Askeladden LLC v. Digital Verification Systems LLC

1. Case Identification

• Case #: IPR2018-00746
• Patent #: 9,054,860
• Filed: March 6, 2018
• Petitioner(s): Askeladden L.L.C.
• Patent Owner(s): Digital Verification Systems, LLC
• Challenged Claims: 23-39

2. Patent Overview

• Title: Digital Verified Identification System and Method
• Brief Description: The ’860 patent describes systems and methods for authenticating the signatory of an electronic document. The system uses a "module generating assembly" to receive a "verification data element" (e.g., username, password) and create a "digital identification module" (e.g., a data object with a signature graphic and metadata) that is embedded within a single electronic file.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 23-31, 33-36, and 39 under 35 U.S.C. §102(b) by Houser

• Prior Art Relied Upon: Houser (Patent 5,606,609).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Houser, which was not considered during prosecution, discloses every element of the challenged independent claims. Houser describes a system for verifying a signatory of an electronic document by embedding a "security object" into the document. This security object, like the claimed "digital identification module," includes a primary component (an "electronic chop" or signature graphic) and metadata (a "document digest" and "signature digest"). The core of the argument addressed the key limitation added during prosecution: that the module is "cooperatively structured to be embedded within only a single electronic file." Petitioner contended Houser's security object meets this limitation because its "document digest" includes data items that characterize the specific electronic document at the time of embedding, such as a hash value of the entire document. Houser further teaches that if the document is changed, the signature graphic is removed or not displayed, confirming it is cooperatively structured for use with only that single file.
  • Key Aspects: The central argument was that the purported point of novelty, which overcame prior art during prosecution, was fully disclosed in Houser.

Ground 2: Obviousness of Claims 32 and 37 under 35 U.S.C. §103(a) 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: This ground challenged dependent claims 32 and 37, which add the limitation of activating the digital identification module by "hovering a pointing device over the primary component" (i.e., a mouse-over event) to reveal metadata. Petitioner asserted that Houser teaches revealing metadata by double-clicking the embedded security object, and explicitly notes that the function "may be invoked by other known techniques." Mansz discloses a system for authenticating electronic documents where a user places a mouse over a "trust mark" to trigger verification and display a pop-up window with related information.
  • Motivation to Combine: A POSITA would be motivated to combine these references as a matter of simple design choice. By 2008, mouse-over was a well-known and common user interface technique for revealing additional information without requiring a click. A POSITA would combine Mansz’s mouse-over feature with Houser’s system to provide an alternative, and potentially easier, way for a user to view the metadata, thereby improving the system's usability.
  • Expectation of Success: A POSITA would have a high expectation of success, as implementing a mouse-over event to trigger a data display was a routine and predictable task in user interface design.

Ground 3: Obviousness of Claim 38 under 35 U.S.C. §103(a) over Houser in view of Mansz and further in view of Gupta

• Prior Art Relied Upon: Houser (Patent 5,606,609), Mansz (Application # 2006/0259767), and Gupta (Patent 8,205,087).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged dependent claim 38, which adds the step of "pre-selecting a number of electronic files" to the method of claim 32. The base method of Houser, as modified by Mansz, involves pre-selecting a single electronic file into which a signature is embedded. Gupta discloses a software tool for digitally signing multiple documents efficiently, wherein a user specifies a plurality of files (e.g., hundreds or thousands) to be signed in a single batch operation.
  • Motivation to Combine: A POSITA would be motivated to incorporate Gupta's multi-file selection capability into the Houser/Mansz system to improve efficiency. Applying a digital signature to one document at a time is laborious. Gupta’s teaching of a tool to sign multiple documents at once addresses this precise problem. A POSITA would combine these teachings to create a more efficient system capable of batch-processing digital signatures.
  • Expectation of Success: The combination was asserted to be predictable, as it involved applying a known software efficiency technique (batch processing) to an existing system for a well-understood benefit.

4. Key Claim Construction Positions

• "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."
• "cooperatively structured to be embedded within only a single electronic file": Citing the prosecution history, Petitioner argued this key phrase, which was added to overcome prior art, requires 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 was central to its argument that Houser anticipated the claims.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 23-39 of the ’860 patent as unpatentable.