Fidelity National Information Services, Incv.DataTreasury Corporation

Patent Trial and Appeal Board

Aug 13, 2014

08917761 (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 IPR2014-00489
Patent 5,910,988

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

IPR2014-00489
Patent 5,910,988

2
I. INTRODUCTION
Fidelity National Information Services, Inc. (“Petitioner”) filed a
Petition requesting inter partes review of claims 22-25, 36-50, and 66-123
(“the challenged claims”) of U.S. Patent No. 5,910,988 (Ex. 1001, “the ’988
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 ’988 patent. Accordingly, the
Petition is denied.
A. Related Proceedings
Petitioner and Patent Owner indicate that the ’988 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 ’988 patent. Pet. 3-5; Paper 4, 2-4.
Petitioner and Patent Owner also identify additional petitions for inter
partes review and for covered business method review of the ’988 patent:
CBM2014-00021, CBM2014-00057, CBM2014-00087, and IPR2014-
00491. Pet. 3; Paper 4, 2; Paper 5, 1. Petitioner and Patent Owner also
IPR2014-00489
Patent 5,910,988

3
identify petitions for inter partes review and for covered business method
review of Patent Owner’s related U.S. Patent No. 6,032,137:
CBM2014-00020, CBM2014-00056, CBM2014-00088, and IPR2014-
00490. Id. Petitioner and Patent Owner also identify an ex parte
reexamination of the ’988 patent (Control No. 90/012,537) (pending). Pet.
3; Paper 4, 2.
B. The ’988 patent
The ’988 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 3:30–35. Generally,
the ’988 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,
3:30–51, 4:60–67, 5:40–45, 16:38–45. Additionally, the general purpose
network computer encrypts the images and data to provide a system with
maximal security. Id. at 3:30–35, 7:31–35, 8:3–5.
Figure 1 of the ’988 patent, provided below, depicts a preferred
embodiment of the system having three major operational elements:
IPR2
Paten

The
follo
Id. a
014-0048
t 5,910,98
’988 paten
ws:
FIG. 1
100. Th
elements
200 (the
System
collectin
Processi
subsyste
t 4:60–67.
9
8
t describe
shows the
e DataTre
: the Data
remote d
Access C
g subsys
ng Concen
m).

s the tiered
architectu
asury™ S
Treasury™
ata acces
ollector (
tem), an
trator (DP
4
arrangem
re of the
ystem 10
System
s subsyste
DAC) 400
d the D
C) 600 (th
ent depict
DataTrea
0 has thr
Access T
m), the D
(the int
ataTreasu
e central d

ed in Figu
sury™ Sy
ee operat
erminal (D
ataTreasu
ermediate
ry™ Sy
ata proce
re 1 as
stem
ional
AT)
ry™
data
stem
ssing
IPR2
Paten

of th
As s
whic
can b
comp
5:40
autom
trans
in th
014-0048
t 5,910,98
Figure 2
e DAT (re
hown in F
h is conne
e a genera
ressing, e
–45, 7:31–
The ’988
ated, reli
actions. I
Indepen
e ’988 pat
9
8
of the ’98
mote data
igure 2, a s
cted to a d
l purpose
ncrypting,
35.
patent is
able, secu
d. at 3:25–
dent claim
ent and are
8 patent, p
access sub
canner 20
ata system
computer
and taggi
said to im
re system t
29.
C. Illus
s 26 and 4
reproduc
5
rovided b
system ter
2 is conne
access co
and perfor
ng a scann
prove upon
o process
trative Cl
2 are illust
ed below:
elow, depi
minal):
cted to a w
llector 30
ms tasks i
ed bitmap
the prior
electronic
aim
rative of t
cts a block
orkstation
0. The wo
ncluding
ped image
art by pro
and paper
he challen
diagram

210,
rkstation
. Id. at
viding an

ged claims
IPR2014-00489
Patent 5,910,988

6
26. A method for central management, storage and
verification of remotely captured paper transactions from
documents and receipts comprising the steps of:
capturing an image of the paper transaction data at one or
more remote locations and 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 communication network for the transmission of data
within and between one or more remote data processing
subsystems, at least one intermediate data collecting subsystem
and at least one central subsystem forming a tiered architecture
wherein each of said at least one central data processing
subsystem communicate with a corresponding some of said at
least one data collecting subsystem and each of said at least one
data collecting subsystem communicate with a corresponding
some of said one or more data processing subsystems, said data
processing subsystem including an imaging subsystem for
capturing images of documents and receipts, comprising:
at least one first local area network for transmitting data
within a corresponding one of said one or more remote
subsystems;
at least one second local area network for transmitting
data within a corresponding one of said at least one
intermediate subsystem;
IPR2014-00489
Patent 5,910,988

7
at least one third local area network for transmitting data
within a corresponding one of said at least one central
subsystem; and
at least one wide area network for transmitting data
between said one or more remote subsystems, said at least one
intermediate subsystem and said at least one central 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
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, Golden, and
Internetworking LANs
§ 103 42-50, 70-75, 78-83, 93-
118, and 121
Imaging Systems, IBM,
Internetworking LANs, and Golden
§ 103 22-25, 36, 38-41, 66-69, 84-
92, 119, 120, 122, and 123
IPR2014-00489
Patent 5,910,988

8
Reference(s) Basis Claims Challenged
Imaging Systems, IBM,
Internetworking LANs, Golden, and
Liu
§ 103 37
Imaging Systems, Golden,
Internetworking LANs, and
Lovendusky
§ 103 76
Imaging Systems, Golden,
Internetworking LANs, and Holt
§ 103 77
Imaging Systems, Golden,
Internetworking LANs, and at least
one of Berger or Hoffman
§ 103 45, 50, 96, 101, 105, and
113
Imaging Systems, Golden,
Internetworking LANs, IBM, and at
least one of Berger or Hoffman
§ 103 87 and 92
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. 4-5. 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 ’988 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 ’988 patent. Ex. 3001. It alleged breach of contract and
IPR2014-00489
Patent 5,910,988

9
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 ’988 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
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 seven grounds of unpatentability. Pet. 18-55. 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, with few exceptions, only to the Declaration of Stephen
Gray (“Gray Declaration”). Id. The Gray Declaration comprises 1,278
paragraphs across 287 pages. Ex. 1004. In those paragraphs, Mr. Gray cites
almost exclusively to a 1,003-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
IPR2014-00489
Patent 5,910,988

10
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. 18-38), for example, Petitioner’s analysis of
independent claim 42 cites exclusively to the Gray Declaration, but for two
citations to Golden (Exhibit 1012) on page 23. Pet. 19-25. In the nineteen
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 two citations to Golden in paragraph 732. Ex. 1004 ¶¶ 715-734. In the
thirty-six pages of claim chart analyzing claim 42, Petitioner cites, finally, to
the references themselves. Ex. 1004, Ex. A, 163-199. The end result is that
six pages of Petition expand to thirty-six pages of citations to references.
Petitioner uses the same approach for the other six 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
IPR2014-00489
Patent 5,910,988

11
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
likelihood that Petitioner would prevail in establishing the unpatentability of
the challenged claims of the ’988 patent. Accordingly, we deny the Petition
and do not institute an inter partes review of the challenged claims of the
’988 patent.
IV. ORDER
Accordingly, it is
ORDERED that the Petition challenging the patentability of claims
22-25, 36-50, and 66-123 of U.S. Patent No. 5,910,988 is denied and no trial
is instituted.
IPR2014-00489
Patent 5,910,988

12
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