Compass Bankv.Intellectual Ventures II LLC

Patent Trials and Appeals Board

Dec 12, 2014

09178606 - (R) (P.T.A.B. Dec. 12, 2014)

Trials@uspto.gov Paper 18
571-272-7822 Entered: December 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

COMPASS BANK, COMMERCE BANCSHARES, INC., and
FIRST NATIONAL BANK OF OMAHA,
Petitioners,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case IPR2014-007191
Patent 6,314,409 B2

Before KRISTEN L. DROESCH, JENNIFER S. BISK, and
JUSTIN BUSCH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)

1 Case IPR 2014-00722 has been consolidated with the instant proceeding.
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I. INTRODUCTION
Compass Bank, Commerce Bancshares, Inc., and First National Bank
of Omaha (collectively “Petitioners”) filed two Requests for Rehearing of
our Decision of October 24, 2014 (Paper 11, “Decision” or “Dec.”). Paper
14 (“’719 Req. Reh’g”), Paper 15 (“’722 Req. Reh’g”). Our Decision
denied institution of inter partes review of claims 1–11, 13–21, 24–27, 29,
30, 32, 33, and 36–39 of U.S. Patent No. 6,314,409 B2 (“the ’409 Patent”).
Dec. 24. Petitioners request rehearing of our Decision not to review claims
1–11, 13, 21, 24, 25, 30, 32, 33, 36, and 38 as anticipated by Ginter, and
claims 14–20, 26, 27, 29, 37, and 39 as obvious over Ginter in view of
Abraham. ’719 Req. Reh’g 1. Petitioners also request rehearing of our
Decision not to review claims 1–11, 13, 21, 24, 25, 30, 32, 33, 36, and 38 as
anticipated by Comerford, and claims 14–20, 26, 27, 29, 37, and 39 as
obvious over Comerford in view of Abraham. ’722 Req. Reh’g 1. For the
reasons that follow, Petitioner’s Requests for Rehearing are denied.
II. STANDARD OF REVIEW
In its request for rehearing, the dissatisfied party must identify,
specifically, all matters the party believes the Board misapprehended or
overlooked, and the place where each matter was addressed previously.
37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a
petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).
III. DISCUSSION
Claims 1–11, 13–21, 24–27, 29, 30, 32, 33, and 36–39 based on Ginter
Claim 1 recites “each and every access to an unprotected form of the
protected portions of the data is limited in accordance with rules defining
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access rights to the data as enforced by an access mechanism, so that
unauthorized access to the protected portions of the data is not to the
unprotected form of the protected portions of the data,” (“the access
limitations”). In our Decision, we determined the ’719 Petition2 did not
explain sufficiently how Ginter’s electronic appliance and/or SPU 500
enforces Ginter’s rules and controls, as required by claim 1. Dec. 13.
Petitioners argue that Ginter’s electronic appliance that includes a
secure processing unit (“SPU”) corresponds to the claimed access
mechanism. ’719 Req. Reh’g 4 (citing ’719 Pet. 12–13, 15–17, 34–40, 46–
47, 49–52). Petitioners assert that “[i]t is the electronic appliance ‘that
help[s] to ensure that information is accessed and/or otherwise used only in
authorized ways.’” Id. (citing ’719 Ex. 10043, col. 1, ll. 23–28; ’719 Pet.
10). Petitioners contend that “Ginter discloses permissions record 808,
methods 1000, and budgets 308, each of which are used by the electronic
appliance that includes a SPU to define a user’s right to use, distribute, or
access data.” Id. at 5. Last, Petitioners argue that “[t]he electronic appliance
that includes a SPU (i.e., the access mechanism) enforces the rules and
controls (i.e., the rules defining access rights to the data) each and every
time access is requested to the unprotected (e.g., unencrypted) form of the
information elements in a container that have been encrypted or otherwise
protected.” Id.; see id. at 6.
Petitioners’ arguments presented in the Request for Rehearing are not
persuasive because Petitioners do not identify, specifically, the place where
each matter was addressed previously. For example, Petitioners do not

2 IPR2014-00719, Paper 1 (“’719 Petition” or “’719 Pet.”).
3 IPR2014-00719, Exhibit 1004.
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identify where the assertion that it is the electronic appliance that helps to
ensure that information is accessed or used only in authorized ways was
addressed previously in the ’719 Petition. Instead, the ’719 Petition explains
that Ginter “‘relates to computer-based and other electronic appliance-based
technologies that help to ensure that information is accessed and/or
otherwise used only in authorized ways.” ’719 Pet. 10 (citing ’719 Ex.
1004, col. 1, ll. 23–28). Similarly, Petitioners do not direct us to where the
’719 Petition addresses the following assertions: (1) Ginter’s electronic
appliance including a SPU uses the permissions record 808, methods 1000,
and budgets 308 to define a user’s right to use, distribute or access the data;
and (2) Ginter’s electronic appliance including a SPU enforces the rules and
controls each and every time access is requested to the unprotected form of
the information elements in a container that have been encrypted.
Therefore, Petitioner has not met its burden to show that we
misapprehended or overlooked these arguments and as such, has not shown
that we have abused our discretion in denying institution of inter partes
review of claims 1–11, 13, 21, 24, 25, 30, 32, 33, 36, and 38 as anticipated
by Ginter, and claims 14–20, 26, 27, 29, 37, and 39 as obvious over Ginter
in view of Abraham.
Claims 1–11, 13–21, 24–27, 29, 30, 32, 33, and 36–39 based on Comerford
The access limitations, discussed above, also are at issue in our denial
of institution of inter partes review based on Comerford. Petitioners argue
that we interpreted narrowly the term “access” such that it excludes
execution. ’722 Req. Reh’g 1–2, 6. Petitioners assert that our interpretation
contradicts the express teachings in the ’409 Patent that describe how the
“access mechanism” limits access to an unprotected form of the protected
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portions of the data by limiting a user’s right to execute the portions of the
software that have been protected. ’722 Req. Reh’g 1–5 (citing ’722 Pet.4 8;
’722 Prelim. Resp.5 11; ’722 Ex. 10026, col. 8, l. 50–col. 9, l. 3, col. 22, ll.
63–65, col. 23, l. 9–col. 24, l. 47, col. 29, l. 38–col. 31, l. 62). Petitioners
further argue that dependent claims 8 and 9, which ultimately depend from
claim 1, demonstrate that “execution rights,” such as Comerford’s conditions
on the right to execute, are “rules defining access rights to the data.” Id. at
5–6; see id. at 1–2. Petitioners also contend that we did not give “access” its
ordinary and customary meaning consistent with the ’409 Patent
Specification because we misapprehended or overlooked the disclosures of
the ’409 Patent Specification discussed at length in the Request for
Rehearing. Id. at 6.
We are not persuaded by Petitioners’ arguments. In our Decision, we
acknowledged that Petitioners equate Comerford’s conditions on the right to
execute with the claimed rules defining access rights to the data. Dec. 19.
We also acknowledged that Petitioners equate Comerford’s physically and
logically secure coprocessor with the claimed access mechanism. Id. In any
event, the Petition does not explain sufficiently how Comerford discloses
each and every execution of (i.e., access to) an unprotected (clear text,
unencrypted) form of the protected portions of the data is limited in
accordance with the conditions on the right-to-execute (i.e., rules defining
access rights to the data) as enforced by the physically and logically secure

4 IPR2014-00722, Paper 1 (“’722 Petition” or “’722 Pet.”).
5 IPR2014-00722, Paper 10 (“’722 Preliminary Response” or “’722 Prelim.
Resp.”).
6 IPR2014-00722, Exhibit 1002.
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coprocessor (i.e., access mechanism). See ’722 Pet. 10–17; see also id. at
29–32, 35–47 (addressing independent claims 21, 24, 25, 30, 32, 33, 36, and
38). Stated in other words, the Petition does not explain sufficiently how
Comerford’s physically and logically secure coprocessor enforces the
conditions on the right to execute that limit execution of the clear text form
of the protected portions of the data.
Petitioners further argue that the Board misunderstood the purpose of
the logical and physical security of the coprocessor disclosed in the ’409
Patent Specification. ’722 Req. Reh’g 6–9. Petitioners assert the access
limitations have three subparts requiring the following: (1) “an access
mechanism,” (2) “each and every time access to an unprotected (e.g.,
unencrypted) form of the portions of the data that have been protected (e.g.,
encrypted) is requested, the access mechanism must enforce rules that define
the conditions under which access to the unprotected (e.g., unencrypted)
form of the protected (e.g., encrypted) portions of the data will be
permitted,” and (3) “when access is not authorized (i.e., unauthorized
access), the access mechanism must prevent access to the unprotected (e.g.
unencrypted) form of the portions of the data that have been protected (e.g.,
encrypted).” Id. at 6–7. Petitioners assert that with respect to the third
subpart of the access limitations, Comerford’s “coprocessor tests the
conditions of the conditioned right to execute against the criteria to
determine if a user has the right to execute the portions of software that have
been protected, but the logical and physical security of the coprocessor is
still necessary to ensure that when access is not authorized (i.e.,
unauthorized access), the access mechanism prevents access to the
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unprotected (e.g., unencrypted) form of the portions of the data that have
been protected (e.g., encrypted).” Id. at 7 (citing ’722 Pet. 12–13, 15–17).
Petitioners argue that our agreement with Patent Owner that Comerford
describes access to the unprotected form (clear text) of the protected
software is controlled by the logical and physical security of the coprocessor
indicates that we misapprehended matters in the ’722 Petition and the ’722
Preliminary Response that explain the purpose of the logical and physical
security of the coprocessor. Id. at 9 (citing Dec. 19–20; ’722 Prelim. Resp.
26–27).
We are not persuaded by Petitioners’ arguments because they focus on
Petitioners’ characterization of the third subpart of the access limitations, but
fail to address sufficiently Petitioners’ characterization of the remaining
subparts of the access limitations, namely––“each and every access to an
unprotected form of the protected portions of the data is limited in
accordance with rules defining access rights to the data as enforced by an
access mechanism.” Petitioners’ arguments also do not identify the place
where each matter was addressed previously. For example, Petitioners
assert in its Request for Rehearing that Comerford’s coprocessor tests the
conditions of the conditioned rights to execute against the criteria to
determine if a user has the right to execute the portions of the software that
have been protected. ’722 Req. Reh’g 7 (citing ’722 Pet. 12–13, 15–17).
However, Petitioners do not identify where this specific argument was
addressed previously in the ’722 Petition. Instead of asserting that
Comerford’s coprocessor tests the conditions of the conditioned rights to
execute, the ’722 Petition asserts that Comerford describes “a software
program which can test the conditions against the criteria and act in a way
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determined by results of that test.” ’722 Pet. 10 (citing ’722 Ex. 10047, col.
3, ll. 7–17); see id. at 11 (citing ’722 Ex. 1004, col. 3, ll. 22–26, 30–43, 50–
54, col. 18, ll. 59–61, col. 19, ll. 4–10; ’722 Ex. 10018 ¶ 111); see id. at 13,
16, 20–24, 28–29, 30, 34, 36, 45, 55 (citing ’722 Ex. 1004, col. 3, ll. 7–17).
Petitioners also argue that the access limitations only require one set
of access rules, but we interpreted the claims improperly as requiring “two
sets of rules––one set of rules to control when an encrypted portion of the
software, Pe, (the protected portion of the data) is decrypted to create an
unprotected form of the protected portion of the data[,] and another set of
rules to limit access to this unprotected form of the protected portion of the
data that is now present in the memory of the coprocessor.” ’722 Req.
Reh’g 9–10; see id. at 1–2. Petitioners assert that the ’722 Petition explains
that Comerford’s physically and logically secure coprocessor decrypts and
executes the protected portion, Pe, of the software only if execution is
authorized based on testing conditions against criteria that are associated
with a conditioned right to execute. ’722 Req. Reh’g 10 (citing ’722 Pet. 13,
15–18, 20–25, 29–33, 35–37, 39, 41, 44–46, 54–57). Petitioners present the
following additional arguments:
If the protected portions, Pe, of the software are never
decrypted, there can be no access to an unprotected (clear text,
unencrypted) form of the protected portions of the data.
Accordingly, the conditions on the right to execute, which are
tested whenever execution of a protected portion, Pe, of
software is requested by the user, limit access to an unprotected
form of the protected portions of the data. See id.
’722 Req. Reh’g 10–11.

7 IPR2014-00722, Exhibit 1004.
8 IPR2014-00722, Exhibit 1001.
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Petitioners’ arguments presented in its Request for Rehearing are not
persuasive because Petitioners do not identify the place where each matter
was addressed previously. As explained above, Petitioners do not identify
where the ’722 Petition addresses Comerford’s coprocessor testing the
conditions of the conditioned rights to execute against the criteria to
determine if a user has the right to execute the portions of the software that
have been protected. Petitioners also do not identify where the ’722 Petition
addresses the following assertions: (1) there can be no access to an
unprotected form of the data if the protected portions of the software are
never decrypted, and (2) the conditions on the right to execute which are
tested whenever execution of the protected portion of the software is
requested by the user, limit access to an unprotected form of the protected
portions of the data.
Accordingly, because we are not persuaded that we misapprehended
or overlooked the disclosures of the ’409 Patent Specification in construing
the term “access,” and because Petitioners do not identify where the
arguments now relied upon in the Request for Rehearing were addressed
previously in the ’722 Petition, we did not abuse our discretion in denying
institution of inter partes review of claims 1–11, 13, 21, 24, 25, 30, 32, 33,
36, and 38 as anticipated by Comerford, and claims 14–20, 26, 27, 29, 37,
and 39 obvious over Comerford in view of Abraham.
Institution of Only a Subset of the Challenged Claims is Allegedly
Inconsistent with the Relevant Statutory Provisions and the Overall
Statutory Scheme
Petitioners argue that the statutory provisions governing inter partes
review do not grant the Patent Office authority to institute inter partes
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review of only a subset of the challenged claims in the ’719 Petition and the
’722 Petition. ’719 Req. Reh’g 7–8; ’722 Req. Reh’g 12. Petitioners
contend that instituting inter partes review of only a subset of the challenged
claims is inconsistent with the intent of Congress as expressed in the text of
the relevant statutory provisions and the overall statutory scheme for inter
partes review. ’719 Req. Reh’g 8–9; ’722 Req. Reh’g 12–14. Petitioners
further argue that the right to appeal a final written decision to the United
States Court of Appeals for the Federal Circuit is eviscerated when the
Board does not institute inter partes review of all of the challenged claims.
’719 Req. Reh’g 9–10, ’722 Req. Reh’g 13–14. Petitioners conclude that
our Decision is based on an error of law and constitutes an abuse of
discretion. ’719 Req. Reh’g 10; ’722 Req. Reh’g 14.
35 U.S.C. § 316 requires the Director of the Patent and Trademark
Office to “prescribe regulations . . . setting forth the standards for the
showing of sufficient grounds to institute a review under section 314(a),”
and requires the Director to “consider the effect of any such regulation
on . . . the efficient administration of the Office, and the ability of the Office
to timely complete proceedings instituted under this chapter.” 35 U.S.C.
§ 316(a)(2), (b). In view of the considerations listed in 35 U.S.C. § 316(b),
the Director prescribed 37 C.F.R. § 42.108, which provides the following
instruction: (1) “the Board may authorize the review to proceed on all or
some of the challenged claims and on all or some of the grounds of
unpatentability asserted for each claim,” and (2) “the Board may deny some
or all grounds of unpatentability for some or all of the challenged claims.”
37 C.F.R. § 42.108(a), (b). Accordingly, we are not persuaded that our
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Decision is based on an error of law, or that our Decision constitutes an
abuse of discretion.
II. DECISION ON REHEARING
Petitioner’s Request for Rehearing is denied.

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PETITIONERS:
Joseph Melnik
Geoffrey K. Gavin
JONES DAY
jmelnik@jonesday.com
ggavin@jonesday.com

Marc Vander Tuig
SENNIGER POWERS LLP
mvandertuig@senniger.com

Jason Jackson
KUTAK ROCK LLP
jason.jackson@kutakrock.com

PATENT OWNER:
Lori Gordon
Omar Amin
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
lgordon-PTAB@skgf.com
oamin-PTAB@skgf.com