Fidelity National Information Services, Incv.DataTreasury Corporation

Patent Trial and Appeal Board

Aug 13, 2014

09081012 (P.T.A.B. Aug. 13, 2014)

Trials@uspto.gov Paper 9
571-272-7822 Entered: August 13, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FIDELITY NATIONAL INFORMATION SERVICES, INC.,
Petitioner,

v.

DATATREASURY CORP.,
Patent Owner.

Case IPR2014-00490
Patent 6,032,137

Before MICHAEL P. TIERNEY, WILLIAM V. SAINDON, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Fidelity National Information Services, Inc. (“Petitioner”) filed a
Petition requesting inter partes review of claims 1, 2, 9, 11-27, 29-32, 34-46,
48-52, 54-58, 60-64, 66, and 67 (“the challenged claims”) of U.S. Patent No.
6,032,137 (Ex. 1002, “the ’137 patent”). Paper 2 (“Pet.”). DataTreasury
Corp. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314.
Upon consideration of the Petition and Preliminary Response, we
determine that the information presented by Petitioner has not established
that there is a reasonable likelihood that Petitioner would prevail in showing
unpatentability of the challenged claims of the ’137 patent. Accordingly, the
Petition is denied.
A. Related Proceedings
Petitioner and Patent Owner indicate that the ’137 patent is involved
in three co-pending district court cases in the United States District Court for
the Eastern District of Texas: DataTreasury Corp. v. Fiserv, Inc., 2:13-cv-
00431 (E.D. Tex. filed May 28, 2013); DataTreasury Corp. v. Jack Henry &
Associates, Inc. et al., 2:31-cv-00433 (E.D. Tex. filed May 28, 2013); and
DataTreasury Corp. v. Fidelity National Information Services, Inc. et al.,
2:13-cv-00432 (E.D. Tex. filed May 28, 2013). Pet. 3-5; Paper 4, 2-3.
Petitioner and Patent Owner also identify several closed district court
proceedings involving the ’137 patent. Pet. 3-5; Paper 4, 2-4.
Petitioner and Patent Owner also identify additional petitions for
covered business method review of the ’137 patent: CBM2014-00020,
CBM2014-00056, and CBM2014-00088. Pet. 3; Paper 4, 2; Paper 5, 1.
Petitioner and Patent Owner also identify petitions for inter partes review
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and for covered business method review of Patent Owner’s related U.S.
Patent No. 5,910,988: CBM2014-00021, CBM2014-00057, CBM2014-
00087, IPR2014-00489, and IPR2014-00491. Id.
B. The ’137 patent
The ’137 patent is directed to a system for remote data acquisition,
and centralized processing and storage of the acquired data. Ex. 1001,
Abstract. An object of the invention is to provide an automated system to
manage and store captured electronic and paper transactions from various
activities including banking and consumer applications. Id. at 3:22–26.
Generally, the ’137 patent describes scanning documents using a scanner
attached to a general purpose network computer that is connected via a
carrier cloud to a server that inserts images and data received into a
database. Id. at Figs. 1–2, 3:37–58, 4:65–5:15, 5:45–51, 16:53–60.
Additionally, the general purpose network computer encrypts the images and
data to provide a system with maximal security. Id. at 3:30–36, 7:38–42,
8:10–13.
Figure 1 of the ’137 patent, provided below, depicts a preferred
embodiment of the system having three major operational elements:
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The ’137 patent describes the tiered arrangement depicted in Figure 1 as
follows:
FIG. 1 shows the architecture of the DataTreasury™ System
100. The DataTreasury™ System 100 has three operational
elements: the DataTreasury™ System Access Terminal (DAT)
200 (the remote data access subsystem), the DataTreasury™
System Access Collector (DAC) 400 (the intermediate data
collecting subsystem), and the DataTreasury™ System
Processing Concentrator (DPC) 600 (the central data processing
subsystem).
Id. at 4:66–5:6.
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Figure 2 of the ’137 patent, provided below, depicts a block diagram
of the DAT (remote data access subsystem terminal):

As shown in Figure 2, a scanner 202 is connected to a workstation 210,
which is connected to a data system access collector 300. The workstation
can be a general purpose computer and performs tasks including
compressing, encrypting, and tagging a scanned bitmapped image. Id. at
5:46-51, 7:38-42.
The ’137 patent is said to improve upon the prior art by providing an
automated, reliable, secure system to process electronic and paper
transactions. Id. at 3:32-37.
C. Illustrative Claim
Independent claims 26 and 42 are illustrative of the challenged claims
in the ’137 patent and are reproduced below:
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26. A method for central management, storage and
verification of remotely captured paper transactions from
checks comprising the steps of:
capturing an image of the paper transaction data at one or
more remote locations said transaction data including a payer
bank's identification number, a payer bank's routing number, a
payer bank's routing information, a payer's account number, a
payer's check, a payer bank's draft, a check amount, a payee
bank's identification number, a payee bank's routing
information, and a payee's account number; []
sending a captured image of the paper transaction data;
managing the capturing and sending of the transaction
data;
collecting, processing, sending and storing the
transaction data at a central location;
managing the collecting, processing, sending and storing
of the transaction data;
encrypting subsystem identification information and the
transaction data; and
transmitting the transaction data and the subsystem
identification information within and between the remote
location(s) and the central location.

42. A system for central management, storage and report
generation of remotely captured paper transactions from checks
comprising:
one or more remote data access subsystems for capturing
and sending paper transaction data and verifying transaction
data from the checks comprising at least one imaging
subsystem for capturing the checks and at least one data access
controller for managing the capturing and sending of the
transaction data;
at least one central data processing subsystem for
processing, sending, verifying and storing the paper transaction
data and the subsystem identification information comprising a
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management subsystem for managing the processing, sending
and storing of the of the transaction data; and
at least one communication network for the transmission
of the transaction data within and between said one or more
data access subsystems and said at least one data processing
subsystem, with the data access subsystem providing encrypted
subsystem identification information and encrypted paper
transaction data to the data processing subsystem.
D. References Relied Upon
Petitioner relies upon the following references and the declaration of
Mr. Stephen Gray (Ex. 1004):
NATHAN J. MULLER, COMPUTERIZED DOCUMENT IMAGING
SYSTEMS: TECHNOLOGY AND APPLICATIONS (Artech House,
Inc., 1993) (“Imaging Systems”)
Ex. 1008
INTERNATIONAL BUSINESS MACHINES CORP., 3890 DOCUMENT
PROCESSOR APPLICATION PROGRAMMING (1st ed. 1985) (“IBM”)
Ex. 1009
Liu US 5,031,089 July 9, 1991 Ex. 1010
ROBERT P. DAVIDSON & NATHAN J. MULLER,
INTERNETWORKING LANS (Artech House, Inc., 1992)
(“Internetworking LANs”)
Ex. 1011
Golden US 5,774,872 June 30, 1998 Ex. 1012
Berger US 5,091,975 Feb. 25, 1992 Ex. 1013
Lovendusky US 3,818,187 June 18, 1974 Ex. 1014
Holt US 5,097,517 Mar. 17, 1992 Ex. 1015
Hoffman US 5,613,012 Mar. 18, 1997 Ex. 1016
Shyu US 5,923,792 July 13, 1999 Ex. 1017
Froessl US 5,109,439 Apr. 28, 1992 Ex. 1018
Thomson US 4,948,174 Aug. 14, 1990 Ex. 1043
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E. The Asserted Grounds of Unpatentability
Petitioner argues that the challenged claims are unpatentable based
upon the following grounds:
Reference(s) Basis Claims Challenged
Imaging Systems and IBM § 103 42, 43, 56, 57, 61-63, and
67
Imaging Systems, Thomson, and
IBM
§ 103 1, 2, 16, 18, 26, 44, 45,
49-51, and 55
Imaging Systems, Thomson, IBM,
and Liu
§ 103 9, 11-14, and 19-21
Imaging Systems, Thomson, IBM,
Liu, and Shyu
§ 103 15
Imaging Systems, Thomson, IBM,
and Internetworking LANs
§ 103 17 and 29
Imaging Systems, Thomson, IBM,
Internetworking LANs, and Liu
§ 103 30 and 31
Imaging Systems, Thomson, IBM,
Internetworking LANs, and Golden
§ 103 22-25, 36, and 38-41
Imaging Systems, Thomson, IBM,
and Froessl
§ 103 27
Imaging Systems, Thomson, IBM,
Internetworking LANs, Liu, and
Shyu
§ 103 32, 34, and 35
Imaging Systems, Thomson, IBM,
Internetworking LANs, Golden,
Liu, and Shyu
§ 103 37
Imaging Systems, IBM, and Berger § 103 58 and 64
Imaging Systems, Thomson, IBM,
and Berger
§ 103 46 and 52
Imaging Systems, IBM, and any one
of Golden, Lovendusky, or Holt
§ 103 60 and 66
Imaging Systems, Thomson, IBM,
and any one of Golden,
Lovendusky, or Holt
§ 103 48 and 54
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II. ANALYSIS
A. 315(b)
Patent Owner argues that the Petition should be denied under 35
U.S.C. § 315(b) because Petitioner was served with a Third Party Complaint
around June 8, 2012, more than one year prior to the filing of the Petition.
Prelim. Resp. 5-6. Section 315(b) of Title 35 of the United States Code bars
institution of inter partes review when the petition is filed more than one
year after the petitioner (or the petitioner’s real party in interest or privy) is
served with a complaint alleging infringement of the patent. 35 U.S.C.
§ 315(b); 37 C.F.R. § 42.101(b). Patent Owner does not allege, however,
that the Third Party Complaint served upon Petitioner alleged infringement
of the ’137 patent. Based upon our review of the docket in DataTreasury v.
Austin Bank, No. 6:11-CV-00470 (E.D. Tex.), the Third Party Complaint
(Dkt. No. 225) filed against Petitioner on June 8, 2012, did not allege
infringement of the ’137 patent. Ex. 3001. It alleged breach of contract and
sought a declaratory judgment as to indemnity, warranty against
infringement, and common law indemnity. Id. Because these causes of
action are not an allegation of infringement of the ’137 patent, we conclude
that the Petition is not barred under § 315(b).
B. The Asserted Grounds
In light of the arguments and evidence, Petitioner has not established a
reasonable likelihood that the challenged claims are unpatentable for the
reasons discussed below.
Under our rules, the petition must contain a “full statement of the
reasons for the relief requested, including a detailed explanation of the
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significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). We, therefore,
decline to consider information presented in a supporting declaration, but not
discussed sufficiently in a petition; among other reasons, doing so would
permit the use of declarations to circumvent the page limits that apply to
petitions. For the same reasons, our rules prohibit arguments made in a
supporting document from being incorporated by reference into a petition.
See 37 C.F.R. § 42.6(a)(3).
Petitioner alleges fourteen grounds of unpatentability. Pet. 18-54.
For each ground, Petitioner provides a claim-by-claim analysis in which it
alleges that the prior art teaches or suggests each element of the claim. Id.
Petitioner cites primarily to the Declaration of Stephen Gray (“Gray
Declaration”). Id. The Gray Declaration comprises 589 paragraphs across
136 pages. Ex. 1004. In those paragraphs, Mr. Gray cites almost
exclusively to a 213-page, single-spaced, claim chart in landscape format
appended to his Declaration as Exhibit A. In the claim chart, Mr. Gray cites
to the references themselves. Ex. 1004, Ex. A. As a result, the Petition
involves three levels of incorporation: (1) the Petition incorporates the Gray
Declaration; (2) the Gray Declaration incorporates the claim chart; (3) the
claim chart incorporates from the references themselves.
For the first ground (Pet. 18-28), for example, Petitioner’s analysis of
independent claim 42 cites primarily to the Gray Declaration. Pet. 19-23.
For example, for element E2 of claim 42, Petitioner cites only to the Gray
Declaration. Pet. 20-21. In the twelve paragraphs of the Gray Declaration
cited for claim 42, Mr. Gray cites exclusively to a claim chart appended to
his Declaration as Exhibit A, but for one citation to Imaging Systems in
paragraph 153. Ex. 1004 ¶¶ 151-163. In the eleven pages of claim chart
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analyzing claim 42, Petitioner cites, finally, to the references themselves.
Ex. 1004, Ex. A, 169-180. The end result is that four pages of Petition
expand to eleven pages of citations to references. Petitioner uses the same
approach for the other thirteen grounds.
On this record, the Petition’s extensive reliance on citations to the
Gray Declaration in lieu of citations to the references themselves amounts to
an incorporation by reference of arguments made in the Gray Declaration
into the Petition, thereby circumventing the page limits that apply to
petitions. We, therefore, decline to consider the information found only in
the Gray Declaration.
Based on the analysis presented in the Petition itself, and on our
review of the portions of references cited in the Petition, Petitioner has not
met its burden in establishing a reasonable likelihood that the challenged
claims are unpatentable. Although the Petition includes some citations to
the references themselves, those citations do not identify sufficiently the
portions of the references alleged to teach or suggest the limitations of the
challenged claims. This is not a case where the references relied upon are
short documents that may be understood easily absent direct pointers to
relevant disclosure. The references are voluminous. The most frequently
cited references—Imaging Systems, IBM, and Internetworking LANs—are
334 pages, 362 pages, and 296 pages, respectively. Exs. 1008, 1009, 1011.
The few direct citations to the references themselves are not sufficient to
establish a reasonable likelihood that the challenged claims are unpatentable.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish that there is a reasonable
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likelihood that Petitioner would prevail in establishing the unpatentability of
the challenged claims of the ’137 patent. Accordingly, we deny the Petition
and do not institute an inter partes review of the challenged claims of the
’137 patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition challenging the patentability of claims 1,
2, 9, 11-27, 29-32, 34-46, 48-52, 54-58, 60-64, 66, and 67 of U.S. Patent No.
6,032,137 is denied and no trial is instituted.
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For PETITIONER:

Erika H. Arner
Darren M. Jiron
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.
erika.arner@finnegan.com
darren.jiron@finnegan.com

For PATENT OWNER:

Abraham Hershkovitz
Eugene C. Rzucidlo
HERSHKOVITZ & ASSOCIATES, PLLC
AHershkovitz@Hershkovitz.net
GRzucidlo@Hershkovitz.net