Takeaway: Optional claim elements do not narrow the claim because they can always be omitted.

In its Final Written Decision, the Board found that Petitioner has shown by a preponderance of the evidence that challenged claims 18–31 of the ‘574 patent are unpatentable. The ‘574 patent “relates to public key encryption (PKE), which is used for securing and authenticating transmissions over unsecure networks.”

The Board first addressed claim construction under a “broadest reasonable interpretation in light of the specification . . . and the understanding of others skilled in the relevant art.” Patent Owner proposed claim constructions for the terms “process, common certificate repository, and verified by a direct inquiry to the certification authority.”

For the term “computer process,” Patent Owner argued that “the broadest reasonable interpretation of ‘process’ . . . include[s] ‘computer program instructions running on a computer.’” “Petitioner argues that Patent Owner’s argument depends on whether the broadest reasonable interpretation of the claims excludes all human or manual interaction with computers or software, which Petitioner asserts is unsupported by the claims and specification of the ’574 patent.” The Board found that “[b]eyond steps explicitly recited as performed at or by a computer process, … nothing in the recitations of a computer process … would exclude manual invocation or other manual intervention.”

For the term “common certificate repository,” Patent Owner argues that the broadest reasonable interpretation is “a repository that stores public key certificates for allcertification authorities [in the certification infrastructure].” However, the Board “decline[d] to limit the construction of common certificate repository to require storage of public key certificates for all CAs, or even all CAs within a hierarchy or infrastructure.” Beyond this, the Board did “not find it necessary to provide an explicit construction of the term.”

The Board next addressed whether recitation of a method step introduced by “may” further limits a claim. “[O]ptional elements do not narrow the claim because they can always be omitted.” In re Johnson, 435 F.3d 1381, 1384 (Fed. Cir. 2006). As such, “the use of the term ‘may’ or ‘may also’ in claims 25-27 is not limiting” and “for purposes of this inter partes review, we construe claims 25–27 to be of the same scope as, and stand or fall with, independent claim 23.” For the term “verified by a direct inquiry to the certification authority,” the Board declined to adopt a construction “because the disputed phrase is recited only in claim 25 as part of a non-limiting clause.”

The Board then turned to anticipation of claims 18-31 by Kapidzic. “Kapidzic is one paper in a collection of papers, which were the subject of a symposium on network and distributed system security.” As an initial matter, “Patent Owner argues that Kapidzic is not prior art under § 102(a) because ‘to the extent that Kapidzic discloses any of the concepts of claims 18-31 of the ’574 patent, these concepts were derived from Dr. Sead Muftic, the sole inventor of those concepts.’” Patent Owner “argues an inventor need not be listed as an author on a reference in order to disqualify that reference as prior art” and “also asserts that a declaration from an inventor is sufficient to remove a reference as prior art and that declarations from co-authors supporting an inventor’s testimony are not required.” However, “Patent Owner acknowledged that corroboration is necessary” and “that, in order to be disqualified as a prior art reference under § 102(a), Kapidzic needs to be only Dr. Muftic’s work.” The Board stated:

Although we agree that authorship of articles is not necessarily determinative of whose ideas are present in a paper, we do not find Patent Owner has sufficiently corroborated Dr. Muftic’s testimony to establish that the entirety of Kapidzic can be attributed solely to Dr. Muftic. Our reviewing court has stated that “sufficient circumstantial evidence of an independent nature can satisfy the corroboration requirement.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (emphasis added). We find Patent Owner has not submitted sufficient independent circumstantial evidence corroborating Dr. Muftic’s testimony that the entirety of the ideas in Kapidzic originated with Dr. Muftic.

As such, the Board was not persuaded that “Kapidzic should be disqualified as prior art.”

The Board went on to analyze anticipation by Kapidzic. The Board found that Petitioner has demonstrated, by a preponderance of the evidence, that claims 18, 19, 20, 21, 23-27, 28, 29, 30, and 31 are anticipated by Kapidzic. However, regarding claim 22, the Board was persuaded by Patent Owner’s argument that “Kapidzic discloses performing the process that Petitioner maps to the subject matter of claim 18 ‘when a current pair of keysexpires,’ not when the certificate expires.” “Notwithstanding Petitioner’s assertion that Patent Owner has not explained why key expiration is not the same as certificate expiration, the burden is on Petitioner to demonstrate the claim elements are disclosed by Kapidzic” and Petitioner “does not provide sufficient testimony to support its attorney argument.” Accordingly, the Board found that “Petitioner has not demonstrated, by a preponderance of the evidence, that claim 22 is anticipated by Kapidzic.”

The Board next addressed anticipation and obviousness by PKI Report and obviousness over PKI Report and RFC 1424. As discussed in claim construction, the Board disagreed “with Patent Owner’s construction of performing a step ‘at a computer process,’ as excluding manual invocation or other human intervention.” The Board concluded “that Petitioner has met its burden to show, by a preponderance of the evidence, . . . that claims 18–30 are unpatentable as anticipated by, or obvious in view of, PKI Report or the combination of PKI Report and RFC 1424.” However, the Board further concluded “that Petitioner has not met its burden to show, by a preponderance of the evidence, that claim 31 is unpatentable as anticipated by PKI Report.”

Specifically, “Patent Owner argues PKI Report teaches adding a PCA and new CAs but does not teach ‘adding a new component to a representation of a certification infrastructure,’ as recited in claim 31.” The Board found that:

Petitioner has not pointed to anything in PKI Report that discloses “adding a new component to a representation of a certification infrastructure.” Specifically, although Petitioner points to a portion of PKI Report that discloses adding an entity to the infrastructure, and the assigned unique name may indicate the location of the entity within the infrastructure, Petitioner does not point to a disclosure of adding a component to a representation of the certification. As an analogy, if a parent has a daughter and names her by appending “Jill” to a concatenation of the child’s ancestors’ names, Jill is added to the family and has a unique name indicating her lineage, but Jill is not added to a representation of the family (e.g., a family tree diagram) merely by the assignment of a unique name. Adding Jill to her family tree diagram is a separate step.

As such, the Board found that “Petitioner has not demonstrated, by a preponderance of the evidence, that the subject matter of claim 31 is anticipated by PKI Report.”

Finally, the Board addressed Patent Owner’s various motions to exclude evidence. The Board granted Patent Owner’s motion to exclude as hearsay, an exhibit offered in support of one of the asserted references. “Because Petitioner relies on statements in Exhibit O regarding publication procedures in support of its assertion that RFC 1424 was publicly available as of February 1993, we grant Patent Owner’s Motion to Exclude with respect to Exhibit O. . . .” The Board denied Patent Owner’s motion to exclude two of the asserted references for lack of foundation “because the references have not been shown to be a prior art printed publication.” “Specifically, Patent Owner argues Petitioner has not explained how PKI Report or RFC 1424 is prior art and that Petitioner’s supplemental evidence does not cure Patent Owner’s objection.” Importantly, however, “Patent Owner never challenged the sufficiency of the evidence in its Patent Owner Response.” “Thus, Patent Owner’s Motion to Exclude is improper to the extent it asserts Petitioner has not sufficiently demonstrated public accessibility of either PKI Report or RFC 1424.”

Compass Bank, et al v. Intellectual Ventures II, LLC, IPR2014-00724

Paper 41: Final Written Decision

Dated: November 5, 2015

Patent: 5,745,574

Before: Kristen L. Droesch, Jennifer S. Bisk, and Justin Busch

Written by: Busch

Related proceedings: IPR2014-00660