PTAB

CBM2014-00087

Fiserv Inc v. DataTreasury Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System for Centralized Management of Remotely Captured Paper Transactions
  • Brief Description: The ’988 patent describes systems and methods for centrally managing financial transaction data. The process involves capturing an image of a paper document at a remote location, encrypting the image along with subsystem identification information (SSID), and transmitting the encrypted data to a central processing subsystem for storage and verification.

3. Grounds for Unpatentability

Ground 1: Anticipation by Campbell - Claims 1-2, 9, 16, 18-19, 22, 25-26, 29, 36, 38-42, 46-50, 55-60, 64-75, 78-84, 88-93, 97-100, 102, 106-110, and 114-123 are anticipated by Campbell.

  • Prior Art Relied Upon: Campbell (Patent 5,373,550).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Campbell, which discloses systems for transmitting check images over a network, teaches every element of the challenged claims. A central contention was that Campbell discloses the key limitation of providing encrypted subsystem identification information (SSID), a point the Patent Owner had successfully disputed during a prior reexamination. Petitioner asserted that the Patent Owner's prior argument of inoperability was flawed and that Campbell discloses at least two operable methods for encrypting SSID: (1) as encrypted data within a TCP/IP packet (distinct from the unencrypted header used for routing), and (2) by capturing an image of a physical check endorsement containing the SSID and then encrypting the entire image before transmission.
    • Key Aspects: The core of this ground was a direct rebuttal of the Patent Owner's successful argument in a prior reexamination, asserting that the Examiner was persuaded by an erroneous technical argument regarding the operability of encrypting routing information.

Ground 2: Anticipation by Wheeler - Claims 1-2, 9, 16-18, 22-24, 26, 27, 29, 36, 38-44, 46-49, 55-56, 60, 64, 66-67, 70-71, 73-75, 78-80, 82-86, 88-91, 93-95, 97-100, 102, 106-110, and 114-123 are anticipated by Wheeler.

  • Prior Art Relied Upon: Wheeler (Patent 5,384,835).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Wheeler, directed to a "Distributed Imaging System," explicitly discloses the fundamental elements of the ’988 patent. This includes scanning documents at remote user terminals, encrypting the data along with "originating terminal identification information" (OTII, which Petitioner argued is the equivalent of SSID), transmitting the encrypted data over a network to a central processor, and storing the data centrally. Wheeler's disclosure of transmitting OTII in packet header information or as separate data was argued to directly read on the ’988 patent’s encrypted SSID limitation. The system in Wheeler was also described as providing workflow and transaction processing, further aligning it with the challenged claims.
    • Key Aspects: Petitioner heavily emphasized that the Wheeler patent was never disclosed to or cited by the USPTO during the original prosecution or any subsequent reexaminations of the ’988 patent.

Ground 3: Obviousness over PACS and Campbell - Claims 1-2, 9, 16, 18-19, 22, 26, 29, 36, 38-42, 46-49, 55-56, 60, 64, 66-67, 70-71, 73-75, 78-80, 82-84, 88-91, 93, 97-100, 102, 106-110, 112, and 114-123 are obvious over PACS in view of Campbell.

  • Prior Art Relied Upon: PACS (a 1992 doctoral thesis by Jiseung Nam on Picture Archiving and Communications Systems) and Campbell (Patent 5,373,550).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the PACS thesis discloses the core architecture and functionality claimed in the ’988 patent, including remote image acquisition, encryption of data (including station ID) before network transmission, communication across local and global networks, and storage at central archive centers. Although PACS is in the field of medical imaging, Petitioner asserted that its application to financial transactions was well-known. Campbell was introduced to supply the specific context of check imaging and financial transaction data.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of PACS and Campbell to improve the efficiency and security of check processing. A POSITA would have recognized that the robust, tiered network architecture for managing and encrypting images taught in PACS could be readily applied to the financial document context described in Campbell to create a more advanced check imaging system.
    • Expectation of Success: The combination would have been a predictable application of known technologies. Applying the established network security and image management principles from PACS to the specific type of financial transaction data disclosed in Campbell would have yielded the expected result of a secure, distributed check processing system.

  • Additional Grounds: Petitioner asserted additional anticipation challenges based on a 1994 Federal Reserve "Request for Proposal for Check Image Processing" (RFP) and the ANSI/ABA X9.46-1995 standard for financial image interchange.

4. Key Claim Construction Positions

  • Term: Subsystem Identification Information (“SSID”)
  • Petitioner's Proposed Construction: "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."
  • Relevance: Petitioner argued this broad construction was necessary under the broadest reasonable interpretation standard. It was critical to their arguments that prior art references like Campbell (disclosing identifiers in check endorsements) and Wheeler (disclosing "originating terminal identification information") met this key claim limitation.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method Patent Review and cancellation of claims 1-7, 9-27, and 29-123 as unpatentable under 35 U.S.C. §§ 102 and/or 103.