Fidelity National Information Services, Incv.DataTreasury Corporation

Patent Trial and Appeal Board

Apr 29, 2015

09081012 (P.T.A.B. Apr. 29, 2015)

Trials@uspto.gov Paper 42
571-272-7822 Entered: July 30, 2015
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 CBM2014-00020
Patent 6,032,137

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

TIERNEY, Administrative Patent Judge.

DECISION
DataTreasury’s Request for Rehearing
of Final Written Decision
37 C.F.R. § 42.71

CBM 2014-00020
Patent 6,032,137

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I. STATEMENT OF THE CASE
On April 29, 2015, we entered a Final Written Decision in which we
found claims 1–67 of U.S. Patent No. 6,032,137 (“the ’137 Patent”) to be
unpatentable. Paper 34 (“Final Dec.”). Patent Owner, DataTreasury Corp.,
has filed a request for rehearing of that decision. Paper 41 (“Req. Reh’g.”).
For the reasons discussed below, Patent Owner’s Request for Rehearing is
denied.

II. THE REQUEST FOR REHEARING
Patent Owner seeks reconsideration based on the following main
contentions: (a) the Board erred in determining that the ’137 patent is a
covered business method patent; (b) the Board erred in determining that the
challenged claims are directed to patent ineligible subject matter; and (c) the
Board erred in determining that the challenged claims lacked sufficient
written description for encrypting the claimed subsystem identification
information.
We have reviewed Patent Owner’s request for rehearing and carefully
considered Patent Owner’s arguments. Our decision on rehearing addresses
the main arguments presented by Patent Owner. We have, however,
considered all of the arguments presented, including those not addressed
specifically in this decision. We are not persuaded that the Board
misapprehended or overlooked Patent Owner’s arguments presented in its
response or evidence with respect to the patentability of the challenged
claims.

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Patent 6,032,137

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III. ANALYSIS
In pertinent part, 37 C.F.R. § 42.71(d) states:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must
specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or
a reply.

Patent Owner’s main arguments presented in its request for rehearing
are addressed below.

A. The ’137 patent is a Covered Business Method Patent
Patent Owner contends that the ’137 patent is not eligible for covered
business method review as the ’137 patent is directed to “a specific data
processing system that is application agnostic.” Req. Reh’g. 2.
Additionally, Patent Owner contends that the Board erred in holding that the
’137 patent does not claim a technological invention. Id. at 4. We have
considered Patent Owner’s arguments but are not persuaded that we
misapprehended or overlooked that the subject matter of the ’137 patent is
eligible for covered business method review.
Our Decision to Institute (Paper 13) held that the ’137 patent is
directed to financial activity, processing financial transactions, and
constitutes a financial service or product. Dec. to Inst. 10–11. Patent
Owner’s contention that the ’137 patent is application agnostic fails to
address our prior finding that the patent states that it is directed to financial
products and services by capturing an image of financial transaction data.
Id.
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Patent 6,032,137

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Patent Owner cites the ’137 specification’s “Field of Invention” at
column 1, lines 9–14 for the proposition that the data is not limited to a
particular application. Req. Reh’g 2. Patent Owner however, overlooks the
fact that the Field of the Invention section begins by stating:
This invention relates generally to the automated processing of
documents and electronic data from different applications
including sale, business, banking and general consumer
transactions.

Ex. 1001, 1:5–9. As apparent from the ’137 patent, the claimed data
processing system is directed to a financial service or product.
Patent Owner also contends that the Board erred in holding that the
’137 patent does not claim a technological invention. Req. Reh’g. 4.
According to Patent Owner, “[t]he [’137] Patent is directed to a new and
distinct arrangement of computer components that transmit data in a new
way.” Id. Patent Owner however, does not show where the Board erred in
its Decision to Institute, which held that none of the steps of representative
claim 26 recites a novel and unobvious technological feature. Dec. to Inst.
12–13. This holding was reaffirmed in the Final Written Decision. Final
Dec. 8–9.

B. The Challenged Claims are Directed to Patent Ineligible Subject
Matter
Patent Owner states that the Board erred in concluding that the ’137
patent fails to claim patent-eligible subject matter. Req. Reh’g. 4.
According to Patent Owner, the Board improperly considered only one
claim––claim 43––as representative, and failed to consider each of the 67
claims in the patent. Id. at 5–6. For example, Patent Owner contends that
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Patent 6,032,137

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the Board did not address additional limitations, such as the card interface of
claim 3, the tagged bitmap format images of claim 4, and the domain name
assigning software of claim 9. Id. at 8. Additionally, Patent Owner also
disputes the Board’s determination that the claims are directed to an abstract
idea, the determination that the claims improperly preempt the abstract idea,
and the Board’s failure to discuss both precedent and the ’137 patent’s tiered
networked teachings. Id. at 4–11.
We have considered Patent Owner’s contentions but do not find them
persuasive. For example, although Patent Owner contends that the Board
did not address certain limitations in its 67 challenged claims, Patent Owner
does not identify where these particular limitations were discussed in its
Patent Owner Response. Arguments not raised in the briefs before the
Board and evidence not previously relied upon in the briefs are not permitted
in the request for rehearing. Additionally, as stated in the Final Written
Decision, the Board considered each of the challenged claims and was
persuaded based on the evidence presented that the claims lacked limitations
that meaningfully limited the abstract idea. Final Dec. 17–20. In particular,
the Board credited the testimony of Petitioner’s expert, Dr. Alexander, that
the ’137 patent claims merely arrange old, well-known elements with each
performing the same function it had been known to perform. Id. Dr.
Alexander’s testimony addresses each of the now-disputed limitations, e.g.,
card interface (claim 3), tagged bitmap format images (claim 4), and domain
name assigning software (claim 9) and demonstrates that the limitations
merely recite a known set of prior art elements used according to their
established functions. Ex. 1003 ¶¶ 104–138.

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C. The Challenged Claims Lacked Sufficient Written Description
Patent Owner contends that Petitioner failed to prove that the ’137
patent claims lack written description for “‘encrypting subsystem
identification information’” limitation in claims 1–67. Req. Reh’g. 11–15.
According to the Patent Owner, the Board erroneously placed the burden of
proof on the Patent Owner to demonstrate written description and
disregarded the disclosure of the ’137 patent that its system is capable of
encrypting all of the transferred information. Id. Patent Owner cites the
following phrase from the Final Written Decision: “‘to demonstrate that
Patent Owner possessed the invention’” as evidence that the Board placed
the burden on the Patent Owner to prove written description. Id. at 12. To
place the phrase in context, the Final Written Decision states:
The claims require encrypting “subsystem identification
information” and not merely “identification information.”
Patent Owner’s citations to the ’137 patent specification fail to
demonstrate that Patent Owner possessed the invention. As
recognized by Dr. Alexander, one skilled in the art would
understand that the ’137 patent specification does not describe
any encryption to the tag headers that are prepended to the
ECBI. Ex. 1003 ¶¶ 149–159.

Final Dec. 22. As apparent from the Final Written Decision, the burden of
proof was placed on Petitioner. The Board credited the testimony of
Petitioner’s expert, Dr. Alexander, and held that Petitioner met its burden
and demonstrated that the ’137 patent does not describe encrypting all of the
transferred information. Specifically, the Final Written Decision states:
Based on the evidence of record, we credit the testimony
of Dr. Alexander and agree with Petitioner that:

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(1) the specification fails to describe encrypting the
DAT_TERMINAL_ID;
(2) generic “identification information” does not
constitute the claimed subsystem identification
information; and
(3) subsystem identification information is not included
in the “paper transaction data” of the disclosed receipt.

Reply 12–13. We find that Petitioner has demonstrated that
claims 1–67 are unpatentable for lack of sufficient written
description for encrypting subsystem identification information.

Final Dec. 22–23.
In consideration of the above, the Patent Owner’s Request for
Rehearing is DENIED.
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Patent 6,032,137

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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
FIS-Ballard@finnegan.com

For PATENT OWNER:

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