IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`COMPASS BANK, AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS
`TRAVEL RELATED SERVICES COMPANY, INC., DISCOVER FINANCIAL
`SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC., NAVY FEDERAL
`CREDIT UNION, AND STATE FARM MUTUAL AUTOMOBILE INSURANCE
`COMPANY
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner.
`
`Case No. To Be Assigned
`
`Patent No. 6,237,095
`APPARATUS FOR TRANSFER OF SECURE INFORMATION
`BETWEEN A DATA CARRYING MODULE AND AN
`ELECTRONIC DEVICE
`______________________________________________________________________________
`
`DECLARATION OF PETER ALEXANDER, PH.D.
`
`i
`
`COMPASS EXH. 1019 - Page 1 of 67
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`

`
`V.
`VI.
`
`VII.
`
`I.
`II.
`III.
`IV.
`
`Table of Contents
`QUALIFICATIONS ............................................................................................................1
`MATERIALS CONSIDERED ............................................................................................3
`LEVEL OF ORDINARY SKILL AND RELEVANT TIME..............................................5
`LEGAL STANDARDS .......................................................................................................5
`A.
`Anticipation..............................................................................................................5
`B.
`Obviousness .............................................................................................................5
`OVERVIEW OF THE ’095 PATENT.................................................................................6
`CLAIM CONSTRUCTION...............................................................................................14
`A.
`“a verification signal from said electronic device”................................................14
`B.
`“a transaction script, the transaction script including at least a
`representation of the time stamp generated by the timing circuit” ........................15
`“memory means for storing a predetermined program” ........................................16
`C.
`“programmable via object oriented software” .......................................................17
`D.
`CERTAIN REFERENCES DISCLOSE OR SUGGEST ALL OF THE
`CLAIMED FEATURES OF THE ’013 PATENT.............................................................19
`A.
`Prior Art Overview ................................................................................................19
`1.
`The Hawkes Reference (Ex. 1003) ............................................................19
`2.
`The Chaum Reference (Ex. 1004) .............................................................24
`3.
`The Ciarcia Reference (Ex. 1005) .............................................................25
`4.
`The Brown Reference (Ex. 1006) ..............................................................26
`5.
`The Ingalls Reference (Ex. 1007) ..............................................................26
`The Hawkes Reference Alone or in Combination with One or More of the
`Chaum and/or Ciarcia References Renders Obvious Claims 1-2 and 4-8 of
`the ‘095 Patent Under U.S.C. § 103.......................................................................27
`1.
`Motivation to Combine..............................................................................27
`2.
`Claim Chart................................................................................................30
`The Hawkes Reference Alone or in Combination with One or More of the
`Brown and/or Ingalls References Renders Obvious Claim 3 of the ‘095
`Patent Under 35 U.S.C. § 103................................................................................61
`1.
`Motivation to Combine..............................................................................62
`2.
`Claim Chart................................................................................................63
`VIII. CONCLUDING STATEMENTS ......................................................................................65
`
`B.
`
`C.
`
`i
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`COMPASS EXH. 1019 - Page 2 of 67
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`

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`I, Peter Alexander, declare and state as follows:
`1.
`The petition names Compass Bank, American Express Company, American Express
`Travel Related Services Company, Inc., Discover Financial Services, Discover Bank, Discover
`Products Inc., Navy Credit Federal Credit Union, and State Farm Mutual Automobile Insurance
`Company as real parties-in interest. I have been retained by American Express Company,
`American Express Travel Related Services Company, Inc., Compass Bank, Discover Financial
`Services, Discover Bank, Discover Products Inc., Navy Credit Federal Credit Union, and State
`Farm Mutual Automobile Insurance Company (collectively “Petitioners”) as an expert witness in
`this case to offer my opinions on U.S. Patent No. 6,237,095 (“’095 Patent”). I am being retained
`at my customary rate of $525/hour. I have no financial interest in, or affiliation with, the
`Petitioners, real parties-in-interest, or the patent owner, which I understand to be Maxim
`Integrated Products, Inc. My compensation is not dependent upon the outcome of the present
`covered business method patent review or any related litigation proceedings.
`2.
`As preparation for forming opinions expressed in this declaration, I reviewed the ’095
`Patent prosecution history, specification and claims, and the materials discussed below.
`I.
`QUALIFICATIONS
`3.
`My academic credentials include a Ph.D. from the Massachusetts Institute of Technology
`in Electrical Engineering, a Masters degree from the University of Illinois (Urbana) in Electrical
`Engineering, and a Bachelors degree in Electrical Engineering from the University of Canterbury
`(New Zealand). My Curriculum Vitae, attached separately as Ex. 1020 to the Petition, lists my
`prior engagements where I have testified as an expert witness for at least the last 4 years, and a
`list of my publications authored in at least the last 10 years.
`4.
`My academic degrees are all in Electrical Engineering. While undertaking my Doctorate
`work at MIT I worked in the Research Lab. for Electronics that has for decades contributed to
`basic research in information theory, coding, and statistical estimation theory. My Ph.D. thesis
`was in the field of statistical estimation theory as applied to communications systems.
`5.
`As indicated in my Curriculum Vitae, my experience in computer technology design and
`development spans more than 35 years. I have been a designer of computer systems for
`processing, storage and display of data since 1974. In the 1970s, I worked with, among others,
`products in Intel’s various lines of microprocessor and microcontrollers. In the first few years I
`was a university professor teaching graduate and undergraduate electrical engineering courses -
`including the design and programming of computers. Along with a group of young graduate
`students I developed a microprocessor system for industrial control applications in 1974 using
`the Intel 4004 CPU chip as the base component.
`6.
`When I entered the computer industry in the mid-1970s I developed special software and
`custom hardware systems for government agencies such as the Defense Communications
`Agency, Naval Research Labs, and National Security Agency. For most of that period I held a
`Secret security clearance and programmed microprocessor computers for use in defense systems.
`Typically these systems were used for radar and sonar systems deployed by the military. My
`design efforts involved both software and computer hardware architecture and involved custom
`hardware implementations using commercial CPU and digital signal processing (“DSP”) chips.
`
`1
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`COMPASS EXH. 1019 - Page 3 of 67
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`

`
`During this phase I developed many systems based on commercial microprocessor and DSP
`chips from Motorola, Intel and Texas Instruments.
`7.
`My contract work with the DSP systems developed for the National Security Agency
`resulted in the commercialization of a high speed computer system. During the 1980s I founded
`a company that sold these high performance machines as commercial products, a company called
`Numerix Corporation. I formulated the system design and programmed a significant portion of
`the application software that ran on the machines. During this decade I was also spearheading
`efforts to migrate the discrete integrated circuits (“IC”) hardware implementations into gate
`arrays – a form of custom chip that was in vogue during that time period. I was the chief
`architect of the systems that we built and personally formulated all the key bus, memory and
`processor interconnections. At that time I had roughly 20 hardware engineers and 30 software
`engineers reporting to me.
`8.
`The high-performance processor products were sold to companies like Standard Oil of
`Ohio in Dallas, Texas to process seismic field data collected for oil exploration as well as to US
`government agencies as commercial off-the-shelf products. For example, some of our systems
`provided processing for sonar systems used to track Soviet submarines in the Pacific Ocean.
`Others were used in military radar systems for missile tracking by RCA. Numerix Corporation
`was acquired in 1989 by a Boston company called Mercury Computer Systems that continues to
`sell digital signal processing solutions to US government agencies.
`9.
`In the mid-1990s I focused my career more on business–oriented software development.
`For example I directed the efforts of approximately 100 software developers and Quality
`Assurance personnel while employed at Platinum Software in the mid to late 1990s. The
`software systems were “client-server” business applications such as finance, manufacturing and
`sales force automation. At that time those applications were being adapted to web server
`implementations in order to allow our customers to access the same content through a web
`browser running on a client computer.
`10.
`Then in the period 1999-2003 I was responsible for teams of 50 or more web site
`developers at companies such as CareerPath.com (now merged with the CareerBuilder.com site).
`As such I have had a rich and in-depth exposure to many forms of computer applications
`involving the display of web pages on client computers. My work in web site design led to a
`hands-on knowledge of cryptographic systems for secure access and user authentication. My
`experience in this domain results from having designed and created two different commercial
`web sites that required extensive engineering effort to support secure e-commerce transactions.
`For example while running a development team of about 15 people at InfrastructureWorld.com
`as Chief Technology Officer I engineered a hardened web site that provided extraordinary levels
`of security for the high-dollar business transactions. The web server implementations were
`designed to support authentication through Public Key certificates, user access control via
`authenticated account login, Secure Sockets Layer (“SSL”) extranet connections, and document
`encryption.
`11.
`Similarly, while at Syntricity, Inc. in San Diego, CA as Vice President, Technical
`Operations, I designed and developed a secure Application Services Provider (ASP) Internet
`system to host a hundred or so corporate customers, allowing them secure access to tools for
`
`2
`
`COMPASS EXH. 1019 - Page 4 of 67
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`

`
`transfer of data files and analysis of semiconductor yield data. This web site used secure FTP for
`high-speed data transfers, SSL for secure web site access, and user authentication.
`12.
`In addition I have served as a technical expert in several contract and patent lawsuits
`involving cryptographic components. Briefly, these include Dongjin Semichem Co., Ltd. v.
`EmailFund, Inc., which involved an effort to implement wireless security software technology in
`handheld wireless devices. The concept was to use the Elliptic Curve Digital Signature
`Algorithm (ECDSA) to perform the functions of user authentication, non-repudiation, integrity
`and cryptographic primitives in a single integrated circuit that could be integrated into a smart
`phone. I have also contributed as a technical expert in cases such as: Adobe Systems, Inc. v.
`Wowza Media Systems, Inc. that involved Diffie-Hellman key exchange for flash media
`delivery; VirnetX Inc. v. Cisco Systems, Inc. and Apple Computer, Inc. that involved the SSL
`protocol, IPSec Internet packet encryption, Public Key cryptography authentication and
`encryption techniques using Digital Certificates; and, Leon Stambler v. Amazon.com, Inc., et al.
`that involved Point of Sale authentication systems in the early 1990s.
`13.
`In those efforts I frequently relied on documents referred to or directly related to those
`used to support this petition, namely Diffie-Hellman key exchange and the Diffie-Hellman U.S.
`Patent 4,200,770 from 1977 (“DH Key Exchange”), the Rivest Shamir Adleman (“RSA”) U.S.
`patent 4,405,829, also from 1977, and numerous documents and books published by Price and
`Davies, the British POS terminal authentication pioneers.
`14.
`In summary, I believe I am qualified to testify on the subjects of secure financial
`transactions and the implementation of cryptographic applications such as authentication, non-
`repudiation, and message integrity programmed into physical devices such as smart cards and
`tokens using microprocessors or application specific ICs.
`II.
`MATERIALS CONSIDERED
`15.
`I have reviewed each of the following:
`a.
`U.S. Patent No. 6,237,095 (“the ’095 Patent”) entitled “Apparatus for Transfer of
`Secure Information Between a Data Carrying Module and an Electronic Device”
`issued to Stephen M. Curry et al on May 22, 2001, including the claims,
`description and prosecution history (which are identified in the Petition
`respectively as Exhibits 1001 and 1002);
`
`b.
`
`Integrated Circuit Cards, Tags, and Tokens by P.L. Hawkes, et al. (Ex. 1003;
`hereinafter “Hawkes”), which includes:
`
`i.
`ii.
`
`iii.
`
`iv
`
`Preface by P.L. Hawkes (hereinafter, “Hawkes Preface”);
`Chapter 1: Introduction to Integrated Circuit Cards, Tags and Tokens for
`Automatic Identification by P.L. Hawkes (hereinafter, “Hawkes Chapter
`1”);
`Chapter 5: Electronic Coins by David Eglise (hereinafter, “Hawkes
`Chapter 5”);
`Chapter 6: Secure Transactions with an Intelligent Token by W.L. Price
`and Bernard J. Chorley (hereinafter, “Hawkes Chapter 6”); and
`
`3
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`COMPASS EXH. 1019 - Page 5 of 67
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`

`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`i.
`
`j.
`
`k.
`
`l.
`
`m.
`
`n.
`
`v.
`
`Chapter 8: Cryptography and the Smart Card by D.W. Davies
`(hereinafter, “Hawkes Chapter 8”);
`Texas Instruments, TMS7000 Family Microarchitecture User’s Guide (1982) (Ex.
`1008);
`
`U.S. Patent No. 5,485,520, titled “Automatic Real-Time Highway Toll Collection
`From Moving Vehicles,” to David Chaum et al. (Ex. 1004, hereinafter “Chaum”);
`
`Fernando Flischfisch et al, A Survey of the Electronic Payment Industry (Mar. 12,
`1994), http://web.mit.edu/ecom/Spring1997/gr5/epayment.htm (Ex. 1009);
`
`Steve Ciarcia, Ciarcia’s Circuit Cellar: Build the BASIC-52 Computer/Controller,
`BYTE MAGAZINE (Aug. 1, 1985) (Ex. 1005, hereinafter “Ciarcia”);
`
`John Forrest Brown, Embedded Systems Programming in C and Assembly (1994)
`(Ex. 1006, hereinafter “Brown”);
`
`Douglass Reilly, Programmer’s Bookshelf – Book review of John Forrest Brown,
`Embedded Systems Programming in C and Assembly, Dr. Dobb’s Journal (Nov.
`1, 1994) (Ex. 1010);
`
`Daniel H.H. Ingalls, Design Principles Behind Smalltalk, BYTE MAGAZINE
`(Aug. 1, 1981) (Ex. 1007, hereinafter “Ingalls”);
`
`“Object Oriented,” Encyclopedia of Computer Science & Engineering (3rd ed.
`1993) (Ex. 1017);
`
`Institution of Covered Business Method Patent Review Decision, Case
`CBM2014-179, Chase, Petitioner (U.S. Patent No. 5,940,510) (Ex. 1012);
`
`Report and Recommendation regarding claim construction in In re: Maxim
`Integrated Prods., Inc. MDL No. 2354, Misc. No. 12-244-JFC (W.D. Pa.) (Ex
`1014; hereinafter “R&R”) and Correction to Report and Recommendation (Ex.
`1015; hereinafter “R&R Correction”);
`
`Opinion and order regarding claim construction in In re: Maxim Integrated
`Prods., Inc. MDL No. 2354, Misc. No. 12-244-JFC (W.D. Pa.) (Ex 1016;
`hereinafter “CC Op.”);
`
`Petition for Covered Business Method Patent Review Under 35 U.S.C. §§ 321-
`329 and § 18 of the Leahy-Smith America Invents Act, Case CBM2014-177, JP
`Morgan Chase & Co., and JP Morgan Chase Bank, N.A. (“Chase”), Petitioner.
`(U.S. Patent No. 6,237,095) (Ex. 1012); and
`
`4
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`COMPASS EXH. 1019 - Page 6 of 67
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`
`o.
`
`Declaration of Stephen D. Bristow in support of Chase Petition for Covered
`Business Method Review of U.S. Patent No. 6,237,095 (Ex. 1013).
`
`LEVEL OF ORDINARY SKILL AND RELEVANT TIME
`III.
`It is my opinion that a person of ordinary skill in the art at the time of the inventions
`16.
`claimed in the ’095 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 computer
`systems engineering related to secure data transactions, or the equivalent. I was a person of at
`least ordinary skill in this art in the time period from 1994 to 1996. I remain a person of at least
`ordinary skill in this art today.
`17.
`The basis for my familiarity with the level of ordinary skill is my interaction with large
`numbers of workers in the computing field who were at this level of skill. The pertinent art was
`the configuration and arrangement of commercially available computer components, networks,
`systems and software to satisfy particular customer specifications, together with such
`programming as might be necessary to tie the components together and operate in the desired
`manner.
`18.
`In reaching my opinion as to the hypothetical person of ordinary skill in the art, I have
`considered the types of problems encountered in the art, the prior art solutions to those problems,
`the rapidity with which innovations are made, the sophistication of the technology, and the
`educational level and professional capabilities of workers in the field.
`IV.
`LEGAL STANDARDS
`Anticipation
`It is my understanding that a claim may be invalid as anticipated under 35 U.S.C. § 102 if
`19.
`each and every element of a claim, as properly construed, is disclosed either explicitly or
`inherently in a single prior art reference, subject to the limitations imposed by § 102 in
`paragraphs a-g. Under the principles of inherency, if the prior art necessarily functions in
`accordance with, or includes the claimed limitations, it anticipates. Persons of ordinary skill
`need not recognize the inherent characteristics or functioning of the prior art. In addition, a new
`scientific explanation for the functioning of the prior art does not render the old apparatus,
`composition, or method patentable. Such a reference, if it contained each and every element of a
`claim, would anticipate the claim.
`B.
`Obviousness
`Regarding the legal doctrine of obviousness, my understanding is as follows. A claim
`20.
`may be invalid even if each and every claim limitation is not present or disclosed in a single
`prior-art reference. Under the doctrine of obviousness, a claim may be invalid if the differences
`between the invention and the prior art are such that the subject matter as a whole would have
`been obvious at the time the invention was made to a person having ordinary skill in the art to
`which the subject matter pertains. A person of ordinary skill in the art is presumed to have
`knowledge of the relevant prior art at the time of the claimed invention.
`
`A.
`
`5
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`Obviousness is based on the scope and content of the prior art, the differences between
`21.
`the prior art and the claim, the level of ordinary skill in the art, and secondary indicia of
`obviousness and non-obviousness to the extent such indicia exist. The scope of the prior art
`comprises any prior art that was reasonably pertinent to the particular problems the inventor
`faced.
`The determination of whether the asserted claims would have been obvious to a person of
`22.
`ordinary skill in the art and, therefore, invalid, is not governed by any rigid test or formula. A
`determination that a claim is obvious is, instead, based on a common sense determination that the
`claimed invention is merely a combination of known limitations to achieve predictable results.
`Any of the following rationales are acceptable justifications to conclude that a claim would have
`been obvious: the claimed invention is simply a combination of known prior art methods to
`yield predictable results; the claimed invention is a simple substitution of one known element for
`another to obtain predictable results; the claimed invention uses known techniques to improve
`similar devices (methods, or products) in the same way; the claimed invention applies a known
`technique to a known device (method, or product) ready for improvement to yield predictable
`results; the claimed invention was “obvious to try”—choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success; there is known work in one field
`of endeavor that may prompt variations of it for use in either the same field or a different one
`based on design incentives or other market forces if the variations would have been predictable
`to one of ordinary skill in the art; or there is some teaching, suggestion, or motivation in the prior
`art that would have led one of ordinary skill in the art to modify the prior art reference to
`combine prior art teachings to arrive at the claimed inventions.
`23.
`In addition, a claim can be obvious in light of a single reference, without the need to
`combine references, if the elements of the claim that are not found in the reference can be
`supplied by the common sense or knowledge of one of ordinary skill in the art.
`24.
`An analysis of whether a claimed invention is obvious must not rely on a hindsight
`combination of prior art. The analysis must proceed in the context of the time of the invention or
`claimed priority date and consider whether the invention as a whole would have been obvious to
`a person of ordinary skill in the art, taking into consideration any interrelated teachings of the
`prior art, the effects of demands known to the design community or present in the marketplace,
`and the background knowledge possessed by a person having ordinary skill in the art, all in order
`to determine whether there was an apparent reason to combine any known elements in the
`fashion claimed by the patent at issue.
`V.
`OVERVIEW OF THE ’095 PATENT
`25.
`The ’095 Patent entitled “Apparatus for Transfer of Secure Information Between a Data
`Carrying Module and an Electronic Device” issued to Stephen M. Curry et al on May 22, 2001.
`The application that resulted in the ’095 Patent, Appl. No. 09/003,541 was filed on Jan. 6, 1998.
`The application for the ’095 Patent was a division of Ser. No. 08/595,014 filed on Jan. 31, 1996.
`The ‘095 Patent claims priority to U.S. Provisional Application No. 60/004,510, filed Sep. 29,
`1995.
`The specification for the ’095 Patent is substantially the same as the specification for U.S.
`26.
`Patent 6,105,013 (“’013 Patent”) entitled “Method, Apparatus, System and Firmware for Secure
`Transactions” issued to Stephen M. Curry et al on August 15, 2000.
`
`6
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`COMPASS EXH. 1019 - Page 8 of 67
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`The ’095 Patent specification discloses an electronic module used for secure transactions.
`27.
`The module is “capable of passing encrypted information back and forth between a service
`provider's equipment via a secure, encrypted technique so that money and other valuable data
`can be securely passed electronically.” ‘095 Patent, Abstract. From the specification it can be
`understood that a “service provider” is an organization that relies on or utilizes the functionality
`of a portable device containing cryptographic authentication and data encryption primitives.
`Examples given by the ’095 Patent specification include (1) Secure Email (Id. 5:1-6:41); (2)
`Digital Notary Service (Id. 6:42-7:64); (3) Digital Cash Dispenser (Id. 7:65-10:26); (4) Digital
`Cash Replenishment (Id. 10:27-62); (5) Technique for Software Authorization and Usage
`Metering (Id. 12:34-13:7); (6) Postal Metering Service (Id. 13:51-14:46); (7) Subscription
`Information Service (Id. 14:47-16:58); and (8) Registry with Guaranteed Private Key Security to
`support merchant transactions with consumers (Id. 14:59-16:12). Thus, the ’095Patent envisions
`applicability over a wide range of secure applications.
`28.
`The ’095 Patent specification disclosures of service provider applications include
`merchant-customer financial transactions.
`2. Usage
`When a Merchant wishes to obtain positive identification of an End User over the Internet or
`other network, the Merchant generates a unique packet of data and transmits it to the End User,
`and the End User passes the data into the input object and invokes the transaction script 44 which
`causes it to be encrypted with the private key generated by the module 10. The resulting
`encrypted packet is transmitted back to the Merchant. The Merchant then accesses the data base
`provided by the Service Provider to obtain the public key belonging to the End User, and attempts
`to decrypt the encrypted packet using the End User's public key. If the decryption succeeds, the
`Merchant has proven the physical presence of the End User's module 10 at the remotely
`networked location. By guaranteeing the presence of the End User's module 10 at the remote site,
`this identification validates and legitimizes the contents of the data packet and therefore also any
`financial transactions, represented by the contents of the packet, that may be requested by the End
`User.
`The model described here is one in which the authority to perform financial transactions derives
`from the registry maintained by the Service Provider. It is therefore essential that this information
`be accurate and that the private key in the module 10 can be secure from all parties. Because each
`module 10 has its own unique RSA key set, there is no provision in this model for the module 10
`to represent money independently of the registry maintained by the Service Provider. Instead, the
`registry and the ability of the module 10 to sign with its private key together serve as a definitive
`means of identifying the End User remotely to any other party.
`Id. 15:48-16:12.
`29.
`The claims of the ’095 Patent generally recite “[a]n apparatus for receiving and
`transmitting encrypted data” comprised of an input/output interface for receiving a challenge
`number from an electronic device, a microprocessor circuit connected to the input/output
`interface; and a coprocessor circuit connected to said microprocessor circuit. See ’095 Patent
`independent claim 1.
`
`7
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`Id. Figure 1.
`30.
`Figure 1 illustrates the components of the claimed “apparatus for receiving and
`transmitting encrypted data,” which the specification also calls a module. The module 10
`includes a microprocessor/microcontroller 12, a math coprocessor 18 for processing encryption
`and decryption calculations, a memory circuit 20, an input/output circuit 26, a real time clock 14
`for time stamping, and energy circuitry 34. Id. at 2:34-42. The patent does not describe these
`components beyond their basic functions or preferences. Further, all of the components of the
`claimed module were readily understood by a person of ordinary skill before the ‘095 Patent was
`filed and were well known and readily available components for use in generic computers or
`other integrated circuit devices.
`a.
`The claimed “processor” is described to be a generic microprocessor, such as
`“preferably an 8-bit microprocessor, but could be 16, 32, 64 or any operable
`number of bits.” Id. at 2:48-51. The processor (also called a “microcontroller
`core” by the specification) is also described to be “a general-purpose, 8051-
`compatible micro controller 12 or a reasonably similar product.” Id. at 3:22-24.
`The claimed “coprocessor” is described as math coprocessor being “designed and
`used to handle very large numbers. In particular, the coprocessor will handle the
`complex mathematics of RSA encryption and decryption or other types of math
`intensive encryption or decryption techniques.” Id. at 2:54-57. The specification
`identifies a known type of math coprocessor called “a high-speed modular
`exponentiation accelerator for large integers (math coprocessor).” Id. at 3:23-25.
`As seen in the references cited by the ’095 Patent itself, coprocessors for
`
`b.
`
`8
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`
`c.
`
`d.
`
`acceleration of arithmetic operations were well known at the time of the filing of
`the ’095 Patent application. See, e.g., ’013 Patent references to “SGS-Thompson
`Microelectronics CMOS Crypto Computer Family” datasheet ST16xF74, Oct.,
`1993 and “CMOS MCU Based Safeguarded Smartcard IC with Modular
`Arithmetic Processor,” datasheet ST16CF54, Sep. 1994.
`The memory circuitry that satisfies the “first memory” and “second memory” is
`described as being able to “contain both read-only-memory and non-volatile
`random-access-memory” and “volatile memory, EPROM, SRAM and a variety of
`other types of memory circuitry might be used to create an equivalent device.” Id.
`at 2:58-63. A person of ordinary skill in the art would understand this to refer to
`any form of memory in the module that could be used to store data and
`transaction programs using static RAM (“SRAM”) segments or re-writable non-
`volatile Electrically Erasable Read Only Memory (“EEPROM”) in other
`segments.
`Nothing in the claim limitations for “first memory” and “second memory” recites
`the use of a particular type of memory, so both can be satisfied with volatile
`SRAM. For example, it was common practice at the time of the invention to store
`“firmware” programs in non-volatile Erasable Programmable Read Only Memory
`(“EPROM”) and load any required programs into RAM memory at run time for
`faster execution performance. Also, EEPROM was a well-known memory
`technology at the time of the ’095 Patent application filing that allowed non-
`volatile memory contents to be overwritten or amended with new program
`instructions.
`The claimed “input/output circuit” enables “bidirectional communication with the
`module.” Id. at 2:66-67. A person of ordinary skill in the art would understand
`this to refer to any circuit for communicating with the module.
`The “real time clock circuit” is generally understood to be a clock that keeps track
`of the date and/or time. Id. at 2:51-53.
`Other aspects of the ’095 Patent specification are directed towards transaction groups
`31.
`wherein each said transaction group can comprise a transaction program created by a service
`provider. Id. 3:56-4:3. These programs are described in the specification as sequences of
`commands that are applied to different objects in the system such as private and public keys
`stored in memory.
`The fundamental concept implemented by the firmware is that the Service Provider can store
`transaction scripts 44 in a transaction group 40 to perform only those operations among objects
`that he wishes the End User to be able to perform.
`Id. 4:43-46.
`32.
`Another aspect of the ’095 Patent specification relates to the use of a random challenge
`number to prevent replay fraud. For example, when the module is used for the exchange of
`money it first generates a random number that is sent to the service provider as part of a request
`to exchange money. When the service provider returns information concerning the transaction it
`also returns the random number to the module. If the returned number is the same as the original
`
`e.
`
`f.
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`9
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`generated by the module, the sender can confirm that the desired recipient (service provider) was
`the one who replied, thereby thwarting possible fraudulent transactions. The random challenge
`number can also be generated on the service provider’s equipment and passed to the module at
`the start of a transaction.
`The present invention is an apparatus, system and method for communicating encrypted
`information between a preferably portable module and a service provider's equipment. The
`invention comprises a module, that has a unique identification, that is capable of creating a
`random number, for example, a SALT, and passing the random number, along with, for example,
`a request to exchange money, to a service provider's equipment. The service provider's equipment
`may in return encrypt the random number with a private or public key (depending on the type of
`transaction), along with other information and pass the encrypted information back to the module
`as a signed certificate. The module, upon receiving the signed certif