“access channel” / “first channel” & “authentication channel” / “second channel”
...........................
Consistent with the specification, the parties agree that the “access channel” or “first channel” is “an information channel,” that the “authentication channel” or “second channel” is “a channel for performing authentication,” and that the two channels are separate in the sense that the authentication channel is “out-of-band.” They dispute, however, the degree of separation required for a channel to be “out-of-band.” StrikeForce argues that information in the two channels may be “carried over separate facilities, frequency channels, or time slots than those used by the authentication channel/second channel.” Defendants maintain that the two channels must “not share any facility.”
In support of its position, StrikeForce notes that its understanding of “out-of-band” is a meaning accepted by persons of ordinary skill in the art, demonstrated by the standard definition for “out-of-band signaling” contained in Newton’s Telecom Dictionary. See Pl.’s Ex. 8. In addition, StrikeForce’s proposed definition is also explicitly recited in the specification of the patents.
Defendants point out that the broader “out-of-band” definition relied on by StrikeForce is set out in the BACKGROUND section of the specification discussing and disparaging prior art, and does not describe the patented invention. With respect to the invention itself, defendants contend, and the court agrees, that the patentee acted as his own lexicographer in adopting a narrower definition. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” (citation omitted)). “[A]n ‘out-of-band’ system is defined herein as one having an authentication channel that is separated from the information channel and therefore is nonintrusive as it is carried over separate facilities than those used for actual information transfer.” ’698 patent, col. 6, ll. 19-23 (emphasis added).
This understanding is also the one that was relied upon by the patentee during prosecution. During prosecution of the ’297 application, the patentee distinguished the Tuai prior art on the in-band/out-of-band distinction. Tuai disclosed a “controller 15 [] interconnected between the host computer 10 and the modem 12,” U.S. Patent 5,153,918, col. 4, ll. 2-3, and that “the capabilities of the central access controller 15 also include the optional call-back measure to enhance the security of the communication system,” id. col. 8, ll. 3-5. The patentee argued that the central controller was “in-band” and while it performs either an access or an authentication function at different times, “an in-band call back device operating after verification is not an out-of-band device which is integral in providing verification.” Defs.’ Ex. 15 at SF_714.
Similarly, during the prosecution of the ’599 parent patent, the patentee distinguished the LaDue prior art, which disclosed “logically defined control channels,” U.S. Patent No. 6,088,431, col. 8, l. 47, including an “authentication channel,” id. col. 8, ll. 52-53. The patentee argued that the logically defined channels would not, in combination with Tuai,motivate the patented invention because the claimed system involved “the extra step of . . . adding a completely separate authentication channel.” Defs.’ Ex. 16 at SF_121.
Finally, during the reexamination of the ’599 parent patent, the patentee summarized his invention as “an ‘out-of-band’ network security system having an authentication channel that is separated from an information (i.e. ‘access’) channel and therefore is noninstrusive as the authentication channel is carried over separate facilities than those used for actual information transfer.” Defs.’ Ex. 19 at SF_994. In support of the same reexamination, the patentee also submitted an expert declaration distinguishing the Woodhill prior art, inter alia, as not disclosing “an out-of-band authentication channel that is separate from an access channel,” because although Woodhill disclosed two channels, “both access and authentication merge in the same network (like the Internet).” Gabberty Decl., Defs.’ Ex. 20 at SF_1017.
In light of the specification’s clear and consistent definition (as reflected in the prosecution history), StrikeForce’s rebuttal arguments fail. StrikeForce insists that because the patents require communication between the access and authentication channels, see, e.g., ’698 patent, claim 2 (“the security computer receives the demand and login identification from the interception device”), the two channels necessarily share facilities. However, that a security computer may receive data from two channels does not place the security system into both channels. Claim 1, upon which claim 2 depends, is clear that while the “interception device [is] in a first channel,” the “security computer [is] in a second channel.”
StrikeForce also suggests that weight should to be accorded to the dropping of a narrower interpretation of “out-of-band” that appeared in the abandoned ’297 application from the issued patents. See MPHJ Tech. Investments, LLC v. Ricoh Americas Corp., 847 F.3d 1363, 1369 (Fed. Cir. 2017) (“[I]t is the deletion from the ’798 Provisional application that contributes understanding of the intended scope of the final application.”).
During the prosecution of the ’297 application, the patentee inserted in the specification the admonition that “[a]n ‘out-of-band’ operation is defined herein as one conducted without reference to the host computer or any database in the network.” Defs.’ Ex. 13 at SF_657. The “without reference” sentence was removed from the specification when the patentee submitted the applications for the subsequently issued patents.
In MPHJ, the Court found the deletion of the provisional application step significant because “[t]he ’173 Patent in its final form contains no statement or suggestion of an intent to limit the claims to the deleted one-step operation.” 847 F.3d at 1369. In contrast, while the admonitory language does not appear verbatim in the patents at issue here, the specification continues to emphasize the physical independence of the authentication channel from the access channel. See ’698 patent, col. 6, ll. 44-47 (“This is in contradistinction to present authentication processes as the out-of-band security network 40 is isolated from the corporate network 38 and does not depend thereon for validating data.”); id. col. 12, ll. 58-61 (“This is in contradistinction to present authentication processes as the out-of-band security network 240 is isolated from the corporate network 238 and does not depend thereon for validating data.”); id. col. 14, ll. 4-7 (“The security system 420 has two distinct and independent channels of operation, namely, the access channel and the authentication channel.”). The persistent emphasis on “isolat[ing]” the “distinct and independent” authentication channel from the access channel in all the disclosed embodiments also traverses StrikeForce’s contention that the narrower definition was only descriptive of the Figure 1A WAN embodiment and not of the invention as a whole.
Consistent with the patentee’s own definition and use of the term“out-of-band” in the specification and the prosecution history, the court will construe “access channel” / “first channel” as “an information channel that is separate from and does not share any facility with the authentication channel;” and “authentication channel” / “second channel” as “a channel for performing authentication that is separate from and does not share any facilities with the access channel.”
News 
Market Data 
Discover 
AI
