond the intent of section 18(d)(1) of
the AIA.
77 Fed. Reg. 48,734 , 48,736 (Aug. 14, 2012). More recently, the Federal
Circuit affirmed the Office’s position: “We agree with the USPTO that, as a
matter of statutory construction, the definition of ‘covered business method
patent’ is not limited to products and services of only the financial industry,
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or to patents . . . directly affecting the activities of financial institutions such
as banks and brokerage houses.” Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1325 (Fed. Cir. 2015). As the Federal Circuit points out,
“[t]he plain text of the statutory definition contained in § 18(d)(1)—
‘performing . . . operations used in the practice, administration, or
management of a financial product or service’—on its face covers a wide
range of finance-related activities.” Id.
We determine that the method and apparatus claimed by the ’191
patent perform operations used in the practice, administration, or
management of a financial product or service and are incidental to a
financial activity. The written description of the ’191 patent discloses a need
by financial institutions to ensure customers are confident that the financial
institution’s web page is authentic (Ex. 1001, 1:28–33). Additionally, the
’191 patent discloses alternative embodiments of the invention as being used
by financial institutions (id. at 8:21–23, 11:23–40, 11:52–67).
The ’191 patent relates to authenticating a web page and claims a
particular manner of doing so. Ex. 1001, 1:16–18, 12:9–18. The ’191 patent
is directed to solving problems related to providing a web site to customers
of financial institutions. Id. at 8:21–23, 11:23–40, 11:52–67. Thus, the ’191
patent covers the ancillary activity related to a financial product or service of
web site management and functionality and so, according to the legislative
history of the AIA, the method and apparatus of the ’191 patent perform
operations used in the administration of a financial product or service.
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We recognize that the legislative history of the AIA has “competing
statements from various legislators with regard to the possible scope of
[these] issues.” Versata Dev. Grp., 793 F.3d at 1321. We note nonetheless
that at least one legislator viewed “customer interfaces” and “Web site
management and functionality,” which are at issue here, as ancillary
activities intended to be encompassed by the language “practice,
administration and management” of a financial product or service.
157 Cong. Rec. S1364–65 (daily ed. Mar. 8, 2011) (statement of
Sen. Schumer) (indicating the language “practice, administration and
management” of a financial product or service “is intended to cover any
ancillary activities related to a financial product or service, including,
without limitation, marketing, customer interfaces, Web site management
and functionality, transmission or management of data, servicing,
underwriting, customer communications, and back office operations—e.g.,
payment processing, stock clearing”).
Although not determinative, Patent Owner’s allegations of
infringement of claims of the ’191 patent by approximately fifty financial
institutions is also a factor weighing toward the conclusion that the ’191
patent claims a method or apparatus that at least is incidental to a financial
activity, even if other types of companies also practice the claimed
invention. See Pet. 12 (representing Patent Owner has sued approximately
fifty financial institutions).
We have considered whether the Board’s determination that the ’191
patent claims a method or corresponding apparatus for performing data
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processing or other operations used in the practice, administration, or
management of a financial product or service should be changed in light of
the Patent Owner’s Response. See Inst. Dec. 16; AIA § 18(d)(1); 37 C.F.R.
§ 42.301(a). For the foregoing reasons, we maintain our determination that
the ’191 patent is directed to a financial product or service.
2. Exclusion for Technological Inventions
Second, Patent Owner contends that the inventions of the ’191 patent
are technological. PO Resp. 69–75. The definition of “covered business
method patent” in section 18 of the AIA expressly excludes patents for
“technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). To
determine whether a patent is for a technological invention, we consider
“whether the claimed subject matter as a whole recites a technological
feature that is novel and unobvious over the prior art; and solves a technical
problem using a technical solution.” 37 C.F.R. § 42.301(b).
The Office published a notice identifying examples of certain claim
drafting techniques that typically would not render an invention a
“technological invention.” Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,764 (Aug. 14, 2012). These are:
(a) Mere recitation of known technologies, such as
computer hardware, communication or computer networks,
software, memory, computer-readable storage medium,
scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non-obvious.
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(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Id.
The Board concluded at institution that the ’191 patent was not for a
technological invention. Inst. Dec. 16–19. Patent Owner also contends that
the ’191 patent is not eligible for covered business method patent review
because the invention of the ’191 patent is “for a machine that implements a
technological solution.” PO Resp. 69 (initial capitalization removed); see id.
at 69–75.
Specifically, Patent Owner contends the claims of the ’191 patent
solve the technical problem of distinguishing authentic data for web pages
from fraudulent data sent by a fraudulent web site. PO Resp. 69–70. Patent
Owner contends that the claimed subject matter as a whole provides a
technological solution—a computer-implemented system that includes a
processor, an authenticity stamp, and an authenticity key organized into a
specific structure, function and operation—that is novel and nonobvious. Id.
at 70–74.
We consider whether the claimed subject matter as a whole has a
technological feature that solves a technical problem using a technical
solution. See Versata Dev. Grp., 793 F.3d at 1326 (putting aside the
regulation’s definition of novel and nonobvious because “presumably the
invention under review, since it has already been covered by an issued
patent, was earlier determined by the USPTO to be novel and nonobvious”
and analyzing whether the patent was for a technological invention based on
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whether the patent has a technological feature that solves a technical
problem using a technical solution).
Neither the problem addressed nor the solution that solves the
problem addressed by the ’191 patent is technological. As Patent Owner
acknowledges, the problem addressed is distinguishing authentic web pages
sent by a legitimate web site from fraudulent web pages sent by a fraudulent
site. See PO Resp. 69, 70. To solve the problem that users have difficulty
distinguishing authentic from non-authentic web pages, the invention as a
whole displays an icon or other “authenticity stamp” to indicate to the user
that the web site is authentic. See Ex. 1001, Abstract (“The present
invention provides for an icon with an additional level of functionality that
allows a user to validate that current information (e.g., a web page)
originates from the true owner. . . .”), 2:58–60, Figs. 1, 2 (disclosing that a
web page that has been authenticated according to the techniques described
by the ’191 patent includes “all of the information in the same format as the
non-authenticated page” and also includes an “authenticity stamp.” ), 12:9–
14:31 (all claims require retrieving an authenticity stamp from a preferences
file); see also PO Resp. 3–4 (describing the problem of fraudulent web pages
from an Internet user’s point of view).
Displaying an authenticity stamp to indicate to the user that the web
site is authentic is not a technological solution. This is indicated by the
functional nature of the claims. For instance, some claims require “verifying
authenticity . . . based on the authenticity key” or “validating [a web page]
based on the authenticity key,” without specifying the technical operations to
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be used to verify or validate other than the general statement “based on the
authenticity key.” Ex. 1001, 12: 23–25 (claim 3), 12:48–51 (claim 13).
A feature of the solution is an “authenticity key.” The technological
features for the authenticity key are not recited by the claims. Rather, the
claims recite how the authenticity key is used—inserting an authenticity key
or a second authenticity key into data or data having an authenticity key
(independent claims 1, 17, 29, 31, 32; dependent claims 13, 23), receiving an
authenticity key from a third party (claim 11), verifying or validating data
based on an authenticity key (claims 3, 13), and displaying data in response
to the verification of the authenticity key (claim 4).
Moreover, the ’191 patent discloses using cryptographic techniques to
generate the authenticity key and verify authenticity, without specifying
cryptographic algorithms for encryption and decryption. See id. at 6:28–32.
Instead, the ’191 patent incorporates by reference a cryptography text (id. at
10:44-48), which further undermines Patent Owner’s contention that the
invention of the ’191 patent has a technological feature that solves a
technical problem using a technical solution. See Versata Dev. Grp., 793
F.3d at 1326 (citing 77 Fed. Reg. at 48,764) (explaining that the Office Trial
Practice Guide indicates mere “recitation of known technologies,” “reciting
the use of known prior art technology,” and “combining prior art structures
to achieve the normal, expected, or predictable result of that combination”
do not help support a finding that the invention is within the technological
invention exception).
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The independent claims recite that the authenticity stamp is retrieved
from a preferences file and dependent claims 5 and 6 further recite the
authenticity stamp is displayed for certain data. Id. at 12:17–18 (claim 1),
12:29–32 (claims 5 and 6), 12:66–67 (claim 17), 14:9–10 (claim 29), 14:21–
22 (claim 31), 14:31 (claim 32). Further, the ’191 patent describes an
authenticity stamp as having a number of variations, including graphics
only, text only, text and graphics, audio, blinking (Ex. 1001, 2:67–3:7), but
does not describe novel or nonobvious technology used to implement those
features.
Moreover, Patent Owner’s contention that subject matter of the
invention solves a technological problem using a technical solution is
undermined by disclosures of the ’191 patent indicating the components of
the computer system are known technologies. See Versata Dev. Grp., 793
F.3d at 1326 (citing 77 Fed. Reg. at 48,764) (explaining that the Office Trial
Practice Guide indicates mere “recitation of known technologies,” “reciting
the use of known prior art technology,” and “combining prior art structures
to achieve the normal, expected, or predictable result of that combination”
do not help support a finding that the invention is within the technological
invention exception). For example, the ’191 patent discloses known
computer systems and devices running known operating systems (Ex. 1001,
3:30–34, 10:30–35, 11:7–12), known user input devices (id. at 11:3–6), and
known networks and networking and communication protocols (id. at 3:38–
44, 10:67–11:3, 11:12–17). The ’191 patent further discloses that the system
is programmed using known programming and scripting languages,
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programmed using known data structures (id. at 10:35–40), and discloses
that the system uses “conventional techniques for data transmission,
signaling, data processing, network control, and the like” (id. at 10:41–44).
We are not persuaded that the claimed subject matter, as a whole,
requires any specific, unconventional software, computer equipment,
cryptography algorithms, processing capabilities, or other technological
features. Furthermore, Patent Owner’s identification of allegedly novel or
unobvious steps, such as limitations in the independent claim and dependent
claims 2 and 4 (PO Resp. 36), does not persuade us that any of the steps
require the use of specific computer hardware alleged to be novel and
unobvious over the prior art. Reciting the use of known prior art technology
to accomplish a process or method, even if that process or method is novel
and non-obvious does not render the claimed subject matter a technological
invention. See 77 Fed. Reg. at 48,764.
Having considered Patent Owner’s Response, we maintain the
determination that the ’191 patent is not a technological invention.
3. Eligible for Covered Business Method Patent Review
Having determined that the ’191 patent claims a method or
corresponding apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service and does not fall within the exception for technological inventions,
we maintain our determination that the ’191 patent is eligible for a covered
business method patent review.
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B. Petitioner’s Motion to Exclude
Petitioner seeks to exclude various portions of the testimony of
Dr. Jonathan Katz based on three theories why such testimony is improper
expert testimony under Federal Rule of Evidence 702 (“FRE 702”).5 See,
e.g., Mot. 13 (conclusion). As movant, Petitioner bears the burden of
showing by a preponderance of evidence that portions of Dr. Katz’s
testimony should be excluded. 37 C.F.R. §§ 42.1(d) (evidentiary standard),
42.20(c) (“The moving party has the burden of proof to establish it is
entitled to the requested relief.”). We address each of Petitioner’s three
theories in turn.
1. Testimony from the Perspective of One of Ordinary Skill in the Art
First, Petitioner asserts paragraphs 19–22, 33, 38, 40, 47, 50, and 54
of Dr. Katz’s declaration (Exhibit 2008) should be excluded and expunged
because those paragraphs require testimony from the perspective of one of
ordinary skill in the art, which (according to Petitioner) Dr. Katz was not at
the time of the invention. See, e.g., id. at 2–8, 13. Thus, according to
Petitioner, Dr. Katz had “no reasonable basis on which to opine.” Id. at 3.
Therefore, Petitioner reasons that Dr. Katz’s testimony in the enumerated
paragraphs is improper because “those paragraphs cannot ‘help the trier of
fact to understand the evidence or to determine a fact in issue,’ and are not

5 With some enumerated exceptions, the Federal Rules of Evidence apply to
a covered business method patent review. 37 C.F.R. § 42.62.
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‘based on sufficient facts or data,’” as required by FRE 702. Id. at 8; see id.
at 2–8, 13.
With support of its expert witness, Mr. Bruce Schneier, Petitioner
asserts, and Patent Owner does not contest, that the relevant time period of
the invention of the ’191 patent is “in or around the year 2000.” Id. at 3.
This is consistent with our determination in the Final Written Decision in
CBM2014-00100, and based on the record in that proceeding, that the
effective filing date of claims 1–32 of the ’191 patent is September 6, 2000.
PNC Bank, CBM2014-00100, slip. op. at 32–34 (Paper 43).
Patent Owner opposes, contending that Dr. Katz testified from the
perspective of one of ordinary skill in the art at the time of the invention
based on Dr. Katz’s later-acquired knowledge. PO Opp. 3. Patent Owner
contends that Dr. Katz’s master’s and Ph.D. in computer science from
Columbia University in 2001 and 2002 demonstrate he would have
“acquired an understanding of the knowledge and perspective” of one of
ordinary skill in the art around the year 2000. Id. at 4 (citing Ex. 2008 ¶ 4).
Patent Owner also contends that Dr. Katz’s teaching, research and
publication experience as a university professor further indicate that he is
qualified to provide expert testimony. Id. at 4–7. Specifically, Patent
Owner relies on Dr. Katz’s experience “teaching cryptography and computer
security, at both the undergraduate and graduate levels, at both Columbia
University and the University of Maryland.” Id. at 6. Patent Owner also
relies on Dr. Katz’s uncontested testimony that he has also “written a
textbook on cryptography, as well as a book on digital signature schemes,”
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which are “widely used at universities . . . around the world” and currently
serves “on the editorial board of the Journal of Cryptography.” Id. (quoting
Ex. 2008 ¶ 5); see also Ex. 3001 (curriculum vitae of Dr. Katz).6
Petitioner’s contentions focus narrowly on whether Dr. Katz was one
of ordinary skill in the art at the time of the invention. Mot. 2–8, 13; Mot.
Reply 1–4. Notably, Petitioner does not cite support for its legal proposition
that Dr. Katz must have been one of ordinary skill in the art at the time of
invention. See generally Mot. 2–8, 13; Mot. Reply 1–4.
Contrary to Petitioner’s contentions, the proper inquiry is whether one
is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating
Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of
discretion to permit a witness to testify as an expert on the issue[s] of . . .
invalidity unless that witness is qualified as an expert in the pertinent art.”).
The Federal Circuit continues by noting that being one of ordinary skill in
the art would not “automatically entitle[] a witness to testify as an expert” as
to invalidity issues, but the Federal Circuit clarifies that it does not
“suggest[] that Rule 702 requires a witness to possess something more than
ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore,

6 Dr. Katz’s declaration states that his curriculum vitae is included as
Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also
incorrectly states in its Motion that Dr. Katz’s declaration from
IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this
proceeding.” Mot. 4. Accordingly, for clarity and completeness of the
record in this proceeding, we have entered Dr. Katz’s Declaration, filed as
Exhibit 2007 (including its Attachment A) in IPR2014-00475, as
Exhibit 3001 in the instant proceeding.
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the Federal Circuit has upheld admission of the testimony of an expert who
“had experience relevant to the field of the invention,” despite admitting that
he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris
Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011)
(non-precedential) (upholding admission of the testimony of an expert who
“had experience relevant to the field of the invention,” despite admission
that he was not a person of ordinary skill in the art). In holding that, to
testify as an expert under FRE 702, one must be qualified as an expert in the
pertinent art, the Federal Circuit has not placed temporal restrictions, such as
requiring an expert be qualified in the pertinent art at the time of the
invention.
Patent Owner asserts that the “field of the ’191 patent” is
“cryptography and computer security” (PO Opp. 1), which Petitioner does
not challenge. The ’191 patent indicates its “Field of the Invention” is
“computer security” and techniques “for authenticating a web page.”
Ex. 1001, 1:14–18. We, however, find that the ’191 patent concerns the
more general area of “information technology.”
The ’191 patent concerns general computer systems using known
technologies and is not limited to cryptographic technology or specialized
authentication techniques. See, e.g., Ex. 1001 3:26–55 (describing client-
server communications), 4:5–12 (describing using “normal page requests”
using a HTTP or HTPPS page request), 10:35–40 (describes using known
programming and scripting languages), 10:41–44 (describes using
“conventional techniques for data transmission, signaling, data processing,
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network control, and the like”). In addition, Petitioner’s expert witness,
Mr. Schneier, testifies that:
one of ordinary skill in the art would not be of ordinary skill in
the field of cryptography, which would be beyond the scope of
what the ’191 Patent is attempting to teach in any event. A
person of ordinary skill in the field of the ’191 Patent would not
be qualified to either design or analyze cryptographic algorithms
or protocols, but would be qualified to use existing designs in
more general computer systems.
Ex. 1008 ¶ 36. Mr. Schneier’s testimony that one of ordinary skill in the
art “would not be qualified to either design or analyze cryptographic
algorithms or protocols” and “would be qualified to use existing designs in
more general computer systems” further supports our finding that the
pertinent art concerns information technology, not merely the narrower field
of cryptography and computer security.
Dr. Katz’s credentials, in the pertinent art of information technology
(which includes computer security and cryptography), qualify him to
provide testimony concerning unpatentability of the challenged claims of the
’191 patent. Moreover, Dr. Katz testifies that he is “the director of the
Maryland Cybersecurity Center as well as a tenured, full professor at the
University of Maryland, with a joint appointment in the Department of
Computer Science and the University of Maryland Institute for Advanced
Computer Studies.” Ex. 2008 ¶ 3.
For these reasons, we are not persuaded that paragraphs 19–22, 33,
38, 40, 47, 50, and 54 of Dr. Katz’s declaration (Exhibit 2008) should be
excluded.
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2. Meaning of Claim Term “File” in Paragraph 22
Petitioner also contends that Dr. Katz’s opinion set forth in
paragraph 22 of his declaration is not supported as required by FRE 702.
Mot. 8–12. Paragraph 22 reads as follows:
22. It is also my opinion that one of ordinary skill in the
art at the time of the invention of the ‘191 patent would have
understood the claim term “file” as “a uniquely named collection
of data stored on a hard drive, disk, or other storage medium and
treated as a single entity,” as set forth in the Patent Owner’s
Response. Understanding a “file” as merely a “collection of
related records treated as a unit” is too broad since, for example,
one of ordinary skill in the art would not have understood that
medical records relating to a single patient but stored in
geographically distinct locations, and not uniquely named,
constitute a “file.”
Ex. 2008 ¶ 22. Petitioner contends that (i) Dr. Katz did not provide any
evidence to support his definition of the term “file” (Mot. 11); (ii) Dr. Katz
did not consult any technical dictionaries (id. at 9), and (iii) Dr. Katz “did
not come up with the proposed construction, but took it from the Patent
Owner’s Response” (id. at 9–10).
In response, Patent Owner correctly notes that Dr. Katz’s testimony in
paragraph 22 provides an illustration differentiating his construction from a
broader construction (i.e., the medical record illustration). PO Opp. 8.
Patent Owner also cites to Dr. Katz’s deposition testimony that further
elaborates on Dr. Katz’s construction. Id. at 8–10.
We will not exclude paragraph 22 of Dr. Katz’s declaration testimony
because (1) Dr. Katz provided, in his declaration, some reasoning (i.e., the
medical record illustration) regarding why his construction is narrower than
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a broader construction at issue in the proceeding, and (2) Dr. Katz provided,
in his deposition testimony, additional reasoning regarding his opinion
regarding his proposed construction, as described by Patent Owner in its
Opposition. Id. at 8–10.
For these same reasons, we do not agree with Petitioner (Mot. 8) that
paragraph 22 should be accorded no weight under 37 C.F.R. § 42.65(a). We
will, however, weigh Dr. Katz’s testimony in accordance with his
admissions identified by Petitioner.
3. Paragraphs 8, 11–13, 19–21, 23–30, 32–40, 42–48, 50–52, and 54
Petitioner contends that paragraphs 8, 11–13, 19–21, 23–30, 32–40,
42–48, 50–52, and 54 of Dr. Katz’s declaration “are replete with similar
unsupported and unsubstantiated conclusory opinions.” Mot. 12–13.
Petitioner has two specific arguments.
First, concerning paragraph 50, Petitioner contends that “[Dr.] Katz
concludes that ‘Houser and Yoshiura are not motivated by the same
concern,’ yet fails to include a single supporting citation, either to the text of
the references themselves or otherwise.” Mot. 12. We will not exclude
paragraph 50 because Dr. Katz provides reasoning to support his conclusion.
Ex. 2008 ¶ 50. Specifically, as shown below, Dr. Katz contrasts the two
references:
It is my opinion, however, that Houser and Yoshiura are not
motivated by the same concern as alleged by the Petitioner.
Rather, Houser is directed to displaying the handwritten initials,
signature, or other graphic of an author of an electronic document
only when the content of the electronic document matches the
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content at the time when the signature was applied. Yoshiura, in
contrast, is directed to identifying a recipient of electronic digital
content who has produced illegal copies of that content.
Id.
Second, concerning paragraphs 19, 20, and 21, Petitioner contends
that these paragraphs should be excluded because “[Dr.] Katz makes blanket
statements about the meaning of claim terms, and then asserts that such
meanings are ‘also consistent with the patent specification,’ without so much
as a single supporting citation.” Mot. 12.
We will not exclude paragraphs 19, 20, and 21 of Dr. Katz’s
declaration. Although Petitioner is correct that Dr. Katz does not support his
assertion that his construction is “also consistent with the patent
specification,” Petitioner ignores Dr. Katz’s reliance on the plain language
of the claims for support. For example, with regard to the claim term
“transforming,” Dr. Katz opines:
It is my opinion that one of ordinary skill in the art at the time of
the invention of the ‘191 patent would have understood the claim
term “transforming” as “changing” as set forth in the Patent
Owner’s Response. This is clear from the language of the claims,
which describe, e.g., “transforming … received data by inserting
an authenticity key.”
Ex. 2008 ¶ 19.
We also agree with Patent Owner that Dr. Katz provided citations to
the ’191 patent in paragraphs 11, 12, and 13 (PO Opp. 7), which further
undercuts Petitioner’s allegations.
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Thus, we conclude that Petitioner has not met its burden, as movant,
to show why paragraphs 8, 11–13, 19–21, 23–30, 32–40, 42–48, 50–52, and
54 of Dr. Katz’s Declaration should be excluded or accorded no weight.
4. Conclusion
For the reasons given, we deny Petitioner’s Motion to Exclude certain
paragraphs of Dr. Katz’s declaration testimony.
C. Claim Construction
In a covered business method patent review, a claim in an unexpired
patent shall be given its broadest reasonable construction, in light of the
specification of the patent in which it appears. 37 C.F.R. § 42.300(b);
see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest
reasonable construction standard in a covered business method patent
review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79
(Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs.,
LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms
are presumed to be given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment
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appearing in the written description should not be read into the claim if the
claim language is broader than the embodiment. SuperGuide Corp. v.
DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also
consult the patent’s prosecution history in proceedings in which the patent
has been brought back to the agency for a second review.” Microsoft Corp.
v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the
terms below and discuss terms relative to prior art disclosures in accordance
with these principles.
The parties each propose constructions for various claim terms and
oppose several of one another’s proposed constructions. Pet. 16–27; PO
Resp. 9–29; Reply 3–7. We address claim terms as necessary for this
decision.
The parties also refer to claim constructions from prior litigation
involving the ’191 patent. Pet. 16–20; PO Resp. 14–19; see also Ex. 1007
(Mem. Op. and Order, Secure Axcess, LLC v. Bank of Am. Corp., No. 6:10-
cv-00670 (E.D. Tex. July 9, 2012)). We apply a different claim construction
standard than that applied by a district court, and are not generally bound by
a construction of a claim term using a different claim construction standard.
Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015).
Nonetheless, we are mindful of the constructions by the District Court,
including constructions of the terms “authenticity key,” “preferences file,”
and “authenticity stamp.” Ex. 1007, 21. Those terms, however, need not be
construed expressly for this decision, so we need not determine whether
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those constructions are consistent with the broadest reasonable construction
of the terms. Cf. Power Integrations, 797 F.3d at 1327 (“We do not hold
that the board must in all cases assess a previous judicial interpretation of a
disputed claim term.”). Furthermore, our analysis in this Decision is not
impacted by whether we apply the broadest reasonable interpretation or the
Phillips standard. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005).
1. “File”
Each of the challenged independent claims recites “file” and, more
specifically, “a preferences file.”7 Challenged independent claims 1, 29, and
31 each recites “an authenticity stamp is retrieved from the preferences file,”
and independent claim 32 similarly recites “retrieving an authenticity stamp
from the preferences file.” Additionally, each of the challenged claims
requires that the authentication key either be retrieved to locate a preferences
file or to be able to locate a preferences file. The dependent claims do not
recite additional features or functions for a file. Thus, the plain language of
the claims requires a “file” to be able to store something that can be
retrieved.
The Specification describes exemplary embodiments of a preferences
file. First, in describing exemplary communications among computer

7 Although the District Court construed “a preferences file” as “a file
containing one or more authenticity stamps,” the District Court did not
construe separately the more general term “file.” Ex. 1007, 9–10.
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components, the Specification indicates a software component (i.e., “a plug-
in”) “reads the preferences file,” “decrypts” the preferences file, and
determines the location of the preference file. Ex. 1001, 4:34, 4:40–41. The
Specification also explains that “the location of the file is not readily
known” to the software component. Id. at 4:37–38. The Specification
further indicates that “[i]n exemplary embodiments, the preferences file is
stored on the user’s8 110 file system.” Id. at 4:35–37. In the context of
other exemplary embodiments, the Specification describes that the
“preferences file is used to store information, such as a user’s secure word”
and “[p]referably the preferences file is placed in a random directory to help
obscure the location of the preferences file and facilitate the creation of
unique user configurations.” Id. at 9:52–56. Thus, the Specification
indicates that a file “is used to store information” and, in some exemplary
embodiments, may be stored on a file system of a computer or may be
placed in a random directory.
In the Decision to Institute, we did not construe expressly “file” but
we relied on the definition of “file” from a technical dictionary that predates
the effective filing date of the ’191 patent—“[a] collection of related records
treated as a unit”—for its ordinary and customary meaning as would be
understood by one of ordinary skill in the art. Ex. 3002 (defining “file” in

8 The Specification refers to item 110 both as “user 110” and “user computer
110.” Ex. 1001, 4:51–52, 4:60.
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the context of computer science).9 Both Patent Owner’s expert witness (Dr.
Katz) and Petitioner’s expert witness testifying in support of Petitioner’s
Reply (Mr. Román) agree that the MCGRAW-HILL DICTIONARY OF
SCIENTIFIC AND TECHNICAL TERMS, on which we relied, is an authoritative
reference in the field of computers generally. Ex. 1019, 79:5–11; Ex. 1016
¶ 62.
(i) Patent Owner’s Contentions and Evidence
Patent Owner does not agree with the construction of “file” in the
Decision to Institute. PO Resp. 19–21. Dr. Katz opines that construction is
incorrect because it would encompass (presumably, non-electronic) medical
records for a single patient stored in geographically distinct locations.
Ex. 2008 ¶ 22.
Instead, Patent Owner proposes “file” should be construed as “a
uniquely named collection of data stored on a hard drive, disk or other
storage medium and treated as a single entity.” PO Resp. 19–21. For
support, Patent Owner relies on a definition of “file” in the “computer
information” context from a general-purpose dictionary published around
the effective filing date of the ’191 patent. Id. at 19–20 (citing Ex. 200610).

9 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 752
(5th ed. 1994)
10 MICROSOFT ENCARTA COLLEGE DICTIONARY 532 (2001) (defining “file”
as “3 COMPUTER INFORMATION a uniquely named collection of
program instructiso ions or data stored on a hard drive, disk, or other storage
medium and treated as a single entity.” Patent Owner does not explain why
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Acknowledging that its dictionary definition was published after the
priority date of the ’191 patent, Patent Owner contends that its proposed
construction “is consistent” with a general purpose dictionary that was
published before the priority date. PO Resp. 19–21. That dictionary—THE
OXFORD AMERICAN DICTIONARY AND LANGUAGE GUIDE—defines “file” in
the computing context as “a collection of (usu. related) data stored under one
name” in the computer context. Id. at 20 (citing Ex. 200911). Although the
Oxford definition provides additional support for a portion of Patent
Owner’s proposed construction based on the MICROSOFT ENCARTA COLLEGE
DICTIONARY (i.e., a uniquely named collection of data), the Oxford
definition does not provide express support for the portion of Patent Owner’s
construction requiring “data to be stored on a hard drive, disk, or other
storage medium and treated as a single entity.”
Patent Owner also contends that its proposed construction “is
consistent” with the Specification. PO Resp. 20–21. Specifically, Patent
Owner contends that the Specification’s indication that, in exemplary
embodiments, the preferences file may be stored on a computer file system
“indicates that the preferences file is stored on a storage medium and is
uniquely named.” PO Resp. 20–21 (citing Ex. 1001, 4:35–37). Patent
Owner further contends that the Specification’s description that a software
component “reads the preferences file to determine the authenticity stamp

“program instructions” from the definition was not included in its proposed
construction.
11 THE OXFORD AMERICAN DICTIONARY AND LANGUAGE GUIDE 358 (1999).
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and how it is to be displayed” “indicates that the preferences file is stored on
a storage medium and is uniquely named.” PO Resp. 20 (citing Ex. 1001,
4:40–41). Patent Owner’s expert witness, Dr. Katz, supports Patent Owner’s
proposed construction. Ex. 2008 ¶ 22 (opining that one of ordinary skill in
the art would have understood “file” in the manner defined by Patent
Owner).
(ii) Petitioner’s Contentions and Evidence
In reply, Petitioner relies on Mr. Román’s testimony and evidence.
Reply 3–7. Mr. Román testifies that he has over thirty years’ experience “in
the design, implementation, testing, and analysis of computer software,
firmware, and hardware,” including “analysis of file systems including
source code and data structures.” Ex. 1016 ¶ 16; see also Ex. 1017
(Curricumlum Vitae). Patent Owner does not challenge Mr. Román’s
qualifications.
Mr. Román testifies that the construction of “file” as “a collection of
related records treated as a unit” is within the broadest reasonable
construction in light of the Specification. Ex. 1016 ¶ 48; Reply 5.
Mr. Román, however, further testifies, in addition to including “related
records,” that he would add “that a file can be a collection of related data
that is treated as a unit.” Ex. 1016 ¶ 48; Reply 5.
Mr. Román’s opinion is supported by a variety of evidence. First, Mr.
Román’s testimony includes the origin and historical evolution of the term
“file.” Ex. 1016 ¶¶ 49–55; Reply 5. Mr. Román testifies that the word
“file” originally arose outside of the computer context and later a computer-
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specific definition was adopted. Ex. 1016 ¶¶ 49–53. Second, Mr. Román’s
opinion is based on his knowledge of specific file architectures, including
files used by the 1984 Apple Macintosh, files used in the Unix operating
system at least in 1986, and files used by Windows 3.1. Ex. 1016 ¶¶ 56–61,
78–80; Reply 5. Third, Mr. Román’s opinion is supported by multiple
dictionary definitions. Reply 5 (citing Ex. 1016 ¶¶ 62–74, 77); id. ¶ 62
(testifying that the dictionary used in the Decision to Institute to be “an
authoritative reference in the field of computers generally”); id. ¶ 64–68
(relying on computer-science specific definitions in an AMERICAN HERITAGE
DICTIONARY (Ex. 1020)); id. ¶ 69–73 (relying on the ENCYCLOPEDIA OF
COMPUTER SCIENCE (Ex. 1022)); id. ¶ 74 (relying on MERRIAM WEBSTER’S
COLLEGE DICTIONARY (Ex. 1024)); id. ¶ 77 (relying on the DICTIONARY OF
COMPUTING by Oxford University Press (Ex. 1025)).
Mr. Román also testifies that the construction of “file,” as when read
in view of the Specification, would be understood to be “a collection of
related records data treated as a unit” and would be understood to include
“related data.” Reply 5–6 (citing Ex. 1016 ¶¶ 84–90). In his testimony, Mr.
Román identifies nine occurrences of the term “file” in the written
description of the ’191 patent. Ex. 1016 ¶¶ 86–88. Of the nine, Mr. Román
identifies that only one provides insight into the meaning of “file”—the
description of storing the preferences file on a file system in “preferred
embodiments.” Id. ¶¶ 86–87. Because the Specification described storing
the file on a file system only in “preferred embodiments,” Mr. Román opines
that “one of ordinary skill in the art would understand such a feature to be
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strictly optional, and in no way a requirement of the claimed invention.” Id.
¶ 88. Mr. Román also testifies that he found “no evidence [in the
prosecution history] that the applicant intended the term ‘file’ to have
anything other than its plain and ordinary meaning.” Id. ¶ 89.
(iii) Analysis
We do not adopt Patent Owner’s proposed construction of “file” as “a
uniquely named collection of data stored on a hard drive, disk or other
storage medium and treated as a single entity.” PO Resp. 19–21. First,
although Dr. Katz nominally supports Patent Owner’s proposed construction
in his declaration, his deposition testimony diminishes the weight we give
Dr. Katz’s declaration testimony. Compare Ex. 2008 ¶ 22 (opining that one
of ordinary skill in the art would have understood “file” in the manner
defined by Patent Owner), with Ex. 1019, 66:21–67:3 (referring to
Ex. 2008 ¶ 22), 90:5–9 (Dr. Katz acknowledges that he “believe[s]” that he
took his definition of “file” set forth in his declaration “from the Patent
Owner’s response” and he “would have used different words” if he had
formulated a construction without first being shown Patent Owner’s
proposed construction) (emphasis added). Furthermore, other than the
medical record example, Dr. Katz provides no specific reasoning to support
his position. Thus, we accord Dr. Katz’s testimony in this regard relatively
little weight.
Second, Mr. Román testifies that Patent Owner’s proposed
construction “imposes additional requirements beyond those reflected in
many of the most respected and authoritative references available in or
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around the year 2000.” Ex. 1016 ¶ 83; see also Exs. 1020, 1022, 1024,
1025, 3002 (dictionary definitions discussed by Mr. Román).
Third, Mr. Román provides examples of computers and operating
systems that do not require files to be uniquely named—(i) example in
which a file may have two names (Ex. 1016 ¶ 79), (ii) an example in which
multiple files can have the same name and be distinguished by different
version numbers (Ex. 1016 ¶ 80), (iii) an example in which file names are
not unique and files are distinguished based on storage location of the file
(Ex. 1016 ¶¶ 78–79). Thus, Mr. Román’s testimony and the evidence on
which his testimony is based contradicts Patent Owner’s proposed
construction that requires “a uniquely named collection of data.”
In its argument concerning the art, Patent Owner further contends that
the term “file” also requires that data must be treated as a unit by a file
system, thus implicitly adding the phrase “by a file system” to its
construction. PO Resp. 33–34. Based on Mr. Román’s testimony and
evidence, we disagree with Patent Owner’s assertion that a file must be
“treated as a unit by a file system.” See, e.g., Reply 12 (citing Ex. 1016
¶¶ 63, 66, 69, 70, 74, 77). Mr. Román testifies that the sole reference in the
Specification was in the context of “preferred embodiments” and so one of
ordinary skill in the art would not understand that to be required. Similarly,
the evidence relied on by Mr. Román does not require a file system. Other
than a preferred embodiment in the Specification, the evidence of record that
best seems to support Patent Owner’s assertion that “a file system” would be
required is one of Patent Owner’s two dictionary definitions—MICROSOFT
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ENCARTA COLLEGE DICTIONARY indicating a file is “stored on a hard drive,
disk or other storage medium and treated as a single entity” (Ex. 2006)—the
definition that post-dates the effective date of the claims.
Addressing Mr. Román’s testimony that supports the construction in
the Decision to Institute, Patent Owner contends that this construction is
overly broad. Obs. 3–8 (citing Ex. 2010, 9:24–10:2, 12:4–11, 12:20–13:4,
13:16–21, 24:23–25:1). According to Patent Owner, Mr. Román testified
that a footer, a header, a section, or a paragraph in an electronic document
created by particular commercial word processing software in 2015 (i.e.,
fifteen years after the priority date) would constitute a file under the Board’s
construction in the Decision to Institute. Obs. 3–8 (citing Ex. 2010, 9:24–
10:2, 12:4–11, 12:20–13:4, 13:16–21, 24:23–25:1, 29, 5–11). According to
Patent Owner’s attorney-argument, a footer, a header, a section, or a
paragraph in such an electronic document actually would not be a file and so
the construction in the Decision to Institute is overly broad. See, e.g.,
Tr. 41:3–7 (arguing that “you would not consider” a footer in an electronic
document to be a file).
Petitioner disagrees with Patent Owner’s characterization of
Mr. Román’s testimony. Resp. to Obs. 2–3 (citing Ex. 2010, 70:18–
71:2112). Petitioner cites to testimony clarifying that Mr. Román’s

12 “Q: Now was your testimony about the header, footer, and footnote . . .
based on your understanding that Microsoft Word, at least in 2015 . . . uses a
component architecture for structuring its documents?
A: Yes.
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testimony only addresses the narrow context of Patent Owner’s hypothetical
question—how a particular word processor in 2015 treats a footer, a header,
a section, or a paragraph in an electronic document. Id. Specifically,
Petitioner identifies Mr. Román’s testimony that a footer, a header, a section,
or a paragraph in an electronic document would not be a file, unless that data
was being stored in “a component document architecture,” such as one used
in 2015 by the particular word processing program at issue. Resp. to Obs.
2–3 (citing Ex. 2010, 70:18–71:21 (contrasting footers and headers in a
document using a component document architecture with footers and
headers in a “ASCII text file”). Thus, we do not agree with Patent Owner’s
conclusion that the construction in the Decision to Institute is overly broad.
Furthermore, based on Mr. Román’s testimony and evidence,
however, we are persuaded that we should modify the construction in two
ways. First, we should add “related data” for the reasons enumerated in
Mr. Román’s testimony. We also note that, at the hearing, Patent Owner
repeatedly used the term “related data” in place of “related records” in the
proposed construction13 and, thus, appears not to object to this modification
to the construction of “file.” Second, in view of Mr. Román’s testimony that
a definition of “file” became “specifically tailored to the field of computers”
and in view of the computer context of the ’191 patent, we are persuaded we

13 See, e.g., Tr. 46:5–7 (arguing that “there is a dispute over what . . . related
data needs to be treated as a unit in order to be considered to be a file”); id.
at 51:11–13 (arguing “a complete definition for the term file [requires]
related data to be treated as a unit by a file system”); id. at 52:9–10 (arguing
“a separate file, meaning that it is seen as related data by the file system”).
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should add “electronic” to the construction of “file.” Ex. 1016 ¶¶ 52–53; id.
¶ 54 (describing “electronic files”). Both parties recognize the electronic
context of the ’191 patent. Pet. 5 (“The ’191 Patent relates to authenticating
a web page. . .”); PO Resp. 3 (describing the inventors of the ’191 patent as
solving “the problems associated with fraudulent web pages. . .”). We
further note that Petitioner agrees that files in the context of the ’191 patent
are electronic files.14
For these reasons, we construe “file” to mean “an electronic collection
of related records or related data treated as a unit.”
2. “Transforming” or “Transforms”
Independent claim 1 recites “transforming, at an authentication host
computer, received data by inserting an authenticity key to create formatted
data.”15 Independent claim 32 recites “transforms the received data by
inserting an authenticity key to create the formatted data.”
Petitioner asserts the broadest reasonable construction of
“transforming” is “formatting” and the broadest reasonable construction of
“transforms” is “formats.” Pet. 24–25. Petitioner indicates that the term

14 Tr. 16:1–12 (Petitioner’s counsel indicating the context of the ’191 patent
and the applied art (Houser) deal with “electronic documents” and
“electronic data”).
15 Although claims 10 and 13 are not challenged in this Petition, those
claims respectively recite, similarly to claim 1, “further transforming
received data by inserting a second authenticity key into the received data”
and “further transforming by inserting a second authenticity key into the
formatted data.”
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“transform” does not appear in the written description of the ’191 patent. Id.
Petitioner further relies on the testimony of its expert witness, Mr. Schneier,
that the construction of “transforming” to mean “formatting” finds support
in the written description of the ’191 patent. Id. at 26–27 (citing Ex. 1008
¶¶ 38–43).
In contrast, Patent Owner contends “transforming” means “changing.”
PO Resp. 27–29. Patent Owner supports its contention with a general
purpose dictionary definition. Id. at 27. Patent Owner further relies on the
language in claims 1, 10, and 13 that indicates how the transformation
occurs—by inserting an authenticity key. Id. at 27–28. Because the written
description describes inserting an authenticity key, Patent Owner contends
that the written description of the ’191 patent is consistent with its proposed
construction of “transforming” as “changing.” Id. at 28–29 (citing Ex. 1001,
1:55–57, 7:64–8:6).
We agree with Petitioner’s proposed construction. The language of
independent claims 1 and 32 each recites the result of transformation—
“transforming . . . to create formatted data” and “transforms . . . to create the
formatted data.” Further, as indicated by Petitioner’s declarant
Mr. Schneier, the written description of the ’191 patent does not describe
expressly “transforming” but expressly describes “a formatting step to create
formatted data, i.e., the web page.” Ex. 1008 ¶ 40; see Ex. 1001, 5:4–6
(“The logic of retrieving and formatting the requested page is described
below with reference to FIGS. 9 and 10.”). Being mindful not to import
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limitations from the Specification into the claims, we agree that the
Specification is consistent with construing “transform” to mean “format.”
The result of the recited transformation—formatted data—stays true
to the claim language and most naturally aligns with the Specification’s
description of the invention. See Translogic Tech., 504 F.3d at 1257 (“The
specification ‘is the single best guide to the meaning of a disputed term.’”)
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc)); cf. Phillips, 415 F.3d at 1316 (“The construction that stays true to the
claim language and most naturally aligns with the patent's description of the
invention will be, in the end, the correct construction.”) (citation omitted).
Further, the dependent claims do not have language that would indicate a
different construction.
For these reasons, we construe “transforming” as “formatting” and
“transforms” as “formats.”
3. “Received Data”
Independent claims 1, 31, and 32 recite “received data.”16 In the
Decision to Institute, in response to Patent Owner’s preliminary arguments,
we determined that independent claims 1, 31, or 32 did not require an
authentication host computer to receive data from outside of itself or from a

16 The District Court determined that no construction was necessary for
“received data.” Ex. 1007, 13–14. The District Court also rejected both
Patent Owner’s proposed construction of “data indicative of at least part of a
web page” and the defendants’ proposed construction of “a webpage or other
document requested by the user.” Id.
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device other than the authentication host computer. Inst. Dec. 10. We
consider this issue here based on the record as fully developed during trial.
For the following reasons discussed below, we do not construe the
independent claims 1, 31, and 32 to require an authentication host computer
to receive data from outside of itself or from a device other than the
authentication host computer.
In its Patent Owner Response, Patent Owner proposes, with support of
Dr. Katz, that “transforming, at an authentication host computer, received
data” (recited in independent claim 1), “instructions to format received data
by inserting an authenticity key to create formatted data” (recited in
independent claim 31), and “the authentication host computer receives the
data to create received data” (recited in independent claim 32) require the
authentication host computer “to receive data from outside of itself.” PO
Resp. 8–14; Ex. 2006 ¶ 20.
Petitioner opposes Patent Owner’s proposed construction that the
claim limitations which recite “received data” require an authentication host
computer to receive data from outside of itself. Reply 14–16. Petitioner
argues that Patent Owner’s proposed construction improperly imports
limitations from a single embodiment of the ’191 patent—using a web server
to forward a retrieved page to an authentication server. Id. at 15 (citing
Ex. 1001, 3:49–55, Fig. 4). Petitioner also indicates that the ’191 patent
discloses an alternative embodiment in which the logic of the authentication
server and the logic of the web server is combined on the same server.
Reply 15 (citing Ex. 1001, 4:57–58 (“the logic of the authentication server
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may be combined with the logic of the web server”), 8:17–18, Fig. 5). Thus,
contrary to Patent Owner’s proposed construction, the Specification
describes in that embodiment the authentication server receives data from
the web server logic and not from a device outside of the authentication
server.
With the support of Mr. Schneier, Petitioner proposes the term
“received data” encompasses “receiving data sent from a component in or
associated with the authentication host computer.” Pet. 22. Petitioner relies
on the plain language of the claim, the Specification, and testimony from
Mr. Schneier. Id. at 22–24 (citing Ex. 1001, 4:56–58, 8:17–18; Ex. 1008
¶ 54).
As an initial matter, in accordance with the plain language of the
claims and because the ’191 patent does not provide any special meaning for
the term “received data,” we construe “received data” to mean “data that has
been received.” The term “received data” implies data has been received but
does not itself require the data to be received at a particular time, in a
particular manner, by a particular device (such as an authentication host
computer), or from a particular device (such as a device other than an
authentication host computer).
None of independent claims 1, 31, or 32 expressly recites from where
the received data is sent, much less recites expressly that the data is sent
from a device other than the authentication host computer and, thus, would
be received “from outside of itself.” Of independent claims 1, 31, and 32,
only independent claim 32 expressly requires a particular device—“an
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authentication host computer”—to receive data. Independent claim 32 also
requires the authentication host computer to act on received data in a
particular manner—“wherein the authentication host computer receives the
data to create received data.” Similarly, independent claims 1 and 31 require
acting on received data in a certain manner—to transform (claim 1), or
format (claim 31), received data in a certain manner to create formatted data.
Thus, none of claims 1, 31, or 32 expressly requires an authentication host
computer to receive data from a device other than the authentication host
computer, as Patent Owner contends.
(i) Independent Claim 1
In reciting “transforming, at an authentication host computer, received
data,” independent claim 1 requires the transforming be performed by a
particular device—“an authentication host computer.” In reciting “received
data,” however, claim 1 impliedly requires data have been received but does
not require the data to be received by a particular device, such as an
authentication host computer.
This construction is consistent with the ’191 patent because claim 1
recites “an authentication host computer,” a term that does not appear in the
’191 patent other than in the claims and does not recite “an authentication
server,” a term that does appear in the written description of the ’191
patent.17 Because the ’191 patent discloses embodiments that do not require

17 Patent Owner apparently equates the recited “authentication host
computer” with the “authentication server” disclosed in the ’191 patent. See,
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an authentication server, we will not equate the claim term “authentication
host computer” with the disclosed authentication server. See Ex. 1001, 4:5–
43, Fig. 5 (using a web server that digitally signs without involving a
separate authentication server), id. at 4:57–58 (describing a combined web
server and authentication server where the authentication server receives
data from the web server logic), Figs. 9, 10. This view is confirmed by the
prosecution history of the ’191 patent. See Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult
the patent's prosecution history in proceedings in which the patent has been
brought back to the agency for a second review.”). The applicants during
examination deliberately removed “authentication server” from a pending
claim. Ex. 3003,18 11 (deleting “authentication server” from application
claim 8 in response to the Office action dated July 16, 2008). Later to
address a rejection that the claim did not recite patent-eligible subject matter,
the applicants added “an authentication host computer”—not “authentication
server”—to claim 1. Id. at 2 (adding “authentication host computer” to
application claim 1 in response to the Office action dated January 9, 2009).

e.g., PO Resp. 10–14 (relying on an “authentication server” depicted in
Ex. 1001, Figs. 9, 10 for support of Patent Owner’s contention that the
recited “authentication host computer” receives data from a web server).
18 Petitioner’s Exhibit 1002 is labeled “File Wrapper for US 7,631,191” but
the exhibit does not contain the file history of the ’191 patent. Thus, for
clarity and completeness, we have provided excerpts from the prosecution
history of the ’191 patent as Ex. 3003.
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Additionally, during examination, the applicants removed from
claim 1 a limitation specifying a source from which the data was received
and then deleting the receiving step entirely. Id. at 25 (removing the source
from which data was received by changing “receiving data from a client” to
“receiving data for a client” in claim 1 in response to the Office action dated
October 18, 2007); id. at 10 (then deleting the receiving step entirely by
deleting “receiving data for a client to create received data” in application
claim 1 in response to a later Office action dated July 16, 2008).
Thus, the applicants deliberately broadened claim 1 by removing a
limitation specifying from where the data is received. This further confirms
our determination that the transformation limitation in claim 1 should not be
construed to require the authentication host computer to receive data from
outside of itself or from another device (such as a client computer or a web
server), which is a more narrow construction than the plain language of the
claim requires.
(ii) Independent Claim 31
We turn to independent claim 31, which Patent Owner contends
requires an authentication host computer to receive data outside of itself and
further requires the authentication host computer to receive data from
another device. PO Resp. 42 (“[The prior art reference] does not disclose
that ‘the authentication host computer receives the data to create received
data, and transforms the received data’. . . as similarly recited in
independent claims 31 and 32”) (initial capitalization removed; emphasis
added).
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Contrary to Patent Owner’s arguments, Independent claim 31 does not
recite an “authentication host computer” but rather recites a “computer
readable medium having . . . instructions to format received data.” We are
not persuaded that the recited instructions must be executed by an
authentication host computer because other embodiments are described by
the ’191 patent, among them an embodiment using a web server that
digitally signs without involving separate authentication server (Ex. 1001,
4:5–43, Fig. 5) and a combined web server and authentication server (id.
at 4:57–58).
(iii) Independent Claim 32
Turning to independent claim 32, the plain language “receiving, at a
client computer, formatted data from a[n] authentication host computer
wherein the authentication host computer receives the data to create received
data” requires the authentication host computer to receive data and to create
received data. We are not persuaded, however, that independent claim 32
requires the authentication host computer to receive data from another
device, as Patent Owner contends. See, e.g., PO Resp. 40 (arguing “Houser
cannot possibly disclose an authentication host computer first receiving data
and then transforming that data because the data that is processed at the
computer in Houser is created rather than received at the computer”).
We credit Mr. Schneier’s testimony that the express language of the
claim would not be understood by one of ordinary skill in the art to limit or
define the location from which the received data originates. Ex. 1008 ¶ 54.
Mr. Schneier testifies: “[i]n absence of express guidance from the
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specification, one of ordinary skill in the art would understand the claim
language as supporting embodiments that are not limited to data transmitted
between remotely situated devices.” Id. This supports Mr. Schneier’s
testimony that “received data” would encompass “receiving data sent from a
component in or associated with the authentication host computer.” Id.; see
id. ¶¶ 52–54.
Turning to Dr. Katz’s testimony on this issue, Dr. Katz testifies that
independent claim 32 requires “the authentication host computer to receive
data before it can transform that data” because “[i]f the data being
transformed were already located at the authentication host computer, there
would be no need to receive the data first.” Ex. 2008 ¶ 20. We give
Dr. Katz’s testimony less weight than Mr. Schneier’s opposing testimony.
First, Dr. Katz’s testimony indicates that the authentication host computer
transforms the received data. The plain language of the claim, however,
does not recite what device or component transforms the received data. Nor
does Dr. Katz explain why he concludes the authentication host computer
transforms the received data. This undermines Dr. Katz’s testimony that the
authentication host computer transforms the received data, a basis of
Dr. Katz’s opinion.
Second, the plain language of the claim requires the authentication
host computer not only to “receive[] the data” but also “to create received
data.” Dr. Katz fails to account in his analysis for the claim requirement “to
create received data.” This further undermines Dr. Katz’s opinion that
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independent claim 32 precludes the authentication host computer from
receiving data from a component or device within itself.
Third, neither Patent Owner nor Dr. Katz address persuasively how
the disclosure of a combined web server and authentication server (id.
at 4:57–58) or the use of the term “authentication server” in the ’191 patent
(as opposed to the claimed “an authentication host computer”) would affect
how one of ordinary skill in the art would understand the scope of
independent claim 32.
We note that independent claim 32 recites “a client computer” and
“a[n] authentication host computer,” but independent claim 32 does not
recite a “web server.” As noted previously, the ’191 patent describes an
embodiment in which the logic of the authentication server and the logic of
the web server is combined on the same server. Ex. 1001, 4:57–58 (“the
logic of the authentication server may be combined with the logic of the web
server”), Figs. 9, 10. In such a case, the exemplary logic of an
authentication server depicted in Figure 10 would receive data “forwarded”
from the web server logic depicted in Figure 9. Id. at 4:52–58, Fig. 9 step
507 (“Forward retrieved page to authentication server”), fig. 10 steps 608–
610 (“Generate authenticity key, Insert authenticity code into page, Return
page with authenticity code to web server”) (capitalization removed). Thus,
the ’191 patent discloses an embodiment in which the authentication server
receives data from “web server logic” that is not “outside of” the
authentication server and is not from another device. Baran v. Med. Device
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Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that
each claim read on every embodiment.”).
(iv) Conclusion
For these reasons, we determine that independent claims 1, 31, or 32
do not require an authentication host computer to receive data from outside
of itself or from a device other than the authentication host computer.
4. “Authenticity Key” and “Locating a Preferences File”
Independent claims 1, 29, 31, and 32 each recites some limitation
regarding the authenticity key and locating a preferences file. Independent
claim 1 recites “returning . . . the formatted data to enable the authenticity
key to be retrieved from the formatted data and to locate a preferences file.”
Independent claim 29 recites “the authenticity key enables location of a
preferences file.” Independent claim 31 recites “the authenticity key is
retrieved from the formatted data to locate a preferences file.” Similarly,
independent claim 32 recites “retrieving, by the client computer, the
authenticity key from the formatted data to locate a preferences file.”
The parties dispute whether these claims require the preferences file to
be hidden and require “the authentication key to provide the ability to
determine a location of a preference file,” as Patent Owner contends (PO
Resp. 19–22). For the following reasons, we do not construe the
independent claims 1, 29, 31, and 32 to require the preferences file to be
hidden or to require the authentication key be used to, or provide the ability
to, determine a location of a preference file.
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Preferences File Need Not Be Hidden
Turning first to whether the claims require the recited “preferences
file” to be hidden, Patent Owner contends that all of the challenged claims
require the “preferences file” to be hidden or obscured—its location not to
be known. Despite Patent Owner contentions, none of the independent
claims recite expressly hiding or obscuring the location of the preferences
file, or that the location of the preferences file is hidden or obscured. In
support of its position, Patent Owner relies on a preferred embodiment
disclosed in the written description in which the location of the preferences
file is obscured. See, e.g., PO Resp. 23–24 (citing Ex. 1001, 4:37–38).
Patent Owner’s contentions seem to require the location of the preferences
file to be concealed, rather than merely not being known. Id. at 24 (arguing
“the preferences file . . . is hidden” and “the preferences file remains
hidden”), 38 (arguing the prior art reference does not disclose the claimed
preferences file because the prior art information “is known”).
In response, Petitioner opposes, indicating “to enable the authenticity
key . . . to locate a preferences file” and similar claim terms do not require
the location of the preferences file to be hidden. Reply 2–3. Petitioner
acknowledges that the ’191 patent describes the file location of the
preferences file as “not readily known to the” user computer. Id. at 3
(quoting Ex. 1001, 4:37–38). Petitioner correctly notes, however, that the
’191 patent does not require a preferences file be hidden but only discloses
the location may be obscured or not readily known in preferred, but not all,
embodiments. Ex. 1001, 4:5–7, 37–40 (indicating in an exemplary
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embodiment, “the location of the preferences file is not readily known” to
the user computer, so the user computer “must get the preferences key to
determine the location of the preferences file”). In another example,
the ’191 patent indicates that “[p]referably, the preferences file is placed in a
random directory to help obscure the location of the preferences file.” Id. at
9:53–55 (emphasis added). Thus, the ’191 patent does not require a
preferences file be hidden but only discloses the location may be obscured or
not readily known in preferred, but not all, embodiments, a determination
with which Mr. Schneier agrees (Ex. 1008 ¶¶ 60–61).
We decline to read limitations into a claim from these preferred
embodiments described in the Specification when the claim language is
broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the
claim language is broader than the preferred embodiments describing the
location of the preferences file as obscured or not readily known and,
therefore, should not be narrowed by embodiments in the ’191 patent.
Furthermore, the ’191 patent does not set forth a special definition for that
claim term with reasonable clarity, deliberateness, or precision that would
impose a special meaning requiring the location of the preferences file be
obscured or hidden. See In re Paulsen, 30 F.3d at 1480.
Accordingly, neither the term “to locate a preferences file” in claims
1, 31, and 32, nor the term enabling “location of a preferences file” in claim
29, require the location of the preferences file be obscured or hidden. Nor
does “enabl[ing] authentication of the authenticity key . . . to retrieve an
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authenticity stamp from a preferences file,” as recited in independent
claim 17, require the preferences file to be obscured or hidden.
Enabling the Authenticity Key to Locate a Preferences File
Petitioner contends that none of the claims require the formatted data
or the authenticity key be used to locate the preferences file. Pet. 17–18.
Rather, Petitioner contends independent claims 1, 29, 31, and 32 only
require “enabling, by an authenticity key as a precondition, a process of by
which a preferences file is located.” Id. at 17. With support from
Mr. Schneier, Petitioner contends that the Specification does not disclose
that information from the authenticity key is used to locate a preferences file.
Id. at 18 (citing Ex. 1008 ¶¶ 19, 22, 24). Petitioner also indicates that the
District Court concluded that the Specification does not support using an
authenticity key to locate a preferences file. Id. (citing Ex. 1007, 18 (“The
Court has already clarified that the authenticity key is not used to locate the
preferences file. Rather, the preferences key is used to locate a preferences
file.”) (citing the ’191 patent, 4:38–40)).
Patent Owner does not challenge directly whether the authenticity key
must be used to locate the preferences file. Patent Owner, however,
contends that one of ordinary skill in the art would have understood the
claim limitation “to enable the authentication key . . . to locate a preferences
file” to require “the authenticity key to provide the ability to determine a
location of a preference file.” PO Resp. 25; see id. at 23 (“The Board should
construe the claim phrases emphasized above to require ‘the authenticity key
to provide the ability to determine a location of a preference file.’”).
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We agree with Petitioner that none of the claims require the
authenticity key to locate the preferences file or have the ability to determine
the location of a preferences file. First, none of the independent claims
recite the authenticity key being used to locate the preferences file. Nor is
there evidence of written description support for such an interpretation—
the ’191 patent does not disclose using an authenticity key to locate the
preferences file, as recognized by the District Court. Ex. 1007, 18 (“The
Court has already clarified that the authenticity key is not used to locate the
preferences file.”). Rather, as noted previously, the ’191 patent discloses in
a preferred embodiment that a preferences key, which is different than an
authenticity key, is used to locate the preferences file. See Ex. 1001, 4:38–
40; see also Ex. 1007, 18 (the District Court indicating that “the preferences
key is used to locate a preferences file.”).
Mr. Schneier supports Petitioner’s position (Ex. 1008 ¶¶ 19, 61), and
Dr. Katz supports Patent Owner’s position (Ex. 2008 ¶ 21). Neither expert
witness provides additional reasoning or analysis to that presented in each of
the respective briefing by the parties.
Petitioner’s proposed construction of independent claims 1, 29, 31,
and 32 as “enabling, by an authenticity key as a precondition, a process by
which a preferences file is located” better comports with the claims and
written description of the ’191 patent. Pet. 17. For example, the ’191 patent
discloses that after verification of a received digital signature, the
preferences key is requested and subsequently used to determine the location
of the preferences file. See Ex. 1001, 4:22–40 (referring to Fig. 5). The
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verification of the received digital signature must occur before the
preferences key can be requested and used to determine the location of the
preferences file. In other words, verification of the received digital signature
is a precondition of requesting and using the preferences key to determine
the location of the preferences file. Thus, verification of the received digital
signature enables—supplies the opportunity for19—the requested preferences
key.
Accordingly, we agree with Petitioner that none of the claims require
the formatted data or the authenticity key be used to locate the preferences
file.
D. Principles of Law Regarding Anticipation and Obviousness
To prevail in challenging claims 1–5, 16, and 29–32 of the ’191
patent, Petitioner must demonstrate by a preponderance of the evidence that
the claims are unpatentable. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d).
To establish anticipation under 35 U.S.C. § 102, each and every
element in a claim, arranged as recited in the claim, must be found in a
single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must

19 AMERICAN HERITAGE DICTIONARY 605 (3d ed. 1992) (defining “enable”
as “1. To supply the means, knowledge, or opportunity; make able”)
(Ex. 3004); RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 433 (2nd ed.
2000) (defining “enable” as “1. to make able; authorize or empower. 2. to
make possible or easy”) (Ex. 2004).
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disclose more than “multiple, distinct teachings that the artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, 545
F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The
[prior art] reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”). Although the
elements must be arranged or combined in the same way as in the claim,
“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior
art reference is read from the perspective of one with ordinary skill in the art.
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates
a claim if it discloses the claimed invention such that a skilled artisan could
take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Under 35 U.S.C. § 103(a), a claim is unpatentable if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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The question of obviousness is resolved on the basis of underlying factual
determinations including the following: (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
E. Asserted Ground that Claims 1, 3, 5, 16, and 29–32
Are Anticipated By Houser
Petitioner asserts that claims 1, 3, 5, 16, and 29–32 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by Houser. Pet. 52–71; Reply 1–18.
Petitioner provides citations to Houser and analysis specifying where
limitations of the challenged claims purportedly are disclosed by Houser. Id.
Petitioner also relies on the declaration testimony of Mr. Schneier (Ex. 1008)
and of Mr. Román (Ex. 1016). Patent Owner challenges Petitioner’s
assertions, relying on the declaration testimony of Dr. Katz. PO Resp. 29–
46 (citing Ex. 2008). We have reviewed the Petition, the Patent Owner’s
Response, and Petitioner’s Reply, as well as the relevant evidence discussed
in those papers and other record papers. We determine the record supports
Petitioner’s contentions and adopt Petitioner’s contentions discussed below
as our own. For reasons that follow, we determine that Petitioner has shown
by a preponderance of the evidence that Houser anticipates claims 1, 3, 5,
16, and 29–32.

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1. Summary of Houser
To address the problem of altered or forged electronic documents,
Houser describes techniques for indicating authenticity of an electronic
document. Ex. 1004, 1:7–13, 1:59–67. More specifically, Houser describes
verifying the integrity or signator of an electronic document “by embedding
a security object . . . in the electronic document . . . at a location selected by
the signator.” Id. at Abstract. “The embedded security object includes
security information and an identifier for invoking the processing of security
information.” Id. The security information may include “the signator’s
‘electronic chop,’ which may be the signator’s digitized signature or other
graphic image.” Id. “If the signator and the document integrity are
confirmed, the electronic chop is displayed in the document.” Id. “If,
however, the signator or document integrity are not verified, the electronic
chop is not displayed.” Id.
Figure 1 of Houser is set forth below:

The fundamental operation cycle of Houser’s techniques is shown in
Figure 1. Id. at 7:15–16. An electronic document is created at 110. Id. at
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7:16. Then electronic security application 120 is used to embed a security
object in the electronic document as represented at 130. Id. at 7:29–31.
“The ‘signed’ electronic document (i.e., the electronic document including
one or more embedded security objects) may be stored and/or transmitted to
another party represented at 140.” Id. at 7:62–65. The electronic document
is received at 150 and an identifier in the embedded security object invokes
the verification processing of the electronic document security application
120 at 160. Id. at 7:66–8:2. Houser indicates that performing verification
processing by another electronic document security application is preferred
because it facilitates communication of electronic documents between users.
Id. at 8:2–8.
2. Independent Claims 1, 29, 31, and 32
(i) Petitioner’s Contentions
Petitioner contends each limitation of independent claims 1, 29, 31,
and 32 is disclosed by Houser. Petitioner asserts that Houser’s electronic
document before the security object is embedded discloses the recited
“received data” and the electronic document after the security object is
embedded discloses the recited “formatted data.” Pet. 52, 54. Petitioner’s
position is that Houser’s graphic of the signator’s digitized signature (called
an “electronic chop”) discloses the recited “authenticity stamp.” Id. at 52.
According to Petitioner, Houser’s identifier in the embedded security object
discloses the recited “authentication key” to be retrieved from formatted
data. Id. at 54–55, 61.
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Petitioner contends that, because the security object with the identifier
is embedded in the electronic document (i.e., “the formatted data) and the
identifier (i.e., “authentication key”) are used to invoke the processing of
security information, Houser discloses formatted data having an
authentication key. Id. at 56, 61. Petitioner further contends that Houser’s
security information (which includes the “electronic chop” or other graphic,
corresponding to the claimed “authenticity stamp”) in the security object
discloses the recited “preferences file” from which the “authenticity stamp”
is retrieved. Id. at 57, 64–65; Tr. 11:18–12:1.
According to Petitioner, Houser’s description of embedding a security
object (having an identifier—“authentication key”) in the electronic
document discloses the recited “transforming, at an authentication host
computer, received data by inserting an authenticity key to create formatted
data.” Pet. 61. Petitioner contends that Houser’s electronic document
security application 120, which is implemented using a standard computer
and described as embedding the security object into the electronic document,
discloses the recited authentication host computer. Id. at 59–60 (citing
Ex. 1004, 7:29–31, 8:50–62).
Petitioner further contends that Houser’s description of transmitting
the electronic document with the embedded security object to another party
and subsequently invoking the verification processing discloses the recited
“returning, from the authentication host computer, the formatted data to
enable the authenticity key to be retrieved from the formatted data and to
locate a preferences file.” Id. at 59–61, 63–64; see id. at 60 (indicating
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Houser’s Figure 1 discloses the “‘authentication host computer’ (e.g.,
security application 120) . . . is returning or sending ‘formatted data’ at
block 140”) (citing Ex. 1004, 7:16–8:19). The portion of Houser cited by
Petitioner indicates that performing verification processing by another
electronic document security application is preferred because it facilitates
communication of electronic documents between users. Id. at 60 (citing
Ex. 1004, 8:2–8).
Petitioner contends that Houser’s description of extracting the
electronic chop (“authenticity stamp”) from the embedded security object
having security information (“preferences file”) and displaying the
electronic chop discloses the recited “an authenticity stamp is retrieved from
the preferences file.” Id. at 64–65.
We agree with Petitioner’s position that Houser anticipates the
challenged independent claims 1, 29, 31, and 32. The identified citations
from Houser support Petitioner’s position when read in view of the proper
construction of the claims discussed in Section II.C.
(ii) Analysis of Patent Owner’s Contentions
Patent Owner contends that Petitioner has not demonstrated that
claims 1, 3, 5, 16, and 29–32 are anticipated by Houser. PO Resp. 29–47.
(a) Houser Discloses a Preferences File
First, Patent Owner disputes that Houser discloses a preferences file
as required by independent claims 1, 29, 31, and 32 based on limitations not
required by the claims. Id. at 30–35. Patent Owner’s argument that
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Houser’s embedded security object is not a preferences file because,
according to Patent Owner, the recited preferences file must be “a uniquely
named collection of data” (id. at 30–31) is premised on an incorrect claim
construction for reasons discussed previously.
Patent Owner also contends that Houser does not disclose the recited
preferences file because Houser’s security information cannot be accessed
by a file system, which Patent Owner contends is required. Id. at 31–35.
Patent Owner’s argument again is premised on an incorrect claim
construction for reasons discussed previously.
Moreover, Mr. Román testifies that, because Houser describes
“assembl[ing]” the security information into a “predetermined format,”
which is accessible to the security application, Houser describes the
“security information” is a set of related data treated as a unit. Reply 11
(citing Ex 1016 ¶¶ 141–42). We also note that Houser refers to “security
information” as a unit—“the operating system of the computer, responsive to
the identifier, may invoke processing of the security information in the
embedded security object.” Ex. 1004, 7:35–41. Furthermore, Dr. Katz does
not disagree and testifies that “the conclusion that Houser treats the security
information as a unit” was “reasonable.” Ex. 1019, 64:12–17; Reply 11
(quoting Ex. 1019, 64:12–17).
Patent Owner further contends that Houser does not disclose an
“authenticity stamp is retrieved from the preferences file” because,
according to Patent Owner, Houser does not disclose the recited preferences
file. PO Resp. 35–36. First, we do not agree that Houser does not disclose
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the recited “preferences file,” for the reasons discussed previously. Second,
Patent Owner acknowledges that “Houser’s electronic chop [the element on
which Petitioner relies as disclosing the recited authentication stamp] is part
of the security information within the embedded security object.” PO Resp.
36 (citing Ex. 1004, 4:47–48). Thus, we agree with Petitioner that “[o]nce
[Houser’s] ‘security information’ is determined to be a ‘file,’ there is no
dispute that Houser further discloses an authenticity stamp being retrieved
from a preferences file.” Reply 12.
(b) Houser’s Security Information Is Known
Patent Owner also contends that, because Houser’s security
information is known, Houser does not disclose an authenticity key that
provides the ability to determine a location of a preferences file. PO
Resp. 38–39. As explained previously, we do not agree that the location of a
preferences file must be hidden, obscured, or unknown.
(c) Houser Receives and Returns the Electronic Document
Patent Owner further contends that, because the same server in
Houser creates the document and embeds the security object in the
document, Houser does not disclose an authentication host computer
(claim 1) or a device (claims 31 and 32) receiving data sent from outside
itself, as Patent Owner contends is required by claim 1. Id. at 39–41. As
discussed previously, we do not agree that any of the claims require a
computer to receive data from outside itself. Thus, we are not persuaded by
Dr. Katz’s testimony, relied on by Patent Owner, that “Houser does not
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disclose that a computer first receives data from outside of itself and then
transforms that data.” PO Resp. 41 (citing Ex. 2008 ¶ 38).
Nor are we persuaded by Patent Owner’s contention that Houser does
not disclose the requisite returning because Houser does not return the
electronic document with the embedded security object to the application
that created the electronic document. Id. at 42–45. Patent Owner contends
that “returning” requires the formatted data to be returned to the same
location from which the data was received. Id.; see, e.g., id. at 44 (asserting
“independent claims 31 and 32 similarly require formatted data to be sent to
the client from which data was received”). We disagree for the reasons
given previously in construing “received data.” Accordingly, we are not
persuaded by Dr. Katz’s testimony, relied on by Patent Owner, that Houser’s
“computer that embeds the electronic document with the security object
cannot possibly return the modified electronic document to a source outside
of itself” because the computer did not receive the electronic document from
a source outside of itself. PO Resp. 44 (citing Ex. 2008 ¶ 43).
(iii) Conclusion Regarding Independent Claims 1, 29, 31, and 32
For these reasons, we determine that Petitioner has shown, by a
preponderance of the evidence, that Houser anticipates independent
claims 1, 29, 31, and 32.
3. Dependent Claim 16
Claim 16, which depends from independent claim 1, additionally
recites “the returning includes returning the formatted data to at least one of:
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a Personal Computer (PC), Personal Digital Assistant (PDA), cellular
telephone, or an email device.”
As described previously, Petitioner contends that Houser’s description
of transmitting the electronic document with the embedded security object to
another party and subsequently invoking the verification processing
discloses the recited “returning, from the authentication host computer, the
formatted data to enable the authenticity key to be retrieved from the
formatted data and to locate a preferences file.” Pet. 60 (citing Ex. 1004,
7:16–8:19). The portion of Houser cited by Petitioner indicates that
performing verification processing by another electronic document security
application is preferred because it facilitates communication of electronic
documents between users. Id. at 60 (citing Ex. 1004, 8:2–8). For the
additional limitation recited in claim 16, Petitioner relies on Houser’s
description that “[t]he electronic security application may be implemented
using a standard computer, such as an IBM PC-compatible computer.” Id. at
67 (quoting Ex. 1004, 8:50–52).
In disputing Petitioner’s contention, Patent Owner and Dr. Katz rely
on its interpretation that the claim “requires the formatted data to be returned
to a PC, PDA, cell phone or email device” from which the authentication
host computer received the data. PO Resp. 45–47; Ex. 2008 ¶ 46. As
explained previously, we do not agree that received data must be returned to
the same place from which it was received.
For these reasons, we determine that Petitioner has shown, by a
preponderance of the evidence, that Houser anticipates claim 16.
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4. Dependent Claims 3, 5, and 30
Claim 3 depends from independent claim 1 and further requires
“reading the formatted data” and “verifying authenticity of the formatted
data based on the authenticity key in response to the formatted data
including the authenticity key.” As noted previously with respect to
independent claim 1, Petitioner contends Houser’s electronic document that
includes the embedded security object discloses the recited “formatted data”
and Houser’s identifier in the security object discloses the recited
“authentication key.” Pet. 56, 61. For the additional steps recited by
claim 3, the Petition cites various portions of Houser describing verification
processing being invoked by the identifier. Id. at 65–66 (citing Ex. 1004,
3:55–60, 7:31–43, 7:66–8:2, 7:29–44). For example, the Petition cites
Houser’s description of verification processing being invoked when the
signed electronic document is recalled from memory:
When the signed electronic document is received or recalled
from memory at 150, verification processing in the electronic
security application 120 is invoked by the identifier in the
embedded security object at 160.
Ex. 1004, 7:66–8:2.
Claim 5, which depends from claim 3, further recites “the authenticity
stamp is displayed for formatted data that is verified.” As mentioned
previously with regard to independent claim 1, Petitioner contends Houser’s
“electronic chop” discloses the recited “authenticity stamp.” Id. at 57, 64–
65. The Petition cites Houser’s description of displaying the electronic chop
based on the result of verification processing. Id. at 66–67 (citing Ex. 1004,
4:47–60, 5:50–65, 8:13–19). For example, Houser describes “display[ing]
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the electronic chop superimposed on the watermark graphic if the
verification processor verifies the signed electronic document.” Ex. 1004,
4:57–60.
Claim 30 depends from independent claim 29 and further recites “at
least one of color or positioning of a graphic image within the formatted data
is configurable.” The Petition cites Houser’s description of a user
controlling the position that the user’s electronic chop is displayed on the
electronic document. Pet. 70 (citing Ex. 1004, Abstract, 13:57–64, Fig. 7E).
For these reasons, we determine that Petitioner has shown, by a
preponderance of evidence, that Houser anticipates claims 3, 5, and 30.
Patent Owner does not provide particular arguments challenging Houser’s
purported disclosure of the additional recited steps in claims 3, 5, and 30.
F. Asserted Ground that Claims 2 and 4 Would Have Been
Obvious Over Houser and Yoshiura
Petitioner asserts claims 2 and 4, each of which depends from
independent claim 1, would have been obvious over the combination of
Houser and Yoshiura, relying on the declaration testimony of Mr. Schneier
(Ex. 1008) and of Mr. Román (Ex. 1016). Pet. 71–73; Reply 19–22. Patent
Owner opposes, relying on declaration testimony of Dr. Katz. PO Resp. 41–
58 (citing Ex. 2008). We have reviewed the Petition, the Patent Owner’s
Response, and Petitioner’s Reply, as well as the relevant evidence discussed
in those papers and other record papers. We determine the record supports
Petitioner’s contentions and adopt Petitioner’s contentions discussed below
as our own. For reasons that follow, we determine that Petitioner has shown
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by a preponderance of the evidence claims 2 and 4 would have been obvious
over Houser and Yoshiura.
1. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, 35 U.S.C. § 103 requires us to determine the level of
ordinary skill in the pertinent art at the time of the invention. Graham, 383
U.S. at 17. “The importance of resolving the level of ordinary skill in the art
lies in the necessity of maintaining objectivity in the obviousness inquiry.”
Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The
person of ordinary skill in the art is a hypothetical person who is presumed
to have known the relevant art at the time of the invention. In re GPAC,
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The level of ordinary skill in the
art is reflected by the prior art of record. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). Factors that may be considered in
determining the level of ordinary skill in the art include, but are not limited
to, the types of problems encountered in the art, the sophistication of the
technology, and educational level of active workers in the field. Id. In a
given case, one or more factors may predominate. Id. Generally, it is easier
to establish obviousness under a higher level of ordinary skill in the art.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir.
2011) (“A less sophisticated level of skill generally favors a determination of
nonobviousness . . . while a higher level of skill favors the reverse.”).
In two prior proceedings challenging the ’191 patent, Dr. Katz
testified on behalf of Patent Owner that “a person of ordinary skill in the art
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at the time of the filing of the ‘191 Patent [would] be someone who holds at
least a Bachelor’s degree in Computer Science, Computer Engineering, or an
equivalent field, with at least two years of work experience or equivalent in
the field of information technology.” CBM2014-00100, Ex. 2006 ¶ 8;
IPR2014-00475, Ex. 2007 ¶ 8. As noted in the Final Written Decision of
CBM2014-00100, Petitioner agreed with Dr. Katz’s position and the Board
adopted Dr. Katz’s proposed level of ordinary skill. CBM2014-00100,
Paper 43, 31–32. In the Final Written Decision of IPR00475, based on areas
of agreement between the parties’ proposals, the Board found a similar level
of ordinary skill: “one of ordinary skill in the art would have a bachelor’s
degree in computer science (or an equivalent field) and at least two years of
work experience in the area of information technology.” IPR2014-00475,
Paper 30, 23–24.
In the instant proceeding, Petitioner, relying on Mr. Schneier’s
testimony, takes the position that one of ordinary skill in the art at the time
of the invention would possess a “Bachelor’s Degree, or its equivalence, in
Electrical Engineering or Computer Science, or two years of experience in
cryptographic software development or an equivalent work experience.”
Mot. 3 (citing Ex. 1008 ¶ 36). Petitioner contends its proposed level of
ordinary skill is “consistent with the definition this Board adopted in” the
earlier IPR2014-00475 proceeding regarding the ’191 patent. Id. We note,
however, that Mr. Schneier testifies that one of ordinary skill in the art
would possess a certain type of degree or have two years of experience in
cryptographic software development or an equivalent work experience. Id.
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The definition the Board adopted in the earlier proceeding required both a
degree and certain work experience. Having reviewed the prior art of
record, including the types of problems encountered in the art, the
sophistication of the technology, and educational level of active workers in
the field, we conclude that one of ordinary skill in the art would possess both
a degree and two years of work experience, which is consistent with
Dr. Katz’s testimony and the Board’s earlier findings.
In the instant proceeding, Dr. Katz changes his previous testimony
concerning the level of ordinary skill in the art at the time of the invention to
add mathematics as an example of an equivalent field of computer science
and computer engineering. Ex. 2008 ¶ 8. In his declaration testimony,
Dr. Katz does not acknowledge his prior testimony concerning the level of
ordinary skill in the art concerning the invention of the ’191 patent. Nor
does Dr. Katz provide any explanation as to why he now considers
mathematics to be an equivalent field of computer science and computer
engineering. As noted by Petitioner, Dr. Katz testified that his own
undergraduate mathematics degree included only four courses relating to the
field of computer science. Mot. 5 (citing Ex. 1019, 15:5–10). This
undermines Dr. Katz’s testimony that mathematics would be an equivalent
field of computer science and computer engineering in the context of the
’191 patent and the time of its invention. In addition, Dr. Katz also dropped
the requirement of having at least two years of work experience from his
prior testimony regarding the level of ordinary skill, without acknowledging
his prior testimony or explaining the change. Ex. 2008 ¶ 8.
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Weighing the evidence in this proceeding (including Petitioner’s
acknowledgement that its proposed position is consistent with the level of
ordinary skill determined in the IPR2014-00475 proceeding), one of
ordinary skill in the art would have had a bachelor’s degree in computer
science (or an equivalent field) and at least two years of work experience in
the area of information technology.
2. Summary of Yoshiura
Yoshiura is a European Patent Application publication directed to a
digital data authentication method. Ex. 1005 [54]. Yoshiura describes
checking the validity of a web page by checking the validity of a “mark.”
See Ex. 1005, 37:42–45, 37:56–38:1. To do so, a digital signature, which is
embedded in the mark displayed on the web page, is validated. See id. at
37:19–30, 37:49–38:4. If the digital signature is valid, a message is
displayed that the mark was validated; but if the digital signature is not
valid, a message is displayed that the mark was not validated. See id. at
37:56–38:8, Fig. 9 (display unit 1102).
3. Dependent Claim 2
Claim 2 additionally recites “the formatted data is a web page.” For
this requirement, Petitioner relies on Yoshiura’s description of checking the
validity of a web page by using a digital signature embedded in a “mark” on
the web page. Pet. 71. According to Petitioner, Yoshiura’s checking the
validity discloses authenticating, Yoshiura’s digital signature discloses the
recited “authenticity key,” and Yoshiura’s embedded “mark” on a web page
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discloses the formatted data. Id. Petitioner also relies on Yoshiura’s
description of displaying a message stating that the mark was validated,
which according to Petitioner, discloses the recited “authenticity stamp.” Id.
Patent Owner does not challenge Petitioner’s position regarding what
Yoshiura would have conveyed to one of ordinary skill in the art regarding
the additional limitation recited by claim 2. See generally PO Resp. 53–58.
Furthermore, Dr. Katz agrees that Yoshiura describes authenticating web
pages. Ex. 1019, 76:17–18 (“Yoshiura does disclose authenticating web
pages.”).
Petitioner acknowledges that “Houser does not explicitly state that the
‘electronic documents’ that are authenticable using its methodology include
web pages . . . .” Pet. 71. As noted by Petitioner, however, “Houser broadly
indicates that “it should be clear that the present invention is not limited by
the type of document created.’” Id. (quoting Ex. 1004, 7:26–28).
Petitioner also contends that it would have been obvious to one of
ordinary skill in the art “to extend the ‘electronic document’ authentication
process of Houser to also include authenticating web pages, as taught by
Yoshiura, in view of the fact that both references are motivated by the same
concern. . . . ” Id. at 72 (citing Ex. 1005, 6:49–7:8 (Yoshiura describing the
problem of fraudulent copying of a logo mark of a credit card company to a
web page of an illegal user); Ex. 1004, 1:65–2:15 (Houser describing the
problem of fraudulent copying of a digital signature to another document)).
Mr. Schneier testified that Yoshiura and Houser each are in the same field of
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endeavor as the ’191 patent—authentication of information, particularly
information in document form. Ex. 1008 ¶ 97.
Further relying on testimony of Mr. Schneier, Petitioner contends that
both Houser and Yoshiura “solved the problem using the same basic
approach of applying a visual indicator to the electronic document to
indicate to its recipient/viewer that the information has been authenticated or
verified.” Id. (citing Ex. 1008 ¶ 98). Petitioner concludes, with support
from its declarant Mr. Schneier, that “[i]t would have been obvious to one of
ordinary skill in the art to extend the ‘electronic document’ authentication
process of Houser to also include authenticating web pages, as taught by
Yoshiura, . . . to extend the usefulness of Houser’s ‘electronic security
application’ to include an increasingly popular form of electronic document,
i.e., a web page.” Id. (citing Ex. 1008 ¶ 98).
Patent Owner contends that Petitioner failed to demonstrate a
motivation to combine Houser and Yoshiura because the references are not
“motivated by the same concern as alleged by Petitioner.” PO Resp. 54.
Patent Owner relies on Dr. Katz’s testimony that “one of ordinary skill in the
art would not have been motivated to apply Yoshiura’s teachings of
determining the identity of a person who improperly copied a web page to a
system that detects whether an electronic document has been altered after it
was signed, like the system of Houser.” Id. (quoting Ex. 2008 ¶ 145).
Weighing the evidence offered by each party, we credit
Mr. Schneier’s testimony over Dr. Katz’s testimony, because Mr. Schneier’s
testimony better comports with the evidence of the references themselves.
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See, e.g., Ex. 1005, 6:49–7:8 (Yoshiura describing the problem of fraudulent
copying of a logo mark of a credit card company to a web page of an illegal
user); Ex. 1004, 1:65–2:15 (Houser describing the problem of fraudulent
copying of a digital signature to another document); Pet. 72 (citing those
same portions of Yoshiura and Houser).
Furthermore, we give relatively little weight to Dr. Katz’s conclusory
testimony that Petitioner’s combination of Houser and Yoshiura “would not
yield the particular result of verifying an authenticity key on a web page as
required in claims 1 and 2 of the ’191 patent with a reasonable expectation
of success, if Houser were somehow modified based on select portions of
Yoshiura’s system of determining the identity of a person who improperly
copied digital content.” PO Resp. 54 (mistakenly citing Ex. 2008 ¶ 45); see
Ex. 2008 ¶ 50. Dr. Katz does not provide further facts or analysis to support
his testimony that one of ordinary skill in the art would not have had a
reasonable expectation of success. 37 C.F.R. § 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.”).
Moreover, Patent Owner’s contentions seem to suggest bodily
incorporation from one disclosed system to another is required. PO Resp. 54
(questioning the result “if Houser were somehow modified based on select
portions of Yoshiura’s system of determining the identity of a person who
improperly copied digital content”). A determination of obviousness is
based not on bodily incorporation of parts from one disclosed system into
another, but what the combined teachings would have suggested to one with
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ordinary skill in the art. In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012). It is not necessary that the particular structures of the
references be physically combinable, unchanged, to render obvious the
claimed invention. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
For these reasons, we determine that Petitioner has demonstrated by a
preponderance of the evidence that the combination of Houser and Yoshiura
would have conveyed to one of ordinary skill in the art the limitations
recited in claim 2. We also determine that Petitioner has articulated
sufficient reasoning with some rational underpinning to support the legal
conclusion that the subject matter of claim 2 would have been obvious to
one of ordinary skill in the art in view of the teachings of Houser and
Yoshiura as combined in the manner proposed by Petitioner. See KSR, 550
U.S. at 418.
4. Dependent Claim 4
Claim 4 additionally recites “displaying the formatted data in response
to the verification of the authenticity key.” Regarding claim 4, Petitioner
relies on Yoshiura’s description that its web page is not displayed until the
web page has been authenticated. Pet. 72 (citing Ex. 1005, 29:8–13, 32:11–
17). Petitioner, with support from its declarant, contends that a person of
ordinary skill in the art would have combined Houser with Yoshiura to
“facilitate the viewer’s ability to detect that the document has not been
authenticated.” Pet. 73 (citing Ex. 1008 ¶ 100).
Regarding claim 4, Patent Owner does not challenge that Yoshiura
would have conveyed to one of ordinary skill in the art “displaying the
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formatted data in response to the verification of the authenticity key,”
additionally recited in claim 4. See PO Resp. 57–58. Patent Owner
contends that Petitioner “failed to demonstrate the required motivation to
combine the teachings of the prior art references to achieve the invention of
claim 4.” PO Resp. 57–58. Specifically, Patent Owner argues:
Moreover, as explained by Dr. Katz, “the document [in
Houser] can be displayed with the electronic chop (e.g.,
handwritten initials) removed even if the electronic document is
changed (i.e., even if the embedded security object is not
verified).” And the Petitioner failed to explain why a person of
ordinary skill in the art would have been motivated to change
Houser to display formatted data in response to authentication of
an authenticity key in light of Yoshiura’s teachings of
determining the identify of a person who improperly copied a
web page.
Id. (citing Ex. 2008 ¶ 54; Pet. 71–73).
Weighing the evidence and arguments, we determine that Petitioner
has demonstrated, by a preponderance of the evidence, that the combination
of Houser and Yoshiura would have conveyed to one of ordinary skill in the
art the limitations recited in claim 4. “[T]he test for obviousness is what the
combined teachings of the references would have suggested to those having
ordinary skill in the art.” In re Mouttet, 686 F.3d at 1333 (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). We agree with Petitioner that
Yoshiura’s description that its web page is not displayed until the web page
has been authenticated would have conveyed to one of ordinary skill in the
art “displaying the formatted data in response to the verification of the
authenticity key,” additionally recited in claim 4. Patent Owner’s attack on
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77
Houser does not address what Yoshiura would have conveyed to one of
ordinary skill in the art.
We credit Mr. Schneier’s testimony regarding a reason why one of
ordinary skill in the art would have combined the references—to “facilitate
the viewer’s ability to detect that the document has not been authenticated.”
Pet. 73 (citing Ex. 1008 ¶ 100). Thus, we determine that Petitioner has
articulated sufficient reasoning with some rational underpinning to support
the legal conclusion that the subject matter of claim 4 would have been
obvious to one of ordinary skill in the art in view of the teachings of Houser
and Yoshiura as combined in the manner proposed by Petitioner. See KSR,
550 U.S. at 418.
5. Conclusion Regarding Obviousness
We have resolved the question of obviousness based on factual
determinations of (1) the scope and content of the prior art; (2) differences
between the subject matter of the challenged claims and the teachings of the
prior art; and (3) the level of ordinary skill in the art. Graham, 383 U.S. at
17–18. Patent Owner did not put forth any objective evidence of
nonobviousness.
For the foregoing reasons, we determine that Petitioner has
established, by a preponderance of the evidence, that the subject matter
recited in claims 2 and 4 of the ’191 patent as a whole would have been
obvious to one of ordinary skill in the art in view of the teachings of Houser
and Yoshiura. See 35 U.S.C. § 103(a).
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G. Patent Owner’s Motion for Observation
Regarding Cross-Examination Testimony
Patent Owner’s observations are directed to the cross-examination
testimony of Mr. Román obtained on January 6, 2016 and concerning his
declaration (Ex. 1016), which was provided in support of Petitioner’s Reply.
Paper 20; Ex. 2010 (Deposition Transcript). We have considered Patent
Owner’s observations and Petitioner’s responses (Paper 27, “Obs. Resp.”) in
rendering our decision, and have accorded the testimony appropriate weight.
See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the
Board has discretion to give more weight to one item of evidence over
another “unless no reasonable trier of fact could have done so”); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board
is entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations.”).
III. CONCLUSION
Petitioner has proven by a preponderance of the evidence that
claims 1, 3, 5, 16, and 29–32 of the ’191 patent are anticipated by Houser
and that the subject matter of claims 2 and 4 of the ’191 patent would have
been obvious to a person of ordinary skill in the art in view of the teachings
of Houser and Yoshiura.
Patent Owner’s Motion to Exclude is denied.
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Patent 7,631,191 B2

79
IV. ORDER
Accordingly, it is hereby
ORDERED that, based on a preponderance of the evidence, claims 1–
5, 16, and 29–32 of U.S. Patent No. 7,631,191 B2 are held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:
Jonathan M. Lindsay
jlindsay@crowell.com

Jeffrey D. Sanok
jsanok@crowell.com

PATENT OWNER:
Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com

André J. Bahou
aj.bahou@secureaxcess.com