PTAB

CBM2017-00012

Google Inc v. Alfonso Cioffi

Key Events

Petition

petition Intelligence

Case #: CBM2017-00012
Patent #: RE43,103
Filed: November 4, 2016
Petitioner(s): Google Inc.
Patent Owner(s): Alfonso Cioffi, Megan Elizabeth Rozman, Melanie Ann Rozman, and Morgan Lee Rozman
Challenged Claims: 21, 23, and 36

Title: Portable Computer Based System and Method to Protect a Computer’s Critical Files
Brief Description: The ’103 reissue patent relates to a system for securing computer data, particularly during activities like internet banking. The claims describe protecting sensitive data by employing two isolated software processes on a single processor to separate trusted operations from potentially malicious internet content.

Core Argument for this Ground: Petitioner argued that the challenged reissue claims impermissibly recapture subject matter that was deliberately surrendered during the prosecution of the original patent, Patent 7,484,247.
- Prior Art Mapping: During the prosecution of the original ’247 patent, the applicants amended the claims to overcome prior art rejections by changing the limitation from "at least one electronic data processor" to requiring "at least a first and second electronic data processor." This amendment was made to distinguish the invention from prior art that disclosed single-processor systems.
- Motivation to Combine (for §103 grounds): This ground is based on §251, not §103, and focuses on prosecution history estoppel rather than motivation to combine prior art. The key action was the applicant's amendment and argument to secure allowance.
- Key Aspects: Petitioner contended this amendment constituted an unambiguous surrender of single-processor embodiments. The challenged reissue claims are broader than the issued ’247 patent claims because they revert to reciting "at least one electronic data processor," thereby recapturing the surrendered single-processor scope. Petitioner argued that while the reissue claims add other limitations (e.g., a "secure browser process"), these are unrelated to the surrendered subject matter (the number of processors) and thus fail to cure the recapture violation.

Core Argument for this Ground: Petitioner asserted that the patent’s specification fails to teach a Person of Ordinary Skill in the Art (POSITA) how to make and use the full scope of the claimed invention, specifically the single-processor embodiment.
- Prior Art Mapping: The argument focused on the deficiency of the patent's own disclosure. Petitioner stated that every embodiment described in the specification relies on the physical separation of two distinct processors (or processor cores) to isolate malware from sensitive data contained in a "critical file." The specification's disclosed security mechanism is entirely hardware-based.
- Key Aspects: The petition argued that the specification provides no guidance, software techniques, or examples of how to achieve the claimed data protection on a single processor, where both the trusted process and the malware-handling process execute. By failing to describe a software-based isolation method, the specification does not enable the very configuration that the reissue claims were broadened to cover. Further, the specification allegedly fails to enable the claimed feature of "block[ing] the process potentially containing malware from modifying search requests."

Core Argument for this Ground: Petitioner argued the claims are invalid under the two-step framework from Alice Corp. v. CLS Bank.
- Prior Art Mapping: Under Alice Step 1, Petitioner asserted the claims are directed to the abstract idea of "protecting data by isolating software threats in a safe space." This concept was characterized as a long-standing human practice, analogous to quarantining individuals or using an expendable atrium to protect the secure areas of a building.
- Key Aspects: Under Alice Step 2, Petitioner contended the claims lack an inventive concept because they merely apply this abstract idea using a collection of generic, conventional computer components (e.g., processor, memory spaces, operating system) performing their well-understood, routine functions. The claims were described as result-oriented, reciting a system "configured to" protect a critical file without specifying a concrete, technical solution for achieving that protection. This application of an abstract idea to a generic computer environment, Petitioner argued, is insufficient to confer patent eligibility.
Additional Grounds: Petitioner also asserted the claims are invalid under 35 U.S.C. § 251 for failing to comply with the "original patent" requirement, arguing the single-processor, software-based invention was not "clearly and unequivocally" disclosed in the original patent's specification.

Petitioner argued that while the claims are invalid under any reasonable construction, it referred the Board to constructions from related district court litigation if needed.
"first memory space" and "second memory space": These two memory spaces, as recited in the challenged claims, must be distinct from each other.
"critical file": This term was construed to mean "one or more files that are required to start or run the computer's systems properly" and is considered synonymous with the term "system file" used in other related reissue patents.

The petition's central technical argument was that the shared patent specification exclusively describes a hardware-based security architecture. This architecture's efficacy depends entirely on the physical isolation afforded by using two separate processors or cores.
Consequently, the reissue claims—which recite a software-based security model implemented on a single processor—are fundamentally untethered from and unsupported by the patent’s only disclosed technical teaching.

Petitioner requested the institution of a Covered Business Method (CBM) review and the cancellation of claims 21, 23, and 36 of Patent RE43,103 as unpatentable.