IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`In re Covered Business Method
`Patent Review of:
`U.S. Patent No. 6,237,095
`
`For: APPARATUS FOR TRANSFER OF
`SECURE INFORMATION BETWEEN A
`DATA CARRYING MODULE AND AN
`ELECTRONIC DEVICE
`
`
`
`
`DECLARATION OF STEPHEN D. BRISTOW
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`I, Stephen D. Bristow, hereby declare and state as follows:
`
`
`1.
`
`I have been retained as a technical consultant on behalf of JPMorgan Chase
`
`& Co. and JPMorgan Chase Bank, N.A., the petitioner in the present
`
`proceeding, and I am being compensated at my usual and customary hourly
`
`rate. The petition names JPMorgan Chase & Co. and JPMorgan Chase
`
`Bank, N.A. as real parties-in-interest. I have no financial interest in, or
`
`affiliation with, the petitioner, real parties-in-interest, or the patent owner,
`
`which I understand to be Maxim Integrated Products, Inc. My
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`CHASE EX. 1015 - p. 1/36
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`In re Covered Business Method
`Patent Review of:
`U.S. Patent No. 6,237,095
`
`For: APPARATUS FOR TRANSFER OF
`SECURE INFORMATION BETWEEN A
`DATA CARRYING MODULE AND AN
`ELECTRONIC DEVICE
`
`
`
`
`DECLARATION OF STEPHEN D. BRISTOW
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`I, Stephen D. Bristow, hereby declare and state as follows:
`
`
`1.
`
`I have been retained as a technical consultant on behalf of JPMorgan Chase
`
`& Co. and JPMorgan Chase Bank, N.A., the petitioner in the present
`
`proceeding, and I am being compensated at my usual and customary hourly
`
`rate. The petition names JPMorgan Chase & Co. and JPMorgan Chase
`
`Bank, N.A. as real parties-in-interest. I have no financial interest in, or
`
`affiliation with, the petitioner, real parties-in-interest, or the patent owner,
`
`which I understand to be Maxim Integrated Products, Inc. My
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`CHASE EX. 1015 - p. 1/36
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`
`
`Docket No. 020358.0206-US03
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`compensation is not dependent upon the outcome of, or my testimony in,
`
`the present covered business method patent review or any litigation
`
`proceedings.
`
`Background
`
`
` My background, qualifications, and experience relevant to the issues in this 2.
`
`proceeding are summarized below. My curriculum vitae as related to the
`
`issues in this proceeding is submitted herewith as Exhibit 1016.
`
`
`3.
`
`I am currently Chief Technology Officer of Cloudastructure, an Internet-
`
`based video security service, and am currently on retainer to advise, consult
`
`with, and maintain Parkinson’s disease testers for the Andy Grove
`
`Foundation of Los Altos, California.
`
`
`4.
`
`I have a Bachelor of Science degree in Electrical Engineering and
`
`Computer Science as a Regent’s Scholar from the University of California
`
`at Berkeley. I also have a Master of Science degree in Electrical
`
`Engineering from the University of Santa Clara, in Santa Clara, California.
`
`During my studies, I took courses in integrated circuit design,
`
`communications theory, computer architecture, programming languages
`
`such as machine language, assembly language, compiled and interpreted
`
`language, as well as programming language theory. I have also attended
`
`numerous ongoing continuing education and technical training classes
`
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`Docket No. 020358.0206-US03
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`since graduation, which include training in the programming, capabilities,
`
`technological limitations, and uses of smart cards by Micro Card
`
`Technologies, Inc., a subsidiary of Bull.
`
` Beginning in 1973, I had the position of Vice President of Engineering for
`5.
`
`Atari. At that time, Atari’s arcade video games operated on a cash basis,
`
`and the company was interested in finding out ways to, and developing the
`
`technology to, make it easier for customers to play their video games.
`
`Traditional coin-operated games require a large amount of coins, which are
`
`bulky and inconvenient for consumers, and need to be periodically emptied
`
`and deposited, which can be a burden for arcade operators. Paper currency
`
`also has drawbacks, as bill acceptors and change machines at the time had
`
`complicated mechanics and electronics, and were expensive. Credit card
`
`technologies were also not appropriate, since relatively expensive phone
`
`lines would be required for each credit card reader. There was therefore a
`
`recognized benefit from having an inexpensive stored-value medium where
`
`value could be deposited by the consumer and debited by an arcade
`
`machine without communicating with a central authority.
`
` Through my work at Atari, I began to follow developments in technologies
`6.
`
`related to cash cards, including magnetic strip paper cards such as those
`
`used for mass transit. In the mid-1980s, I became aware of the
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`Docket No. 020358.0206-US03
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`development of integrated-circuit based “smart cards” which provided
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`persistent storage coupled with a processing capability that could
`
`implement sophisticated security protocols.
`
` Around 1986, I began working with my former Atari colleague Christopher
`7.
`
`Wright to develop a smart card-based solution for postage-printing stations.
`
`Mr. Wright and I started Wright Technologies to research and implement
`
`this technology. Larger companies at the time used postage-printing
`
`stations to generate U.S. mail postage stamps in-house. This was done
`
`using heavy sealed metal boxes that included mechanical levers to set
`
`postage amounts, which would use mechanicals to set a stamp imprint.
`
`Also included was a mechanical balance calculator, which would
`
`decrement as postage stamps were generated. In order to refill the stored
`
`value, the box would need to be carried to a postal service branch to be
`
`physically opened and configured with additional value. We had the idea
`
`of using the secure storage capability of smart cards in conjunction with an
`
`intelligent printing device in order to generate secure printed postage value.
`
`This work resulted in applications for patents filed by myself and Mr.
`
`Wright, which include issued U.S. Patent Nos. 4,900,904 (the “’904
`
`patent”) (Ex. 1018) and 4,864,618 (Ex. 1019), both filed October 17, 1988.
`
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`Docket No. 020358.0206-US03
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` Starting in 1986, we developed working prototypes of a postage terminal
`8.
`
`that used a smart card to securely store and transmit in an interactive basis
`
`financial information between a printing device and a smart card based on
`
`user inputs. The smart card stored a running balance and multiple secret
`
`“keys” used to secure the transaction with the printing device. A user
`
`would enter a desired postage amount into the terminal, which would be
`
`transmitted to the smart card. The smart card would then send to a smart
`
`printing element within the printing device an encrypted communication
`
`that included a request for printing, the amount of the postage to be printed,
`
`as well as a challenge number to be used for authentication. The print head
`
`would then decrypt the communication and respond to the challenge with
`
`the same number encrypted using a different secret key. The smart card
`
`would decrypt the response to confirm that the print head is a valid print
`
`head. In turn, the print head would send its own encrypted challenge,
`
`which the smart card would need to decrypt and re-encrypt using a
`
`different secret key. The print head would decrypt the postage amount, and
`
`in response print the appropriate amount, and respond with a message
`
`indicating the print was successful. Only at this point would the smart card
`
`deduct from its balance the amount of the postage.
`
`5
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`Docket No. 020358.0206-US03
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`
`9.
`
`In parallel with my work at Wright Technologies, I served as Director of
`
`Engineering at Verifone from 1989 to 1991. In that capacity I was
`
`responsible for Verifone’s engineering in California and Taiwan. While
`
`there we developed a cash card system making use of secure financial
`
`transaction data which was produced and used in a number of locations.
`
`The terminals for this system were designed to read the contents of the cash
`
`card and communicate with a server to complete the transaction.
`
` One aspect of my work at Verifone included securing transactions against
`10.
`
`“skimming,” which is the fraudulent duplication of a card to create an
`
`identical copy that could then also be used to spend the same value. A cash
`
`card system can be vulnerable to a skimming attack when the
`
`communication between the cash card and a terminal includes a transaction
`
`amount, but no information that uniquely identifies the card as opposed to a
`
`copy of the card. One solution we devised to address skimming attacks
`
`was to recognize that the magnetic encoding of content on individual cards
`
`bears a unique “watermark” that could not be copied by then-existing
`
`techniques. This watermark served as an additional piece of unique
`
`information that could be used to determine whether a card being presented
`
`is the same physical card, or a different physical card, than one presented
`
`earlier with the same identifying information.
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`Docket No. 020358.0206-US03
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` Verifone also manufactured credit card reading terminals such as those
`11.
`
`found in grocery stores. They use encryption techniques, such as DES, to
`
`secure communications to and from the terminals. While at Verifone, my
`
`team designed and implemented a PIN (Personal Identification Number)
`
`pad to allow users to enter their PIN into the Verifone terminal. The PIN
`
`pad encrypted the user’s PIN using DES encryption.
`
` In 1994, Wright Technologies licensed our patents covering the postage
`12.
`
`metering system to Pitney-Bowes, and were retained by Pitney-Bowes to
`
`develop production versions of the system based on our prototype. We
`
`ultimately completed a production system which was rolled out and
`
`marketed.
`
` After my involvement with Pitney-Bowes ended in 1998, I continued to
`13.
`
`develop further smart card-based applications including an office telephone
`
`that used a smart card to retain a user’s identity in a mobile office situation.
`
`In this system, office telephones were configured to accept a smart card,
`
`and would read the contents of the card. The phone would then
`
`communicate with the office phone network so that calls would be routed
`
`to a user’s current location, as well as having autodial and other
`
`preferences carried with a user rather than tied to a specific phone.
`
`7
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`Docket No. 020358.0206-US03
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` Through work related to smart cards I have also become aware of how
`14.
`
`smart cards are used in the satellite broadcast field, in particular, the use of
`
`smart cards to store subscriber information and permissions, and to control
`
`the encryption and decryption of secure broadcasts.
`
` During the time period above, and through the present, I have regularly
`15.
`
`attended trade shows, including the Consumer Electronics Show (“CES”)
`
`and the National Association of Broadcasters (“NAB”) trade show. At
`
`these trade shows I would observe other companies’ developments in the
`
`area of smart cards and stored value card, in particular as they related to
`
`stored value and security permission and authentication.
`
` I am also a member of the Institute for Electrical and Electronics Engineers
`16.
`
`(“IEEE”), and have been a member of the Administrative Committee for
`
`the Consumer Electronics Society for the IEEE, as well as a member of the
`
`Society for Motion Picture and Television Engineers (“SMPTE”), the
`
`Program Committee for the Society for Information Display (“SID”), and
`
`other relevant professional organizations. Through my work with these
`
`organizations, I have also become familiar with the state of the art of smart
`
`cards on a continuing basis.
`
` My work in the smart card field included implementing security features.
`17.
`
`These included mechanical security features of devices themselves; optical
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`8
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`Docket No. 020358.0206-US03
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`security in the form of ensuring that, for example, printed postage stamps
`
`were proof against copying, as well as electronic security to ensure the
`
`integrity of the smart card interaction.
`
` The patents that issued out of my work in smart cards include U.S. Patent
`18.
`
`No. 4,900,904 (Ex. 1018), which describes a secure transaction system that
`
`can be used in a smart card/terminal system. The scheme described in the
`
`’904 Patent uses, among other things, a challenge and response
`
`authentication. In that authentication, a smart card first generates a random
`
`number and encrypts it with a known algorithm using a shared key. The
`
`smart card sends the encrypted number to the terminal, which decrypts the
`
`number with the inverse algorithm using the same key. The terminal then
`
`re-encrypts the same number using a different algorithm, which it sends
`
`back to the smart card. The card decrypts using the inverse of the different
`
`algorithm, and verifies that it has received the same random number that
`
`was sent. If so, the transaction is authorized. See, e.g., ’904 Patent, 3:46-
`
`66.
`
` Through my work, I have become familiar with public-private key
`19.
`
`encryption, and in particular the RSA implementation of public-private key
`
`encryption. In a public-private key system, each side to a communication
`
`has both a “public” key, which is made generally available, and a “private”
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`Docket No. 020358.0206-US03
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`key, which is kept secret. Either key can be used to encrypt a message,
`
`which can only be decrypted using the other key. The RSA system for
`
`generating public and private keys was described in a 1978 paper by
`
`Rivest, Shamir, and Adelman (Ex. 1017), which reveals mathematical
`
`algorithms for the creation of encryption key pairs (something that can be
`
`accomplished on a generic general-purpose computer).
`
`Materials Considered
`
`
` I have reviewed each of the following: 20.
`
`a. U.S. Patent No. 6,237,095 (“the ’095 Patent”), including the claims,
`
`description, and prosecution history (which are identified in the
`
`Petition as Exhibits 1001 and 1002, respectively);
`
`b. Certain chapters contained within INTEGRATED CIRCUIT CARDS, TAGS
`
`AND TOKENS (P.L. Hawkes et al. eds., 1990) (Ex. 1003, hereinafter
`
`“Hawkes Chapters”):
`
`i. P.L. Hawkes, Preface and Introduction (“Hawkes Preface &
`
`Introduction”);
`
`ii. A.R. Lessin, Smart Card Technology – A US Pioneer’s
`
`Viewpoint (“Hawkes Ch. 2”);
`
`iii. J. McCrindle, A Contactless Smart Card and Its Applications
`
`(“Hawkes Ch. 3”);
`
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`Docket No. 020358.0206-US03
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`iv. W.L. Price & B.J. Chorley, Secure Transactions with an
`
`Intelligent Token (“Hawkes Ch. 6”); and
`
`v. D.W. Davies, Cryptography and the Smart Card (“Hawkes Ch.
`
`8”);
`
`c. Int’l Pub. No. WO 83/03018 to P.V. Cremin et al. (Ex. 1004;
`
`hereinafter “Cremin”);
`
`d. European Pat. Appl. 0588339 A2 to G. Ishiguro et al. (Ex. 1005;
`
`hereinafter “Ishiguro”);
`
`e. Daniel H.H. Ingalls, Design Principles Behind Smalltalk, BYTE MAG.
`
`(Aug. 1981) (Ex. 1006, hereinafter “Ingalls”);
`
`f. Special Master’s Report and Recommendation Re: Claim
`
`Construction, In re Maxim Integrated Prods, Inc., Case No. 2:12-mc-
`
`244, MDL No. 2354 (Oct. 9, 2013, W.D. Pa.) (Ex. 1008);
`
`g. Memorandum Opinion (re: claim construction), In re Maxim
`
`Integrated Prods, Inc., Case No. 2:12-mc-244, MDL No. 2354 (Dec.
`
`17, 2013, W.D. Pa.) (Ex. 1009); and
`
`h. Rivest, et al., A Method for Obtaining Digital Signatures and Public-
`
`Key Cryptosystems, 21 COMMUNICATIONS OF THE ACM, 2, 120 (1978)
`
`(Ex. 1017).
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`Docket No. 020358.0206-US03
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` Upon reviewing the ’095 Patent, I understand that a provisional patent
`21.
`
`application (No. 60/004,510) was filed on September 29, 1995, and a non-
`
`provisional application was filed on January 31, 1996 (No. 08/595,014),
`
`which is the parent application to application no. 09/003,541, filed on May
`
`22, 2001, that issued as the ’095 Patent. Based upon this information, for
`
`the purpose of my analysis, I assume the time of the purported invention to
`
`be about 1995.
`
`Level of Ordinary Skill in the Art
`
`
` In my opinion, a person of ordinary skill in the art for the subject matter of 22.
`
`the ’095 Patent around 1995 would have had at least a B.S. 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, or, alternatively, an additional
`
`year (at least three years) of postgraduate or professional experience in
`
`computer systems engineering related to secure data transactions, or the
`
`equivalent. I was a person of at least ordinary skill in this art in 1995.
`
`State of the Art in 1995
`
`
` The development and rapid proliferation of computing technology in the 23.
`
`1990’s, and in particular its application to financial transactions, created a
`
`requirement for computerized mechanisms for secure communications.
`
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` In discussing my background, I explained developments in this area that I
`24.
`
`was involved in. In particular, as described in further detail above, almost
`
`ten years prior to 1995 I was personally involved in developing a smart
`
`card solution to completing financial transactions with a postage metering
`
`terminal. This solution included storing both the programming necessary
`
`to process a transaction and a cash balance on the smart card, coupled with
`
`an encrypted authentication and communication process between the smart
`
`card and a custom integrated-circuit based printing device.
`
` Others in the industry were also developing smart card technology well
`25.
`
`before 1995. For example, as described in Hawkes Ch. 2, Roland Moreno
`
`obtained patents on smart card technology in 1975 that were licensed to
`
`companies such as Honeywell Bull, Schlumberger and Philips by 1978.
`
`Hawkes Ch. 2, p. 26.
`
`26.
`
` By 1985, financial services companies such as Visa were developing smart
`
`card technology. Id. at 26. By 1987, France was using smart cards as bank
`
`cards. Id. at 27.
`
` The Hawkes Chapters, published in 1990, disclose various aspects of
`27.
`
`integrated circuit devices holding data, such as monetary equivalents, that
`
`can be manipulated in a secure manner to prevent tampering. For example,
`
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`Docket No. 020358.0206-US03
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`Hawkes Ch. 6 discloses an “intelligent token.” Figure 6.3 shows a block
`
`diagram of the “intelligent token.”
`
`
`
`Overview of the ’095 Patent
`
`
` Based on my review of the ’095 Patent, it addresses an apparatus for 28.
`
`transfer of secure information between a data carrying module and an
`
`electronic device. The module is capable of communicating with other
`
`equipment via a secure, encrypted technique so as to protect monetary
`
`transactions or other valuable data. ’095 Patent, Abstract.
`
` A block-diagram of the module 10 is shown in the patent’s Figure 1.
`29.
`
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`Docket No. 020358.0206-US03
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`
` Module 10 includes an input/output circuit 26, a microprocessor 12, a
`30.
`
`coprocessor 18, a real time clock 14, an NVRAM 24, and a ROM 22. Id. at
`
`2:34-42 and 3:21-30. The patent does not describe these components
`
`beyond their basic functions or preferences. The specification describes
`
`how module 10 can be used in certain types of transactions. For example,
`
`the patent explains how the module can be used as a digital cash dispenser,
`
`how the module can be replenished with cash, and how the module can
`
`transfer cash to another module. Id. at 7:65-12:34.
`
` The ’095 Patent includes eight claims, of which only claim 1 is an
`31.
`
`independent claim. Claim 1 recites an apparatus for receiving and
`
`transmitting encrypted data comprising “an input/output interface,” a
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`15
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`Docket No. 020358.0206-US03
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`“microprocessor circuit,” a “coprocessor circuit,” a “timing circuit,” a “first
`
`memory,” and a “second memory.” The patent specification does not
`
`describe these components in any detail other than a high-level description
`
`of the functions stated above.
`
`Claim Construction
`
`
` I have been asked to offer my opinion regarding the understanding of a 32.
`
`person skilled in the art regarding the claim term “the transaction script
`
`including at least a representation of the time stamp generated by the
`
`timing circuit” used in claim 1 of the ’095 Patent and the claim term
`
`“memory means for storing a predetermined program” used in dependent
`
`claim 5. I also have been asked to comment on whether “adjust said first
`
`data object according to said second data object responsive to a verification
`
`signal from said electronic device” would be understood by one skilled in
`
`the art.
`
` I understand that in the present proceeding, claim terms are interpreted as
`33.
`
`the broadest reasonable construction consistent with the specification, or
`
`“BRC.”
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`“the transaction script including at least a representation of the time stamp
`generated by the timing circuit”
`
`
` The term “the transaction script including at least a representation of the 34.
`
`time stamp generated by the timing circuit” is used in independent claim 1
`
`as a description of a transaction script stored by the microprocessor circuit.
`
` The specification does not use any form of the words “representation” or
`35.
`
`“represent” in relation to a time stamp.
`
` I understand from the District Court litigation that Maxim took the position
`36.
`
`that “what is stored is a ‘representation’ of the time stamp,” and cited to a
`
`section of the specification that states the technique “calls on the
`
`transaction script 44 to bind the message digest with the true time.” Ex.
`
`1008, 66 (quoting ’095 Patent, 7:38-53).
`
` Maxim also cited to the statement that “the Service Provider creates a
`37.
`
`transaction script 44 which appends the contents of the input data
`
`object to the true time (sum of real time clock 14 and the value of
`
`the clock offset object)” and that “the instructions to perform this
`
`operation are stored in the transaction group 40 as a transcription group
`
`object B5.” Ex. 1008, 66 (quoting ’095 Patent, 7:21-30).
`
` In the first example, a transaction script is called on to bind the true time to
`38.
`
`a message digest. In the second example, a transcript script calculates the
`
`true time by taking the time from the real time clock and adding a time
`
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`Docket No. 020358.0206-US03
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`offset. Both of the examples cited by Maxim involve a transaction script
`
`which utilizes a time stamp generated by the timing circuit as opposed to a
`
`transaction script that itself includes or contains a time stamp.
`
` The sections of the specification cited by Maxim make clear that the claim
`39.
`
`term “the transaction script including at least a representation of the time
`
`stamp generated by the timing circuit” refers to the case where a
`
`transaction script uses a time stamp generated by the timing circuit. Other
`
`sections of the specification are consistent with these disclosures. For
`
`example, the specification states that “the transaction script 44 could also
`
`bind up the true time in the certificate.” ’095 Patent, 13:2-3. That would
`
`require the transaction script to obtain a time stamp from the timing circuit
`
`so that it can be bound to the certificate.
`
` Based on these disclosures, it is my opinion that the BRC for “the
`40.
`
`transaction script including at least a representation of the time stamp
`
`generated by the timing circuit” includes “a transaction script that uses a
`
`time stamp generated by the timing circuit.”
`
`“memory means for storing a predetermined program”
`
`
` The term “memory means for storing a predetermined program” is used in 41.
`
`dependent claim 5, which depends from claim 1. Claim 1 recites a “first
`
`memory connected to said microprocessor circuit, said first memory for
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`Docket No. 020358.0206-US03
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`storing a first data object” and a “second memory connected to said
`
`microprocessor circuit, said second memory including instructions readable
`
`by said microprocessor circuit.” The specification discloses that “memory
`
`circuitry 20 may contain both read-only-memory and non-volatile random-
`
`access-memory.” ’095 Patent, 2:57-59. The specification further details
`
`that the “read-only-memory” of the memory circuitry preferably consists of
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`“32 Kbytes of ROM memory 22 with preprogrammed firmware.” Id. at
`
`3:20-27. The “non-volatile random-access-memory” preferably consists of
`
`“8 Kbytes of NVRAM (non-volatile RAM) for storage of critical data.” Id.
`
`at 3:20-29. No other structure for a memory means is disclosed in the
`
`specification.
`
` I was instructed that if an element is expressed as a means for performing a
`42.
`
`specified function without reciting the supporting structure, the claim must
`
`be construed to cover the corresponding structure described in the
`
`specification or its equivalents. Under this requirement, the BRC for the
`
`claim term “memory means for storing a predetermined program” cannot
`
`mean memory means distinct from the first and second memories for
`
`storing data and firmware because the two memories described above are
`
`the only two memory structures described in the patent specification.
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`19
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`Docket No. 020358.0206-US03
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`“adjust said first data object according to said second data object
`responsive to a verification signal from said electronic device”
`
`
` Independent claim 1, from which claims 2-6 depend, recites a memory 43.
`
`including instructions to “adjust said first data object according to said
`
`second data object responsive to a verification signal from said electronic
`
`device.” The term “verification signal” does not appear in the
`
`specification.
`
` There is no indication of whether the “verification signal from said
`44.
`
`electronic device” refers to: (1) a signal from the electronic device that has
`
`yet to be verified and thus is to be verified by the claimed apparatus, (2) a
`
`signal sent from the electronic device that provides confirmation to the
`
`claimed apparatus of something, or (3) a signal to the claimed apparatus
`
`that something other than the signal itself (for example, a status, a battery
`
`level, or a memory capacity) is to be verified or has been verified.
`
` These are all very different things, and a person of skill in the art reading
`45.
`
`the claims, specification and file history would not understand which of
`
`these distinct possibilities are being claimed. The specification is
`
`completely devoid of any disclosure that would allow the skilled person to
`
`understand what was intended by the claimed “verification signal.”
`
`20
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`Docket No. 020358.0206-US03
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` It is my opinion that the other claim terms in the ’095 Patent would be
`46.
`
`understood by a person of ordinary skill in the art to carry their plain and
`
`ordinary meaning, and do not require construction.
`
`Hawkes Chapters
`
`
` I have reviewed the Hawkes Chapters (preface, introduction, and chapters 47.
`
`3, 6 and 8). Based on my review, the Hawkes Chapters are directed to the
`
`state of the art in smart card technology before 1990.
`
` The Hawkes Chapters (Ex. 1003) are chapters appearing in one book. The
`48.
`
`book, titled Integrated Circuit Cards, Tags and Tokens: New Technology
`
`and Applications was published in 1990.
`
` The Hawkes Chapters disclose various aspects of integrated circuit cards
`49.
`
`and tokens. Hawkes Ch. 6 discloses an “intelligent token,” which is a
`
`microcontroller based secure transaction integrated circuit. Figure 6.3 of
`
`Hawkes Ch. 6 is a block diagram of the token.
`
`21
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`
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`Docket No. 020358.0206-US03
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`
`
` As shown in Figure 6.3 of Hawkes Ch. 6, the token includes a
`50.
`
`microcontroller core such as the “control processor”; a math coprocessor
`
`such as the “RSA processor” connected to the microcontroller core;
`
`memory circuitry such as the “program memory” and “data memory”
`
`connected to the microcontroller core; an input/output interface such as the
`
`“serial I/O” connected to the microcontroller core; and a real time clock
`
`such as the “clock” connected to the microcontroller core. Id.
`
` The Hawkes Chapters teach that the token can be used to perform digital
`51.
`
`cash transactions in a secure manner. For example, the Hawkes Chapters
`
`disclose that transaction messages can be used to move stored funds from
`
`the token to a point-of-sale terminal. Hawkes Preface & Introduction, pp. x,
`
`7; Hawkes Ch. 6, pp. 83-85. According to Hawkes Ch. 6, “these messages
`
`22
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`
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`Docket No. 020358.0206-US03
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`would be prepared on the retailer terminal and sent to the token for
`
`approval by the token holder (inspection in the token window by the user)
`
`and, if approved, signed by the token and returned to the terminal.”
`
`Hawkes Ch. 6, pp. 84-85. Hawkes Ch. 6 explains that the messages include
`
`the amount of funds to be transferred. Id. at 83.
`
` As shown in Figure 6.1, random number challenges can be used for
`52.
`
`authentication of the parties to a transaction.
`
`
`
` Messages themselves can also be authenticated by including random
`53.
`
`numbers in them. Hawkes Ch. 8, p. 150.
`
` Hawkes Ch. 8 discusses the use of sequence numbers as another way of
`54.
`
`verifying the authenticity of messages to guard against replay. Id. at 153.
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`23
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`Docket No. 020358.0206-US03
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` In order for a message to be sent with a sequence number, the
`55.
`
`microprocessor must have access to the sequence number maintained by a
`
`transaction counter.
`
` To the extent that Hawkes Ch. 8 does not explicitly disclose that a
`56.
`
`“transaction counter” is connected to the microprocessor, one skilled in the
`
`art would understand that such a connection is required for operability of
`
`the sequence number scheme described in Hawkes Ch. 8.
`
` Hawkes Ch. 8 also discloses the use of RSA encryption with the token of
`57.
`
`Hawkes Ch. 6, and in particular the use of a specialized chip “for much
`
`faster RSA processing.” Id. at 151; see also Hawkes Ch. 6, p. 88, Fig. 6.3
`
`(showing separate “RSA processor”). Encryption key pairs are generated
`
`by the token. Id. at 161.
`
`58.
`
` As demonstrated by Hawkes Ch. 6 and Ch. 8, it was well known to a
`
`person of ordinary skill that a coprocessor could be used to efficiently
`
`process the mathematical calculations used in encryption routines.
`
` Hawkes Ch. 6 discloses that the illustrated clock maintains information
`59.
`
`about the date and time of day, and that including the date and time in the
`
`messages prevents replays of transactions. Hawkes Ch. 6, pp. 85, 87.
`
`24
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`Docket No. 020358.0206-US03
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`Cremin
`
`
` I have reviewed Cremin (Ex. 1004). Based on my review, Cremin 60.
`
`describes a secure transfer of data between portable electronic card-like
`
`devices through a coupling terminal. Cremin, 1:1-8; 2:10-20.
`
` In one embodiment of Cremin, one card is held by a “consumer” (e.g., a
`61.
`
`customer) wishing to make a payment and the other card held by a “trader”
`
`(e.g., a store) wishing to receive a payment from the consumer. Id. at 5:22-
`
`6:4.
`
`
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`25
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`Docket No. 020358.0206-US03
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` The internal electronics are shown in Figure 2. They include an
`62.
`
`input/output interface such as “input/output driver 16,” microprocessor
`
`circuit such as “CPU 12,” coprocessor circuit such as “CPU 24,” timing
`
`circuit such as “clock generator 15,” first memory such as “RAM 14,” and
`
`second memory such as “ROM 11.” Id. at 1:9-15; 7:8-28.
`
` Cremin teaches that programs containing instructions for the processor are
`63.
`
`stored in ROM memory. Id. at 7:10-12; 7:16.
`
` Cremin also teaches that a monetary balance is stored on the consumer card
`64.
`
`in RAM memory. Id. at 6:23. If a monetary transfer from the consumer to
`
`the trader is verified, the monetary balance in the memory of the consumer
`
`card is reduced. Id. at Abstract, 13:12-28.
`
`Ishiguro
`
`
` I have reviewed Ishiguro (Ex. 1005). Based on my review, Ishiguro 65.
`
`describes the use of IC (integrated circuit) cards as prepaid cards or credit
`
`cards. Ishiguro, 1:3-5.
`
` Ishiguro teaches that when an IC card is used as a prepaid card, the value of
`66.
`
`the card is written to the card. Id. at 1:6-8. When a service is paid for with
`
`the IC card, the charge for the service is subtracted and the remaining value
`
`is written to the card. Id. at 1:10-13.
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`Docket No. 020358.0206-US03
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` Ishiguro teaches that when the IC card is inserted into an IC card terminal,
`67.
`
`the card and the terminal both authenticate each other using a
`
`cryptographic scheme. Id. at 1:40-45; 2:54-3:19. Thus, the terminal is able
`
`to detect a forged card and the card is able to detect an altered terminal. Id.
`
`at 2:36-38. Ishiguro teaches that a monetary transaction takes place only
`
`after the IC card h
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