`
`
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`Attorney Docket No.:
`
`
`109879-0001-801
`
`Customer No. 28120
`
`Petitioner: Branch Banking and
`
` Trust Company
`
`Inventors: Stephen M. Curry, Donald W.
` Loomis, Michael L. Bolan
`
`United States Patent No.: 5,949,880
`
`Formerly Application No.: 08/978,798
`Issue Date: Sept. 7, 1999
`
`Filing Date: Nov. 26, 1997
`Former Group Art Unit: 2766
`Former Examiner: Gail O. Hayes
`
`For: Transfer of Valuable Information Between a Secure Module and Another
`Module
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`
`I, Vijay K. Madisetti, hereby declare under penalty of perjury:
`I.
`1.
`
`QUALIFICATIONS
`
`I am a Professor of Electrical and Computer Engineering at Georgia Institute
`
`of Technology (“Georgia Tech”) in Atlanta, GA.
`
`2.
`
`I received a Bachelor of Technology
`
`in Electronics and Electrical
`
`Communications Engineering from the Indian Institute of Technology (IIT) in 1984.
`
`I received my Ph.D. in Electrical Engineering and Computer Sciences (EECS) from
`
`the University of California, Berkeley in 1989. I am currently a full Professor at
`
`Georgia Tech, and I have been on the faculty of Georgia Tech since 1989. I have
`
`
`
`1
`
`BB&T Exhibit 1018 Page 00001
`
`Maxim Exhibit 2006 - Groupon, CBM2014-00090 – Page 2006-001
`
`
`
`
`
`
`authored or co-authored over 100 reference articles in the area of electrical
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`engineering. I have also authored, co-authored, or edited several books in the areas of
`
`computer engineering, communications, signal processing, communications, and
`
`computer engineering, including VLSI Digital Signal Processors (1995) and The
`
`Digital Signal Processing Handbook (First & Second Editions) (1998, 2012).
`
`3.
`
`I have been active
`
`in research
`
`in the area of wireless and mobile
`
`communications, and computer engineering, including digital content (video/voice)
`
`delivery, and some of my recent peer-reviewed publications in this area include: (i) J.
`
`Kim and Vijay Madisetti, Adaptive Mobility Management in Wireless Networks, in
`
`Electronics Letters, July 1998, pp. 1453-1455; (ii) Mustafa Turkboylari & Vijay K.
`
`Madisetti, Effect of Handoff Delay on the System Performance of TDMA Cellular
`
`Systems, Proceedings of the Fourth IEEE Conference on Mobile and Wireless
`
`Communications Network 411-15 (Sept. 9-11, 2002); (iii) Loran A. Jatunov & Vijay
`
`K. Madisetti, Computationally-Efficient SNR Estimation for Bandlimited Wideband
`
`CDMA Systems, 5 IEEE Transactions on Wireless Communications, no. 12 (2006) at
`
`3480-91; and (iv) Nimish Radia, Ying Zhang, Mallik Tatipamula & Vijay K. Madisetti,
`
`Next Generation Applications on Cellular Networks: Trends, Challenges, and
`
`Solutions, 100 Proceedings of the IEEE, no. 4 (April 2012) at 841-54.
`
`4.
`
`I served as a consultant for wireless technologies for Johns Hopkins’ Applied
`
`Physics Laboratory between 2004 and 2005.
`2
`
`
`
`Page 00002
`
`Page 2006-002
`
`
`
`
`
`
`5.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`I designed floating point chipsets, based on the MIL-STD-1750A family of
`
`microprocessors for secure weapons guidance, navigational, and GPS applications,
`
`used in several Department of Defense programs in the mid-1990s.
`
`6.
`
`I designed software applications for several commercial mobile phones in the
`
`early-2000 time frame for Ericsson, one of the world’s leading mobile phone
`
`manufacturers. I am also familiar with various data messaging networks, such as
`
`Internet Protocol, SS7, USSD, GPRS, synchronous and asynchronous data, and
`
`UMTS.
`
`7.
`
`I have developed software for encryption for certain commercially available
`
`mobile phones in the early 2000 timeframe, specifically for the GSM A5 encryption
`
`standards, in collaboration with a leading international mobile phone and base station
`
`manufacturer.
`
`8.
`
`In conjunction with BPL Telecom (India), through a joint venture called Soft
`
`Networks (SN), LLC in Atlanta, in the late 1990s and early 2000s, I collaborated with
`
`BPL Telecom’s engineers to support BPL Telecom’s mobile and wireless services
`
`offerings in India, through design and development of micropayment services for
`
`mobile phones, design of smartphones, and telecom customer billing and fraud
`
`detection algorithms, which included establishment of secure sessions and privileged
`
`access to customer account and billing data.
`
`
`
`3
`
`Page 00003
`
`Page 2006-003
`
`
`
`
`
`
`9.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`In the past few years, I have provided services to content providers in the
`
`defense market in the area of security certification and accreditation of federal
`
`information systems, evaluating and designing security certification programs for
`
`defense contractors.
`
`10.
`
`I was awarded the 2006 Frederick Emmons Terman Medal for my
`
`contributions to electrical engineering by the American Society of Engineering
`
`Education, and I also received Georgia Tech’s Outstanding Doctoral Advisor Award
`
`in 2001.
`
`11.
`
`I also have significant experience in designing and implementing chips and
`
`software systems using various source code languages, including C, assembly, and
`
`VHDL. In 2000, I published a book entitled Vijay K. Madisetti, VHDL: Electronics
`
`Systems Design Methodologies and Interactive Tutorial (2000), and I was also
`
`awarded the VHDL International Best Ph.D. Dissertation Advisor Award in 1997.
`
`12.
`
`I am a Fellow of the Institute of Electrical and Electronics Engineering
`
`(“IEEE”), which signifies the highest professional standing in my research and
`
`educational community.
`
`13. Attached as Appendix C is a true and correct copy of my curriculum vitae and a
`
`list of my recent testifying experience.
`
`
`
`4
`
`Page 00004
`
`Page 2006-004
`
`
`
`
`
`
`14.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`I have been retained on behalf of Petitioner and real party in interest, Branch
`
`Banking and Trust Company (“Petitioner” or “BB&T”), to offer opinions regarding
`
`the understanding of a person of ordinary skill in the art (discussed below) as it relates
`
`to the identified patent assigned to Maxim Integrated Products, Inc. (“Maxim”), as
`
`well as other references presented to me by counsel for Petitioner.
`
`15.
`
`I am being compensated at a rate of $450 per hour for my services, exclusive of
`
`any third-party expert service fees. My compensation does not depend on the
`
`outcome of this Covered Business Method Patent Review or concurrent litigation
`
`between Petitioner and Maxim in the U.S. District Court for the Western District of
`
`Pennsylvania.
`
`II. MATERIALS CONSIDERED
`16.
`In developing my opinions below relating to Maxim’s ’880 Patent, I have
`
`considered the following materials:
`
` United States Patent No. 5,949,880 (the “’880 Patent”) (Ex. 1001);
`
` United States Patent No. 5,949,880 File History (Ex. 1002);
`
` United States Patent No. 4,839,504, filed on July 17, 1987 and issued on June
`13, 1989, to Nakano (“Nakano”) (Ex. 1003);
`
` United States Patent No. 5,221,838, filed on October 20, 1992 , and issued on
`June 22, 1993, to Gutman et al. (“Gutman”) (Ex. 1004);
`
`
`
`5
`
`Page 00005
`
`Page 2006-005
`
`
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
` Maxim Integrated Products, Inc.’s Answer to Complaint for Declaratory
`Judgment and Counterclaims (ECF No. 46), In re: Maxim Integrated Prods., Inc.,
`MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1005);
`
` United States Patent No. 5,940,510 (Ex. 1006);
`
` Joint Disputed Claim Terms Chart (ECF No. 580-1), In re: Maxim Integrated
`Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1008);
`
` Maxim’s Corrected Opening Claim Construction Brief (ECF No. 634), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex.
`1009);
`
` Opposing Parties’ Responsive Claim Construction Brief (ECF No. 642), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex.
`1010);
`
` Maxim’s Reply Claim Construction Brief (ECF No. 651), In re: Maxim Integrated
`Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1011);
`
` Special Master’s Provisional Claim Constructions To Facilitate Oral Hearing
`(ECF No. 670), In re: Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`00244 (W.D. Pa.) (Ex. 1013);
`
` Joint Disputed Claim Terms Chart (ECF No. 677-1), In re: Maxim Integrated
`Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1014);
`
` Declaration of Dr. J.D. Tygar (ECF No. 634-35), In re: Maxim Integrated Prods.,
`Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1015);
`
`6
`
`
`
`
`
`
`
`Page 00006
`
`Page 2006-006
`
`
`
`
`
`
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
` Declaration of Donald Alpert (ECF No. 634-37), In re: Maxim Integrated Prods.,
`Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1016);
`
` Declaration of Dr. Stuart G. Stubblebine (ECF No. 642-24), In re: Maxim
`Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (Ex. 1017);
`
` Transcript of Deposition of Dr. Stuart G. Stubblebine (Aug. 16, 2013), In re:
`Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.)
`(available at ECF No. 651-3);
`
` Transcript of Deposition of Donald Alpert (July 26, 2013), In re: Maxim
`Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244 (W.D. Pa.) (available
`at ECF No. 642-27).
`
`17.
`
`I have been informed that BB&T and Maxim are involved in concurrent
`
`litigation in the District Court for the Western District of Pennsylvania involving
`
`Maxim’s claims of infringement of the ’880 Patent. I understand that Maxim has
`
`accused BB&T, other banks, and retail companies of infringing claims 1-4 of the ’880
`
`Patent. I also understand that Maxim has asserted other related patents in the same
`
`litigation.
`
`18. According to Maxim’s counterclaims against BB&T (Ex. 1005) in the
`
`concurrent litigation, Maxim has accused BB&T’s Mobile App (a software application
`
`for smartphones) of infringing the ’880 Patent. Maxim contends that when banking
`
`transactions are performed with a software application, such as BB&T’s Mobile App,
`
`
`
`7
`
`Page 00007
`
`Page 2006-007
`
`
`
`
`
`
`on a smartphone (including iPhone, BlackBerry, and Android devices), claims 1-4 of
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`the ’880 Patent are infringed. Ex. 1005 at 9-10.
`
`19. This declaration is based on information currently available to me. I reserve
`
`the right to supplement my opinions in the future to respond to any arguments that
`
`Patent Owner Maxim may raise and to take into account new information as it
`
`becomes available to me.
`
`III. LEVEL OF ORDINARY SKILL FOR THE ’880 PATENT
`20.
`I have read Maxim’s ’880 Patent, which states that it was filed on November
`
`26, 1997 and issued on September 7, 1999, and that it claims priority to an application
`
`filed on January 31, 1996.
`
`21. The ’880 Patent purports to cover methods of transferring units of exchange
`
`(or value data) between a secure module and another module. Ex. 1001 at 1:22-29,
`
`Abstract, claims 1-4. The challenged claims generally recite methods of transferring
`
`units of exchange, involving the steps of transferring value data between three
`
`successive modules or devices, performing a calculation, and then transferring the
`
`resulting value back to the original module.
`
`22.
`
`I understand that the ’880 Patent must be analyzed from the perspective of a
`
`person of ordinary skill in the art (“POSITA”). I understand that the factors that may
`
`be considered in determining the ordinary level of skill in the art include: (1) the levels
`
`
`
`8
`
`Page 00008
`
`Page 2006-008
`
`
`
`
`
`
`of education and experience of persons working in the field; (2) the types of problems
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`encountered in the field; and (3) the sophistication of the technology. I understand
`
`that a person of ordinary skill in the art is not a specific real individual, but rather a
`
`hypothetical individual having the qualities reflected by the factors above.
`
`23. The field of art relevant to the ’880 Patent is computer engineering, electrical
`
`engineering, or computer science. In my opinion, a person of ordinary skill in the art
`
`pertinent to the ’880 Patent, as of January 1996, would have a bachelor’s degree or
`
`equivalent in the field of computer engineering, electrical engineering, or computer
`
`science, and at least two to three years of experience relating to computer systems
`
`engineering and secure data transactions. Since before the time in question, I have
`
`possessed these qualifications.
`
`24.
`
`I base this opinion on the level of technical training I believe is required to
`
`reduce to practice the concepts described in the ’880 Patent and the cited prior art,
`
`and my own experience in the pertinent art during the time in question. I have also
`
`reviewed the statements regarding the ordinary level of skill in the relevant art
`
`expressed by experts in the concurrent litigation, as stated in declarations filed in
`
`connection with claim construction briefing. See Tygar Decl. ¶¶ 22-24 (Ex. 1015);
`
`Alpert Decl. ¶¶ 3-4 (Ex. 1016); Stubblebine Decl. ¶ 26 (Ex. 1017). Based on my
`
`training and experience, I concur with Dr. Stubblebine’s statements regarding the level
`
`of ordinary skill in the art.
`
`
`
`9
`
`Page 00009
`
`Page 2006-009
`
`
`
`
`
`
`25.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`For purposes of this Declaration, in general, and unless otherwise noted, my
`
`statements and opinions below, such as those regarding my experience and the
`
`understanding of a person of ordinary skill in the art generally (and specifically related
`
`to the references I consulted herein), reflect the knowledge that existed in the field as
`
`of January 1996.
`
`IV. CLAIM CONSTRUCTION
`A.
`I am a technical expert, and do not offer any legal opinions. However, I have
`
`Legal Principles
`
`26.
`
`been informed of the framework applied for determining claim construction,
`
`invalidity, and related matters. I applied this framework in developing my technical
`
`opinions expressed in this declaration.
`
`27.
`
`I understand the first step in determining whether or not a patent claim is valid
`
`is to properly construe the claims. In this declaration, I provide opinions regarding
`
`construction of certain terms, as part of my analysis of the challenged claims.
`
`28.
`
`I also understand that, for purposes of this proceeding, the claims must be
`
`given their broadest reasonable interpretation in view of the patent specification. I
`
`also understand that the claims must be supported by the specification.
`
`
`
`10
`
`Page 00010
`
`Page 2006-010
`
`
`
`
`
`
`29.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`I have been informed that the preamble of a claim limits that claim if it is
`
`necessary to give life, meaning, and vitality to the claim, such as where claim terms
`
`refer back to the preamble.
`
`30.
`
`I have also been informed that claim construction for certain terms of the ’880
`
`claims is being disputed in the concurrent litigation (where the broadest reasonable
`
`interpretation—which applies in this proceeding—is not applied), that the parties
`
`have submitted claim construction positions and briefs, and that the court has not yet
`
`construed the disputed claims. Accordingly, I reserve the right to supplement my
`
`opinions in the future to respond to any new claim construction arguments or orders
`
`that may arise in the concurrent litigation.
`
`31. As explained above, the priority application for the ’880 Patent was filed in
`
`1996. In the co-pending litigation, Maxim contends that the ’880 claims are infringed
`
`by modern smartphones and software applications. See Ex. 1005 at 9-10.
`
`Accordingly, I understand that Maxim contends that the ’880 claims can be construed
`
`at least broadly enough to read on the accused devices.
`
`Constructions
`
`B.
`For purposes of this declaration, I have been asked to provide opinions
`
`32.
`
`regarding the claim terms below. For all remaining claim terms, I have assumed their
`
`plain and ordinary meaning.
`
`
`
`11
`
`Page 00011
`
`Page 2006-011
`
`
`
`
`
`
`33.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`I have been informed that, in concurrent litigation, a claim construction Special
`
`Master has issued provisional constructions for some disputed claim terms, including
`
`certain terms in the ’880 Patent. See Ex. 1013. I have also been informed that these
`
`provisional constructions are not final and have not been adopted by the Special
`
`Master or the Court.
`
`34.
`
`“electronically transferring units of exchange”: It is my opinion that this
`
`term should be construed under its broadest reasonable interpretation to mean
`
`“moving from a source to a recipient electronic data that represents money, credit, or
`
`other items and can be exchanged as payment for goods or services.” This is how a
`
`POSITA would have understood this term at the time in view of the specification.
`
`The specification of the ’880 Patent states repeatedly that the purpose of the
`
`invention is to transfer digital cash or information that can be used as payment. For
`
`example, the Summary of the Invention states: “The present invention is an
`
`apparatus, system and method for communicating a cash equivalent electronically to
`
`and from a portable module. The portable module can be used as a cash equivalent
`
`when buying products and services in the market place.” Ex. 1001 at 1:59-2:5, 1:20-
`
`26, 1:28-55, 7:13-8:30, 8:31-9:16, Figs. 4, 5. The specification thus makes clear that
`
`“transferring units of exchange” is necessary to give life, meaning, and vitality to the
`
`challenged claims (which I have been informed is a standard that has been applied to
`
`
`
`12
`
`Page 00012
`
`Page 2006-012
`
`
`
`
`
`
`determine whether terms in a claim’s preamble constitute substantive claim
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`limitations).
`
`35.
`
`“initiating communication”: It is my opinion that this term should be
`
`construed under
`
`its broadest
`
`reasonable
`
`interpretation
`
`to mean “starting
`
`communication.” This is how a POSITA would have understood this term at the
`
`time in view of the specification. See Ex. 1001 at 2:54-58, 5:12-16. In litigation,
`
`Maxim has construed this term as: “plain meaning; if construction is required: starting
`
`communication.” Ex. 1009 at 49-50. Accordingly, this definition is also consistent
`
`with Maxim’s definition.
`
`36.
`
`“module”: It is my opinion that this term should be construed under its
`
`broadest reasonable interpretation to mean any “assembly capable of storing units of
`
`exchange or value data.” This is how a POSITA would have understood this term at
`
`the time in view of the specification, which describes devices that are capable of
`
`storing units of exchange. See Ex. 1001 at 1:25-28, 2:35-37.
`
`37.
`
`“electronic device”: It is my opinion that this term should be construed under
`
`its broadest reasonable interpretation to mean any “assembly comprising electronic
`
`components.” This is how a POSITA would have understood this term at the time in
`
`view of the specification, which refers to a device that can be “any of an unlimited
`
`number of devices.” Ex. 1001 at 2:35-45, 3:41-50.
`
`
`
`13
`
`Page 00013
`
`Page 2006-013
`
`
`
`
`
`
`38.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`“passing”: It is my opinion that this term should be construed under its
`
`broadest reasonable interpretation to mean “transferring.” This is how a POSITA
`
`would have understood this term at the time in view of the specification, which
`
`repeatedly uses the word “transfer” in connection with the claimed invention. For
`
`example, the Title of the ’880 Patent includes “Transfer of Valuable Information,” and
`
`claim 1 recites “transferring units of exchange.” Ex. 1001 at Title, Figs. 1, 4, 5, 7:12-
`
`9:16 (for example, stating at 8:19-21, “no value is gained or lost. Value that was in the
`
`portable module 102 was decreased by the same amount value was added to the
`
`secure module 108.”).
`
`39.
`
`“value datum”: It is my opinion that this term should be construed under its
`
`broadest reasonable interpretation to mean “electronic data that represents money,
`
`credit, or other items and can be exchanged as payment for goods or services.” This
`
`is how a POSITA would have understood this term at the time in view of the
`
`specification, which refers repeatedly to transfer of digital cash or information that
`
`can be used as payment. See Ex. 1001 at claim 1, 1:25-28, 7:23-27, 8:2-7.
`
`40.
`
`“storing”: It is my opinion that this term should be construed under its
`
`broadest reasonable interpretation to mean “placing into persistent memory.” This is
`
`how a POSITA would have understood this term at the time in view of the
`
`specification. The ’880 Patent refers repeatedly to storing, carrying, and transferring
`
`units of exchange, which a POSITA would understand to be impossible without the
`14
`
`
`
`Page 00014
`
`Page 2006-014
`
`
`
`
`
`
`use of persistent memory. See Ex. 1001 at 1:23-19, 3:57-65, 8:12-13. Maxim’s
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`litigation construction of this term is: “plain meaning; if construction is required:
`
`placing into memory.” Ex. 1009 at 35. This construction is unreasonably broad
`
`because it fails to account for the fact that persistent memory is required to perform
`
`the recited functions of the claimed inventions.
`
`41.
`
`“discontinuing communication”: It is my opinion that this term should be
`
`construed under its broadest reasonable interpretation to mean “ending or ceasing
`
`communication, including by exiting an operation or session.” This is how a POSITA
`
`would have understood this term at the time in view of the specification. See Ex. 1001
`
`at 2:54-58, 5:12-16.
`
`42.
`
`“represents a monetary equivalent”: It is my opinion that this term (in
`
`dependent claim 2) should be construed under its broadest reasonable interpretation
`
`to mean “has a monetary value.” This is how a POSITA would have understood this
`
`term at the time in view of the specification. See Ex. 1001 at 2:35-37, 2:38-45, 7:23-27,
`
`8:2-7. In litigation, Maxim has construed this term as: “plain meaning; if construction
`
`is required: represents a value equivalent to a monetary amount.” Ex. 1008 at 19.
`
`Accordingly, this definition is also consistent with Maxim’s definition.
`
`43.
`
`For convenience, these claim constructions are summarized below:
`
`Claim Construction
`Term
`electronically transferring units moving from a source to a recipient electronic data
`15
`
`
`
`Page 00015
`
`Page 2006-015
`
`
`
`
`
`
`Term
`of exchange
`
`initiating communication
`module
`
`electronic device
`passing
`value datum
`
`storing
`discontinuing communication
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`Claim Construction
`that represents money, credit, or other items and
`can be exchanged as payment for goods or services
`starting communication
`assembly capable of storing units of exchange or
`value data
`assembly comprising electronic components
`transferring
`electronic data that represents money, credit, or
`other items and can be exchanged as payment for
`goods or services
`placing into persistent memory
`ending or ceasing communication, including by
`exiting an operation or session
`has a monetary value
`
`represents a monetary
`equivalent
`
`V.
`44.
`
`STATE OF THE PERTINENT ART
`
`In January 1996—the ’880 Patent’s claimed priority date—the limitations of the
`
`challenged claims were already well known in the art. Claim 1 of the ’880 Patent
`
`recites the steps of “initiating” communication, “passing” a value datum between
`
`modules and devices, “performing a mathematical calculation” on the value datum,
`
`“passing” the resulting value datum back to the first module, “storing” the datum, and
`
`discontinuing communication. Ex. 1001 at claim 1. The technology for performing
`
`each of these claimed steps was already well known at the time.
`
`45.
`
`In my opinion, the ’880 Patent discloses only concepts that were generic,
`
`conventional, and routine as of the claimed priority date, and the challenged claims do
`
`
`
`16
`
`Page 00016
`
`Page 2006-016
`
`
`
`
`
`
`not recite any particular hardware at all. The generic, conventional, and well-known
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`nature of the components disclosed is illustrated in Figure 1:
`
`
`
`The remainder of the ’880 Patent’s specification similarly refers only to technology
`
`that was routine and well known at the time. For example, the specification refers to
`
`a “portable module 102” that comprises “a memory” and “input/output control
`
`circuit.” Ex. 1001 at 3:57-4:24. Each of those generic components of such a
`
`“portable module” was well known to a POSITA.
`
`46.
`
`In my opinion, the challenged claims do not specify any particular types of
`
`“module” that correspond to the “first module” or “second module.” E.g., Ex. 1001
`
`at claim 1. None of the claims of the ’880 Patent recite a specific type of computer,
`
`memory, or other hardware that corresponds to the claimed “modules.” The
`
`specification also fails to disclose any novel technology and further confirms that the
`
`challenged claims are not restricted by any specific type of hardware.
`
`47.
`
`In my opinion, the challenged claims do not specify any particular type of
`
`“electronic device” as claimed. E.g., Ex. 1001 at claim 1. None of the claims of the
`
`
`
`17
`
`Page 00017
`
`Page 2006-017
`
`
`
`
`
`
`’880 Patent recite a specific type of computer, memory, or other hardware that
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`corresponds to the claimed “electronic device.” The patent states, for example, that a
`
`microprocessor based electronic device may be “any of an unlimited number of
`
`devices” that were known in the art, listing a dozen examples. Ex. 1001 at 2:35-45.
`
`48.
`
`In my opinion, the challenged claims do not specify any particular type of
`
`hardware in connection with “storing” data as claimed. None of the claims of the
`
`’880 Patent recite a specific type of storage medium or memory, other than disclosing
`
`that the memory must be persistent to maintain the value datum, which later can be
`
`exchanged as payment for goods or services, as stated in the patent. See supra ¶ 40.
`
`The specification also fails to disclose any novel technology and further confirms that
`
`the challenged claims are not restricted by any specific type of hardware or memory
`
`configuration. The patent states, for example: “The memory circuitry 20 may contain
`
`both read-only-memory and non-volatile random-access-memory. Furthermore, one
`
`of ordinary skill in the art would understand that volatile memory, EPROM, SRAM
`
`and a variety of other types of memory circuitry might be used to create an equivalent
`
`device.” Ex. 1001 at 4:66-5:4.
`
`49.
`
`In my opinion, the challenged claims do not specify any particular type of
`
`“communication” as claimed. None of the claims of the ’880 Patent recite a specific
`
`means of communication, or a specific type of hardware for communication among
`
`the claimed modules and device. The specification also fails to disclose any novel
`18
`
`
`
`Page 00018
`
`Page 2006-018
`
`
`
`
`
`
`technology and further confirms that the challenged claims are not restricted by any
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`specific type of hardware. The patent states, for example: “It is understood that the
`
`means for communicating 106 is not limited to a single wire connection. The
`
`communication means 106 could be multiple wires, a wireless communication system,
`
`infrared light, any electromagnetic means, a magnetic technique, or any other similar
`
`technique.” Ex. 1001 at 2:55-58.
`
`50.
`
`In my opinion, the challenged claims do not specify any particular type of
`
`technology or techniques in connection with encryption or “encrypted” data as
`
`claimed. None of the claims of the ’880 Patent recite a specific means or form of
`
`encryption. The specification also fails to disclose any novel technology and further
`
`confirms that the challenged claims are not restricted by any specific type of hardware.
`
`For example, the patent notes that encryption of data was already well known at the
`
`time and refers to “RSA encryption and decryption.” Ex. 1001 at 4:61-65. A
`
`POSITA would have understood at the time that a wide variety of known generic,
`
`conventional, and routine encryption techniques and technologies (such as RSA or
`
`DES) could be used.
`
`51.
`
`In my opinion, under the claim constructions I have provided for purposes of
`
`this proceeding, and under Maxim’s stated constructions for purposes of the
`
`concurrent litigation, the challenged claims merely recite the concept of transferring
`
`data between modules, performing a calculation, and storing the resulting data. The
`19
`
`
`
`Page 00019
`
`Page 2006-019
`
`
`
`
`
`
`’880 Patent’s disclosure teaches a person of ordinary skill that the claimed technology
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`was routine and conventional. Any electronic transfer of units of exchange
`
`necessarily must entail communicating, passing the units, performing arithmetic to
`
`record the transfer, and storing the result of the transfer. The ’880 Patent did not
`
`solve any “technical problem” because there was no technical problem to begin with:
`
`those of ordinary skill certainly already knew how to transfer value data securely
`
`between two devices, perform arithmetic on that data, and store it in persistent
`
`memory.
`
`52.
`
`I understand that the Board will undertake its own claim construction analysis
`
`in this proceeding, and may reach a different result from the constructions advanced
`
`by either party or by the district court in concurrent litigation. I note that, if the
`
`Board were to adopt broader constructions of the claim terms than I have provided
`
`above, this would provide still further support for my conclusion that the technology
`
`recited in the challenged claims was routine and conventional.
`
`VI. OPINIONS REGARDING THE NAKANO AND GUTMAN
`REFERENCES
`
`53.
`
`I understand that if a prior art reference necessarily functions in accordance
`
`with or includes a claimed limitation, it discloses that limitation inherently.
`
`
`
`20
`
`Page 00020
`
`Page 2006-020
`
`
`
`
`
`
`54.
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`I have read Nakano and, in my opinion,1 it would have been understood by a
`
`person of ordinary skill in the art as disclosing all limitations of each of claims 1-4 of
`
`the ’880 Patent. My analysis of the challenged ’880 claims in connection with Nakano
`
`is in the claim charts attached as Appendix A.
`
`55.
`
`I have read Gutman and, in my opinion, it would have been understood by a
`
`person of ordinary skill in the art as disclosing as disclosing all limitations of each of
`
`claims 1-4 of the ’880 Patent. My analysis of the challenged ’880 claims in connection
`
`with Gutman is in the claim charts attached as Appendix B.
`
` declare under penalty of perjury that the foregoing is true and correct.
`
` I
`
`
`Executed September 15, 2013 in Washington, DC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_________________________
`Vijay K. Madisetti
`
`
`1 As noted in paragraph 20, supra, the discussions herein present my opinion of what a
`
`person of ordinary skill in the art would have understood as of January 1996.
`
`
`
`21
`
`Page 00021
`
`Page 2006-021
`
`
`
`
`
`
`APPENDIX A: NAKANO
`56. Nakano (Ex. 1003) teaches an integrated circuit (IC) card that communicates
`
` Covered Business Method Patent Review
`United States Patent No. 5,949,880
`
`with a terminal device—for exam
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
