Takeaway: Arguments that an exhibit submitted with a reply improperly goes beyond the proper scope of the reply are not appropriate in a motion to exclude.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that claims 42 and 43 of the ’137 patent are unpatentable. The Board also denied Patent Owner’s Motion to Exclude. The ’137 patent relates to “a system for remote data acquisition, and centralized processing and storage of the acquired data,” and particularly has the object of providing “an automated system to manage and store captured electronic and paper transactions from various activities including banking and consumer applications.”

Petitioner had challenged several claims of the ’137 patent, but the Board instituted trial with respect to only claims 42 and 43, a system and method claim, respectively, based on anticipation by U.S. Patent No. 5,373,550 (“Campbell”). The Board first addressed whether the ’137 patent is eligible for covered business method patent review, finding the patent to be eligible based on the analysis provided in the related Fidelity CBM proceeding challenging the ’137 patent.

The Board then addressed claim construction, noting that claims in an unexpired patent are interpreted using the broadest reasonable interpretation in light of the specification. The Board retained the constructions set forth in the Decision on Institution after discussing and finding unpersuasive Patent Owner’s arguments related to the construction for the “subsystem identification information” limitation.

The Board next addressed Patent Owner’s Motion to Exclude Petitioner’s “Exhibit 1023 (Michalson Affidavit), Paper 23 (Revised Exhibit List), and Paper 22 (Petitioner’s Reply).” Patent Owner argued that Exhibit 1023 improperly included sub-exhibits and improperly went beyond the scope of Patent Owner’s Response. With respect to the inclusion of sub-exhibits in Exhibit 1023, the Board agreed that it was improper, but denied the remedy of exclusion at this late stage and where Patent Owner is not prejudiced. The Board also found that Patent Owner had not identified a reason why Exhibit 1023 should be excluded, noting that whether an exhibit goes beyond the scope is not appropriate in a motion to exclude. The Board also denied the motion as to the exhibit list in Paper 23 because it was not clear to the Board why an exhibit list, which is not evidence, should be excluded. Finally, the Board denied the motion as to Petitioner’s Reply, relying upon its analysis of Exhibit 1023.

Turning to the alleged anticipation of the claims by Campbell, Patent Owner’s principal arguments with respect to claim 42 were that Campbell does not disclose “a) ‘subsystems’ and b) ‘encryption’ of the SSID in the manner required by the claim.” The Board found Patent Owner’s arguments as to the “subsystems” limitation unpersuasive because they were based on a claim construction that the Board had rejected. With respect to the “encryption” limitation, the Board found Petitioner’s argument, as supported by Dr. Michalson’s testimony, to be persuasive. Thus, the Board found Petitioner showed by a preponderance of the evidence that claim 42 is unpatentable. The Board found claim 43 to be unpatentable for the same reasons discussed with respect to claim 42.

Jack Henry and Associates, Inc. v. DataTreasury Corp., CBM2014-00056
Paper 37: Final Written Decision
Dated: July 8, 2015
Patent: 6,032,137 C1
Before: Michael P. Tierney, William V. Saindon, and Matthew R. Clements
Written by: Saindon
Related Proceedings: DataTreasury Corp. v. Jack Henry & Assoc., Inc., No. 2:13-cv-00433 (E.D. Tex); Fidelity National Information Services, Inc. v. DataTreasury Corp., Case CBM2014-00020 (PTAB) (“Fidelity CBM”); Fiserv, Inc. v. DataTreasury Corp, Case CBM2014-00088 (PTAB)