PTAB

IPR2018-00745

Askeladden L.L.C. v. Digital Verification Systems, LLC

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1. Case Identification

2. Patent Overview

  • Title: Digital Verified Identification System and Method
  • Brief Description: The ’860 patent describes a system for authenticating an electronic document’s signator. The system generates a “digital identification module” (e.g., a data object) containing a visible signature graphic and associated metadata, which is then embedded into a single electronic file. The purported novelty rests on the module being “cooperatively structured” to be usable only with that specific electronic file.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 5-9, 11-12, 14, 16-18, and 22 under §102 over Houser

  • Prior Art Relied Upon: Houser (Patent 5,606,609).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Houser discloses an identical system for verifying a signator of an electronic document. Houser teaches an “embedded security object” that includes an “electronic chop” (a visible signature graphic) and a “signature digest” (metadata). This object is embedded into a document and is linked to it such that any change to the document causes the signature graphic to be removed or not displayed. Petitioner contended this meets the key limitation of being "cooperatively structured to be embedded within only a single electronic file," as Houser’s security object is rendered inoperable if the document is altered, effectively tying it to that single file instance.
    • Key Aspects: The central argument for this ground is that Houser inherently teaches the dispositive limitation that led to the ’860 patent’s allowance. Petitioner asserted that Houser’s security object, which includes a document digest with a hash value of the entire document, is necessarily matched and usable only with that single, unaltered electronic file.

Ground 2: Obviousness of Claim 4 under §103 over Houser in view of Panasyuk

  • Prior Art Relied Upon: Houser (Patent 5,606,609) and 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. Houser discloses its system running on a standard computer, which can be coupled to a WAN like the Internet. Panasyuk explicitly teaches methods for scalable and secure remote desktop access to computer applications over a network, a feature widely available in Windows operating systems at the time.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine Houser's security system with Panasyuk's well-known remote access technology. The motivation would be to allow users to access and use the document verification system from remote locations (e.g., while traveling or working from home), which was a common need and known problem in the field.
    • Expectation of Success: Combining remote desktop functionality with a software application like Houser's was a routine and predictable task. A POSITA would have had a high expectation of success in implementing this known technique to improve the accessibility of Houser’s system.

Ground 3: Obviousness of Claim 10 under §103 over Houser in view of Mansz

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Claim 10 adds the limitation that a predetermined event for revealing metadata includes "disposing a pointing device over" the primary component (i.e., a mouse-over). Houser teaches revealing metadata by clicking or double-clicking on the security object. Mansz expressly teaches using a mouse-over event to trigger verification of a "trust mark" on a webpage and display feedback.
    • Motivation to Combine: Petitioner asserted that a POSITA would have been motivated to use the mouse-over technique taught by Mansz as a simple design choice to make Houser’s system easier to use. Mouse-over was a well-known alternative to clicking for revealing information, and applying it to Houser’s system would have been a matter of implementing a known user interface technique to achieve a predictable result.
    • Expectation of Success: Given that mouse-over was a common and trivial feature in user interface design, a POSITA would have had a clear expectation of successfully adding this functionality to Houser's system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that Claim 15 is obvious over Houser in view of Pigin (Application # 2005/0229258) for adding a MAC address as metadata, and that Claims 13 and 19-21 are obvious over Houser in view of Tan (WO 02/073380) for including various forms of personal identification numbers (e.g., SSN, driver's license number) as metadata.

4. Key Claim Construction Positions

  • "said at least one digital identification module is cooperatively structured to be embedded within only a single electronic file": Petitioner argued this term should be construed as it was during prosecution to overcome prior art. The proposed construction is that "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 is central to Petitioner’s argument that Houser anticipates the claims.
  • "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 specification's explicit definition.
  • "verification data element": Petitioner proposed this term means "indicia or data structured to facilitate the verification or identification of the corresponding entity," based on examples in the specification like username, password, and SSN.

5. Relief Requested

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