Askeladden LLC v. Digital Verification Systems LLC

1. Case Identification

• Case #: IPR2018-00745
• Patent #: 9,054,860
• Filed: March 6, 2018
• Petitioner(s): Askeladden L.L.C.
• Patent Owner(s): Digital Verification Systems, LLC
• Challenged Claims: 1-22

2. Patent Overview

• Title: Digital Verified Identification System and Method
• Brief Description: The ’860 patent relates to a system for authenticating the signator of an electronic document. The system uses a "module generating assembly" to create a "digital identification module," which contains a visible primary component (e.g., a signature graphic) and corresponding metadata, that is embedded within a single electronic file. The purported novelty rests on the module being "cooperatively structured" to be usable only with that specific file.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-9, 11-12, 14, 16-18, and 22 are anticipated by Houser under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Houser (Patent 5,606,609).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Houser discloses an identical system for verifying an electronic document's signator. Houser's "embedded security object" was asserted to be the claimed "digital identification module," its "signature insertion module" the "module generating assembly," and its "electronic chop" (a digitized signature graphic) the "primary component." Petitioner contended that the key limitation of being "cooperatively structured to be embedded within only a single electronic file" was met by Houser's disclosure of including a "document digest," such as a hash value of the entire document, within the security object. This hash value inherently matches the security object to the specific document file, rendering the signature invalid or causing its removal if the document is altered, thereby making it usable only with the single, unaltered file.

Ground 2: Claim 4 is obvious over Houser in view of Panasyuk.

• Prior Art Relied Upon: Houser (Patent 5,606,609), Panasyuk (Application # 2005/0080909).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 4 adds the limitation that the "module generating assembly" is accessible via an interactive computer network. Petitioner asserted that Houser discloses its system runs in a standard Windows environment and can be coupled to a wide area network (WAN) like the Internet. Panasyuk taught that providing remote desktop access to applications in a Windows environment was a routine, safe, and secure practice by 2008.
  • Motivation to Combine: A POSITA would combine Houser’s verification system with the remote access techniques taught by Panasyuk to address the common need for users to access applications while traveling or working from home. Implementing remote access would also predictably increase the scalability and utility of Houser's system within a networked environment without changing its fundamental operation.
  • Expectation of Success: Combining a known software application (Houser) with standard remote desktop functionality (Panasyuk) within a common operating system (Windows) was a straightforward integration task with a high expectation of success.

Ground 3: Claim 10 is obvious over Houser in view of Mansz.

• Prior Art Relied Upon: Houser (Patent 5,606,609), Mansz (Application # 2006/0259767).

• Core Argument for this Ground:

  • Prior Art Mapping: Claim 10 depends from claim 9 (which requires revealing metadata in response to a predetermined event) and further specifies the event includes "disposing a pointing device over said primary component" (i.e., a mouse-over). Houser teaches revealing metadata by clicking or double-clicking its security object and notes that other "known techniques" could be used. Mansz explicitly discloses using a mouse-over event to trigger verification and display a pop-up window for a "trusted mark" on an electronic document.
  • Motivation to Combine: A POSITA would have been motivated to substitute or add the mouse-over technique from Mansz into Houser's system as a simple design choice to improve user interface efficiency. A mouse-over is a well-known, less cumbersome alternative to clicking for revealing information, and its application here would be a predictable improvement.
  • Expectation of Success: Implementing a common user interface feature like a mouse-over to trigger an information display was a routine software development task with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Houser in view of Pigin (Application # 2005/0229258) to add a MAC address as metadata (claim 15) and Houser in view of Tan (WO 02/073380) to add specific personal identifiers like a Social Security number as metadata (claims 13, 19-21), relying on similar design modification and known-technique rationales.

4. Key Claim Construction Positions

• "cooperatively structured to be embedded within only a single electronic file": Petitioner argued this term, which was added during prosecution to secure allowance, should be construed to mean "the digital identification module is matched with the single electronic file (i.e., cooperatively) such [that] the digital identification module is usable only with the single electronic file." This construction was central to Petitioner's argument that Houser's use of a document-specific hash value satisfied the limitation.
• "digital identification module": Petitioner proposed this term means a "file, item, object or device structured to be embedded or otherwise disposed within an electronic file or document," based on the patent's specification.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-22 of the ’860 patent as unpatentable.