throbber
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. 5,949,880
`
`For: TRANSFER OF VALUABLE
`INFORMATION BETWEEN A SECURE
`MODULE AND ANOTHER MODULE
`
`
`
`
`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 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 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 compensation is not dependent upon the
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`CHASE EX. 1011 - p. 1/30
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`

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`Docket No. 020358-00006-US06
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`outcome of, or my testimony in, the present covered business method patent
`
`review or any litigation proceedings.
`
`Background
`
`2. My background, qualifications, and experience relevant to the issues in
`
`proceeding are summarized below. My curriculum vitae as related to the
`
`issues in this proceeding is submitted herewith as Exhibit 1012.
`
`3.
`
`I am currently Chief Technology Officer of Cloudastructure, an Internet-based
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`video security service, and am currently on retainer to advise, consult with,
`
`and maintain Parkinson’s disease testers for the Andy Grove Foundation of
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`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 since graduation, which include
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`2
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`Docket No. 020358-00006-US06
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`training in the programming, capabilities, technological limitations, and uses
`
`of smart cards by Micro Card Technologies, Inc., a subsidiary of Bull.
`
`5. Beginning in 1973, I had the position of Vice President of Engineering for
`
`Atari. At that time, Atari’s arcade video games operated on a cash basis, and
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`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
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`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
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`technologies were also not appropriate, since relatively expensive phone lines
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`would be required for each credit card reader. There was therefore a
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`recognized benefit from having an inexpensive stored-value medium where
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`value could be deposited by the consumer and debited by an arcade machine
`
`without communicating with a central authority.
`
`6. Through my work at Atari, I began to follow developments in technologies
`
`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 development of
`
`integrated-circuit based “smart cards” which provided persistent storage
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`3
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`Docket No. 020358-00006-US06
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`coupled with a processing capability that could implement sophisticated
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`security protocols.
`
`7. Around 1986, I began working with my former Atari colleague Christopher
`
`Wright to develop a smart card-based solution for postage-printing stations.
`
`Mr. Wright and I started Wright Technologies to research and implement this
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`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
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`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
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`generate secure printed postage value. This work resulted in applications for
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`patents filed by myself and Mr. Wright, which include issued U.S. Patent Nos.
`
`4,900,904 (the “’904 patent”) (Exh. 1013) and 4,864,618 (Exh. 1014), both
`
`filed October 17, 1988.
`
`8. Starting in 1986, Wright Technologies completed working prototypes of a
`
`postage terminal that used a smart card to securely store and transmit in an
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`Docket No. 020358-00006-US06
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`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.
`
`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
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`Docket No. 020358-00006-US06
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`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.
`
`10. One aspect of my work at Verifone included securing transactions against
`
`“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.
`
`11. Verifone also manufactured credit card reading terminals such as those found
`
`in grocery stores. They use encryption techniques, such as DES, to secure
`
`communications to and from the terminals. While at Verifone, my team
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`Docket No. 020358-00006-US06
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`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.
`
`12. In 1994, Wright Technologies licensed the secure smart card transaction
`
`patents that grew out of our postage metering product to Pitney-Bowes, and
`
`were retained by Pitney-Bowes to develop production versions of a postage
`
`metering system based on our prototype. We ultimately completed a
`
`production system which was rolled out and marketed. We ceased our work
`
`with Pitney-Bowes in 1998, and I continued to 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.
`
`13. Through work related to smart cards I have also become aware of how 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.
`
`7
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`Docket No. 020358-00006-US06
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`14. During the time period above, and through the present, I have regularly
`
`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.
`
`15. I am also a member of the Institute for Electrical and Electronics Engineers
`
`(“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.
`
`16. My work in the smart card field included implementing security features.
`
`These included mechanical security features of devices themselves; optical
`
`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.
`
`8
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`Docket No. 020358-00006-US06
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`17. The patents that issued out of my work in smart cards include U.S. Patent No.
`
`4,900,904 (Exh. 1013), 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 at 3:46-66. Encryption, according to
`
`methods of the time, generally consisted of applying known mathematical
`
`operations to a piece of information, where the mathematical operations take
`
`the encryption/decryption key as an argument. The mathematical operations
`
`can then be reversed by using the same key (in the case of shared key
`
`systems) or an inverse key (in the case of public-key cryptographic systems).
`
`Materials Considered
`
`18. I have reviewed each of the following:
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`Docket No. 020358-00006-US06
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`a. U.S. Patent No. 5,949,880 (“the ’880 Patent”), including the claims,
`
`description and prosecution history (which are identified in the
`
`Petition respectively as Exhibits 1001 and 1002);
`
`b. U.S. Patent No. 5,940,510 (“the ’510 Patent”), which is the parent of
`
`the ’880 Patent (Exh. 1003);
`
`c. U.S. Patent No. 5,428,684 to Akiyama et al. (Exh. 1004; hereinafter
`
`“Akiyama”).
`
`d. Integrated Circuit Cards, Tags, and Tokens by P.L. Hawkes, et al.
`
`(Exh. 1005; hereinafter “Hawkes”), which includes:
`
`i. P.L. Hawkes, Preface & Introduction (“Hawkes Preface &
`
`Introduction”);
`
`ii. Chapter 2: Smart Card Technology – A US Pioneer’s Viewpoint
`
`by A.R. Lessin (hereinafter, “Hawkes Chapter 2”);
`
`iii. Chapter 6: Secure Transactions with an Intelligent Token by
`
`W.L. Price and Bernard J. Chorley (hereinafter, “Hawkes
`
`Chapter 6”); and
`
`iv. Chapter 8: Cryptography and the Smart Card by D.W. Davies
`
`(hereinafter, “Hawkes Chapter 8”).
`
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`Docket No. 020358-00006-US06
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`e. Whitfield Diffie and Martin Hellman, New Directions in
`
`Cryptography, IEEE TRANS. INFORM. THEORY IT-22, 6 (Nov.
`
`1976), 644-654 (Exh. 1015, hereinafter, “Diffie-Hellman”)
`
`f. Rivest, et al., A method for obtaining digital signatures and public key
`
`crypto-systems, Communications of ACM, Volume 21, Number 2
`
`(1978) (Exh. 1016, hereinafter, “Rivest”).
`
`19. Upon reviewing the ’880 Patent, I understand that a non-provisional
`
`application was filed on November 26, 1997 (Appl. No. 08/978,798) as a
`
`divisional from application number 08/594,975, itself filed on January 31,
`
`1996. Application number 08/978,798 issued as the ’880 Patent. For the
`
`purposes of my analysis, based on the filing date that appears on the patent, I
`
`assume the time of the purported invention to be January, 1996.
`
`Level of Ordinary Skill in the Art
`
`20. It is my opinion that a person of ordinary skill in the art at the time of the
`
`inventions claimed in the ’880 Patent 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
`
`11
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`Docket No. 020358-00006-US06
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`computer systems engineering related to secure data transactions, or the
`
`equivalent. I was a person of at least ordinary skill in this art in January,
`
`1996.
`
`State of the Art in 1995
`
`21. The development and rapid proliferation of computing technology in the
`
`1990’s, and in particular its application to financial transactions, created a
`
`requirement for computerized mechanisms for secure communications.
`
`22. In discussing my background, I explained developments in this area that I 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.
`
`23. Others in the industry were also developing smart card technology well before
`
`1995. For example, as described in Hawkes Chapter 2, Roland Moreno
`
`obtained patents on smart card technology in 1975 that were licensed to
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`Docket No. 020358-00006-US06
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`companies such as Honeywell Bull, Schlumberger and Philips by 1978.
`
`Hawkes Chapter 2, p. 26.
`
`24. 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.
`
`25. The Hawkes Chapters, published in 1990, disclose various aspects of
`
`integrated circuit devices holding data, such as monetary equivalents, that can
`
`be manipulated in a secure manner to prevent tampering. For example,
`
`Hawkes Chapter 6 discloses an “intelligent token.” Figure 6.3 shows a block
`
`diagram of the “intelligent token.”
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`
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`Docket No. 020358-00006-US06
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`26. Encryption technology as it relates to smart cards was mature by 1995.
`
`Shared key encryption schemes, which rely on two parties to a communication
`
`performing known algorithms to encrypt and decrypt messages using the same
`
`secret key, had already been in use for some time. In 1976, Whitfield Diffie
`
`and Martin Hellman published their seminal paper describing a public key
`
`cryptography system where the two parties to a communication instead use
`
`different keys. See Diffie-Hellman, Exh. 1015. In a public key cryptography
`
`system, each entity has two keys. Id. at 647-648. One key is made public,
`
`and the other kept private; the public key can decrypt information encrypted
`
`with the private key, and vice versa. Id. Diffie-Hellman articulated the
`
`concept of a public key cryptography system, but did not fully describe an
`
`implementation to put the concept into practice. Two years later, in 1978,
`
`Rivest, Shamir, and Adelman published an implementation of a public key
`
`cryptography system called “RSA.” See Rivest. Within 10 years, by 1987,
`
`RSA-specific chip designs were made available and marketed, and it was
`
`recognized that implementing RSA on smart card chips was feasible. See,
`
`e.g., Hawkes Chapter 8, p. 151. One such smart card, incorporating a math
`
`coprocessor to perform RSA calculations, was developed as a prototype for a
`
`pilot program in the U.K. See Hawkes Chapter 6, pp. 87-88.
`
`Overview of the ’880 Patent
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`Docket No. 020358-00006-US06
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`27. Based on my review of the ’880 Patent, it describes a method for
`
`communicating valuable data from one module to another module via an
`
`interface that enables a user to fill a module with a unit of exchange and to use
`
`or transfer the units to other modules. ’880 Patent, Abstract.
`
`28. The main disclosure in the specification relevant to the claims of the ’880
`
`Patent is of the communication of data between two modules to handle
`
`debiting the cost of a train fare on a stored value card. ’880 Patent at 7:8-9:16.
`
`The user of one module 102 puts it into communication with the electronic
`
`device 104. ’880 Patent at 7:28-35. The microprocessor based device 104
`
`receives information from the module 102. In the specification this data can
`
`include “the portable module's serial number, transaction count, and the
`
`encrypted data packet,” although the claim merely requires a “first value
`
`datum.” Id. at 7:36-39. The “encrypted data packet” is described as
`
`containing the ID number, transaction count, and account balance. Id. at 7:23-
`
`27. The electronic device 104 then passes this information to the other
`
`module 108, which performs a sequence of mathematical operations that
`
`include decrypting the encrypted data found in the first data, making a few
`
`comparisons to make sure that the data received is authentic as between the
`
`non-encrypted data and the encrypted data packet. Id. at 7:43-54. The second
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`Docket No. 020358-00006-US06
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`module 108 then “subtracts the first value, the train fare, from the monetary
`
`value” that was received from the first module and decrypted. Id. at 7:61-65.
`
`29. The second module 108 then creates a data packet, a second data, which the
`
`specification describes, but the patent does not claim, as comprising at least
`
`“the portable module's serial number, the incremented transaction count, and
`
`the reduced monetary value of the portable module 102.” Id. at 7:66-8:7. The
`
`packet is then encrypted and returned to the first module, which stores the
`
`packet. Id. at 8:6-13.
`
`30. The communication of data described in the ’880 Patent occurs between two
`
`“modules” and through an “electronic device,” which are shown in Figure 1 of
`
`the ’880 Patent:
`
`Module 102, which is described in the specification as being a “portable
`
`
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`Docket No. 020358-00006-US06
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`module” but is not claimed as such, communicates with an electronic device
`
`104 through a communication means 106, and device 104 in turn relays those
`
`communications to another module 108, which is described in the
`
`specification as being a secure microprocessor based device 108.
`
`Fundamentally, the ’880 Patent is directed to exchanging, modifying, and
`
`updating records stored in memory. Those records are used to represent items
`
`of value.
`
`31. I have reviewed the ’510 Patent, which is the parent of the ’880 Patent. The
`
`’510 Patent claims the “portable module 102” and “secure module 108”
`
`described in the specification. Since the claims of the ’880 Patent use the
`
`more general term “module,” rather than “portable module” and “secure
`
`module,” it is my opinion that a person of ordinary skill in the art would
`
`understand that the module includes a basic set of structures and features
`
`required to carry out the functions claimed in the method of the ’880 Patent.
`
`For illustrative purposes, Figures 2 and 3 of the ’880 Patent illustrate the
`
`structure of the non-claimed portable module and secure module:
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`Docket No. 020358-00006-US06
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`
`
`Based on the descriptions of the portable module and secure module, it is my
`
`understanding that a person of ordinary skill in the art would not interpret the
`
`term “module” to refer to either the “portable module” or the “secure module”
`
`specifically, but instead to a broader category of hardware that can perform
`
`the recited functions. For example, the generic “module” does not need to
`
`include a math coprocessor, since only the secure module 108, and not the
`
`portable module 102, includes a math coprocessor. ’880 Patent at 3:40-4:25,
`
`4:26-5:35. Both of the described modules include an input/output circuit and,
`
`because the claim recites communication between the modules and the
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`Docket No. 020358-00006-US06
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`electronic device, it is my opinion that a person of ordinary skill in the art
`
`would understand the module to also include hardware for communicating.
`
`The claimed first module recites being able to store a value, therefore the first
`
`module must contain a memory. Since the claimed second module can
`
`receive and operate on data, ’880 Patent at 4:27-39, 7:45-8:7, a person of
`
`ordinary skill would also understand the second module to contain a memory.
`
`While the portable module 102 and secure module 108 both have an ID
`
`number and clock circuit, neither of these structures are required by the claims
`
`of the ’880 Patent. Since the claims only require the ability to send and
`
`receive data, to mathematically operate on data, and to store data, it is my
`
`opinion that the only structures that a person of ordinary skill in the art would
`
`understand the ’880 Patent to require are a memory control circuit or
`
`processor, memory, and input/output circuit.
`
`32. The specification describes the components of the “module” as follows:
`
`a. The two modules described in the specification are both described as
`
`having a “memory.” In the portable module, the memory is described
`
`as being “for storing and retrieving vital information pertaining to the
`
`system to which the module 102 may become attached to.” Id. at
`
`3:57-60. For the secure module, the memory is described as being
`
`“both read-only memory and non-volatile random-access-memory”
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`Docket No. 020358-00006-US06
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`and that “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.” Id. at 4:66-5:4. A person of ordinary skill in
`
`the art would understand this to be no different than ordinary
`
`memories that can be used to store data on a generic computer, such
`
`as read-only memories (“ROM”) or andom-access memory. Generic
`
`computers generally use a nonvolatile memory like a ROM for
`
`storing, for example, programs or data that do not need to be changed
`
`and should be the same every time a computer is used.
`
`b. The two modules in the specification are both described as having
`
`their own “input/output circuit” which is described as a circuit that
`
`either “controls the data flow into and out of the portable module
`
`102,” in the case of the one, or that “enables bidirectional
`
`communication.” Id. at 4:10-24; 5:7-8. A person of ordinary skill in
`
`the art would understand that generic computers include hardware that
`
`allows a computer to receive data input or generate data output for
`
`communication with other systems. Generic computers include an
`
`input/output circuit.
`
`c. The two modules in the specification are described as having circuits
`
`for controlling the contents of memory. One module has a “memory
`
`20
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`Docket No. 020358-00006-US06
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`control circuit” which is described as a memory controller that
`
`“controls the reading and writing of data into and out of the memory
`
`202.” Id. at 4:4-6. The other module has a “microcontroller core”
`
`that is described to be a generic microprocessor, such as “preferably
`
`an 8-bit microprocessor.” Id. at 4:56-57. A person of ordinary skill in
`
`the art would understand that generic computers include circuits, such
`
`as processors, to read and write contents to or from memory.
`
`33. The use of smart cards to fulfill the role of a “module” as described above was
`
`well-known in the prior art at the time of the invention. As described in
`
`Hawkes Chapter 6, for example, existing smart cards had a memory,
`
`processor, and input/output circuits. The exemplary card included a
`
`“TMS7000 series of 8-bit microprocessors,” “32 K bytes of program
`
`memory,” “8K bytes of battery backed RAM,” and “[c]ommunication
`
`between the token and the outside world . . . by way of a three-wire serial
`
`interface.” Hawkes Chapter 6, p. 87; Fig 6.3. A person of ordinary skill in
`
`the art would understand that the claims of the ’880 Patent are not limited to
`
`smart cards or other portable devices, as, for example, the specification
`
`describes an embodiment where the first module can be attached to cargo,
`
`’880 Patent, 3:50-56, and where the second module can be incorporated into
`
`“a computer.” Id. at 4:36.
`
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`Docket No. 020358-00006-US06
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`34. The ’880 Patent does not include a detailed description of the structure of the
`
`“microprocessor based device 104.” Instead it broadly states that that
`
`electronic device 104 “can be any of an unlimited number of devices.” ’880
`
`Patent at 2:37-38. Examples include a “personal computer, an add-a-fare
`
`machine at a train or bus station (similar to those in today's District of
`
`Columbia metro stations), 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, etc.” Id. at 2:38-45. The main description of the device 104 is
`
`functional, describing what the device 104 can do instead of what it is. The
`
`electronic device both (1) can receive data from the first module and provide
`
`it to the second module, and (2) receive data from the second module and
`
`provide it to the first module. From this description, a person of ordinary skill
`
`in the art would understand that the ’880 Patent conceives of any generic
`
`computer fulfilling these functional roles. Moreover, the form of
`
`communication between the portable module reader and the portable module
`
`is described as being “preferably via a single wire or contact connection,” but
`
`could instead be “multiple wires, a wireless communication system, infrared
`
`light, any electromagnetic means, a magnetic technique, or any other similar
`
`technique.” Id. at 2:52-58. A person of ordinary skill would understand that
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`Docket No. 020358-00006-US06
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`the communication is not limited to any particular structure or form of
`
`communication, and that generic computers at the time were able to
`
`communicate over wired, wireless, infrared, and a variety of other ways.
`
`Since any possible form of communication was contemplated, a generic
`
`computer would be able to fulfill this role.
`
`35. The electronic device 104 could also be met by a device that is integrated into
`
`one of the two modules. There is nothing in the claim or specification that
`
`mandates that either of the modules be separate from the electronic device
`
`104. Indeed, Figure 1 above shows the secure module 108 and
`
`microprocessor based device 104 surrounded by a hashed line. This is
`
`emphasized by the specification explicitly referring to the communication
`
`means 106 on Figure 1 as being wired or wireless, while only mentioning
`
`wired communication as between the secure module 108 and microprocessor
`
`based device 104. Moreover, a person of ordinary skill would understand that
`
`for the types of microprocessor based devices 104 described in the ’880
`
`Patent—for example a Laundromat, mass transit fare turnstyle, or mail
`
`metering device—it would be practical to include the secure module inside the
`
`device for added physical security of the secure module. Because the ’880
`
`Patent does not claim a “portable” module and a “secure” module, the recited
`
`electronic device could be integrated into either recited module.
`
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`Docket No. 020358-00006-US06
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`Claim Construction
`
`36. I have been asked to offer my opinion regarding the understanding of a person
`
`skilled in the art regarding certain claim terms in the ’880 Patent. I
`
`understand that in the present proceeding, claim terms are interpreted as the
`
`broadest reasonable construction consistent with the specification. Based on
`
`my review of the ’880 Patent, it is my opinion that the terms below should be
`
`construed to clarify the scope of the terms as it would be understood by a
`
`person of ordinary skill in the art. Other terms would carry their plain and
`
`ordinary meaning, and do not require construction.
`
`37. Based on my review, the ’880 Patent does not require that the “electronic
`
`device” be distinct from either the first module or second module under the
`
`broadest reasonable construction. Since it is defined functionally, any
`
`electronic structure that can perform that function could meet the limitation.
`
`For example, an input/output interface like a wireless, wired, conductive, or
`
`other kind of interface on one of the two modules, or an integrated computer
`
`that includes both the module and a communication interface for the module,
`
`could meet this limitation.
`
`“Module” (Claim 1)
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`24
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`Docket No. 020358-00006-US06
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`38. The term “module” should be construed. Unlike in the ’510 Patent, which in
`
`the claims identifies the elements of a “portable module” and “secure
`
`module,” the ’880 Patent does not claim any constituent elements of the
`
`“module.” Although the specification describes components of the portable
`
`module and secure module, the ’880 Patent does not claim a portable module
`
`or a secure module. The ’880 Patent only claims two “modules.” Because the
`
`’510 Patent used the special terms “porta

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