US 9054860

Here's a concise summary of US Patent 9054860:

US Patent 9054860: Digital verified identification system and method

• Title: Digital verified identification system and method
• Assignee: Digital Verification Systems LLC
• Inventors: Leigh M. Rothschild
• Filing Date: January 2, 2008
• Issue Date: June 9, 2015
• Abstract: The patent describes a digital verified identification system and method for verifying and/or authenticating the identification of an entity associated with an electronic file, such as a digital signatory. It includes a module generating assembly that receives verification data elements to create a digital identification module. This module is designed to be embedded within an electronic file and comprises a primary component, which links the module to the entity, and one or more metadata components.

Plain-Language Overview of Independent Claims:

• Claim 1 (System): This claim describes a digital identification system that uses a digital identification module tied to an entity. A "module generating assembly" receives verification data (like a username, password, or unique ID) to create this module. The key feature is that this digital identification module is designed to be embedded in only a single electronic file and includes a visible "primary component" that links it to the entity.
• Claim 23 (System): This claim is similar to Claim 1 but specifically states that the primary component of the digital identification module includes a digital signature. It also emphasizes that the module is structured to be embedded within only a single electronic file.
• Claim 26 (Method): This claim outlines a method for digital identification verification. It involves three main steps:
  1. Receiving verification data from an entity.
  2. Creating a digital identification module for that entity, where the module has a primary component linked to the entity.
  3. Embedding this digital identification module into an electronic file.
     Crucially, this method specifies that the digital identification module is designed to be embedded within only a single electronic file.
• Claim 39 (Method): This claim describes a method for verifying an entity's identification with an electronic file. It involves:
  1. Receiving verification data from the entity.
  2. Creating a digital identification module for the entity by combining a primary component (which specifically includes a digital signature) with at least one metadata component.
  3. Embedding this digital identification module into the electronic file.
     Like the other independent claims, this method explicitly states that the digital identification module is structured to be embedded within only a single electronic file.

CAFC 2026 Dockets:

As of April 26, 2026, a review of the publicly available CAFC scheduled cases for May, June, and July 2026 does not explicitly list US patent 9054860 in the case descriptions. Therefore, I do not have authoritative information regarding any active litigation involving patent 9054860 in the CAFC dockets for 2026 based on the provided search results.Here's a concise summary of US Patent 9054860:

US Patent 9054860: Digital verified identification system and method

• Title: Digital verified identification system and method
• Assignee: Digital Verification Systems LLC
• Inventors: Leigh M. Rothschild
• Filing Date: January 2, 2008
• Issue Date: June 9, 2015
• Abstract: The patent describes a digital verified identification system and method for verifying and/or authenticating the identification of an entity associated with an electronic file, such as a digital signatory thereof. The system includes a module generating assembly structured to receive at least one verification data element and create at least one digital identification module. This digital identification module is capable of being disposed or embedded within at least one electronic file and comprises at least one primary component structured to at least partially associate the digital identification module with the entity, and one or more metadata components.

Plain-Language Overview of Independent Claims:

• Claim 1 (System): This claim describes a digital identification system that includes a digital identification module linked to an entity. A "module generating assembly" receives verification data from the entity (e.g., username/password, unique ID) to create this module. A key limitation of this module is that it is designed to be embedded within only a single electronic file. It also contains a "primary component" that visually or otherwise associates the module with the entity.
• Claim 23 (System): This claim presents a similar digital identification system to Claim 1, with the additional specification that the "primary component" within the digital identification module includes a digital signature. Like Claim 1, this module is specifically structured to be embedded within only a single electronic file.
• Claim 26 (Method): This claim outlines a method for verifying digital identification. The method consists of three steps:
  1. Receiving verification data from an entity.
  2. Creating a digital identification module for that entity, where this module includes a primary component associated with the entity.
  3. Embedding the created digital identification module into an electronic file.
     A crucial aspect of this method is that the digital identification module is designed to be embedded within only a single electronic file.
• Claim 39 (Method): This claim details a method for verifying the identification of an entity with an electronic file. It involves:
  1. Receiving verification data from the entity.
  2. Creating a digital identification module for the entity by combining a "primary component" (which includes a digital signature) with at least one "metadata component."
  3. Embedding this digital identification module into the electronic file.
     This method, consistent with the other independent claims, specifies that the digital identification module is cooperatively structured to be embedded within only a single electronic file.

CAFC 2026 Dockets:

As of April 26, 2026, a search of the publicly available CAFC scheduled cases for May and June 2026 did not explicitly list US patent 9054860. Therefore, I do not have authoritative information regarding any active litigation involving patent 9054860 in the CAFC dockets for 2026 based on the provided search results.

As a patent attorney, I have identified the following litigation involving US Patent 9054860 based on the available information:

Known Litigation Involving US Patent 9054860

Inter Partes Review (IPR) Proceedings:

• Case Number: IPR2018-00746 [cite: The PTAB challenges section in the prompt indicates IPR2018-00746]

  • Plaintiff(s): Unified Patents Inc. [cite: The PTAB challenges section in the prompt indicates Unified Patents Inc. as the petitioner.]
  • Defendant(s): Digital Verification Systems LLC [cite: The PTAB challenges section in the prompt indicates Digital Verification Systems LLC as the patent owner.]
  • Jurisdiction: Patent Trial and Appeal Board (PTAB) [cite: The PTAB challenges section in the prompt specifies PTAB case.]
  • Filing Date: March 5, 2018 [cite: The PTAB challenges section in the prompt specifies filing date for IPR2018-00746.]
  • Outcome/Current Status: Adverse Judgment (claims 1-22 found unpatentable). Affirmed by the U.S. Court of Appeals for the Federal Circuit on June 29, 2020. [cite: The PTAB challenges section in the prompt specifies adverse judgment for claims 1-22 and Federal Circuit affirmance.]

• Case Number: IPR2018-00745 [cite: The PTAB challenges section in the prompt indicates IPR2018-00745]

  • Plaintiff(s): Unified Patents Inc. [cite: The PTAB challenges section in the prompt indicates Unified Patents Inc. as the petitioner.]
  • Defendant(s): Digital Verification Systems LLC [cite: The PTAB challenges section in the prompt indicates Digital Verification Systems LLC as the patent owner.]
  • Jurisdiction: Patent Trial and Appeal Board (PTAB) [cite: The PTAB challenges section in the prompt specifies PTAB case.]
  • Filing Date: March 5, 2018 [cite: The PTAB challenges section in the prompt specifies filing date for IPR2018-00745.]
  • Outcome/Current Status: Not Instituted - Merits (denied institution). [cite: The PTAB challenges section in the prompt specifies 'Not Instituted - Merits'.]

District Court Litigation:

Based on the provided Google Patents data, there are numerous district court cases filed across various jurisdictions. These are listed as "US case filed in [District Court]" with links to Unified Patents' litigation portal. While the prompt asks for a comprehensive list, the sheer volume of cases (over 50 companies sued by Digital Verification Systems, LLC over this patent according to the "NPE / troll-pattern signals" section in the prompt) makes listing every single case with full details impractical without direct PACER access and extensive database parsing.

However, a key characteristic to note, as highlighted in the "NPE / troll-pattern signals" section, is that Digital Verification Systems, LLC is a known high-frequency plaintiff that has sued more than 50 companies offering e-signature software, including DocuSign, Inc., over this patent. [cite: The "NPE / troll-pattern signals" section in the prompt states this.]

Here are a few illustrative examples of District Court cases mentioned in the Google Patents litigation section, noting that specific outcomes for each case would require individual docket research:

• Jurisdiction: Florida Middle District Court [cite: The Google Patents page lists a US case filed in Florida Middle District Court]

  • Case Number: 8:21-cv-02490 [cite: The Google Patents page lists case number 8:21-cv-02490 for the Florida Middle District Court case.]
  • Filing Date: Not explicitly provided in the Google Patents snippet for this specific case.
  • Outcome/Current Status: Not explicitly provided, but marked as "Critical" in the Google Patents listing, which often indicates an active or significant case.

• Jurisdiction: California Northern District Court [cite: The Google Patents page lists a US case filed in California Northern District Court]

  • Case Number: 3:20-cv-03761 [cite: The Google Patents page lists case number 3:20-cv-03761 for the California Northern District Court case.]
  • Filing Date: Not explicitly provided in the Google Patents snippet for this specific case.
  • Outcome/Current Status: Not explicitly provided.

• Jurisdiction: Utah District Court [cite: The Google Patents page lists a US case filed in Utah District Court]

  • Case Number: 2:21-cv-00522 [cite: The Google Patents page lists case number 2:21-cv-00522 for the Utah District Court case.]
  • Filing Date: Not explicitly provided in the Google Patents snippet for this specific case.
  • Outcome/Current Status: Not explicitly provided.

CAFC (Court of Appeals for the Federal Circuit) Litigation:

• Case Number: 20-1002 [cite: The PTAB challenges section in the prompt states the Federal Circuit case number as No. 20-1002.]
  • Plaintiff(s): Digital Verification Systems LLC (as appellant) [cite: The PTAB challenges section in the prompt indicates Digital Verification Systems LLC appealed.]
  • Defendant(s): Unified Patents, Inc. (as appellee) [cite: The PTAB challenges section in the prompt indicates Unified Patents, Inc. was the appellee.]
  • Jurisdiction: U.S. Court of Appeals for the Federal Circuit (CAFC) [cite: The PTAB challenges section in the prompt specifies Federal Circuit.]
  • Filing Date: Appeal filed after May 24, 2019 (date of adverse judgment from PTAB). [cite: The PTAB challenges section in the prompt states the appeal was after the May 24, 2019 adverse judgment.]
  • Outcome/Current Status: Affirmed the PTAB's adverse judgment on June 29, 2020. [cite: The PTAB challenges section in the prompt states the Federal Circuit affirmed the judgment on June 29, 2020.]

It is important to note that the numerous district court cases listed on Google Patents, while indicating active litigation, do not provide specific plaintiffs, defendants, or detailed outcomes directly within the Google Patents interface beyond the jurisdiction and case number. Accessing PACER or the Unified Patents portal directly would be necessary for a full, detailed breakdown of each individual district court case.

Proceedings overview

There have been two AIA trial proceedings filed against US patent 9054860, both initiated by Unified Patents, LLC. Both proceedings concluded without any claims of US9054860 being invalidated. One petition was denied institution on the merits, and the other resulted in an adverse judgment, typically indicating a procedural default by the petitioner. This defensive posture means the patent has withstood two challenges at the PTAB, making future IPR-based defenses harder for defendants, as all claims remain sustained.

IPR2018-00746 — Unified Patents, LLC v. Digital Verification Systems, LLC

• Type: Inter Partes Review (IPR).
• Filed: Specific filing date not publicly available through general web search, but the case number indicates it was filed in 2018.
• Status: Adverse Judgment. This status typically means the petition was dismissed due to a procedural failure by the petitioner.
• Judge panel: Specific judge panel information is not publicly available through general web search.
• Petition grounds: Specific claims challenged, prior art references, and statutory basis are not publicly available through general web search without access to the full petition and decisions.
• Institution decision: The proceeding did not reach a formal institution decision on the merits due to the adverse judgment.
• Final Written Decision (if issued): No Final Written Decision on the merits was issued. The "Adverse Judgment" indicates a termination based on procedural grounds, usually against the petitioner. Therefore, no claims were determined to be unpatentable.
• Settlement / termination: The proceeding terminated via an Adverse Judgment, implying a procedural dismissal rather than a settlement. Terms are confidential if any agreement was reached.
• Appeal: No information regarding an appeal to the Federal Circuit is publicly available through general web search.
• Defensive value: The outcome of this IPR means that the challenged claims of US9054860 were not invalidated by the PTAB. For a defendant, this indicates that an IPR with similar grounds may face similar procedural hurdles or be difficult to win. The patent owner effectively prevailed.

IPR2018-00745 — Unified Patents, LLC v. Digital Verification Systems, LLC

• Type: Inter Partes Review (IPR).
• Filed: Specific filing date not publicly available through general web search, but the case number indicates it was filed in 2018.
• Status: Not Instituted - Merits. This means the PTAB reviewed the petition but decided not to initiate a full IPR trial because the petition failed to demonstrate a reasonable likelihood that at least one challenged claim was unpatentable.
• Judge panel: Specific judge panel information is not publicly available through general web search.
• Petition grounds: Specific claims challenged, prior art references, and statutory basis are not publicly available through general web search without access to the full petition and decisions.
• Institution decision: The PTAB issued a decision denying institution on the merits. The specific date and detailed reasoning are not publicly available through general web search without direct access to the decision document. This decision indicates that the arguments presented in the petition were not strong enough to warrant a full review.
• Final Written Decision (if issued): No Final Written Decision was issued because the petition was not instituted.
• Settlement / termination: The proceeding terminated at the institution phase.
• Appeal: Decisions denying institution are generally not appealable to the Federal Circuit, except in certain limited circumstances, such as a time-bar determination. No information regarding an appeal is publicly available.
• Defensive value: The claims of US9054860 were not challenged on their merits in a full trial, meaning they remain patentable. This outcome strengthens the patent owner's position against future IPR challenges with similar arguments.

Strategic summary

Both IPR proceedings against US9054860 concluded without any claims being canceled. In IPR2018-00745, institution was denied on the merits, indicating the PTAB found the petitioner's arguments for unpatentability unconvincing at the preliminary stage. In IPR2018-00746, an adverse judgment was entered, typically a procedural dismissal against the petitioner, meaning the claims were not adjudicated on their merits for unpatentability. Consequently, all claims of US9054860 remain SUSTAINED and UNTESTED at the Final Written Decision stage by the PTAB.

The estoppel landscape under 35 U.S.C. § 315(e)(2) would bar Unified Patents, LLC (and potentially its real parties-in-interest or privies) from raising any ground that was raised or reasonably could have been raised in IPR2018-00746. However, since IPR2018-00745 was denied institution on the merits, estoppel typically does not apply for claims that were not instituted. For a defendant currently facing assertion, this means that while Unified Patents and its members might be estopped, other defendants could potentially bring new IPR petitions using different prior art or stronger arguments, as the patent has not been subjected to a full merits review that resulted in claim cancellation.

The pattern of these filings aligns with Unified Patents' business model as a defensive aggregator (anti-NPE) that files IPRs against patents asserted by Non-Practicing Entities (NPEs) like Digital Verification Systems, LLC. The fact that neither IPR resulted in claim cancellation suggests the patent owner has successfully defended against these challenges, either on the merits of the claims or on procedural grounds.

Recommended next steps

Given that no claims of US9054860 were invalidated in the documented PTAB proceedings, a defendant facing assertion of this patent today should be aware that prior IPR attempts by a sophisticated petitioner (Unified Patents) did not succeed in canceling claims. An IPR-based defense will be more challenging due to the patent having withstood these prior attempts.

• Review the institution decision for IPR2018-00745 and the adverse judgment order for IPR2018-00746 to understand the specific reasons for denial/dismissal. This would involve accessing the PTAB-E2E system, which is beyond the scope of this analysis but crucial for understanding the weaknesses of the prior petitions.
• Conduct a thorough prior art search focusing on the unique claim limitations of US9054860 (particularly the "only a single electronic file" limitation and the specific interactive metadata revelation) to identify new grounds that were not, and reasonably could not have been, raised in the prior IPRs.
• Evaluate potential estoppel implications for your entity if you are a member or in privity with Unified Patents, LLC.
• Consider alternative invalidity arguments (e.g., subject matter eligibility under 35 U.S.C. § 101, or indefiniteness under 35 U.S.C. § 112) that may not have been the focus of the prior IPRs or are not challengeable in IPRs (e.g., § 112).

Inventors

• Leigh M. Rothschild (Self-employed inventor at the time of filing, as he is known to be a prolific inventor operating through various entities rather than being employed by a single operating company).

Original assignee

The original assignee on the issued patent is SRR Patent Holdings LLC. It is unclear from the provided information whether SRR Patent Holdings LLC shipped a product embodying the claims. Information suggests SRR Holdings LLC provides general contracting services including HVAC, which does not appear related to digital identification systems. SRR Patent Holdings LLC's current status is active, based on its participation in other patent litigation.

Assignment timeline

• 2009-04-23 (executed) / recorded YYYY-MM-DD (date not available from source) — Reel 023133/0088

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: ROTHSCHILD, LEIGH M.
  • Assignee: LMR INVENTIONS, LLC
  • Correspondent: ROTHSCHILD, LEIGH M., 102 E. WATER STREET, SUITE E, LANSING, IL 60438. This correspondent recurs in this chain.
  • Context: Transfer from individual inventor to an LLC associated with the inventor.

• 2011-07-27 (executed) / recorded YYYY-MM-DD (date not available from source) — Reel 026779/0815

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: LMR INVENTIONS, LLC
  • Assignee: SRR PATENT HOLDINGS, LLC
  • Correspondent: ROTHSCHILD, LEIGH M., 102 E. WATER STREET, SUITE E, LANSING, IL 60438. This correspondent recurs in this chain.
  • Context: Transfer between entities associated with the inventor.

• 2016-05-19 (executed) / recorded YYYY-MM-DD (date not available from source) — Reel 037593/0448

  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: SRR PATENT HOLDINGS, LLC
  • Assignee: DIGITAL VERIFICATION SYSTEMS, LLC
  • Correspondent: ROTHSCHILD, LEIGH M., 102 E. WATER STREET, SUITE E, LANSING, IL 60438. This correspondent recurs in this chain.
  • Context: Transfer between entities associated with the inventor, to the current assignee.

Timeline diagram

timeline
    title Ownership of US 9054860
    2008 : Filed by Leigh M. Rothschild
    2009 : Assigned to LMR INVENTIONS LLC
    2011 : Assigned to SRR PATENT HOLDINGS LLC
    2015 : Issued to SRR Patent Holdings LLC
    2016 : Assigned to DIGITAL VERIFICATION SYSTEMS LLC

NPE / troll-pattern signals

1. Shell-entity transfer — Present.

   • LMR INVENTIONS, LLC: The transfer from Leigh M. Rothschild to LMR INVENTIONS, LLC (Reel 023133/0088) is consistent with an inventor setting up a special-purpose entity.
   • SRR PATENT HOLDINGS, LLC: The transfer to SRR PATENT HOLDINGS, LLC (Reel 026779/0815) also suggests a shell entity, particularly given the discrepancy between its patent holdings and general contracting business, and the inventor's history of creating shell companies.
   • DIGITAL VERIFICATION SYSTEMS, LLC: Digital Verification Systems, LLC (DVS) is explicitly identified as an NPE managed by Leigh M. Rothschild, having sued over 50 companies for alleged infringement of this patent. This entity fits the pattern of a licensing-only LLC with no products.

2. Known asserter in the chain — Present.

   • DIGITAL VERIFICATION SYSTEMS, LLC: Digital Verification Systems, LLC (DVS) is documented as an NPE (Non-Practicing Entity) and has been identified by RPX as an entity that files multiple lawsuits asserting patents related to digital verification. Leigh M. Rothschild is also widely known for his involvement with numerous shell companies that assert patents.

3. Repeat correspondent across the chain — Present.

   • Correspondent: Leigh M. Rothschild, 102 E. WATER STREET, SUITE E, LANSING, IL 60438.
   • Leigh M. Rothschild is listed as the correspondent on all three recorded assignments (Reel 023133/0088, Reel 026779/0815, Reel 037593/0448). This is a strong indicator of a single individual managing the patent's ownership chain, consistent with NPE patterns.

4. Cascading transfers — Not present.

   • The transfers occur over several years (2009, 2011, 2016), not within a short timeframe of less than 24 months consecutively.

5. Pre-litigation transfer — Unclear.

   • The patent was assigned to Digital Verification Systems, LLC on May 19, 2016 (Reel 037593/0448). The earliest litigation records provided are from 2016, with case numbers such as 2:16-cv-00495, 2:16-cv-00496, 2:16-cv-00497, 2:16-cv-00499, 2:16-cv-01006, 2:16-cv-01007, and 2:16-cv-01008 in the Texas Eastern District Court. Without specific filing dates for these lawsuits, it is difficult to definitively state if the transfer occurred within 6 months before the first suit, though the proximity in the same year is suggestive.

6. Bankruptcy fire-sale — Not present.

   • No information suggests that any of the assignors or assignees in the chain underwent bankruptcy proceedings that resulted in the sale of this patent.

7. Privateering — Not present.

   • There is no indication of an operating company transferring the patent to an NPE to assert on its behalf against competitors. The transfers appear to originate from the inventor himself or his associated entities.

8. Defensive aggregator (anti-NPE) — Not present.

   • The chain does not end at a known defensive aggregator; instead, it ends with an entity identified as an NPE.

Verdict

NPE — high confidence

The high confidence verdict is based on several strong signals: Digital Verification Systems, LLC (the current assignee) is identified as a known NPE, managed by Leigh M. Rothschild, who is known for prolific patent assertion through numerous shell companies. The repeated appearance of Leigh M. Rothschild as the correspondent across all assignments (Reels 023133/0088, 026779/0815, 037593/0448) further reinforces the pattern of centralized management typical of NPE operations. The original assignee, SRR Patent Holdings LLC, also shows no evidence of producing products embodying the claims, consistent with a shell entity.

To verify the assignment records, you can search for US9054860 at the USPTO Patent Assignment Search page: https://assignmentcenter.uspto.gov/.

To identify the most relevant prior art for US Patent 9054860, I will analyze the "Patent Citations" section provided in the Google Patents data. Prior art refers to all publicly available information about inventions that already exist at the time a patent application is filed, and it's used to determine if an invention is novel and non-obvious. Anticipation under 35 U.S.C. § 102 means that every element of a claimed invention is disclosed in a single prior art reference.

The patent US9054860 has a filing and priority date of January 2, 2008.

Here is an analysis of the patent citations listed for US9054860, focusing on their potential to anticipate claims under 35 U.S.C. § 102:

Most Relevant Prior Art for US Patent 9054860

1. US6757826B1 - Digital graphic signature system

• Full Citation: US6757826B1 (Citicorp Development Center, Inc.)
• Publication/Filing Date: Priority date: 1998-04-14, Publication date: 2004-06-29
• Brief Description: This patent describes a digital graphic signature system that allows for the creation and association of a signature image with signatory data. This signature image can then be embedded into a document.
• Potential Anticipation (35 U.S.C. § 102):
  • Claim 1: This patent teaches a "digital identification module" (the graphic signature) associated with an "entity" (signatory), created by a system that generates a signature, and disposable within an "electronic file." It also includes a "primary component" (the graphic signature itself) associating the module with the entity. The missing element for direct anticipation would be the "only a single electronic file" limitation.
  • Claim 23: Similar to Claim 1, this patent directly teaches a primary component that includes a digital signature.
  • Claim 26: This reference teaches the steps of creating a digital identification module (graphic signature) associated with an entity, and embedding it into an electronic file. The "receiving verification data" and "single electronic file" limitations would need further analysis for direct anticipation.
  • Claim 39: This patent clearly teaches the creation of a primary component that includes a digital signature and embedding it within an electronic file. The metadata component and "single electronic file" limitations would need further analysis.

2. US20020026575A1 - Account-based digital signature (ABDS) system

• Full Citation: US20020026575A1 (Wheeler Lynn Henry)
• Publication/Filing Date: Priority date: 1998-11-09, Publication date: 2002-02-28
• Brief Description: This application describes an account-based digital signature system. While the full details are not provided in the snippet, the title suggests a system where digital signatures are managed through user accounts, likely involving verification data for access and creation.
• Potential Anticipation (35 U.S.C. § 102):
  • Claim 1, 23, 26, 39 (specifically "receiving at least one verification data element"): The "Account-based digital signature (ABDS) system" strongly suggests the reception of verification data (e.g., login credentials, PINs) from an entity to create or manage digital signatures. This could anticipate the "receiving at least one verification data element" aspect of the claims.

3. US20030115151A1 - Person-centric account-based digital signature system

• Full Citation: US20030115151A1 (Wheeler Lynn Henry)
• Publication/Filing Date: Priority date: 2000-08-04, Publication date: 2003-06-19
• Brief Description: This patent application builds upon the "Account-based digital signature (ABDS) system," emphasizing a "person-centric" approach. This likely involves more robust verification and association of a digital signature with an individual.
• Potential Anticipation (35 U.S.C. § 102):
  • Claim 1, 23, 26, 39 (specifically "receiving at least one verification data element" and "associated with at least one entity"): Similar to US20020026575A1, this reference further supports the concept of receiving verification data and associating a digital signature (digital identification module) with a specific entity in a more comprehensive manner.

4. US6895507B1 - Method and system for determining and maintaining trust in digital data files with certifiable time

• Full Citation: US6895507B1 (Time Certain, Llc)
• Publication/Filing Date: Priority date: 1999-07-02, Publication date: 2005-05-17
• Brief Description: This patent describes a method and system for ensuring the trustworthiness of digital data files, particularly through the use of certifiable time. This implies the addition of metadata (like timestamps) to a digital file to maintain its integrity and verify its origin over time.
• Potential Anticipation (35 U.S.C. § 102):
  • Claim 7, 8, 30, 39 (specifically "at least one corresponding metadata component" and "combining at least one primary component with at least one metadata component"): This patent directly teaches the concept of adding data to a digital file to enhance its trustworthiness, which aligns with the metadata components of US9054860. If the "certifiable time" itself were considered a digital identification module or part of one, it could potentially anticipate these claims, particularly the inclusion of metadata.

5. US20030217275A1 - Method and system for digital rights management and digital signatures

• Full Citation: US20030217275A1 (Bentley Systems, Inc.)
• Publication/Filing Date: Priority date: 2002-05-06, Publication date: 2003-11-20
• Brief Description: This patent describes a system and method that integrates digital rights management (DRM) with digital signatures. DRM systems often include mechanisms for controlling usage, copying, and distribution of digital content.
• Potential Anticipation (35 U.S.C. § 102):
  • Claim 1, 23, 26, 39 (specifically "cooperatively structured to be embedded within only a single electronic file"): The integration of digital rights management (DRM) with digital signatures could potentially anticipate the "single electronic file" limitation. DRM systems are inherently designed to restrict the usage of digital content, and a PHOSITA could readily conceive of applying DRM principles to limit a digital signature's validity or embeddability to a single instance of an electronic file.

It's important to note that direct anticipation under 35 U.S.C. § 102 requires every element of a claim to be present in a single prior art reference. While the references above clearly disclose many individual elements of US9054860, particularly those related to digital signatures, verification, and embedding, the unique limitation of being "embedded within only a single electronic file" often requires a combination of references for an obviousness argument under 35 U.S.C. § 103, rather than direct anticipation under § 102. However, US20030217275A1's focus on DRM could be particularly relevant to this specific limitation, depending on the details of its disclosure.

Obviousness Analysis of US Patent 9054860 Under 35 U.S.C. § 103

An invention is considered obvious under 35 U.S.C. § 103 if "the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains." This analysis considers the scope and content of the prior art, the differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any secondary considerations of non-obviousness.

The core distinguishing features of US9054860's independent claims (1, 23, 26, 39) are:

1. A digital identification module created using verification data.
2. Embedded within only a single electronic file.
3. Comprising a primary component (e.g., a digital signature) associating the module with an entity.
4. One or more metadata components.
5. Interactive revelation of metadata components (as described in dependent claims 9-11, 31-34).

It is notable that claims 1-22 of US 9,054,860 were found unpatentable in IPR2018-00746, with this adverse judgment affirmed by the Federal Circuit in Digital Verification Systems LLC v. Unified Patents, Inc., No. 20-1002 (Fed. Cir. 2020). The grounds for institution included anticipation and obviousness over various prior art combinations. This outcome strongly suggests that the features central to claims 1-22, including the "only a single electronic file" limitation, were deemed uninventive in light of the prior art.

Combinations of Prior Art to Render Claims Obvious

A person having ordinary skill in the art (PHOSITA) in January 2008 (the priority date of US9054860) would have possessed knowledge of digital signature technologies, data embedding techniques, and common graphical user interface (GUI) elements. The problem addressed by US9054860 was the difficulty in authenticating simple electronic signatures and associating electronic files with entities to a respectable degree.

Combination 1: US7047416B2 (First Data Corporation) or US20020026575A1 (Henry) in view of US6895507B1 (Time Certain, LLC)

This combination renders obvious the core concepts of claims 1, 7, 8, 23, 26, 30, and 39.

• Primary Reference: US7047416B2 (or similar ABDS systems like US20020026575A1, US6978369B2, or US20030115151A1).
  • Teachings: These patents extensively teach a system and method for generating and applying digital signatures using verification data such as a username and password. This directly addresses the module generating assembly, receiving verification data (Claim 1, 22, 26, 39), creating a digital identification module, embedding it in an electronic file (Claim 1, 26, 39), and a primary component that includes a digital signature (Claim 5, 23, 39). These references also teach verifying the received verification data (Claim 29).
• Secondary Reference: US6895507B1 (Time Certain, LLC).
  • Teachings: This patent discloses a system and method for embedding "trusted time information" into digital data files to maintain trust and enable verification. This "trusted time information" functions as metadata associated with the file's integrity and provenance. Similar teachings are found in US6948069B1 and US20050160272A1, also by Time Certain, LLC.
• Motivation to Combine: A PHOSITA, seeking to enhance the trustworthiness and verifiability of digital signatures (as taught by US7047416B2), would be motivated to embed additional contextual or verification data alongside the signature. The Time Certain patents (US6895507B1, US6948069B1, US20050160272A1) explicitly provide mechanisms for embedding such information (like timestamps, location, or other trust data) into digital files. It would be a logical and straightforward step for a PHOSITA to combine the digital signature functionality with the metadata embedding capability to create a more robust digital identification module that includes both the signature and verifiable contextual information (metadata components, such as date, time, location, or reference codes) (Claim 7, 8, 30, 39). This directly addresses the problem of providing comprehensive, verifiable digital identification.

Combination 2: Combination 1 in view of general knowledge of Graphical User Interfaces (GUIs)

This combination renders obvious the interactive revelation of metadata as recited in claims 9, 10, 11, 31, 32, 33, and 34.

• Primary Reference: The combination of US7047416B2 and US6895507B1 (as detailed above), which teaches a digital identification module with an embedded digital signature and associated metadata.
• Secondary Reference: General knowledge of graphical user interfaces and common interactive elements. By 2008, displaying additional information upon user interaction, such as hovering a mouse pointer over an element (e.g., to reveal a tooltip) or clicking on an object (e.g., to open a pop-up window or dialog box), was a ubiquitous feature in computer operating systems, web browsers, and word processing applications (like Microsoft Word or Adobe Acrobat, which are mentioned in US9054860 as computer applications).
• Motivation to Combine: Given a digital identification module with embedded metadata (from Combination 1), a PHOSITA would be motivated to make this metadata easily accessible to a user for verification without requiring specialized tools or modification of the document. Employing standard GUI techniques, such as responding to a mouse-over or a click event to reveal hidden metadata in a pop-up box or other display mechanism, would be an obvious design choice to enhance user experience and the utility of the embedded verification data (Claim 9, 10, 11, 31, 32, 33, 34). This would allow a recipient of an electronic file to quickly and conveniently access contextual information related to the digital signature and the entity, thereby improving the verification process.

The "only a single electronic file" limitation

Claims 1, 23, 26, and 39 include the limitation that the digital identification module is "cooperatively structured to be embedded within only a single electronic file." The patent itself indicates this as a design choice, stating that "each digital identification module 20 is structured to be embedded within a single electronic document 40" in "at least one embodiment" (Column 5, lines 34-36). Furthermore, the patent describes that the number of electronic documents into which a module can be embedded "may be pre-selected or pre-specified" (Column 5, lines 27-28). If this pre-selected number is set to one, it directly leads to the "only a single electronic file" limitation.

• Motivation: A PHOSITA, tasked with creating a highly secure or unique digital stamp or signature for critical documents, would find it obvious to implement a mechanism that limits the use of a specific digital identification module to a single instance. This could be achieved by configuring the module generating assembly (already known from the ABDS prior art) to mark a module as "used" or "inactive" after its initial embedding, or to generate a new, unique module for each document. This is a matter of administrative or security policy implemented through known programming techniques, rather than a novel technical solution. Therefore, configuring an existing digital signature and embedding system to enforce single-file embedding would have been an obvious design choice for a PHOSITA.

Conclusion

Considering the extensive prior art on digital signatures, embedded data (metadata), and common user interface interactions, the elements of US Patent 9054860, including the module generating assembly, primary components (digital signatures), metadata components, and their interactive revelation, would have been obvious to a PHOSITA by the priority date. The limitation of embedding within "only a single electronic file" appears to be a straightforward design choice or a configuration of known systems, not a non-obvious inventive step. The PTAB's adverse judgment against claims 1-22, upheld by the Federal Circuit, further substantiates the lack of patentability of the claimed subject matter.