Paper No. __________
`Filed: March 14, 2014
`
`Filed on behalf of: Groupon Inc.
`By:
`James C. Yoon
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, California 94304
`Tel.: 650-493-9300
`Fax: 650-493-6811
`Email: jyoon@wsgr.com
`Email: margenti@wsgr.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`Groupon Inc.
`Petitioner
`
`v.
`
`Maxim Integrated Products, Inc.
`Patent Owner
`
`_____________________________
`
`Patent No. 5,805,702
`
`_____________________________
`
`PETITION FOR COVERED BUSINESS METHOD REVIEW
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PRELIMINARY STATEMENT...................................................................1
`
`BACKGROUND OF THE ’702 PATENT ..................................................4
`
`A.
`
`Financial Transactions in the ’702 Patent .............................................4
`
`1.
`
`2.
`
`Conventional Cash Transactions.................................................4
`
`Monetary Transactions Using the Module..................................5
`
`B.
`
`C.
`
`D.
`
`The ’702 Patent Uses Well Known Financial Transaction
`Security Protocols..................................................................................6
`
`The Challenged Claims of the ’702 Patent ...........................................7
`
`Prosecution History of the ’702 Patent .................................................9
`
`III. GROUNDS FOR STANDING....................................................................10
`
`A.
`
`B.
`
`The Challenged Claims Are Each Directed to a Covered
`Business Method .................................................................................10
`
`The Challenged Claims Are Not Directed to a “Technological
`Invention”............................................................................................11
`
`1.
`
`2.
`
`The Challenged Claims Do Not Recite a Novel and
`Unobvious Technological Feature Because They Recite
`Known Technologies ................................................................12
`
`The Challenged Claims Do Not Solve a Technical
`Problem Using a Technological Solution. ................................15
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED............................................................................16
`
`V.
`
`CLAIM CONSTRUCTION........................................................................16
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE......................17
`
`A.
`
`Claims 1-2 and 6-8 are Anticipated under 35 U.S.C. § 102 By
`International Publication No. WO 91/16691 to Jones (“Jones”) ........17
`
`

`

`B.
`
`C.
`
`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`Claims 1-2 and 6-8 are Obvious under 35 U.S.C. § 103 Over
`the Combination of International Publication No. WO 91/16691
`to Jones (“Jones”) and U.S. Patent No. 5,396,558 to Ishiguro
`(“Ishiguro”) .........................................................................................33
`
`Claims 1-2 and 6-8 are Obvious under 35 U.S.C. § 103 Over
`the Combination of U.S. Patent No. 5,077,792 to Herring
`(“Herring”) and U.S. Patent No. 4,405,829 to Rivest (“Rivest”) .......60
`
`VII. MANDATORY NOTICES .........................................................................75
`
`VIII. CONCLUSION ............................................................................................75
`
`IX. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(B) ............................75
`
`SCHEDULE A........................................................................................................76
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-in-Interest ..........................................................................76
`
`Related Matters....................................................................................76
`
`Lead and Back-Up Counsel and Service Information ........................78
`
`Petitioner has been Sued for Infringement of the ’702 Patent
`and is Not Estopped.............................................................................78
`
`APPENDIX - LIST OF EXHIBITS .....................................................................79
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`
`I.
`
`PRELIMINARY STATEMENT
`
`Pursuant to the provisions of 35 U.S.C. § 321, Section 18 of the Leahy-
`
`Smith America Invents Act (“AIA”), and 37 C.F.R. § 42.300 et seq., the
`
`undersigned Petitioner respectfully requests review of United States Patent No.
`
`5,805,702 to Curry et al. (“the ’702 Patent,” attached as Ex. 1001), issued on
`
`September 8, 1998 and purportedly now assigned to Maxim Integrated Products,
`
`Inc. (“Patent Owner”). Through this Petition, Petitioner demonstrates that the ’702
`
`Patent is subject to Covered Business Method (“CBM”) review and that it is more
`
`likely than not that claims 1, 2, and 6-8 of the ’702 Patent are unpatentable under
`
`35 U.S.C. §§ 102 and 103 over prior art.
`
`The ’702 Patent relates to electronic cash transactions. See Declaration of
`
`Paul C. Clark, DSc. (attached as Ex. 1002), ¶ 29. In exchanging so-called “Digital
`
`Cash” pursuant to a financial transaction, the ’702 Patent describes methods of
`
`cryptographically securing the transaction in order to ensure that the digital
`
`information transferred has real financial value. See, e.g., Ex. 1001 at 7:51-8:7.
`
`Such methods, however, were well known in the field long before the priority
`
`application for the ’702 application was filed. See Ex. 1002, ¶ 28. The use of
`
`public and secret key cryptographic systems for securing financial systems was
`
`already included in multiple industry standards—such as that of the American
`
`Banker’s Association developed in the 1980’s—and by the mid-1990’s numerous
`
`1
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`

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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`such cryptographic systems had been deployed and were in use. See id, ¶ 24, 33.
`
`Accordingly, the claims of the ’702 Patent fail to add anything new or inventive
`
`from what was already known to individuals of skill in the field prior to the filing
`
`of the application for the ’702 Patent. Id., ¶ 33.
`
`As further evidence of this lack of novelty, the Challenged Claims would
`
`benefit from review in an inter partes proceeding under the CBM process because
`
`they issued following examination on only a limited subset of prior art. The
`
`Applicants, for example, failed to submit an information disclosure statement
`
`despite the fact that the object of the Challenged Claims – the electronic transfer of
`
`currency – was known in the art long before the ’702 Patent was filed. For
`
`example, published PCT application WO 91/16691 to Jones (“Jones,” attached as
`
`Ex. 1004) teaches a system for “A value transfer system which allows value to be
`
`transferred between electronic purses,” while U.S. Patent 5,396,558 to Ishiguro
`
`(“Ishiguro,” attached as Ex. 1005) relates to settling financial accounts using
`
`encrypted electronic data. These are but two examples of how the Challenged
`
`Claims issued into a crowded field of prior art – little of which the USPTO had the
`
`opportunity to consider during prosecution.
`
`Moreover, the Challenged Claims perform electronic currency transfer by
`
`applying well-known communication, authentication, and encryption techniques
`
`used in the computing and cryptography fields. The ’702 Patent’s embodiments
`
`2
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`each rely, for example, on the RSA encryption algorithm. RSA encryption,
`
`however, was patented in the early 1980s and its use in banking and commercial
`
`transactions predates the filing of the ’702 Patent. Ex. 1002, ¶ 22; see also U.S.
`
`Patent No. 4,405,820 (“Rivest,” attached as Ex. 1006). Prior to the filing of the
`
`application for the ’702 Patent, a variety of cryptographic methods and algorithms
`
`were already in use for assuring the confidentiality, integrity and authenticity of
`
`transmitted and stored data, and the ’702 Patent merely incorporates known aspects
`
`of those methods into its disclosure. Ex. 1002, ¶¶ 22, 23, 33.
`
`These prior art references form the basis for invalidating the Challenged
`
`Claims under 35 U.S.C. §§102 & 103, and were not considered by the USPTO
`
`during the ’702 Patent’s prosecution.1 If the USPTO had the opportunity to
`
`consider these or similar references alone or in combination with the existing prior
`
`art on electronic currency transfer, the Challenged Claims could not possibly have
`
`issued in their current form. For these reasons (discussed more fully below), the
`
`Challenged Claims are invalid as anticipated and/or obvious under 35 U.S.C. §§
`
`102 & 103 and should be canceled.
`
`1 The Applicants did submit the Herring reference relied upon herein during
`prosecution. However, Herring was never considered in combination with the
`RSA patent (Rivest), discussed below.
`
`3
`
`

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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`BACKGROUND OF THE ’702 PATENT
`
`II.
`
`The ’702 Patent relates to “transferring money or its equivalent
`
`electronically.” Ex. 1001 at 1:6-10. In particular, the patent relates to “provid[ing]
`
`secure data transfers or to authorize monetary transactions.” Id. The ’702 Patent
`
`discloses methods for electronic cash transfer transactions. Ex. 1002, ¶ 29. The
`
`Challenged Claims in particular relate to a method for adding a monetary
`
`equivalent to an electronic module. Id., ¶¶ 29-34.
`
`A.
`
`Financial Transactions in the ’702 Patent
`
`The ’702 Patent describes financial transactions using the claimed method
`
`by comparing them to financial transactions using traditional paper money. See
`
`Ex. 1001 at 8:37-10:5.
`
`1.
`
`Conventional Cash Transactions
`
`The ’702 Patent describes “conventional cash transactions” as a three step
`
`process:2
`
`1.
`
`“The End User first receives Federal Reserve Notes from a bank and
`
`the bank subtracts the equivalent amount of money from the balance of his
`
`account” (Ex. 1001 at 8:39-42);
`
`2 The patent uses the terms “Service Provider”, “End User,” and “Merchant”.
`These terms are explained by the patent itself: “the Service Provider is a bank or
`other financial institution, the End User is the bank’s customer who wishes to use
`the module to make purchases, and the Merchant is the provider of the purchased
`goods or services.” Ex. 1001 at 7:56-60.
`
`4
`
`

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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`“These notes are carried by the End User to the Merchant, where they
`
`2.
`
`are exchanged for goods or services. The Merchant also uses the ‘public key’ of
`
`the notes to verify that they are legitimate” (id. 8:54-57);
`
`3.
`
`“Finally, the Merchant carries the notes to a Bank, where the ‘public
`
`key’ is again examined by the teller. If the notes are legitimate, the Merchant’s
`
`bank account balance is increased by the face value of the notes.” Id. 8:58-61.
`
`The ’702 Patent explains that in this “conventional” cash transaction model,
`
`“[t]he end result of this transaction is that the End User’s bank balance is reduced,
`
`the Merchant’s bank balance is increased by the same amount … and the Federal
`
`Reserve Notes are ready to be reused for some other transaction.” Id. at 8:62-67.
`
`2. Monetary Transactions Using the Module
`
`In comparison to “conventional” cash transactions, the specification also
`
`describes monetary transactions using a module referred to as a “digital cash
`
`purse.” Id. at 9:1-9. The specification discloses a way to engage in the electronic
`
`transference of currency while addressing the “somewhat more complicated”
`
`issues of data duplication and authenticity. Id. In the specification, currency is
`
`electronically placed in a digital cash purse. When the End User wishes to
`
`purchase goods or services from a Merchant, the End User’s digital cash purse
`
`transmits an authorized, non-duplicative equivalent to cash (called a certificate) to
`
`the Merchant in exchange for the goods or services. Id. at 9:25-55. Later, the
`
`5
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`Merchant takes the certificate to the bank, which increases the Merchant’s account
`
`by the amount stored in the certificate. Id. at 9:55-10:5.
`
`Thus, the ’702 specification merely discloses substitution of digital
`
`information in place of traditional hard currency, and discusses the common sense
`
`principle of ensuring that the digital information involved in the transaction
`
`corresponds to, and can be exchanged for, financial value. These basic concepts
`
`were well known in the prior art long before the application for the ’702 patent.
`
`Ex. 1002, ¶¶ 20-25.
`
`B.
`
`The ’702 Patent Uses Well Known Financial Transaction Security
`Protocols
`
`The ’702 Patent’s specification discusses the security protocol employed by
`
`the claimed invention. For example, every embodiment discussed in the
`
`specification references the RSA encryption protocol and the use of public and
`
`private keys used therein. See, e.g., Ex. 1001 at Fig. 4 (“create object(s) for RSA
`
`encryption keys); Fig. 6 (“create object for timekeeping RSA encryption keys”); 2:
`
`37-39; 4:25-28; 5:6-8; 5:49-63; 6:56-58; 9:7-9; 10: 18-27; 12:40-52. Another
`
`security feature disclosed in the ’702 Patent is the use of random numbers, also
`
`known as SALT or “challenge” numbers. See id. at Fig. 7 (“create data packet that
`
`includes a ‘random salt’ and module ID number”); Fig. 8 (“create random salt
`
`number”); Fig. 9; Fig. 10; 1:33-35; 8:12-30; 9:5-7; 10: 18-27. Neither of these
`
`features were novel when the ’702 Patent was invented. For example, the RSA
`
`6
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`protocol – embodied in the Rivest patent, discussed below, was first patented in
`
`1983. Ex. 1002, ¶ 22. Similarly, the use of SALT or random numbers for
`
`communication security was in use years before the ’702 Patent’s application was
`
`filed. Id. at ¶ 23; see also Ex. 1005 (Ishiguro) at 10:15-24.
`
`Indeed, even the idea of adapting these security methods for electronic
`
`financial transactions was known and used in the art long before the ’702 Patent’s
`
`application was filed. Ex. 1002, ¶24. For example, the RSA Patent – Rivest –
`
`expressly mentions the need for encryption with respect to bank systems. Ex. 1006
`
`at 1:16-20. Similarly, International Patent Publication WO 91/16691 to Jones
`
`discloses encrypting information transmitted in digital commercial exchanges
`
`between a purchaser and seller. Ex. 1004 at 2:23-28. Indeed the concept of
`
`integrating financial transactions and data security was so clear in the art that many
`
`developers of digital cash purses in the early and mid-1990s were specifically
`
`tailoring their digital cash purses to use encryption keys. See, e.g., Ex. 1002,
`
`¶¶ 24-25. Thus, adapting encryption methods to a digital currency exchange
`
`method had already been done by the time the ’702 Patent’s application was filed.
`
`C.
`
`The Challenged Claims of the ’702 Patent
`
`Claim 1 of the ’702 Patent is directed to one embodiment of the invention,
`
`and provides a method for adding a monetary equivalent to an electronic module
`
`(digital cash purse). Claim 1 recites the following steps:
`
`7
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`

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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`1. A method for adding a monetary equivalent to an electronic module,
`comprising the steps of:
`a. placing the module in communication with an electronic device;
`b. indicating an amount requested to said electronic device;
`c. communicating a random number from said module to said electronic
`device;
`d. combining said random number and said amount requested thereby
`creating a first data packet in said electronic device;
`e. encrypting said first data packet with a first key thereby creating a
`signed certificate in said electronic device;
`f. communicating said signed certificate from said electronic device to
`said module;
`g. decrypting said signed certificate in said module with a second key
`thereby creating a decrypted random number and a decrypted amount
`requested;
`h. comparing said random number with said decrypted random number
`and determining if they match in said module; and
`i. adding said decrypted amount requested to a money register in said module.
`
`The embodiment of Claim 1 is shown in Figure 8 of the specification:
`
`8
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`
`Ex. 1001 at Fig. 8; see also Ex. 1002, ¶ 31. The specification refers to this
`
`embodiment as the “Digital Cash Replenishment” embodiment. Ex. 1001 at 10:18-
`
`53; Ex. 1002, ¶ 31. Challenged Claims 2 and 6-8 are each dependent on Claim 1.
`
`As explained in further detail below, the embodiment of Fig. 8 and the Challenged
`
`Claims fail to add anything new or inventive from what was already known in the
`
`art prior to the priority date of the ’702 Patent. Ex. 1002, ¶¶ 32-33.
`
`D.
`
`Prosecution History of the ’702 Patent
`
`The application that led to the ’702 Patent was filed on January 31, 1996,
`
`and claims priority to U.S. Provisional Patent App. 60/004,510 (filed Sep. 29,
`
`1995). During prosecution of the ’702 Patent’s application, the Applicants failed
`
`9
`
`

`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`to disclose any prior art to the Examiner and, aside from a restriction requirement,
`
`there were no substantive Office Actions. See Ex. 1007 at 244MAX001380-88;
`
`244MAX001395-98. Consequently, none of the grounds for invalidity discussed
`
`below were ever considered by the USPTO during the ’702 Patent’s original
`
`examination.
`
`III. GROUNDS FOR STANDING
`
`Groupon has standing to bring this CBM petition because the Challenged
`
`Claims qualify as covered business methods and are not directed to technological
`
`inventions. Further, as detailed below, each Challenged Claim is invalid under at
`
`least one or more of 35 U.S.C. §§ 102 and 103. Accordingly, as required by 35
`
`U.S.C. § 324(a), it is more likely than not that at least one of the Challenged
`
`Claims is unpatentable.
`
`A.
`
`The Challenged Claims Are Each Directed to a Covered Business
`Method
`
`The America Invents Act (“AIA”) defines a CBM patent as “a patent that
`
`claims a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service . . . .” AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The USPTO
`
`has stated that the AIA’s legislative history demonstrates that “financial product or
`
`service” should be “interpreted broadly,” encompassing patents “claiming activities
`
`that are financial in nature, incidental to a financial activity or complementary to a
`
`10
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`financial activity.” Transitional Program for Covered Business Method Patents--
`
`Definitions of Covered Business Method Patent and Technological Invention; Final
`
`Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). This Board has explained that
`
`based on the legislative history “[t]he term financial is an adjective that simply
`
`means relating to monetary matters.” SAP Am., Inc. v. Versata Dev. Grp., Inc.,
`
`CBM2012-00001, Paper 36 at 23 (P.T.A.B. Jan. 9, 2013).
`
`As discussed above, the ’702 Patent relates to a financial service and product
`
`for electronically moving currency. Each of the Challenged Claims specifically
`
`relate to filling a digital cash purse with a monetary equivalent (Ex. 1001 at 29:57-
`
`58), and this embodiment is described in the ’702 Patent’s specification in the
`
`sections entitled “Digital Cash Dispenser” and “Digital Cash Replenishment.” Id.
`
`at 7:51-10:54.
`
`B.
`
`The Challenged Claims Are Not Directed to a “Technological
`Invention”
`
`The AIA excludes “patents for technological inventions” from the definition
`
`of CBM patents. AIA § 18(d)(2). To determine when a patent is for a
`
`technological invention, the PTAB considers two factors. First, it considers
`
`whether the claimed subject matter as a whole recites a novel and unobvious
`
`technological feature. Second, it considers whether the claimed subject matter
`
`solves a technical problem using a technical solution. 37 C.F.R. § 42.301. The
`
`11
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`Challenged Claims of the ’702 Patent fail both factors and are therefore not
`
`technological inventions.
`
`1.
`
`The Challenged Claims Do Not Recite a Novel and
`Unobvious Technological Feature Because They Recite
`Known Technologies
`
`The PTAB has held that a claim does not recite a novel and unobvious
`
`technological feature if the claim merely recites known technologies or the use of
`
`known technologies. See, e.g., Office Patent Trial Practice Guide; Rule, 77 Fed.
`
`Reg. 48,756, 48,764 (Aug. 14, 2012); see also Apple Inc. v. Sightsound Techs.,
`
`LLC, CBM2013-00019, Paper 17 at 14-16 (P.T.A.B. Oct. 8, 2013); see also
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 10 at 7-
`
`8 (P.T.A.B. Jan. 25, 2013). Arguing that the claim itself is novel or nonobvious is
`
`not sufficient where the claim recites or uses known technologies.
`
`Here, the Challenged Claims involve a transaction between an End User’s
`
`module and the bank’s electronic device. The Claims limit neither component to a
`
`particular structure, and neither structure does more than use known technologies.
`
`Electronic Device
`
`As to the electronic device, its structure is never directly discussed in the
`
`specification. Rather, it is discussed only to the extent that it must perform the
`
`enumerated steps, namely: “combining said random number and said amount
`
`requested thereby creating a first data packet;” “encrypting said first data packet
`
`12
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`…”; and “communicating said signed certificate.” Figure 8 provides an example
`
`of these steps:
`
`Id. at Fig. 8. Each of these steps involve computing operations that were long
`
`known before the ’702 Patent’s application was filed.3 Thus, because the structure
`
`of the electronic device and the operations it performs are known technology, the
`
`electronic device as a whole is a known technology as well.
`
`Module
`
`Similarly, the module of the Challenged Claims is also a known technology
`
`used by the claims. Figure 1 shows one embodiment of the module that simply
`
`uses known computing hardware such as a microprocessor, input/output buffer,
`
`memory, clock, and energy circuitry:
`
`3 For example, see United States Patents 5,396,558; 5,077,792; and 4,405,829, and
`see International Publication Number WO 91/16691, which disclose creating,
`encrypting, and communicating data packets. See also Ex. 1002, ¶¶ 20-28 & 33.
`13
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`
`Ex. 1001 at Fig. 1; see also id. at 3:3-13 (discussing Figure 1). This is, however,
`
`just one embodiment, and as with electronic device, the Challenged Claims do not
`
`limit the structure of the module, but only the steps it performs: indicating an
`
`amount requested; communicating a random number; decrypting a signed
`
`certificate; comparing the random number with said decrypted random number;
`
`adding the decrypted amount requested to the money register. However these
`
`steps, as with the electronic device, are nothing new; they simply perform
`
`computing operations long known. For example, the specification discloses
`
`performing encryption using the RSA protocol:
`
`Id. at Fig. 4; see also Ex. 1002, ¶¶ 20-28. This protocol, however, had been known
`
`decades before the ’702 Patent was invented, and the RSA patent to Rivest
`
`(discussed below) was filed in 1977. See Ex. 1006. The concept of using
`
`14
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`encrypted data packets for secured data communications (the “signed certificate”
`
`of the Challenged Claims) reaches back even further. Ex. 1002, ¶¶ 20-28.
`
`Accordingly, the module is simply another known technology used by the claims.
`
`2.
`
`The Challenged Claims Do Not Solve a Technical Problem
`Using a Technological Solution.
`
`The second factor in determining whether a claim is a technological
`
`invention is whether the claim solves a technical problem using a technological
`
`solution. This prong requires a review of the patent’s specification to identify the
`
`problem the claimed invention purportedly solves. See Liberty Mut. Ins. Co. v.
`
`Progressive Cas. Ins. Co., No. CBM2012-00003, Paper No. 15, at 14-15 (P.T.A.B.
`
`Feb. 12, 2013). If the problem to be solved is non-technical or the specification
`
`uses well-known technology to solve the problem, the patent does not solve a
`
`technical problem with a technical solution. See, e.g., Interthinx, Inc. v. Corelogic
`
`Solutions, LLC, No. CBM2012-00007, Paper No. 15, at 18 (P.T.A.B. Jan. 31, 2013)
`
`(finding no technical solution where claims recited a “computer implemented”
`
`method that used “known techniques”). As discussed above, the specification of
`
`the ’702 Patent uses well-known technology to solve a financial problem:
`
`increasing security of transferring funds between a merchant and a customer. Ex.
`
`1001 at 1:19-20; Ex. 1002, ¶¶ 20-28. Distilled to its core, the Challenged Claims
`
`simply relate to ways to move currency electronically, which is a financial
`
`15
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`problem. To the extent any “technology” is involved, the Challenged Claims
`
`employ previously-known technology. Ex. 1002, ¶¶ 20-28 & 33.
`
`Because the Challenged Claims are directed to a covered business method
`
`and are not directed to a technological invention, the Challenged Claims are
`
`amenable to CBM review.
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`Petitioner respectfully requests review under 35 U.S.C. § 321 and AIA § 18
`
`of claims 1, 2, and 6-8 of the ’702 Patent, and the cancellation of these claims as
`
`unpatentable. The grounds of relief Petitioner requests are expressly limited to a
`
`determination that each of claims 1, 2, and 6-8 of the ’702 Patent be canceled as
`
`invalid and unpatentable as follows:
`
`Description
`Ground Claims
`1
`1, 2, and 6-8 Anticipated under § 102 by Jones
`2
`1, 2, and 6-8 Obvious under 35 U.S.C. § 103 over Jones and Ishiguro
`3
`1, 2, and 6-8 Obvious under 35 U.S.C. § 103 over Herring and
`Rivest
`
`The claim construction, reasons for unpatentability, and specific evidence
`
`supporting this request are detailed below.
`
`V.
`
`CLAIM CONSTRUCTION
`
`Claim terms are given their ordinary and accustomed meaning as understood
`
`by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
`
`(Fed. Cir. 2005) (en banc). A patent claim subject to post-grant review receives
`
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`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`the “broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.300(b).
`
`In the concurrent court litigation, the District Court construed certain claims.
`
`For purposes of the prior art analysis here, Petitioner has applied the district court’s
`
`constructions as set forth below:
`
`Term
`“money register”
`
`“decrypted amount requested”
`
`“adding said decrypted amount
`requested to a money register”
`“monetary equivalent”
`
`Construction
`an object that is used to represent money or
`some other form of credit
`a decrypted version of the amount
`requested
`increasing the amount of a money register
`by the decrypted amount requested
`Is a limitation
`
`“signed certificate”
`
`An encrypted certificate
`
`See Ex. 1008 (Claim Construction Order); see also Ex. 1002, ¶¶ 35-36. In
`
`applying these constructions, Petitioner does not waive any right to appeal these
`
`constructions pursuant to the district court litigation.
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A.
`
`Claims 1-2 and 6-8 are Anticipated under 35 U.S.C. § 102 By
`International Publication No. WO 91/16691 to Jones (“Jones”)
`
`Jones was published on October 31, 1991 and therefore qualifies as §102(b)
`
`prior art for the ’702 Patent. Jones discloses a value transfer system that allows for
`
`monetary values to be exchanged between electronic purses using a secure
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`

`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`connection. Ex. 1004 (Jones) at Abstract. The secure connection is established
`
`through the use of public and private keys. Id. at 13:15-29; 14:3-4, 12-17.
`
`The following claim chart explains in further detail how Jones discloses each
`
`and every element of claims 1-2 and 6-8 of the ’702 Patent. The below claim chart
`
`identifies exemplary disclosure of Jones relevant to the corresponding claim
`
`elements, and is not meant to be exclusive. This chart is further discussed in
`
`paragraphs 37-39 of the Clark Declaration (including the chart at ¶ 39). See Ex.
`
`1002, ¶¶ 37-39.
`
`’702 Patent
`1. A method for
`adding a monetary
`equivalent to an
`electronic module,
`comprising the
`steps of:
`
`Jones
`Jones discloses a method for adding a monetary equivalent
`(e.g., value) to an electronic module (e.g., receiving purse).
`See, e.g., Ex. 1004 at Abstract; 10:6-24:
`
`“A value transfer system which allows value to be transferred
`between electronic purses comprises computer which controls
`the loading of purses with value and the redemption of value
`from purses, a specific build purse or purses and a value meter
`securely linked thereto which registers the total net value
`issued to the build purse or purses. Draw-down of value and
`redemption of value transactions are effected with the bulk
`purses.” (Abstract).
`
`“Each bank has a bulk purse lc, 2c, 3c which is connected to
`the respective value meter and which has a memory with a
`purse value record. Terminals 5 are connected by telephone
`selectively to computers 1, 2 and 3. . . . By making appropriate
`requests at the keyboard of the terminal, a consumer may be
`connected to the computer of his bank, 1, 2 or 3 and may
`request a value record to be loaded to his purse. If the bank
`authorises the request, the bulk purse is instructed to institute a
`draw-down of value to load purse value record 7 with the value
`
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`

`

`’702 Patent
`
`a. placing the
`module in
`communication
`with an electronic
`device;
`
`b. indicating an
`amount requested
`to said electronic
`device;
`
`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`Jones
`requested. The card is now ready for use.”(10:6-24)
`Jones discloses placing the module (e.g., receiving purse) in
`communication with an electronic device (e.g., sending
`purse). See, e.g., Ex. 1004 at 7:19-22; 13:33-14:1.
`
`“Purses may communicate with each other for the transfer of
`values by means of communication devices. These may have
`slots for two purses or may each hold a purse and communicate
`with each other by infra-red light or electromagnetic radiation,
`for example.” (7:19-22).
`
`“Two-way communication between the purses is established,
`perhaps locally by direct connection or by infra-red link or the
`like or remotely by modem and telephone” (13:33-14:1).
`Jones discloses indicating an amount (e.g., value V)
`requested to said electronic device (e.g., sending purse).
`See, e.g., Ex. 1004 at 4:5-10; 10:6-8; 10:18-24; 10:25-36
`16:32-34; Fig. 4; see also 14:9-17.
`
`“. . . the microprocessors being programmed so that in each
`off-line transaction the purse value record in the sending purse
`is decreased by a chosen and variable transaction value and the
`purse value record in the receiving purse is increased by the
`same transaction value.” (4:5-10).
`
`“Each bank has a bulk purse lc, 2c, 3c which is connected to
`the respective value meter and which has a memory with a
`purse value record.” (10:6-8).
`
`“The cards have contacts 8, whereby the cards can interact with
`terminals 5 via card readers 9. By making appropriate requests
`at the keyboard of the terminal, a consumer may be connected
`to the computer of his bank, 1, 2 or 3 and may request a value
`record to be loaded to his purse. If the bank authorises the
`request, the bulk purse is instructed to institute a draw-down of
`value to load purse value record 7 with the value requested.
`The card is now ready for use.” (10:18-24).
`
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`

`’702 Patent
`
`c. communicating
`a random number
`from said module
`to said electronic
`device;
`
`Covered Business Method Patent Review
`United States Patent No. 5,805,702
`Jones
`“Further electronic purses are contained in terminals 10, 11
`which are equipped with IC card readers 9, located at different
`points-of-sale. To use his card the consumer presents it to the
`retailer where it is inserted into reader 9. The required value of
`the transaction is keyed in and by agreement the total held in
`the purse value record of the purse 6 is reduced by the amount
`of the transaction. The purse value record of the purse held
`within the termin