Filed on behalf of: PNC Bank, National Association
`
`
`
`JPMorgan Chase & Co.
`
`
`
`JP Morgan Chase Bank N.A.
`By: Lionel Lavenue
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: “PNC-JP Morgan Chase-v-Maxim CBM@finnegan.com”
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PNC Bank, National Association
`JPMorgan Chase & Co.
`JP Morgan Chase Bank N.A.,
`Petitioners
`
`v.
`
`Maxim Integrated Products, Inc.,
`Patent Owner
`
`
`
`
`Patent No. 5,949,880
`
`
`
`
`
`
`DECLARATION OF STEPHEN D. BRISTOW
`
`
`
`PNC-JP MORGAN EXHIBIT 1005
`
`Page 1 of 89
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`Maxim Exhibit 2008 - Groupon, CBM2014-00090 – Page 2008-001
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`

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`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................................. 1
`
`II. Qualifications ............................................................................................................... 1
`
`III. Materials Reviewed ..................................................................................................... 3
`
`IV. Claim Construction ..................................................................................................... 4
`
`V. Overview of the ’880 Patent ...................................................................................... 5
`
`VI. Technology Background ............................................................................................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“Modules” were Conventional ...................................................................... 8
`
`“Electronic Devices” were Conventional .................................................... 8
`
`“Storing” was Conventional ........................................................................... 8
`
`“Communicating” was Conventional ........................................................... 9
`
`“Encryption” was Conventional.................................................................... 9
`
`VII. Person of Ordinary Skill in the Art ......................................................................... 10
`
`VIII. Certain References Disclose or Suggest All of the Elements of
`Claims 1-4 of the ’880 Patent .................................................................................. 11
`
`A. Akiyama Discloses all elements of Claims 1-4 of the ’880 Patent ........... 11
`
`1.
`
`2.
`
`3.
`
`Akiyama Discloses Transmitting the Amount of Funds
`Remaining to a Bank using an ATM ............................................... 12
`
`Akiyama Discloses the Bank Adding Funds to the Amount
`of Funds Remaining .......................................................................... 13
`
`Akiyama Discloses Transmitting the Updated Amount of
`Funds Remaining to the Wallet (e.g., IC Card) Using the
`ATM .................................................................................................... 13
`
`B.
`
`Ishiguro Discloses all elements of Claims 1-4 of the ’880 Patent .............. 14
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`Page 2 of 89
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`1.
`
`2.
`
`3.
`
`Ishiguro Discloses Providing the Amount of Funds to a
`Telephone Controller using an IC Card Terminal ......................... 14
`
`Ishiguro Discloses the Telephone Controller Removing
`Funds from the Amount of Funds .................................................. 16
`
`Ishiguro Discloses Returning the Remaining Funds to the
`Wallet (e.g., IC Card) Using the IC Card Terminal ....................... 16
`
`C. Nakano Discloses all elements of Claims 1-4 of the ’880 Patent ............. 17
`
`D. Nakano in combination with Akiyama renders the challenged
`claims obvious. ............................................................................................... 17
`
`1.
`
`2.
`
`Akiyama explicitly discloses a motivation to combine .................. 19
`
`No unpredictable results ................................................................... 20
`
`IX. Conclusion ................................................................................................................. 21
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`
`
`I.
`
`I, Stephen D. Bristow, declare under penalty of perjury as follows:
`
`Introduction
`
`1.
`
`I have been retained by The PNC Financial Services Group, Inc. and
`
`JPMorgan Chase & Co. (“Petitioners”) as an independent expert consultant in this
`
`proceeding before the United States Patent and Trademark Office. Although I am
`
`being compensated at my rate of $300 per hour for the time I spend on this matter,
`
`no part of my compensation depends on the outcome of this proceeding, and I have
`
`no other interest in this proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 5,949,880
`
`(“the ’880 patent”) (attached as Ex. 1001 to the petition). The application for the ’880
`
`patent was filed on November 26, 1997, as U.S. Patent Application No. 08/978,798,
`
`and the patent issued on September 7, 1999.
`
`3.
`
`I have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’880 patent. My opinions are set forth
`
`below.
`
`II. Qualifications
`
`4.
`
`I hold both a Bachelor of Science and a Master of Science degree in
`
`Electrical Engineering. I received my Bachelor of Science in 1973 from the
`
`University of California, and I received my Master of Science in 1985 from the
`
`University of Santa Clara.
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`5.
`
`By 1996, I had more than two years of experience in secure financial
`
`transactions and real-time microcontroller programming. For example, as Director of
`
`Engineering for Verifone, Inc. from 1989-1991, I was responsible for the
`
`development of technology relating to networking in the point-of-sale (POS)
`
`environment, which included:
`
`• Magnetic cash card operated vending systems including cards, readers,
`
`audit systems and dispensers
`
`• Spread spectrum LAN links
`
`• Optical check readers using neural network chips
`
`• Cellular radio data link
`
`• POS printers pin pads, and credit card terminals
`
`In that role, I not only gained experience in secure financial transactions and
`
`microcontrollers but I also managed people with “a Bachelor of Science degree in
`
`electrical engineering or computer engineering with at least two years of practical or
`
`post-graduate work in the areas of secure financial transactions and real-time
`
`microcontroller programming.”
`
`Indeed, I was working on systems for transferring value as far back as a decade
`
`prior to the filing date of the ’880 patent, including value transfer mechanisms that
`
`make use of coins, bills, smart cards, magnetic cash cards, and credit cards that end up
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`accessing a data base at a service provider to provide for such a transfer. Examples of
`
`types value transfer mechanisms I have worked on include:
`
`• creating key fob, ring, and card based value transfer mechanisms.
`
`• postal meters that securely transfer value in a postal application.
`
`• creating special “Chuckie Cheese” tokens.
`
`• creating games that dispensed tickets and with companies that then
`
`could read the tickets to dispense items of value (e.g., turn in 200 tickets
`
`into a machine, the machine reads the tickets, and then dispenses an
`
`item of value such as a prize).
`
`6.
`
`Further information on my qualifications can be found in the Curriculum
`
`Vitae attached as exhibit A of this declaration.
`
`III. Materials Reviewed
`
`7.
`
`In forming my opinions, I have reviewed: the ’880 Patent, the
`
`prosecution history of the ’880 patent, and the following documents:
`
`• U.S. Patent No. 5,428,684 to Akiyama et al. (“Akiyama”) issued on June
`
`27, 1995. (attached as Ex. 1014 to the petition);
`
`• U.S. Patent No. 5,396,558 to Ishiguro et al. (“Ishiguro”) issued on March 7,
`
`1995. (attached as Ex. 1015 to the petition);
`
`• U.S. Patent No. 4,839,504 to Nakano. (“Nakano”) issued on Jun. 13, 1989.
`
`(attached as Ex. 1016 to the petition);
`
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`• Bruce Schneier, “Applied Cryptography,” pp. 281-285, John Wiley &
`
`Sons, Inc. 1994 (attached as Ex. A);
`
`• Seth Faison, “3,000 Subway Riders, Cards in Hand, Test New Fare
`
`System,” New York Times, June 2, 1993 (attached as Ex. B).
`
`• Petition for covered business method patent review of US Patent
`
`5,949,880, CBM2013-00059;
`
`• Declaration of Dr. Jijay K Madisetti, CBM2013-00059, Exhibit 1018;
`
`• In re Maxim Integrated Prods., Inc., Case No. 2:12-mc-00244, MDL No.
`
`2354 (W.D. Pa.), Docket No. 691, Special Master’s Report and
`
`Recommendation Re: Claim Construction (Oct. 9, 2013) (attached as Ex.
`
`1014 to the petition).
`
`IV. Claim Construction
`
`8.
`
`I have been advised that the first step of assessing the validity of a patent
`
`claim is to interpret or construe the meaning of the claim.
`
`9.
`
`I have been advised that in post-grant review proceedings before the U.S.
`
`Patent and Trademark Office, a patent claim receives the broadest reasonable
`
`construction in light of the specification of the patent in which it appears. I have also
`
`been advised that, at the same time, claim terms are given their ordinary and
`
`accustomed meaning as would be understood by one of ordinary skill in the art. I
`
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`have been informed that the construction of a patent claim applied during this
`
`proceeding may differ from that in a district court proceeding.
`
`10.
`
`I have reviewed the constructions presented by Maxim and
`
`recommended by the Special Master. The adoption of either of these constructions,
`
`or any other proper construction under the broadest reasonable construction, would
`
`not change my opinions set forth below.
`
`V. Overview of the ’880 Patent
`
`11.
`
`I have been advised that the ’880 patent claims priority to January 31,
`
`1996.
`
`12. The patent states that Applicants invented “transferring units of value
`
`between a microprocessor based secure module and another module used for carrying
`
`a monetary equivalent.” Id. at 1:25-28. Specifically, the claimed method transfers
`
`units of value between a first module and second module using a device that allows
`
`communication between the modules to transfer units of value. See e.g., id. at claim 1.
`
`13. But, according to the patent, the modules and device could be virtually
`
`anything. For example, the patent states that the device could be “any of an unlimited
`
`number of devices,” such as the following:
`
`• a personal computer,
`
`• an add-a-fare machine at a train or bus station (similar to those in District
`
`of Columbia metro stations at the time the patent was filed),
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`• a turn style,
`
`• a toll booth,
`
`• a bank’s terminal,
`
`• a ride at a carnival,
`
`• a washing machine at a Laundromat,
`
`• a locking device,
`
`• a mail metering device, or
`
`• any device that controls access or meters a monetary equivalent.
`
`Similarly, the patent states that the modules can be incorporated into, for example, a
`
`token, a card, a ring, a computer, a wallet, a key fob, a badge, jewelry, a stamp, or
`
`practically any object that can be grasped and/or articulated by a user of the object.
`
`14. The claims recite methods of transferring units of exchange, involving
`
`the steps of transferring value data between modules directly or via intervening
`
`transmission devices or modules. The end result of this transmission is the sending of
`
`a revised resulting value back to the original module.
`
`VI. Technology Background
`
`15. The ’880 patent describes the state of the art as being limited credit cards.
`
`Ex. 1001, 1:41-41. According to the patent, the magnetic strips of the credit cards did
`
`not allow them to be used as cash. Id. at 1:44-45. Thus, the patent surmises that there
`
`was a “need for an electronic system that allows a consumer to fill an electronic
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`module with a cash equivalent in the same way a user fills his wallet with cash.” Id. at
`
`1:52-54. These types of systems, however, were well known prior to January 31, 1996,
`
`as described below.
`
`16.
`
`First, the patent’s statements regarding magnetic strip cards are incorrect
`
`because they could also be used to store a cash value like a wallet. For example, at the
`
`time the patent was filed, stored-value cards employed magnetic strips to store value
`
`that was read and revised by a terminal. One example of such a system was the New
`
`York City’s Metrocard system that replaced the previously used tokens. Ex. B.
`
`Similarly, the BART system in the San Francisco area would read your card, subtract
`
`from the balance it read and then send back a new and updated balance to be written
`
`onto the originating device.
`
`17. Non-magnetic strip based cards also existed prior to the patent. These
`
`types of cards are commonly called “smart cards.” Smart cards have existence since
`
`the 1970s and employ a microprocessor and a memory to store data rather than a
`
`magnetic strip. They were also often used as a digital wallet, as described by the
`
`references I discuss below.
`
`18.
`
`I have reviewed the ’880 patent specification, as each of the elements it
`
`discloses would have been a part of the basic toolkit of a person of ordinary skill in
`
`the art because they were routinely used to perform the basic, conventional functions
`
`that were being implemented at the time of filing to provide smart cards for secure
`
`transaction.
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`A.
`
`19.
`
`“Modules” were Conventional
`
`In my opinion, modules were well established and routinely employed by
`
`persons of ordinary skill in the art at the time of the invention. Modules are simply a
`
`logical construct for referring to a part of a program or device. Accordingly, both
`
`physical and software modules would have been routinely employed by persons of
`
`ordinary skill in the art because modules are basic building blocks of system design.
`
`B.
`
`20.
`
`“Electronic Devices” were Conventional
`
`In my opinion, electronic devices were well established and routinely
`
`employed by persons of ordinary skill in the art at the time of the invention. The
`
`specification refers to a device that can be “any of an unlimited number of devices.”
`
`Ex. 1001, 2:35-45, 3:41-50. Using electronic devices, such as the turn styles, add-a-fair
`
`machines, and bank terminals described by the patent, was routine and conventional
`
`practice at the time of filing because they are a necessary component of conducting
`
`electronic transactions. Indeed, a card that stores value would serve no purpose if it
`
`could not interface with devices to spend the stored value.
`
`C.
`
`21.
`
`“Storing” was Conventional
`
`In my opinion, storing data was well established and routinely employed
`
`by persons of ordinary skill in the art at the time of the invention. For example, the
`
`keeping of records is a fundamental part of conducting electronic transactions, often
`
`referred to as accounting. A person of ordinary skill in the art would routinely use
`
`memory to store transaction records and account balances much like how paper
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`ledgers and receipts were used to maintain records of transactions prior to the advent
`
`of digital storage. The specification does not require any particular or special type of
`
`memory. Ex. 1001, 5:1-4. Storage was also a basic component of off-the-shelf
`
`microprocessor packages that a person of ordinary skill in the art would employ.
`
`D.
`
`22.
`
`“Communicating” was Conventional
`
`In my opinion, communicating data was well established and routinely
`
`employed by persons of ordinary skill in the art at the time of the invention. For
`
`example, in order to conduct transactions, devices or modules must be allowed to
`
`communicate transaction data between themselves because a device storing value
`
`serves no purpose if that value cannot be conveyed. The patent specification discloses
`
`that any technique can be used to communicate. Ex. 1001, 2:54-58. Implementing
`
`communications was also a basic component of off-the-shelf microprocessor
`
`packages that a person of ordinary skill in the art would employ.
`
`E.
`
`23.
`
`“Encryption” was Conventional
`
`In my opinion, encrypting data was well established and routinely
`
`employed by persons of ordinary skill in the art at the time of the invention.
`
`Encryption techniques have been used for hundreds of years. Before the age of
`
`electronics these tended to be cypher codes used to send secret information within
`
`normal looking printed text. Over time, encryption systems made use of printed
`
`codes that made use of reference code books or other mechanisms to make them
`
`harder to read. Mechanistic encryption became most famous with the use of the
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`Enigma cypher machine that the Germans used during World War II. At the time of
`
`filing, persons of ordinary skill in the art routinely encrypted financial data to prevent
`
`malfeasance by parties listening to communications. One common method employed
`
`at the time of filing was RSA, which the patent also discloses as exemplary encryption
`
`technique. Ex. 1001, 4:61-65. RSA encryption was routinely implemented by using
`
`off the shelf co-processors. Encryption was routinely used, and often legally required,
`
`to secure financial transactions in an attempt to prevent fraudulent transactions.
`
`VII. Person of Ordinary Skill in the Art
`
`24.
`
`I understand that the ’880 Patent must be analyzed from the perspective
`
`of a person of ordinary skill in the art (“POSITA”). In my opinion, a person of
`
`ordinary skill in the art would be a person with a Bachelor of Science degree in
`
`electrical engineering or computer engineering with at least two years of practical or
`
`post-graduate work in the areas of secure financial transactions and real-time
`
`microcontroller programming.
`
`25.
`
`I understand that the factors that may be considered in determining the
`
`ordinary level of skill in the art include: (1) the levels of education and experience of
`
`persons working in the field; (2) the types of problems 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. My definition above is based upon this
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`understanding and patent’s presumed knowledge of microcontrollers and secure
`
`financial transactions given the high level at which it discloses components.
`
`26.
`
`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.
`
`VIII. Certain References Disclose or Suggest All of the Elements of Claims 1-4
`of the ’880 Patent
`
`27.
`
`In my opinion, U.S. Patent No. 5,428,684 to Akiyama et al. (“Akiyama”),
`
`U.S. Patent No. 5,396,558 to Ishiguro et al. (“Ishiguro”), and U.S. Patent No. 4,839,504
`
`to Nakano (“Nakano”) each teach all elements of claims 1-4 of the ’880 patent.
`
`A. Akiyama Discloses all elements of Claims 1-4 of the ’880 Patent
`
`28.
`
`For the reasons described below and in the claim charts attached as
`
`Appendix B to this declaration, it is my opinion that Akiyama discloses each and every
`
`element of all claims of the ’880 patent.
`
`29. Akiyama discloses a system that includes an IC card (that acts as a wallet),
`
`a Bank Center (that adds or removes funds from the wallet), and an ATM that allows
`
`communication between the IC Card and Bank Center to transfer funds between
`
`them. 3:53-56. Thus, it is my opinion that Akiyama discloses “electronically
`
`transferring units of exchange between a first module and a second module.”
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`1. Akiyama Discloses Transmitting the Amount of Funds
`Remaining to a Bank using an ATM
`30. As illustrated, for example, in col. 3, lines 57-66, Akiyama discloses that a
`
`user inserts the IC card into the ATM to establish a communication link. Establishing
`
`a communication link may include, for example, entering a password and exchanging
`
`a session key for encrypting communications. In the claimed environment, the IC
`
`card of Akiyama would be the “first module” and the ATM would be the “electronic
`
`device.” Thus, it is my opinion that Akiyama discloses the claimed “initiating
`
`communication between said first module and an electronic device.”
`
`31. After the communications link is established, as illustrated, for example,
`
`in col. 9, lines 47-55, the ATM in Akiyama obtains a balance from the IC card,
`
`encrypts the balance, and sends the encrypted balance to the bank center. So, in the
`
`context of the claims, Akiyama describes passing a balance, a first value datum, from
`
`the first module to the electronic device, encrypting it, and passing the balance from
`
`the electronic device to the second module (the bank center). Thus, it is my opinion
`
`that Akiyama discloses (i) “passing a first value datum from said first module
`
`to said electronic device,” (ii) that the “first value datum represents a monetary
`
`equivalent,” (iii) that the “first value datum is encrypted,” and (iv) “passing
`
`said first value datum from said electronic device to said second module.”
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`2. Akiyama Discloses the Bank Adding Funds to the Amount
`of Funds Remaining
`32. As illustrated, for example, in col. 9, lines 56-65, Akiyama’s bank center
`
`adds a transfer amount to the balance to calculate a new balance. So, in the context of
`
`the claims, Akiyama describes performing a mathematical calculation (addition) on a
`
`first value datum (the balance) to create a second value datum (a new balance). Thus,
`
`it is my opinion that Akiyama discloses “performing a mathematical
`
`calculation on said first value datum thereby creating a second value datum.”
`
`3. Akiyama Discloses Transmitting the Updated Amount of
`Funds Remaining to the Wallet (e.g., IC Card) Using the
`ATM
`33. Once the new balance is calculated, for example, in col. 9, lines 60-65,
`
`Akiyama’s bank center encrypts the new balance and sends the encrypted balance to
`
`the ATM. So, in the context of the claims, Akiyama discusses encrypting the second
`
`value datum (the new balance) and passing it from the second module (the bank
`
`center) to the electronic device (the ATM). Thus, it is my opinion that Akiyama
`
`discloses (i) “passing said second value datum from said second module to
`
`said electronic device” (ii) that the “second value datum is encrypted.” The
`
`ATM then sends the new balance to the IC card, which stores the new balance in its
`
`ledger file. So, in the context of the claims, Akiyama discusses passing the second
`
`value datum (the new balance) from the electronic device (the ATM) to the first
`
`module (the IC card). The first module (the IC card) then stores the second value
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`datum (the new balance).Thus, it is my opinion that Akiyama discloses (i)
`
`“passing said second value datum from said electronic device to said first
`
`module” and (ii) “storing said second value datum in said first module.” After
`
`the new balance is stored, the transaction is complete and the session is ended. Id. at
`
`10:6-16. The user may then remove the IC card from the ATM. Thus, it is my
`
`opinion that Akiyama discloses “discontinuing communication between said
`
`first module and said electronic device.”
`
`B. Ishiguro Discloses all elements of Claims 1-4 of the ’880 Patent
`
`34.
`
`For the reasons described below and in the claim charts attached as
`
`Appendix C to this declaration, it is my opinion that Ishiguro discloses each and every
`
`element of all claims of the ’880 patent.
`
`35.
`
`Ishiguro discloses a system that includes an IC card (that acts as a wallet),
`
`a telephone controller (that adds or removes funds from the wallet), and an IC Card
`
`Terminal that allows communication between the IC Card and telephone controller to
`
`transfer funds between them. 9:7-20. Thus, it is my opinion that Ishiguro
`
`discloses “electronically transferring units of exchange between a first module
`
`and a second module.”
`
`1. Ishiguro Discloses Providing the Amount of Funds to a
`Telephone Controller using an IC Card Terminal
`36. As illustrated, for example, in col. 6, lines 12-14, Ishiguro discloses that a
`
`user inserts the IC card into an IC card reader/writer of the IC card terminal to
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`initiate communications. Then, as illustrated, for example, in col. 8, lines 36-44, col. 9,
`
`lines 7-20, and col. 11, lines 36-45, the remaining value from the IC card is
`
`communicated to the IC card terminal, which provides it to the telephone controller
`
`for updating. So, in the context of the claims, Ishiguro discusses initiating
`
`communications between a first module (the IC card) and an electronic device (the IC
`
`card reader/writer of the IC card terminal). Then, passing a first value datum (the
`
`remaining value) representing a monetary equivalent (value) from the first module to
`
`the electronic device. Thus, it is my opinion that Ishiguro discloses (i) “initiating
`
`communication between said first module and an electronic device,” (ii)
`
`“passing a first value datum from said first module to said electronic device,”
`
`and (iii) that the “first value datum represents a monetary equivalent.” Akiyama
`
`explains that the communications between the IC card and terminal are encrypted. Id.
`
`at 11:36-45. Thus, it is my opinion that Ishiguro discloses the “first value
`
`datum is encrypted.” Then, the remaining value is provided to the telephone
`
`controller. Id. at 9:7-20. So, in the context of the claims, Ishiguro discusses passing the
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`first value datum (the remaining value) from the electronic device (the IC card
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`reader/writer of the IC card terminal) to the second module (telephone controller).
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`Thus, in my opinion that Ishiguro discloses “passing said first value datum
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`from said electronic device to said second module.”
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`2. Ishiguro Discloses the Telephone Controller Removing
`Funds from the Amount of Funds
`37. As illustrated, for example, in col. 9, lines 7-20, the telephone controller
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`subtracts a service charge from the remaining value to determine a new remaining
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`value. So, in the context of the claims, Ishiguro discusses performing a mathematical
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`calculation (subtraction) on the first value datum (the remaining value) to create a
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`second value datum (a new remaining value). Thus, it is my opinion that Ishiguro
`
`discloses performing a mathematical calculation on said first value datum
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`thereby creating a second value datum.
`
`3. Ishiguro Discloses Returning the Remaining Funds to the
`Wallet (e.g., IC Card) Using the IC Card Terminal
`38. As illustrated, for example, in col. 9, lines 7-20 and col. 11, lines 36-45,
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`the telephone controller provides the new remaining value to the IC card terminal. So,
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`in the context of the claims, Ishiguro discusses passing the second value datum (the
`
`new remaining value) from the second module (the telephone controller) to the
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`electronic device (the IC card terminal). Thus, it is my opinion that Ishiguro
`
`discloses “passing said second value datum from said second module to said
`
`electronic device.” The IC card terminal then sends the new remaining value via an
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`encrypted communication for storage in the IC card, ending the transaction. Id. at
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`11:36-45. So, in the context of the claims, Ishiguro discusses a second value datum (the
`
`new remaining value) is encrypted, passing the second value datum (the new
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`remaining value) from the electronic device (IC card terminal) to the first module (the
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`IC card), storing the second value datum (the new remaining value), and discontinuing
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`communications. Thus, it is my opinion that Ishiguro discloses (i) that the
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`“second value datum is encrypted,” (ii) “passing said second value datum
`
`from said electronic device to said first module,” (iii) “storing said second
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`value datum in said first module,” and (iv) “discontinuing communication
`
`between said first module and said electronic device.”
`
`C. Nakano Discloses all elements of Claims 1-4 of the ’880 Patent
`
`39.
`
`I have independently review the Nakano reference and compared the
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`disclosure of Nakano to claims 1-4 of the ’880 patent. I have also reviewed the
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`reasons provided by the expert in CBM2013-00059. For the reasons described above
`
`and Appendix C to this declaration, which contains the reasoning provided by the
`
`expert in CBM2013-00059, it is my opinion that Nakano discloses each and every
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`element of claims 1-4 of the ’880 patent.
`
`D. Nakano in combination with Akiyama renders the challenged
`claims obvious.
`
`40. Both Nakano and Akiyama are available as prior art under 35 U.S.C.
`
`§ 102(a). The combination of Nakano and Akiyama renders claims 1-4 obvious.
`
`41.
`
`It is my opinion that the combination of Nakano and Akiyama renders
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`claims 1-4 obvious to a person having ordinary skill in the art at the time the ’880
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`patent was filed.
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`42.
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`I have been advised that a patent claim may be invalid as obvious if the
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`differences between the subject matter patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art. I have also been advised that several
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`factual inquiries underlie a determination of obviousness. These inquiries include the
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`scope and content of the prior art, the level of ordinary skill in the field of the
`
`invention, the differences between the claimed invention and the prior art, and any
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`objective evidence of non-obviousness.
`
`43.
`
`I also have been advised that the law requires a “common sense”
`
`approach of examining whether the claimed invention is obvious to a person skilled in
`
`the art. For example, I have been advised that combining familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield predictable
`
`results. I have also been advised that an explicate disclosure of a motivation to
`
`combine elements further supports a conclusion that the combination would have
`
`been obvious.
`
`44. Nakano discloses an IC card system that allows the IC card to conduct
`
`transactions with a bank using an ATM. Ex. 1016, 2:43-55. The later filed Akiyama
`
`also discloses an IC card system that allows the IC card to conduct transactions with a
`
`bank using an ATM. Ex. 1014, Fig. 14. It is my opinion that a person of ordinary skill
`
`in the art would have looked to references in the field of Akiyama to solve problems
`
`with Nakano.
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`45.
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`If Nakano is deficient on any element, the deficiency would be cured by
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`Akiyama. Appendix B.
`
`46.
`
`For example, claim 1 recites “performing a mathematical calculation on
`
`said first value datum thereby creating a second value datum” and “passing said
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`second value datum from said second module to said electronic device.” Ex. 1001.
`
`In the prior petition, these features were mapped to, e.g., the bank of Nakano
`
`updating the card’s balance and sending the updated balance to ATM. CBM2013-
`
`00059, Paper 1 at 50-51. To the extent that the PTAB finds that Nakano does not
`
`explicitly disclose the bank of updating the card’s balance and sending the updated
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`balance to the ATM, Akiyama explicitly discloses this feature. Appendix A.
`
`1. Akiyama explicitly discloses a motivation to combine
`47. Akiyama discloses that the proposed combination would provide several
`
`advantages including:
`
`enabl[ing] bank keys to be individually customized, which is effective in
`enhancing the system security against a possible forgery in an electronic
`cashless transaction system. Also, since the ATM 44A does not have a
`coding key, a theft of the ATM 44A poses no threat to the system
`security, thereby allowing an installment of the ATM 44A in a location
`without a strong physical protection. This in turn enables a wider use of
`an electronic cashless transaction medium embodied by the IC card 42.
`Because a probability of an illicit money transfer realized by
`eavesdropping is very low,