Fiserv, Inc.v.DataTreasury Corporation

Patent Trial and Appeal Board

Sep 1, 2015

08917761 (P.T.A.B. Sep. 1, 2015)

Trials@uspto.gov Paper 22
Tel: 571-272-7822 Entered: September 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

FISERV, INC.,
Petitioner,

v.

DATATREASURY CORPORATION,
Patent Owner.
____________

CBM2014-00087
Patent 5,910,988 C1
____________

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

SAINDON, Administrative Patent Judge.

DECISION
Final Written Decision
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

Dismissing Patent Owner’s Motion to Exclude as Moot
37 C.F.R. § 42.64(c)

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I. INTRODUCTION
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
With respect to the grounds asserted in this trial, we have considered
the papers submitted by the parties and the evidence cited therein. For the
reasons discussed below, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42,
46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123
of U.S. Patent No. 5,910,988 C1 (Ex. 1001, “the ’988 patent”) are
unpatentable, but has not shown that claims 25, 45, 55, 64, 70, 75, 78, and
105 are unpatentable.1 In addition, for the reasons discussed below, we
dismiss Patent Owner’s Motion to Exclude as moot because we expunge the
exhibits sought to be excluded, for being improperly filed.
A. Procedural History
Petitioner filed a Petition (Paper 1, “Pet.”) requesting a covered
business method patent review of claims 1–7, 9–27, and 29–123 of the ’988
patent over five proposed grounds of unpatentability. See Pet. i–iv.
Petitioner filed therewith a Declaration including the testimony of James
Knox, Ph.D. Ex. 1003. Patent Owner filed a Preliminary Response.
Paper 5 (“Prelim. Resp.”). Reviewing the arguments and evidence then
before us, we issued a Decision Instituting Covered Business Method
Review (Paper 6, “Dec. Inst.”), instituting review on claims 1, 2, 16, 18, 22,

1 Patent Owner argues that the evidentiary standard is “clear and convincing
proof” (Paper 9, 1), but 35 U.S.C. § 326(e) makes clear the appropriate
standard is “preponderance of the evidence.”
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25, 26, 29, 36, 38–42, 45–49, 55, 58–60, 64, 66–70, 73–75, 78, 80, 82–84,
88–91, 102, 105–110, and 114–123 over one of the five proposed grounds of
unpatentability. Dec. Inst. 18.
Patent Owner subsequently filed a Response to the Petition (Paper 9,
“PO Resp.”), including the testimony of Paul M. Ginsberg (Ex. 2004).
Petitioner filed a Reply (Paper 10, “Pet. Reply”). Upon the request of the
parties, an Oral Hearing was held. See Paper 21 (Transcript of the Hearing,
cited as “Tr.”).
Patent Owner filed a Motion to Exclude certain evidence. Paper 16
(“PO Mot. Excl.”). Petitioner filed an Opposition to that Motion (Paper 17,
“Pet. Opp. Mot. Excl.”), to which Patent Owner filed a Reply (Paper 20,
“PO Reply Mot. Excl.”).
B. Related Matters
The parties indicate that the ’988 patent is asserted in a number of
district court actions. Pet. xi–xii; Paper 4. The ’988 patent is the subject of
an ongoing ex parte reexamination proceeding, 90/012,537,2 as well as a
number of proceedings before this Board, including Fidelity National
Information Services, Inc. v. DataTreasury Corp., Case CBM2014-00021

2 Claims 42, 46–50, 84, 88–92, 97–102, 106–110, 114–117, 121, and 122 of
the ’988 patent are subject to the reexamination and were finally rejected in
an office action mailed April 24, 2014. That rejection was appealed, and the
PTAB issued an opinion on April 28, 2015, affirming the examiner’s
rejections. The prior art asserted in the reexamination is different from the
prior art asserted in this proceeding. Claims 42, 46–49, 84, 88–91, 102,
106–110, 121, and 122 are involved in both proceedings.
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(PTAB) (“Fidelity CBM”)3 and Jack Henry and Associates, Inc. v.
DataTreasury Corp, Case CBM2014-00057 (PTAB) (“Jack Henry CBM”).4
Paper 4.
U.S. Pat. No. 6,032,137 is a continuation-in-part of the application
that issued as the ’988 patent, and is also the subject of a number of district
court actions and matters before the Board. Pet. xi–xii.
C. 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, which 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

3 In the Fidelity CBM proceeding, a Final Written Decision (Paper 34) was
issued on April 29, 2015, determining claims 1–123 of the ’988 patent to be
unpatentable under 35 U.S.C. §§ 101 and 112, first paragraph. The Board
received a Notice of Appeal to the Federal Circuit of this Decision on
August 27, 2015.
4 In the Jack Henry CBM, a Final Written Decision (Paper 37) was issued on
July 8, 2015, determining claims 1, 2, 16, 18, 26, 27, 42, and 46 of the ’988
patent to be unpatentable under 35 U.S.C. §§ 102 and 103. The Board
received a Notice of Appeal to the Federal Circuit of this Decision on
August 27, 2015.
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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:

The ’988 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
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intermediate data collecting subsystem), and the
DataTreasury™ System Processing Concentrator (DPC) 600
(the central data processing subsystem).
Id. at 4:60–67.
Figure 2 of the ’988 patent, provided below, depicts a block diagram
of the DAT:

As shown in Figure 2, scanner 202 is connected to workstation 210, which is
connected to 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 5:40–45, 7:31–
35.
The ’988 patent is said to improve upon the prior art by providing an
automated, reliable, secure system to process electronic and paper
transactions. Id. at 3:25–29.
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D. Illustrative Claims
Claim 1 is directed to an aspect of the ’988 patent involving various
subsystems and including encrypted subsystem identification information.
Claim 42 is directed to an aspect of the ’988 patent involving remote,
intermediate, and central subsystems, each having a local area network (later
referred to as a “three-tier architecture”). These two independent claims are
illustrative, and are reproduced below.
1. A system for central management, storage and report
generation of remotely captured paper transactions from
documents and receipts comprising:
one or more remote data access subsystems for capturing
and sending paper transaction data and subsystem
identification information comprising at least one
imaging subsystem for capturing the documents and
receipts 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 management subsystem for
managing the processing, sending and storing 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.

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
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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;
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.

E. Asserted Grounds and Prior Art
A covered business method patent review was instituted as to claims
1, 2, 16, 18, 22, 25, 26, 29, 36, 38–42, 45–49, 55, 58–60, 64, 66–70, 73–75,
78, 80, 82–84, 88–91, 102, 105–110, and 114–123 as anticipated by
Campbell under 35 U.S.C. § 102. Dec. Inst. 18.
II. ANALYSIS
A. The ’988 Patent Is a Covered Business Method Patent
Patent Owner argues that the ’988 patent is not eligible for covered
business method patent review because one or more of its claims are
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directed to a technological invention. PO Resp. 21–26. We have discussed
whether the ’988 patent is eligible for covered business method patent
review at length in our Decision to Institute and Final Written Decision in
the Fidelity CBM. See Fidelity CBM, Paper 14, 9–13; Fidelity CBM, Paper
34, 8–10. For the same reasons as those we expressed in the Fidelity CBM,
we hold that the ’988 patent is eligible for covered business method patent
review.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1062–1065. PO Mot.
Excl. 2–3. Petitioner filed the disputed exhibits on April 7, 2015, which was
more than two months after Petitioner filed its Reply and 22 days before oral
hearing. Id. Petitioner characterizes its submission as “supplemental
information” and “apologizes for its oversight” of the “minor procedural
defect” of not seeking authorization to file a motion for supplemental
information. Pet. Opp. Mot. Excl. 2. We dismiss as moot Patent Owner’s
Motion to Exclude because we hereby order the expungement of Exhibits
1062–1065 for being filed without prior authorization.
C. Claim Construction
We interpret the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent. 37 C.F.R.
§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–80 (Fed.
Cir. 2015). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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2007). Any special definition for a claim term must be set forth with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
In our Decision to Institute this trial, we determined the broadest
reasonable interpretation of “subsystem identification information” is
“information that identifies a subsystem.” Dec. Inst. 8. There, as here, we
relied on our prior interpretation of this term in the Jack Henry CBM. See
Jack Henry CBM, Paper 17, 9–10; id., Paper 37, 9–12. Notably, we
determined, as an ancillary matter to construing the term, that “nothing in
the claims, as would be understood by a person of ordinary skill in the art in
view of the specification, requires any form of ownership or other type of
corporate relationship between the various subsystems; only that they
function in the manner set forth in the claims.” Id., Paper 37, 12.5
Patent Owner does not comment specifically on or discuss our prior
claim construction of “subsystem identification information” (“SSID”).
Instead, Patent Owner attacks as “Completely Unacceptable” Petitioner’s
proposed construction in the Petition, which we did not adopt. PO Resp. 19;
Dec. Inst. 8 (adopting our prior construction of the term in the Jack Henry
CBM rather than Petitioner’s proposed construction); Jack Henry CBM,
Paper 17, 8–10 (adopting neither Petitioner’s nor Patent Owner’s then-

5 Our reasoning in this regard was confirmed by Patent Owner’s admission
during Oral Argument during the Jack Henry CBM that common ownership
is not required. See Jack Henry CBM, Paper 37, 11–12. Although Petitioner
impermissibly filed the transcript of this Oral Argument as Exhibit 1064,
which we expunged, we are nevertheless aware of Patent Owner’s admission
because we took part in the Jack Henry CBM oral hearing.
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proffered constructions of SSID).6 Patent Owner then suggests that we
“consider and accept” a district court construction of SSID, without
providing any explanation for why we should adopt that construction,
especially given that we have explicitly considered and did not accept that
construction before (Jack Henry CBM, Paper 17, 8–10).7 PO Resp. 21.
Patent Owner notes that, if we do not adopt that construction, it will “abide
by the Board’s decision.” Id. We decline to adopt the district court
construction, a construction previously considered and not adopted, in the
absence of arguments explaining why we should adopt that construction.
Upon consideration of the record before us, we maintain that the
broadest reasonable interpretation of “subsystem identification information”
is “information that identifies a subsystem.”

6 Patent Owner does not explain what errors it sees in the construction
offered by Petitioner in its Petition. Petitioner proposed: “Information that
identifies a remote data access subsystem, such as the identification of a
specific branch or terminal of a banking institution, or a subsystem or
component that is a part of a remote data access subsystem.” Pet. 7
(emphasis added). The difference between Petitioner’s and Patent Owner’s
construction lies in the emphasized language, which appears to be a non-
limiting example.
7 The difference between the district court interpretation and ours is minor
and not outcome-determinative in this case. The district court limited the
SSID to identification of the remote access device, whereas our analysis
concluded that the broadest reasonable interpretation of the term did not
require limiting the SSID to identifying any particular subsystem, so long as
it identified some subsystem of the system. See Jack Henry CBM, Paper 17,
9–10. In application, the difference is immaterial because, in Petitioner’s
ground, the alleged SSID in Campbell identifies the remote access device
(sending bank).
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D. Anticipation by Campbell
Petitioner asserts that claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–42,
45–49, 55, 58–60, 64, 66–70, 73–75, 78, 80, 82–84, 88–91, 102, 105–110,
and 114–123 are anticipated by Campbell. Pet. 10–39.8
Campbell discloses a system that transmits check images and routes
those images between banks. Ex. 1019, Abstract. A first entity in the
system lies within sending bank 14. Id. at Fig. 1. Within this first bank,
hardware and software are configured to create a check image and other data
(e.g., source and destination identifiers). Id. at 2:64–3:32, 5:23–28; see also
id. at 4:10–25 (describing the same hardware and software performing the
same operations for a dishonored check). The first bank sends the gathered
information to a second entity of the system, node 12, over a network. Id. at
3:20–36; see also id. at 4:26–29 and 4:59–5:1 (describing the transmission in
the dishonored check example). Node 12 performs various tasks with the
sent information, one task being the forwarding of the check image to the
appropriate receiving bank. Id. at 1:60–67, 2:30–32. Receiving bank 16,
therefore, is a third entity in the system. See id. at Figs. 1, 2. The system is

8 Patent Owner points out that Petitioner did not list claims 45 and 105 in its
statement of unpatentability (Pet. 10), but that Petitioner does address these
claims in its analysis (Pet. 23). PO Resp. 26. In our Decision to Institute,
we included explicitly claims 45 and 105 in the trial. Dec. Inst. 16, 18. The
Petition also lists claims 9, 19, 50, 57, 65, 72, 81, and 92 (Pet. 10), but we
did not institute a review of those claims because the Petition includes no
analysis of those claims. Dec. Inst. 15. Similarly, the Petition lists claims
56, 71, 79, 93, and 97–100, but we did not institute a review of those claims.
Id.
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equipped to send and receive encrypted information between the banks and
within its own central node 12. Id. at 5:55–60, 6:37–38.
We have reviewed Patent Owner’s arguments against Petitioner’s
ground (PO Resp. 29–60); the principal arguments are addressed below.
1. Claim 1
Independent claim 1 requires, inter alia, a remote data access
subsystem that captures images of paper transaction data and provides
encrypted SSID and image data. Claim 1 also requires a central data
processing system and a communications network.
Petitioner reads the remote data access subsystem on the sending bank
of Campbell, the central data processing subsystem on the node of
Campbell, and the communications network on the communications network
in Campbell. Pet. 17–21. Petitioner asserts that Campbell captures images
of checks and sends that data to the central subsystem via the network. Id.
Petitioner also asserts that Campbell transmits an encrypted SSID in the
form of an endorsement or as additional identifying data sent along with the
encrypted check image. Id. at 11–18.
With respect to independent claim 1, Patent Owner principally argues
that Campbell fails to disclose a) “subsystems” and b) “encryption” of the
SSID in the manner required by the claim. See, e.g., PO Resp. 31, 33
(arguing “subsystem”); id. at 32, 34–35 (arguing “encryption”).
a. “subsystem”
Campbell discloses a system for transporting the images of checks.
Ex. 1019, 2:18–20 (“FIG. 1 shows an example of a system for transporting
images of checks”). As such, we are persuaded by Petitioner’s position that
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the various separately identifiable objects operating within this system—
namely, the first bank, the node, and the second bank—are subsystems
within this system.9 Except for the “encryption” aspect of the claim,
discussed below, Patent Owner raises no credible argument that the first
bank, the node, or the second bank in Campbell fail to disclose any element
of claim 1. Instead, Patent Owner’s argument appears to be that one or more
entities in Campbell are not commonly owned or are not subsystems of each
other. See PO Resp. 31, 33.10 As we noted in our claim construction of
SSID, however, there is no ownership requirement to be a “subsystem” of
the claimed system. Further, the claims do not require one subsystem to be a
subsystem of another subsystem, but merely that there are subsystems of the
claimed system. Accordingly, Patent Owner’s arguments are unpersuasive.
Reviewing the record before us, we are persuaded that Petitioner has
established that the “remote data access subsystem” reads on the first bank
in Campbell, and the “central data processing system” reads on the node.
b. “encryption”
Patent Owner’s arguments regarding “encryption” fall into two lines:
i) arguments that Campbell does not disclose an encrypted SSID because

9 “system. A collection of components organized to accomplish a specific
function or set of functions.” IEEE Standard Glossary of Software
Engineering Terminology 73 (IEEE Std 610.12-1990, 1990) (Ex. 3001).
“subsystem. A secondary or subordinate system with a larger system.” Id.
at 72.
10 Patent Owner’s Declarant, Mr. Ginsberg, testifies that “Petitioner (and
also the Board) mistakes the two banks in Figure 1 of the Campbell patent as
being remote data access subsystems of a single bank.” Ex. 2004 ¶ 11. We
cannot find any such assertion by Petitioner or the Board, and neither PO nor
its Declarant direct us to where such an assertion exists.
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Campbell does not disclose a SSID (see, e.g., PO Resp. 35–36); and
ii) arguments that Campbell does not require encryption of check images
(see, e.g., id. at 32, 34–36).
i. SSID
We have determined already that the hardware and software system at
the first bank is a subsystem of the check image processing system of
Campbell. When the system of the first bank transmits the check to the
node, it includes information identifying itself. Pet. 14–15 (quoting
Ex. 1019, 5:23–28 (“The [node] may read some data accompanying check
images, for example . . . information may instruct the node 12 about the
identity of the sending institution and the intended receiving institution.”)).
Accordingly, we are persuaded by Petitioner’s assertion that the first bank
transmits a SSID because it transmits information that identifies a subsystem
(the first bank subsystem).11 Patent Owner argues:
Again, Campbell does not state that the identity of
the sending and/or receiving institutions has been
encrypted. But even if the identity of the sending
and/or receiving institutions were encrypted in the
Campbell patent, a given bank such as a Sending
Bank or a Payor Bank is simply not a subsystem of
a Receiving Bank or a Bank of First Deposit.
Thus, Campbell might be able to identify a given
Sending Bank and/or a given Bank of First
Deposit, but the identity of such banks does not

11 Petitioner also provides an alternative reading of SSID on Campbell: that
the endorsement printed on the check itself is a SSID. See Pet. Reply 5; see
also Dec. Inst. 11 (pointing out that Petitioner has two readings of the term
on Campbell). Although Patent Owner does not appear to discuss this
particular alternative reading, we do not rely on this alternative reading in
reaching our Decision.
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qualify as subsystem identification information.
Placing a serial number, or other identification
number, on a scanner that imaged a check in a
Sending Bank or a Bank of First Deposit does not
necessarily provide subsystem identification
information, since it is the identification
name/number of the subsystem, and not the serial
number of a scanner, or a name of bank, that is
encrypted in the ’988 Patent.
PO Resp. 35–36.12,13
Patent Owner here appears to argue that the name of a bank is not a
SSID because one bank is not the subsystem of another bank. Patent Owner
also appears to argue that a SSID is “not the serial number of a scanner, or a
name of bank” that is encrypted. PO Resp. 36. Patent Owner points to no
portions of the record and provides no credible analysis in support of these
assertions. We are persuaded that the bank is a subsystem; thus, the name of
the bank would serve to identify that subsystem and meets the limitation of

12 Patent Owner’s Declarant, Mr. Ginsberg, seems to contradict Patent
Owner here, by implying that the ID number of a scanner would be a SSID:
“Nowhere does Campbell teach that a receiving institution would have any
use for information such as the ID number of a scanner in a sending
institution.” Ex. 2004 ¶ 15.
13 Patent Owner seems to take an opposite position in its Preliminary
Response in another matter involving a similar term, Fiserv, Inc. v.
DataTreasury Corp., Case CBM2014-00088 (PTAB) (Paper 5), suggesting
that information that identifies a scanner is a SSID: “claim 1 requires
encrypting identification information that identifies ‘at least one imaging
subsystem’ (such as the 3897 scanner of the IBM 3890 system . . . ) and
requires identification information that identifies ‘at least one data access
controller’ (such as a workstation that operates the 3897 scanner).”
CBM2014-00088, Paper 5, 22.
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claim 1 requiring a SSID.14 Reviewing the record before us, Patent Owner’s
argument that Campbell does not describe an encrypted SSID because it
does not disclose a SSID is unpersuasive in view of the arguments and
evidence offered by Petitioner.
ii. Requiring Encryption
Campbell discusses encryption of information as follows:
The controller 42 may read some data
accompanying check images, for example, it may
identify that TCP/IP protocol information
accompanying those images. That information
may instruct the node 12 about the identity of the
sending institution and the intended receiving
institution. That information may also identify the
disposition of the check . . . .
The controller 42 may also be configured to handle
information encrypted by sending institutions to
provide security for the images transported by the
network 38. The controller 42 may have its own
encryption and decryption equipment to provide a
secure environment in the node 12.
Ex. 1019, 5:14–60; see also Pet. 13–16, 18, 20–21 (explaining Petitioner’s
position regarding encrypting the SSID). In our Decision to Institute this
trial, we determined that Campbell’s system “is equipped to send and

14 Further, although not necessary to reach our finding here, we are
persuaded by Petitioner’s logic that the SSID is “particularly apt where
financial institutions have myriad branches or equipment that send data to a
central location.” Pet. 14. In other words, Petitioner implies that one of
ordinary skill would understand that the identifying information (SSID) in
Campbell is not just a bank name but the name of a particular bank. Our
analysis of dependent claims 119 and 120, below, further address this point.
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receive encrypted information between the banks,” relying on the above-
cited passage in Campbell. Dec. Inst. 9 (citing Ex. 1019, 5:55–60).
With a full record, we find that the preponderance of the evidence
supports Petitioner’s position. Campbell does not state that only the image
is encrypted. Instead, Campbell states that “information [is] encrypted . . . to
provide security for the images transported.” Ex. 1019, 5:55–58 (emphasis
added). Thus, Campbell uses the terms information and image to refer to
different collections of data. Earlier in that column, Campbell also explains
what it means by “information,” and it is clear that this information is not
just images but rather includes “information [that] accompan[ies] those
images.” Id. at 5:25–26 (emphasis added). For example, the information
identifies the “sending institution,” “receiving institution,” and “the
disposition of the check.” Id. at 5:26–31. As we discussed in a prior claim
construction of this term, we are persuaded that information identifying the
sending institution is a SSID. See Jack Henry CBM, Paper 37, 9–12. Thus,
when this information is encrypted, it is an encrypted SSID, as required by
claim 1. See also Ex. 1003 ¶¶ 64–65, 78–84, 91 (Petitioner’s Declarant, Dr.
Knox, testifying that the encrypted information in Campbell identifies the
receiving institution).
Patent Owner argues that Campbell discloses that the controller may
be configured to handle encrypted information, which means that it “does
not necessarily encrypt subsystem information,” and that encryption is not
“necessarily always . . . accomplished.” PO Resp. 32, 34–36.15 Patent

15 Later in its Response, Patent Owner argues that, although Campbell may
“encrypt the name of th[e] bank,” Campbell does not “encrypt[]

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Owner does not provide an explanation as to how this, even if true, would
preclude anticipation: Campbell would still disclose encrypted SSIDs if it
disclosed the encryption as a capability but not a necessity of the system.
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (“The
law of anticipation does not require that the reference ‘teach’ what the
subject patent teaches. . . . . [I]t is only necessary that the claims under
attack, as construed by the court, ‘read on’ something disclosed in the
reference, i.e., all limitations of the claim are found in the reference, or ‘fully
met’ by it”); see also Pet. Reply 5–6 (arguing that there is no requirement
that the prior art mandate the use of a disclosed feature). Notwithstanding,
we disagree that Campbell only occasionally encrypts SSIDs, for the reasons
explained in the prior paragraph. Reviewing the record before us, we are
persuaded that Campbell discloses transmitting an encrypted SSID.
c. Conclusion Regarding Claim 1
In view of the above, we determine that Petitioner has shown, by a
preponderance of the evidence, that Campbell anticipates the subject matter
of claim 1.
2. Claim 2
Claim 2 depends from claim 1 and further requires that the data access
subsystem comprises a scanner. Petitioner asserts that Campbell’s imaging

identification information that identifies a particular subsystem of the . . .
Bank.” PO Resp. 45. Thus, Patent Owner appears to recognize that, in fact,
Campbell discloses encrypting the name of the bank (while disputing that
the name is sufficient to be a SSID).
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equipment scans the check. Pet. 29.16 Patent Owner identifies the claim
language in claim 2 and argues that Petitioner’s ground is deficient because
Campbell does not anticipate claim 1. PO Resp. 37. We determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claim 2.
3. Claim 16
Claim 16 depends from claim 1 and further requires that the remote
data access and data processing subsystems each contain a local area
network (LAN), and that they are connected by a wide area network (WAN).
Petitioner asserts that Campbell’s imaging equipment is formed of “large
multiworkstation systems” that sends images to “a network interface” of the
remote data access subsystem (sending bank), and then subsequently sends
information to the data processing subsystem (node), which has its own
LAN 56. Pet. 19–21 (explaining how Campbell discloses LANs and a
WAN), 21–22 (claim chart citing Ex. 1019, 2:20–22, 2:50–3:12, 3:17–20,
5:17–20; Ex. 1003 ¶ 158). Patent Owner argues that “Campbell teaches a
single LAN 56, and does not teach a WAN.” PO Resp. 38. Patent Owner,
aside from citing to its Declarant, Mr. Ginsberg, provides no further credible

16 Petitioner misquotes the Decision to Institute as having said that: “‘Patent
Owner did not discuss these claims in its Preliminary Response and that the
claims will remain invalid unless rebutted.’ Paper 6 at 16.” Pet. Reply 11.
The cited portion of our Decision to Institute states: “Patent Owner does not
discuss these claims at this time. We have reviewed Petitioner’s assertions
and determine that, if unrebutted, they demonstrate that these claims are
more likely than not anticipated by Campbell.”
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explanation for its argument. We address each of these challenged
limitations below.
a. WAN
A WAN is simply a network that spans geographically separated
areas.17 As explained by Petitioner’s Declarant, Dr. Knox:
Campbell discloses the transmission of data
between sending bank 14 and node 12 using a
public switched telephone network 10. Campbell
further discloses that the network 10 may be a
frame relay network. Ex. 1019, 2:61. “Frames” is
a general term in telecommunication, and is
included in many protocols. A frame relay
network is a type of Wide Area Network.
Ex. 1003 ¶ 158.
Notably, the ’988 patent also describes its WAN as using a frame
relay network over a telecommunications company network. Ex. 1001,
12:38–39, 12:62–13:9. Patent Owner’s Declarant, Mr. Ginsberg,
acknowledges that Campbell describes transmission of signals over a public
switched telephone network, but states that “the ‘central offices’ are not
described as being remote from the receiving bank.” Ex. 2004 ¶ 22. Mr.
Ginsberg appears to be discussing the portion of Campbell where it
describes the signals produced by the sending bank being transmitted on

17 “Wide Area Network (WAN)[:] A data communications network that
covers geographically separated areas, typically containing cities. Thus a
WAN is usually composed of Local Area Networks (LAN) interconnected
by other communications links hired from a PTT or other common carrier.”
Focal Dictionary of Telecommunications (1999) available at
http://search.credoreference.com/content/entry/bhfidt/wide_area_network_w
an/0 (Ex. 3002).
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network access lines 22 to reach telephone network 10 and, more
specifically, that “[t]he signals received by the network on line 22 may be
transmitted through the network 10 via . . . one or more central offices to the
check image processing node 12.” Ex. 1019, 3:17–43. Mr. Ginsberg does
not explain how this passage supports his conclusion. Whether the “central
offices” (not relied on by Petitioner for this claim) are remote to the sending
bank has no bearing, which we can see, on whether Campbell describes a
WAN.
Campbell describes transmission of information between the sending
bank and the node over a public switched telephone network; it is that
communication that Petitioner asserts occurs over a WAN. See Pet.
Reply 10; Pet. 21–22. A public switched telephone network covers
geographically distinct locations. One of ordinary skill in the art would
understand that transmitting information over such a network generally
involves the sender and receiver being in different locations; likewise, the
system of Campbell makes little sense if the banks and the node are all in the
same location. Accordingly, Mr. Ginsberg’s testimony on this point is
unpersuasive. On the other hand, Petitioner’s Declarant, Dr. Knox, explains
how the Campbell system uses a public switched telephone network and a
frame relay network, which Dr. Knox testifies is a type of WAN. Ex. 1003
¶ 158. This testimony is persuasive, under its own reasoning and because, as
we mentioned above, the WAN in the ’988 patent involves a frame relay
network over a telecommunications company’s network.
Patent Owner’s Declarant also testifies that “Campbell does not teach
. . . a wide area network that transmits data within and between the [claimed
subsystems].” Ex. 2004 ¶ 22. The wide area network in claim 16 does not
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require data to be transmitted “within and between,” but rather just
“between,” the remote and data processing subsystems. Accordingly, Mr.
Ginsberg’s testimony is directed to language not found in the claims (and
even if it were, his conclusory statement is entitled to little or no weight).
Lastly, Patent Owner’s Declarant argues that Campbell does not teach
a “carrier cloud.” Id. ¶ 23.18 Mr. Ginsberg here directs us to the testimony
of Petitioner’s Declarant, Dr. Knox, at Exhibit 1003, paragraphs 174 and
175. Dr. Knox’s testimony there is directed to claim 22, not claim 16; Dr.
Knox does not discuss a “carrier cloud” with respect to claim 16. See
generally Ex. 1003 ¶¶ 169–177 (Dr. Knox’s testimony discussing claim 22);
see also ¶¶ 154–158 (Dr. Knox’s testimony discussing claim 16). Thus, Mr.
Ginsberg’s testimony is unpersuasive.
Reviewing the arguments and evidence before us, we are persuaded
that Campbell discloses a WAN as claimed.
b. LAN
Petitioner’s position is that the “multiworkstation systems [at the
banks] cited in Campbell necessarily include a LAN.” Pet. 20 (citing Ex.
1003 ¶ 112, Ex. 1020, 2); Ex. 1019, 3:10–12 (“The imaging equipment may
be large multiworkstation systems available from companies such as IBM,
UNISYS, or NCR.”).19 To bolster that point, Petitioner’s Declarant, Dr.
Knox, testifies and offers evidence that the imaging device mentioned by
Campbell and offered for sale by IBM at that time “manage[d] the

18 Neither claim 16 nor claim 22 include a “carrier cloud” limitation.
19 Petitioner’s assertion that node 12 includes a LAN is supported by the
evidence and does not appear to be in dispute.
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distribution of image and coded data on the LAN.” Ex. 1003 ¶ 112 (quoting
Ex. 1020, 193654). We find Dr. Knox’s testimony persuasive. Patent
Owner offers no persuasive evidence or explanation to the contrary, merely
stating that “Petitioner’s claim chart . . . does not address the two LANs
recited in claim 1.” PO Resp. 38. Reviewing the arguments and evidence
before us, we are persuaded that Campbell discloses the LANs as claimed.
c. Conclusion for Claim 16
Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claim 16.
4. Claims 18, 58, 59, and 60
Claim 18 depends from claim 1 and requires “a further management
subsystem for managing the collecting and sending of the transaction data.”
Claims 58, 59, and 60 include similar limitations.20 In effect, this subsystem
serves as an intermediary, collecting data and then sending it on. See
Ex. 1001, Fig. 4 (wherein the DAC collects data from the DAT and sends it
to the DPC). Petitioner asserts that Campbell discloses check processing
and transmitting equipment, and that banks may transmit images through
one or more central offices. Pet. 22 (citing Ex. 1019, 3:32–36 (describing

20 Claim 18 depends from claim 1. Claim 18 refers to “the electronic or
paper transaction data” of claim 1, but there is no antecedent basis for
“electronic transaction data.” In addition, claim 1 limits the data to “paper
transaction data”; it would be impermissible for dependent claim 18 to
expand the scope of claim 1 beyond paper transaction data. 35 U.S.C.
§112(d). We take no position on the definiteness of the claims but limit our
application of them on the art to the “paper transaction data” aspect of the
“the electronic or paper transaction data” element.
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sending data to node 12), 3:17–22 (describing images collected by the
imaging equipment and sent across the network), 2:64–3:12 (same)); Ex.
1003 ¶¶ 159–168 (Dr. Knox’s explanation for how the limitation is met).
Reviewing Petitioner’s assertions, we understand Petitioner to be
asserting that the claimed “data collecting subsystem” that has the
“management subsystem” is one of the intermediaries Campbell describes as
between the banks and the node. See, e.g., Pet. 22 (citing to portions of
Campbell that discuss routing the images through intermediaries); Ex. 1003
¶ 161 (“[S]ending bank 14 can send images indirectly to a node 12 through a
trunk or central office. Ex. 1019, 3:32–36. The trunks and/or central office
may be another bank 14 and/or 16.”).
Patent Owner argues that, “[a]lthough Dr. Knox’s analysis is
interesting, claims 18, 58, 59 and 60 each depend directly from claim 1,” and
that “Campbell . . . does not indicate that any two banks are subsidiaries of
one another.” PO Resp. 39–40. As we explained above, however, the
claims do not require such a “subsidiary” feature, and we have determined
already claim 1 is anticipated by Campbell.
Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claims 18, 58, 59, and 60.
5. Claim 22
Claim 22 depends from claim 18 and specifies that each of the (now
three) subsystems include a LAN, and that each of the subsystems are
connected by a WAN. Petitioner largely points to the same things in
Campbell as it did for claim 18. Pet. 22–23 (citing, inter alia, Ex. 1003
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¶¶ 174–177); see also Ex. 1019, 3:46–48 (“The check image processing
equipment [at the receiving bank] may be similar to the imaging equipment
18 located in the sending institution 14”). Petitioner’s Declarant, Dr. Knox,
testifies that Campbell describes an intermediary bank being a second
sending bank, which would then have its own multi-workstation system
forming a LAN. Ex. 1003 ¶ 172; see also id. ¶ 161 (setting forth Dr. Knox’s
reasons for concluding that the “trunks and/or central office may be another
bank 14 and/or 16”). As we discussed above, Petitioner has shown
persuasively that the banks have LANs (via multi-workstation systems) and
are connected via a WAN (over the public switched telephone network).
Patent Owner argues that “Campbell simply does not mention a wide
area network at all.” PO Resp. 41. It is well established that a reference
need not teach a limitation in haec verba. In re Bode, 550 F.2d 656, 660
(CCPA 1977). Patent Owner’s argument is nothing more than observing
that the term does not appear in Campbell; such is not the test for
anticipation. See id. Apparently in contesting Petitioner’s assertion that the
frame relay network 38 shown in Figure 2 of Campbell is a WAN, Patent
Owner also argues that Figure 2 “is illustrative and certainly not drawn to
scale in any manner, [such that] it is impossible to conclude from the
drawings that Campbell teaches anything remotely resembling a wide area
network.” PO Resp. 41. A wide area network is not defined by its size but
rather by the geographic separateness of the entities communicating over it.
See supra n.17. As we discussed in our analysis of claim 16, addressing
whether Campbell describes a WAN, we are persuaded that frame relay
network 38 (over the public switched telephone network) is a WAN, because
it connects geographically separate entities.
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Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claim 22.
6. Claim 55, 64, 70, 75, and 78
Claims 55, 64, 70, 75, and 78 further require that the system
“automatically generates at least one of credit card statements, bank
statements, and tax reports” (claims 55, 64, 70, 75) or just tax reports (claim
78). Petitioner points to the disclosure in Campbell of the data used in the
billing interface: tracking the “number of checks processed, converted,
stored, and transmitted.” Pet. 38 (citing Ex. 1019, 5:35–38, 7:32–42). The
testimony of Petitioner’s Declarant, Dr. Knox, simply quotes language from
Campbell, without analysis or explanation. Ex. 1003 ¶¶ 304–305.
Reviewing the arguments and evidence before us, we determine that
Petitioner has not shown sufficient evidence that this billing interface
information is one of the claimed statements or reports. The billing interface
certainly provides reports, but the claims require the functionality to gather
and present certain information in those reports. Credit card and bank
statements typically are understood to refer to a list of account activities for
a consumer account; a tax report is typically understood to refer to taxes.
Although the number of checks processed, etc., may be related to things that
eventually make it on a bank statement, Petitioner does not set forth a claim
construction or analysis that would allow us to conclude, by a preponderance
of the evidence, that such features are a “bank statement” as claimed (or any
of the other claimed reports). As such, we determine that Petitioner has not
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shown, by a preponderance of the evidence, that Campbell anticipates the
subject matter of claims 55, 64, 70, 75, and 78.
7. Claim 26
Independent claim 26 is similar in scope to independent claim 1.
Petitioner’s assertions for unpatentability and Patent Owner’s arguments are
substantially similar to those we discussed in our analysis of claim 1. See
Pet. 23–27; PO Resp. 42–45. We determine that Petitioner has shown, by a
preponderance of the evidence, that Campbell anticipates the subject matter
of claim 26.
8. Claims 29, 36, and 66–69
Claim 29 depends from claim 26 and requires a plurality of remote
locations and a plurality of central locations. Claim 36 depends from claim
29 and requires intermediate locations between the remote and central
locations. Claims 66–69 depend from claim 26 and include similar
limitations.
Petitioner asserts that there are a plurality of remote locations (banks)
and a plurality of central locations (nodes). Pet. 24, 27; Ex. 1019, 2:27–29
(disclosing “network 10 contains at least one check image processing
node”). Petitioner also asserts that there are intermediate locations between
the bank and node. Pet. 27–28; Ex. 1019, 2:46–49 (“One or both of
institutions 14 and 16 may also be any intermediary institution . . . between a
bank of first deposit and a payor bank.”). Patent Owner reiterates its
unpersuasive arguments about the banks not being subsystems of one
another. PO Resp. 45–46. Reviewing the arguments and evidence before
us, we determine that Petitioner has shown, by a preponderance of the
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evidence, that Campbell anticipates the subject matter of claims 29, 36, and
66–69.
9. Claims 38–41
These claims depend indirectly from independent claim 26 and
generally provide more detail to the steps previously recited. Claim 41
specifically recites that the transmission between the intermediate location
and the central location occurs via frames. Petitioner asserts that Campbell
describes each limitation of these claims, along the lines discussed above for
similar limitations (e.g., claims 26, 29, and 36, or their analogues in claims
1, 18, and 22). See Pet. 28–30. Patent Owner’s arguments for claim 38 are
similar to its unpersuasive arguments above, about one bank not being a
subsystem of another, or that Campbell does not describe a SSID when it
transmits the bank’s name. See PO Resp. 47. Patent Owner’s argument for
claims 39–41 is that they allegedly depend from a patentable claim or are
patentable for reasons already explained. See id. at 48.
Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claims 38–41.
10. Claims 42, 84, 102, 110, and 118
These independent claims are directed generally to a “three-tier
architecture.” PO Resp. 49. Petitioner asserts and explains how Campbell
describes at least two three-tier architectures: (1) sending bank –> node –>
receiving bank, and (2) sending bank –> intermediary –> node. Pet. 30–36.
Patent Owner first argues that the examiner in the ex parte
reexamination proceeding 90/012,537 “has absolutely no basis for the
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position that is stated by Petitioner.” PO Resp. 50. This argument appears
to be directed to Petitioner’s discussion in its Petition of the current and prior
reexamination proceedings involving the ’988 patent. See Pet. 30–32.
There, Petitioner points out that these claims require communication
“within” a particular level (e.g., within a remote data access subsystem) and
“between” different levels (e.g., between the remote data access subsystem
and the central data processing subsystem) but do not require
communication between subsystems at the same level. Petitioner points this
out because the examiner in the prior reexamination (90/007,829) appeared
to have, according to Petitioner, misconstrued these claim limitations. Id.
We have reviewed Patent Owner’s arguments about the reexamination
but are not persuaded that Petitioner’s assertions are in error. Notably, we
agree with Petitioner’s observation that the claims do not require
transmitting information between subsystems at the same level, i.e., the
claims require transmitting information “within” the same level and
“between” different levels. See, e.g., Ex. 1001, 27:17–42 (claim 42 claiming
LANs “for transmitting data within a corresponding one of said
[subsystem]” and a WAN “for transmitting data between said [subsystems]”)
(emphasis added); id. at Figs. 1, 2, 4 (showing each so-called tier as only
communicating with other tiers, not with other entities in the same tier).
Patent Owner next argues that the “three-tier architecture . . . in the
’988 Patent is not an architecture in which a sending institution . . . is a
subsystem of the Receiving Bank . . . (or vice versa).” PO Resp. 52. Patent
Owner also argues that the “subsystems . . . claimed in the ’988 Patent . . .
are subsystems that perform various processes on data, not banking
institutions.” Id. Lastly, Patent Owner argues that the claims “further
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specify that data is transmitted within those local area networks claims” and
“specify at least one wide area network.” Id. at 52–53.
None of Patent Owner’s arguments are persuasive. We have
determined previously that Campbell discloses three LANs connected by a
WAN in our analysis of claim 22. All of these systems process data because
they are all transmitting images and data over a network. See, e.g., Ex.
1019, 5:20–31 (describing the transmission of data).
Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claims 42, 84, 102, 110, and 118.
11. Claims 73 and 74
Claims 73 and 74 are similar and require that each of the “one or
more” subsystems of claim 42 comprises specifically “a plurality” of that
subsystem. Petitioner’s analysis here is the same as it was for claims 29, 36,
and 66–69, discussed above. Pet. 24, 27–28. Patent Owner argues that
“Campbell does not teach or suggest a plurality of each of three different
subsystems that reside within a bank” and repeats its unpersuasive argument
about one bank not being a subsystem of the other bank. PO Resp. 54
(further relying on the testimony of Mr. Ginsberg at paragraph 30). Neither
Patent Owner’s argument nor the testimony of Mr. Ginsberg here is
persuasive because it is premised either on a misinterpretation of Petitioner’s
ground, or a claim construction not commensurate with the broadest
reasonable interpretation of the terms “system” and/or “subsystem,” as we
have explained above. Reviewing the arguments and evidence before us, we
determine that Petitioner has shown, by a preponderance of the evidence,
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that Campbell anticipates the subject matter of claims 73 and 74.
12. Claims 119 and 120
Claims 119 and 120 both depend from independent claim 118 and
require that the remote data processing subsystem “uniquely identifies the
remote data processing subsystem” and, for claim 120, additionally
“encrypts and tags the data.” Petitioner asserts that these limitations are met
by the functionality of Campbell that identifies the sending institution and
keeps records for billing purposes. Pet. 38–39. We understand this to mean
that the data accompanying the check images sent to the node is the tagged
data (we have already discussed how this is encrypted), and that, because
Campbell is able to bill the institutions, it must have uniquely identified
them. Patent Owner argues that these claims are patentable based upon their
dependency from claim 118. Reviewing the arguments and evidence before
us, we determine that Petitioner has shown, by a preponderance of the
evidence, that Campbell anticipates the subject matter of claims 119 and
120.
13. Claims 46, 88, 106, 114, and 121
Independent claim 46 requires “one or more remote subsystems,” “at
least one intermediate subsystem,” and “at least one central subsystem”
arranged in a “tiered manner.” Because the scope of the phrases “one or
more” and “at least one” both include “one,” Petitioner reads “one or more
remote subsystems” on the sending bank of Campbell, “at least one
intermediate subsystem” on the node (or the intermediary), and “at least one
central subsystem” on the receiving bank (or the node). Pet. 36; see also id.
at 36–38 (addressing the additional limitations of the claims).
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Patent Owner argues that “it is clear that the subsystems recited in [the
claims] transmit data within and between the various subsystems.” PO
Resp. 56. Patent Owner does not explain, however, why it believes the
particular arrangement in Campbell fails to satisfy the claim limitations. As
we mentioned in our analysis of claims 42, 84, 102, 110, and 118, the
transmission is within a given level and between different levels, not both
for all (as Patent Owner appears to imply). Patent Owner’s argument (id.)
that Petitioner relies on “banking institutions as being subsystems of one
another” is misplaced, as we do not understand Petitioner to rely on one
bank being a subsystem of another to meet the claims (nor do the claims
appear to preclude or require such an arrangement). Id.
Reviewing the record before us, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that Campbell anticipates the
subject matter of claims 46, 88, 106, 114, and 121.
14. Claims 47–49
These claims depend from independent claim 46 and involve a more
detailed breakout of prior-claimed steps, similar to claims 39–41, discussed
above. Petitioner relies on the same analysis as claims 39–41. Pet. 29–30.
Of interest, claim 48 states that the intermediate location is connected
“to an external communication network.” Patent Owner argues that “the
communication network that is disclosed in Campbell, i.e., the PSTN, is an
internal communication network available within banks that have subscribed
to the PSTN.” PO Resp. 57–58. Patent Owner further argues that “the
frame[] relay assembler/dissembler 40 is internal within node 12 of the
PSTN which is internal within the banking institutions.” Id. at 58. Patent
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Owner concludes that “[t]he PSTN is an internal communications network,
not an external communications network.” Id.
Patent Owner’s internal/external arguments are unpersuasive. The
public switched telephone network is a public network; we are not persuaded
that this public network is somehow “internal,” whatever meaning Patent
Owner ascribes to that term, to the banks or the node in Campbell. See Ex.
1019, 2:50–57 (explaining that the PSTN is the telephone network). Patent
Owner states that Campbell discloses that “banks . . . have subscribed to the
PSTN,” PO Resp. 58, but fails to provide any factual support for this
assertion. Instead, Campbell discloses that banks subscribe to the check
image transport system described therein (i.e., “the services provided by
node 12”). Ex. 1019, 5:62; see also id. at 5:61–6:56 (explaining how the
subscription service works). Accordingly, Patent Owner’s arguments are
unpersuasive.
Reviewing the record before us, we are persuaded that Petitioner has
shown, by a preponderance of the evidence, that Campbell anticipates the
subject matter of claims 47–49.
15. Claims 80, 82, and 83
Claim 80 depends from independent claim 46 and requires “polling
the intermediate locations.” Claims 82 and 83 also depend from claim 46
and require a plurality of remote, intermediate, and central subsystems.
As to claim 80, Petitioner asserts that this limitation is met by the
disclosure in Campbell that interface 52 of node 12 polls node controller 42
periodically. Pet. 38. As to claims 82 and 83, Petitioner presents the same
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analysis as it does for claims 29, 36, 66–69, 73, and 74, discussed previously
and reciting similar limitations. Pet. 27–28.
For claim 80, Patent Owner argues that “[i]t is clearly stated at 5:1–9
of the ’988 Patent that the intermediate tier . . . is engaged in polling the
lowest tier.” PO Resp. 59. Notably, Patent Owner cites to no claim
limitation in support of its argument and instead attempts to incorporate
unclaimed disclosures of the specification into the claims. As we explained
in our Decision to Institute, claim 80 “only require[s] that polling of the . . .
intermediate locations . . . occurs, i.e., th[is] claim[] do[es] not specify
whether the polling occurs between locations.” Dec. Inst. 14.21 Thus, Patent
Owner’s argument that claim 80 requires polling a lower tier is not
commensurate in scope with the claim.
For claims 82 and 83, Patent Owner argues:
The disclosure of a three-tier arrangement using
three subsystems that interact with one another to
extract and transmit data is wholly different than
the mere transmission of an image of check, which
can be stored or routed to an ultimate destination.
PO Resp. 61.
We have explained already that we are persuaded that Campbell
discloses multiple banks, intermediaries, and nodes, arranged in the claimed
tiered manner, in our discussions of claims 29 and 42. Reviewing the record
before us, we are persuaded that Petitioner has shown, by a preponderance

21 This was in contrast to claims 56, 71, 93, and 97–100, upon which we did
not institute because these claims “each require polling or calling one
location by another location,” and we determined that Petitioner had not
shown polling between locations in Campbell. See Dec. Inst. 14–15.
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of the evidence, that Campbell anticipates the subject matter of claims 80,
82, and 83.
16. Claims 89–91, 107–109, and 115–117
These claims involve a more detailed breakout of prior-claimed steps,
and are similar to claims 39–41 and 47–49, addressed above. Petitioner’s
position is the same. See Pet. 29–30. Patent Owner’s arguments are
repetitive of ones found unpersuasive for the reasons expressed above. See
PO Resp. 61–63. Reviewing the record before us, we are persuaded that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claims 89–91, 107–109, and 115–117.
17. Claims 122 and 123
These claims involve uniquely identifying the subsystem, and are
similar to claims 119 and 120, addressed above. Petitioner’s position is the
same. See Pet. 38–39. Patent Owner’s arguments are repetitive of ones
found unpersuasive, for the reasons expressed above. See PO Resp. 63.
Reviewing the record before us, we are persuaded that Petitioner has shown,
by a preponderance of the evidence, that Campbell anticipates the subject
matter of claims 122 and 123.
18. Claims 25, 45, and 105
These claims include further limitations wherein some of the LANs
include “at least one network switch for routing transaction data within [the
LAN].” Petitioner asserts that Campbell discloses multi-workstation
imaging systems that form a LAN at the bank, and that a network switch is
inherent to a LAN. Pet. 23 (citing Ex. 1003 ¶¶ 182–185).
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Patent Owner argues that “Campbell is completely silent regarding
network switches.” PO Resp. 64. Petitioner’s ground, however, asserts that
Campbell inherently describes the feature; by this, Petitioner is admitting
that Campbell is silent on the matter.
Patent Owner also points us to “several documents that describe
means other than a network switch to operate a network,” citing us to
“[f]ootnote 8, at page 11, supra.” Id. We find no such footnote on page 11
of the Response, but find a series of URLs on page 28 in a footnote 8. There
is no indication that the documents at the URLs are in evidence, nor do we
see them in the record. See 37 C.F.R. § 42.63(a) (“All evidence must be
filed in the form of an exhibit”). There is no explanation of what these
documents contain, when and whether they were published, or how,
specifically, they are relevant to the discussion at hand. See 37 C.F.R.
§ 42.23(b) (“All arguments for the relief requested in [a Response] must be
made in the [Response]”); see also 37 C.F.R. § 42.220(a) (indicating the
Response is filed as an opposition, and, thus, subject to Rule 42.23). The
documents at these URLs are not in evidence, not discussed in a paper, and,
therefore, are not considered.
Petitioner’s Declarant, Dr. Knox, sets out his reasoning that network
switches are a standard part of LANs, and that a person of ordinary skill in
the art envisioning a LAN would also envision it having a network switch.
Ex. 1003 ¶ 184 (testifying, “such as switch is a standard part of a modern
local area network”); id. at ¶¶ 182–185 (setting forth Dr. Knox’s reasoning
on the network switch, which includes testimony that the claimed network
switch “would be a part of virtually all of the prior art disclosing a LAN”).
Whether a network switch is “standard” or in “virtually all” of the prior art,
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however, goes to whether a network switch is obvious, not whether a
network switch is inherent in Campbell.
Reviewing the record before us, we determine that Petitioner has not
shown, by a preponderance of the evidence, that Campbell anticipates the
subject matter of claims 25, 45, and 105.
19. Conclusion for the Campbell Anticipation Ground
Reviewing the arguments and evidence before us, we determine that
Petitioner has shown, by a preponderance of the evidence, that Campbell
anticipates the subject matter of claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42,
46–49, 58–60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–
123, but has not made a sufficient showing for claims 25, 45, 55, 64, 70, 75,
78, and 105.
III. ORDER
In view of the foregoing, it is hereby:
ORDERED that claims 1, 2, 16, 18, 22, 26, 29, 36, 38–42, 46–49, 58–
60, 66–69, 73, 74, 80, 82–84, 88–91, 102, 106–110, and 114–123 are
unpatentable;
FURTHER ORDERED that Exhibits 1062–1065 are to be expunged;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

CBM2014-00087
Patent 5,910,988 C1

39

For PETITIONER:
David Roodman
Emma Harty
Robert Lancaster
Bryan Cave LLP
daroodman@bryancave.com
emma.harty@bryancave.com
rglancaster@BryanCave.com

For PATENT OWNER:
Abraham Hershkovitz
Eugene Rzucidlo
HERSHKOVITZ & ASSOCIATES, PLLC
ahershkovitz@hershkovitz.net
grzucidlo@hershkovitz.net