EXHIBIT 1002
`EXHIBIT 1002
`
`
`
`
`
`
`
`TO PETITIONER GOOGLE INC.'S
`PETITION FOR COVERED BUSINESS
`METHOD REVIEW OF
`U.S. PATENT NO. 7,942,317
`US. PATENT NO. 7,942,317
`
`PETITION FOR COVERED BUSINESS
`
`To PETITIONER GOOGLE INC.'S
`
`METHOD REVIEW OF
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1002
`
`
`
`
`
`
`
`TO PETITIONER GOOGLE INC.'S
`PETITION FOR COVERED BUSINESS
`METHOD REVIEW OF
`U.S. PATENT NO. 7,942,317
`US. PATENT NO. 7,942,317
`
`PETITION FOR COVERED BUSINESS
`
`To PETITIONER GOOGLE INC.'S
`
`METHOD REVIEW OF
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`SMARTFLASH LLC
`Patent Owner
`
`U.S. Patent No. 7,942,317
`
`_____________________
`
`Covered Business Method Review Case No. Unassigned
`
`_____________________
`
`
`DECLARATION OF DR. JUSTIN DOUGLAS TYGAR
`
`
`
`
`
`01980-00035/6749489.3
`
`
`1
`
`Google Exhibit 1002 Page 00001
`
`
`
`
`
`
`
`1.
`
`I, Dr. Justin Douglas Tygar, declare as follows:
`
`I have been retained as an expert witness on behalf of Google Inc. (“Google”
`
`or “petitioner”) in connection with the instant Covered Business Method
`
`(“CBM”) review petition.
`
`2.
`
`I am being compensated for my time in connection with this CBM review at
`
`3.
`
`4.
`
`my standard consulting rate, which is $500 per hour up to a maximum of
`
`$5,000 per day. My compensation is not dependent on the substance of my
`
`opinions, my testimony, or the outcome of this CBM review.
`
`I understand that the petition for CBM review involves U.S. Patent No.
`
`7,942,317 (“the ’317 patent”), Ex. 1001.1
`
`I have reviewed and am familiar with the ’317 patent, including claims 7, 12,
`
`and 17 (the “challenged claims”). I have reviewed and am familiar with six
`
`patents related to the ’317 patent: U.S. Patent Nos. 7,334,720, 8,033,458,
`
`8,061,598, 8,118,221, 8,336,772, and 8,794,516. I have reviewed and am
`
`familiar with the file histories for the ’317 patent and the six related patents.
`
`5.
`
`I am familiar with the general state of the technology at issue in the ’317
`
`patent as of October 25, 1999, its purported priority date.
`
`
`1 All references to “Ex. __” in this declaration refer to the Google Exhibits
`
`concurrently filed with Google’s CBM petition.
`
`01980-00035/6749489.3
`
`
`2
`
`Google Exhibit 1002 Page 00002
`
`
`
`
`
`6.
`
`I.
`7.
`
`In preparing this declaration, I have considered each of the documents cited
`
`herein. I have also relied on my experience in the relevant art in connection
`
`with forming my opinions.
`
`QUALIFICATIONS
`Since 1998, I have been a Full Professor at the University of California,
`
`Berkeley. I hold a professor position in two departments at U.C. Berkeley:
`
`the Department of Electrical Engineering and Computer Sciences (Computer
`
`Sciences Division) and the School of Information. Before joining U.C.
`
`Berkeley, I was a tenured professor at Carnegie Mellon University in
`
`Computer Science, where I had a faculty appointment since 1986. I received
`
`my Ph.D. in Computer Science from Harvard University in 1986. I have
`
`extensive research, teaching, and industry experience in the areas of
`
`computer security and electronic commerce, with a special research interest
`
`in digital rights management as it relates to those areas.
`
`8.
`
`I have helped build a number of security and electronic commerce systems.
`
`Together with my colleague at Carnegie Mellon, Marvin Sirbu, I developed
`
`Netbill, a patented electronic payment system that was licensed to
`
`CyberCash (now part of Verisign). For the U.S. Postal Service, I designed
`
`the two dimensional “Information Based Indicia” postage indicia that have
`
`now become a widely used standard. Together with my graduate students, I
`
`01980-00035/6749489.3
`
`
`3
`
`Google Exhibit 1002 Page 00003
`
`
`
`
`
`
`designed the architecture and a foundational operating system used on
`
`secure coprocessors, Dyad. Together with my graduate students, I designed
`
`Micro-Tesla, a light-weight cryptographic architecture that ultimately
`
`became a standard of the Internet Engineering Task Force and is widely used
`
`in sensor webs.
`
`9.
`
`I served as chair of the Defense Department’s ISAT Study Group on
`
`Security with Privacy and was a founding board member of the Association
`
`for Computing Machinery’s Special Interest Group on Electronic Commerce.
`
`10.
`
`I have written three books, including Secure Broadcast Communication in
`
`Wired and Wireless Networks (with Adrian Perrig), which has become a
`
`standard reference. My fourth book, Adversarial Machine Learning, is
`
`scheduled to be published by Cambridge University Press in 2015.
`
`11.
`
`I have been an active researcher in the fields of computer security and
`
`electronic commerce continuously since 1982.
`
`12. My complete curriculum vitae is submitted as Google Exhibit 1003.
`
`13. My findings explained in this declaration are based on my years of education,
`
`research, and industry experience in computer security and e-commerce
`
`technologies, including as applied to digital rights management.
`
`01980-00035/6749489.3
`
`
`4
`
`Google Exhibit 1002 Page 00004
`
`
`
`
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`14. Counsel for the petitioner asked me to provide an opinion regarding the skill
`
`level of a person of ordinary skill in the art of the ’317 patent as of October
`
`25, 1999.2
`
`15. Counsel for the petitioner has informed me that the hypothetical person of
`
`ordinary skill in the art is presumed to have knowledge of all references that
`
`are sufficiently related to one another and to the pertinent art, and to have
`
`knowledge of all arts reasonably pertinent to the particular problem that the
`
`claimed inventions address. A person of ordinary skill is capable of drawing
`
`inferences and taking creative steps.
`
`16.
`
`In my opinion, a person of ordinary skill in the art with respect to the ’317
`
`patent would have had at least a Bachelor’s degree in computer science or
`
`equivalent experience.
`
`17. My understanding of a person of ordinary skill in the art is based on my
`
`education and professional experience. Since 1986, I have been a computer
`
`2 All opinions that I express in this Declaration with respect to the ’317
`
`Patent, its disclosure, the construction and scope of its claims, the validity of its
`
`claims, and the scope and content of the prior art are from the perspective and view
`
`of what a person skilled in the art would have understood, regardless of whether I
`
`expressly identify it as such.
`
`01980-00035/6749489.3
`
`
`5
`
`Google Exhibit 1002 Page 00005
`
`
`
`
`
`
`science professor and I have been teaching undergraduate, masters, and
`
`doctoral students in computer science, and I am familiar with the abilities of
`
`students at those levels of education. A person with a computer science
`
`degree would understand and be able to practice the teachings of the asserted
`
`patents, including understanding their descriptions of systems and devices
`
`and associated hardware and functionality.
`
`18.
`
`I received my doctoral degree in computer science in 1986, and have
`
`actively been a computer science professor researching topics in computer
`
`security, electronic commerce, and distributed systems since that time, so in
`
`the late 1990s, I had far exceeded the education and experience of a person
`
`of ordinary skill in the art.
`
`III. STATE OF THE ART
`19. By October 25, 1999, both e-commerce and anti-piracy methods for digital
`
`content were well understood concepts. For example, WO 99/07121 A2 (Ex.
`
`1004), describes fundamental aspects and features of e-commerce including
`
`browsing content for purchase, payment verification, and digital delivery of
`
`purchased content. Ex. 1004 at Abstract. As another example, U.S. Patent
`
`No. 5,790,423, which was filed on June 13, 1995, and which issued on
`
`August 4, 1998, is directed to anti-piracy methods in the context of digital
`
`content distribution systems and discloses a system for distributing audio
`
`01980-00035/6749489.3
`
`
`6
`
`Google Exhibit 1002 Page 00006
`
`
`
`
`
`
`content from a remote source over the Internet in which use rules for
`
`satisfying copyright protection criteria are coded into the control program.
`
`Ex. 1005 at 11:60-12:59.
`
`20. By October 1999, I had personally worked on e-commerce and anti-piracy
`
`projects such as the NetBill project, the Dyad project, and the development
`
`of electronic postage metering services for the USPS.
`
`21. By October 1999, multiple commercial services combining e-commerce and
`
`anti-piracy elements had launched.
`
`22. For example, from 1998 on, the Softbook ebook system was commercially
`
`available. Ex. 1006 (SOFTBOOK PRESS Secure Information Delivery to a
`
`Distributed Workforce, CIO Magazine, Aug. 1, 1999) at 4. This system
`
`involved a handheld ebook-reader device that could be plugged into a phone
`
`line to download material available from Softbookstore, an e-commerce site
`
`from which books and trade journals could be purchased. Id.; see also Ex.
`
`1007 (Electronic books to hit the shelves, New Straits Times, Aug. 24, 1998,
`
`Computimes) at 27. In the Softbook system, “[i]nformation is encrypted to
`
`prevent duplication, and the system is secure to prevent unauthorized use.”
`
`Ex. 1006 at 4.
`
`23. Similarly, prior to 1999, Liquid Audio developed, licensed, and deployed
`
`software and systems for the sale, delivery, and playback of digital music.
`
`01980-00035/6749489.3
`
`
`7
`
`Google Exhibit 1002 Page 00007
`
`
`
`
`
`
`In October 1997, it published through its website a document entitled
`
`“Music on the Net,” which describes its platform for selling copy-protected
`
`files over the Internet. Ex. 1008 (Image of Liquidaudio.com cached October
`
`10, 1997; Linked “Music on the Net” Research Report) at 19. The document
`
`also describes competing services such as Cerberus and Eurodat, which also
`
`sold digital music in 1997. Id. The Eurodat service incorporated “an anti-
`
`piracy mechanism that ensures that downloaded music can only be played
`
`from the server it was encoded on.” Id.
`
`24. Liquid Audio extensively promoted its platform in 1998 through programs
`
`such as its Indie 1000 program, which provided artists with a turn-key
`
`solution for secure sales of digital content. Ex. 1009. This program
`
`emphasized the combination of anti-piracy measures with e-commerce
`
`functionality: “The Liquid Audio system combines sophisticated multi-layer
`
`encryption with inaudible digital watermarking technology to protect your
`
`intellectual property. This advanced system provides the most
`
`comprehensive, anti-copy and anti-piracy technology available today . . .
`
`When a music fan wants to buy your music they just click on ‘Buy
`
`Download’ in the Liquid MusicPlayer and enter the necessary payment
`
`information. You determine the price for the songs.” Id. at 2.
`
`01980-00035/6749489.3
`
`
`8
`
`Google Exhibit 1002 Page 00008
`
`
`
`
`
`25. The examples above show that the combination of e-commerce systems with
`
`anti-piracy measures was well-established both in theory and in commercial
`
`practice by October 25, 1999.
`
`IV. OVERVIEW OF THE ’317 PATENT
`26. The ’317 patent states that its alleged invention “relates to a portable data
`
`carrier for storing and paying for data and to computer systems for providing
`
`access to data to be stored.” Ex. 1001 at 1:17-21. The ’317 patent states that
`
`the alleged “invention is particularly useful for managing stored audio and
`
`video data, but may also be applied to storage and access of text and
`
`software, including games, as well as other types of data.” Id. at 1:23-26.
`
`The stated goal of the ’317 patent is to respond to the “urgent need to find a
`
`way to address the problem of data piracy.” Id. at 1:45-51.
`
`27. The ’317 patent describes the core of its supposed invention as “a method of
`
`providing portable data comprising providing a portable data storage device
`
`comprising downloaded data storage means and payment validation means;
`
`providing a terminal for Internet access; coupling the portable data storage
`
`device to the terminal; reading payment information from the payment
`
`validation means using the terminal; validating the payment information;
`
`and downloading data into the portable storage device from a data supplier.”
`
`Id. at 1:56-63.
`
`01980-00035/6749489.3
`
`
`9
`
`Google Exhibit 1002 Page 00009
`
`
`
`
`
`28. Data storage means and data encryption were conventional technologies as
`
`of October 1999. The ’317 patent provides various suggestions for the data
`
`storage means and the optional data encryption used in its system. Ex. 1001
`
`at 2:35-3:6. The specification identifies FLASH RAM as a known example
`
`of data storage means; the specification identifies Pretty Good Privacy and
`
`PKI (Public Key Infrastructure) as known examples of data encryption. Id.
`
`29. The ’317 patent also describes a portable data carrier that could be integrated
`
`into mobile communications devices. Portable data carriers were also
`
`known and conventional hardware as of October 1999. The ’317 patent
`
`specification identifies a “standard smart card” as an example of known
`
`portable data carriers. Id. at 11:28-29.
`
`30. The ’317 patent also describes the use of rules to govern access to stored
`
`data. Id. at 4:62-5:3. The specification identifies known examples of such
`
`rules, including “specify[ing] . . . a predetermined number of accesses” and
`
`allowing “unlimited plays but only on specified players.” Id. at 23:32-41.
`
`31. The specification of the ’317 patent also discloses that the alleged invention
`
`uses e-payment systems known at the time of its filing, such as MONDEX,
`
`Proton, and Visa, for payment and payment verification functions. Id. at
`
`13:35-55.
`
`01980-00035/6749489.3
`
`
`10
`
`Google Exhibit 1002 Page 000010
`
`
`
`
`
`V. CLAIM CONSTRUCTION
`32. Counsel for the petitioner has informed me that terms in the challenged
`
`claims must be given their broadest reasonable construction in light of
`
`the ’317 patent’s specification, which means that the words of the claims
`
`should be given the broadest possible meaning that is consistent with the
`
`statements of the specification.
`
`“Data Carrier” (Claim 12)
`
`33. The patent describes the use of a “data carrier.” “A portable data carrier has
`
`an interface for sending and receiving data, non-volatile data memory for
`
`storing received content data and non-volatile payment validation memory
`
`for providing payment validation data to an external device.” Ex. 1001 at
`
`Abstract. The data carrier may “store both payment data and content
`
`data.” Id. at 4:27-29. The data carrier may comprise “non-volatile data
`
`memory and non-volatile parameter memory storing use status data and use
`
`rules.” Id. at 6:31-33. “The data carrier may also be integrated into other
`
`apparatus, such as a mobile communications device.” Id. at 4:42-44. The
`
`data carrier may “further comprise[] memory for storing data for accessing a
`
`mobile communications network, for example to receive content data over
`
`the network.” Id. at 6:4-7. In such an embodiment, “the data carrier may
`
`replace a SIM (Subscriber Identity Module) card.” Id. at 6:7-10. The data
`
`01980-00035/6749489.3
`
`
`11
`
`Google Exhibit 1002 Page 000011
`
`
`
`
`
`
`carrier may also “store[] access control data, such as a user ID and
`
`password.” Ex. 1001 at 5:28-30. Figure 2 provides an example of a portable
`
`data carrier, namely a smart Flash card, and Figure 9 illustrates the
`
`“components of a data carrier.” The patent also gives as examples of data
`
`carriers a “ROM chip or disk.” Id. at 18:20.
`
`34. The patent owner wrote in its claim construction brief at page 19 that “data
`
`carrier” could be construed to mean a “medium capable of storing
`
`information.” Ex. 1012 at 17.
`
`35. The district court wrote in its claim construction order at page 22 that “data
`
`carrier” means “medium capable of storing information.” Ex. 1011 at 22.
`
`36. Counsel has informed me that the district court uses a narrower interpretive
`
`standard than the standard that applies to a CBM proceeding. The broadest
`
`reasonable interpretation of the term “data carrier” would have been
`
`understood by a person of ordinary skill in the art to mean any “medium,
`
`regardless of structure, that is capable of storing information.”
`
`“Payment Data” (Claims 7, 12, 17)
`
`37. The patent describes “payment data.” According to the specification,
`
`“payment data” can be used “for making a payment to the system owner”
`
`(Ex. 1001 at 21:1-2) and “a payment” can be “represented by the payment
`
`data.” Id. at 9:9-11. The specification also teaches that “payment data” can
`
`01980-00035/6749489.3
`
`
`12
`
`Google Exhibit 1002 Page 000012
`
`
`
`
`
`
`store “a payment audit trail including payment amounts and data on to
`
`whom payments have been made.” Id. at 17:60-62.
`
`38. The district court wrote in its claim construction order at page 11 that
`
`“payment data” means “data that can be used to make payment for content.”
`
`Ex. 1011 at 11.
`
`39. Counsel has informed me that the district court uses a narrower interpretive
`
`standard than the standard that applies to a CBM proceeding. The broadest
`
`reasonable interpretation of the term “payment data” would have been
`
`understood by a person of ordinary skill in the art to mean “any information
`
`that can be used in connection with the process of making a payment for
`
`content.”
`
`“Program Store” (Claims 7 and 17)
`
`40. The patent describes a “program store.” According to the patent, a “program
`
`store” stores code that is implementable by a processor. E.g., Ex. 1001,
`
`4:54-61, Claim 1 (“a program store storing processor control code”).
`
`41. The broadest reasonable interpretation of the term “program store” would
`
`have been understood by a person of ordinary skill in the art to mean “any
`
`generic component capable of storing programs.”
`
`“Electronic Payment System” (Claim 12)
`
`42. The patent describes an “electronic payment system.” According to the
`
`01980-00035/6749489.3
`
`
`13
`
`Google Exhibit 1002 Page 000013
`
`
`
`
`
`
`specification, an “electronic payment system” that can be used to “verif[y]
`
`payment data” (Ex. 1001 at Fig. 11b at S25), receive “payment” forwarded
`
`from a user’s card (id. at Fig. 12c, S54), generate “payment record data” (id.
`
`at Fig. 12c, S55), validate payment record data (id. at Fig. 12d, S67), receive
`
`payment distribution information (id. at Fig. 12e, S69), confirm payments
`
`(id. at 10:40-41, claim 12), transfer payments (id. at 7:14-16), and distribute
`
`payments. Id. at 11:41-42.
`
`43. The broadest reasonable interpretation of the term “electronic payment
`
`system” would have been understood by a person of ordinary skill in the art
`
`to mean “a system related to processing and/or distributing a payment.”
`
`“Content Synthesis Code” (Claim 7)
`
`44. The patent describes “content synthesis code.” According to the
`
`specification, “content synthesis code” combines “partial content
`
`information from two or more sources to provide content data items for
`
`storage and/or output.” Ex. 1001 at 5:54-56. “[A] first percentage of a
`
`content data item could be provided by a content retailer, while a remaining
`
`percentage could be provided by an on-line data supplier.” Id. at 5:57-
`
`60. In another example, “[t]he two portions of data combined to provide a
`
`content data item could comprise encryption data and a key.” Ex. 1001 at
`
`5:64-67.
`
`01980-00035/6749489.3
`
`
`14
`
`Google Exhibit 1002 Page 000014
`
`
`
`
`
`45. The broadest reasonable interpretation of the term “content synthesis code”
`
`would have been understood by a person of ordinary skill in the art to mean
`
`“code for combining data.”
`
`“Access Rule Data” (Claim 17)
`
`46. The Board wrote in Apple Inc. v. Smartflash LLC, CBM2014-00104, Paper
`
`No. 9 at 8 (Sept. 30, 2014) that “use rule” and “access rule” mean “a rule
`
`specifying a condition under which access to content is permitted.”
`
`47. The Board wrote in Apple Inc. v. Smartflash LLC, CMB2014-00112,
`
`CBM2014-00113, Paper 7 at 7 (Sept. 30, 2014) that “use rule data” means
`
`“data for a rule specifying a condition under which access to content is
`
`permitted.”
`
`48. Although my opinion is that the broadest reasonable interpretation of “use
`
`rule,” “access rule,” and “use rule data” is broader than the Board’s prior
`
`interpretations of those terms, I have adopted the interpretation of “use rule
`
`data” previously set forth by the Board for purposes of arriving at the
`
`opinions set forth in this declaration relating to the term “access rule data.”
`
`VI. PATENT ELIGIBLE SUBJECT MATTER
`49. Counsel for the petitioner has informed me that laws of nature, abstract ideas,
`
`and natural phenomena cannot be patented pursuant to 35 U.S.C. § 101.
`
`Counsel for the petitioner has informed me that the Supreme Court has
`
`01980-00035/6749489.3
`
`
`15
`
`Google Exhibit 1002 Page 000015
`
`
`
`
`
`
`endorsed a two-step approach for determining when a claim falls outside the
`
`scope of Section 101. Counsel for the petitioner has informed me that the
`
`first step is to determine whether the claim at issue is directed to a patent
`
`ineligible concept like an abstract idea. If it is, the second step is to identify
`
`“what else” is claimed so as to determine whether the claim amounts to
`
`“significantly more” than the abstract idea.
`
`50. Counsel for the petitioner has informed me that if a claim does not recite
`
`significantly more than an abstract idea, it is invalid under Section 101.
`
`Counsel for the petitioner has informed me that to constitute “significantly
`
`more,” it is not sufficient to simply apply the abstract idea with a computer.
`
`Counsel for the petitioner has informed me that neither is it sufficient to
`
`limit the claim to a particular technological environment or to add to the
`
`claim insignificant post solution activity or well-understood, routine,
`
`conventional activity. Counsel for the petitioner has informed that instead, a
`
`claim directed at an unpatentable abstract idea must contain other elements
`
`or a combination of elements (an “inventive concept”) sufficient to prevent
`
`patenting the abstract idea itself. Counsel has informed me that a claim
`
`directed at overriding a routine and conventional sequence of events may
`
`also be patent eligible.
`
`A.
`
`It Is My Opinion That Claims 7, 12, and 17 Are Directed To An
`Abstract Idea
`01980-00035/6749489.3
`
`
`16
`
`Google Exhibit 1002 Page 000016
`
`
`
`
`
`
`51.
`
`
`It is my opinion that claims 7, 12, and 17 of the ’317 patent are directed to
`
`the abstract idea of controlling access to something based on one or more
`
`conditions (such as payment).
`
`52. Each of claims 7, 12, and 17 is expressly directed to that abstract idea.
`
`53. Claim 1 (upon which claim 7 depends) recites a generic “computer system
`
`for providing data to a data requester” with “code” to transmit a “requested
`
`data item” to a requester in response to receiving “payment data.” Claim 7
`
`also recites the function of generating substantially complete item data from
`
`partial item data provided from two or more sources, which is nothing more
`
`than a routine function of combining data and generating new data.
`
`54. Claim 12 similarly provides for a generic “data access system” wherein
`
`“data is forwarded from the data provider to the data carrier on validation of
`
`payment data provided from the data carrier to the electronic payment
`
`system.”
`
`55. Claim 17 recites another “computer system” for provided data to a requester
`
`wherein “code” is “responsive to the request and to the received payment
`
`data to output the item data to the requester over the communication
`
`interface” along with “data item access rule data.”
`
`01980-00035/6749489.3
`
`
`17
`
`Google Exhibit 1002 Page 000017
`
`
`
`
`
`56. The specification of the ’317 patent also teaches that the “invention” is
`
`directed to the same abstract idea. The specification states that the
`
`“invention” relates to “providing access” and “paying.” Ex. 1001 at 1:18-16.
`
`B.
`
`It Is My Opinion That Claims 7, 12, and 17 Do Not Disclose An
`Inventive Concept That Is Significantly More Than An Abstract
`Idea
`It is my opinion that none of the challenged claims adds anything of
`
`57.
`
`significance to the underlying abstract idea of controlling access to
`
`something based on one or more conditions (such as payment). The claims
`
`simply apply the abstract idea to “data” and recite generic computer
`
`components and functionality.
`
`58. The computer hardware recited in claims 7, 12, and 17—namely, a
`
`“computer system,” “data access system,” “communication interface,” “data
`
`access data store for storing records of data items available from the
`
`system,” “program store,” processor coupled to …” various common
`
`components, “data supply computer system,” “data access terminal,”
`
`“electronic payment system,” and “data carrier”—is generic and
`
`conventional. Such hardware has long been routinely used in general
`
`purpose computers or itself is generic computer equipment. The ’317 patent
`
`confirms my opinion: “[t]he physical embodiment of the system is not
`
`critical and a skilled person will understand that the terminals, data
`
`01980-00035/6749489.3
`
`
`18
`
`Google Exhibit 1002 Page 000018
`
`
`
`
`
`
`processing systems and the like can all take a variety of forms.” Ex. 1001 at
`
`12:29-32. For example, the claimed “data access terminal” may be “a
`
`conventional computer” or other convention electronic device such as a
`
`mobile phone, personal computer, mobile communications device, and/or set
`
`top box Ex. 1001 at 3:66-67, 15:63-16:5, 16:31-53, Fig. 8. The data carrier
`
`can also take various forms such as EEPROM, flash memory, optical
`
`memory, IC card, smart card, memory stick, and standard smart card, which
`
`confirms that it is a generic component. Ex. 1001 at 4:36-42, 6:24-27,
`
`11:28-31, 17:8-29.
`
`59. Alan Turing’s celebrated idealized computing automaton (now called a
`
`“Turing Machine” in his honor) was introduced in 1937 in the paper “On
`
`Computable Numbers, with an application to the Entscheidungsproblem”
`
`Ex. 1014 (Proceedings of the London Mathematical Society, vol 2-42, pp.
`
`230-265). On page 231, Turing notes “The machine is supplied a ‘tape’ (the
`
`analogue of paper) running through it, and divided into sections (called
`
`‘squares’) each capable of bearing a ‘symbol.’” Id. Turing’s “tape” serves
`
`as a data carrier. Id. As noted above, a “standard smart card,” which is the
`
`“data carrier” referenced in the ’317 patent specification (Ex. 1001 at 11:28-
`
`29), is a generic hardware device that was well known in the prior art to the
`
`’317 patent.
`
`01980-00035/6749489.3
`
`
`19
`
`Google Exhibit 1002 Page 000019
`
`
`
`
`
`60. The functions recited in each of claims 7, 12, and 17—namely receiving,
`
`responding, transmitting, generating data from two or more pieces of data,
`
`forwarding, confirming, communicating, writing, storing, outputting, and
`
`selecting—can be performed without a computer. Performing these
`
`functions with a computer is routine and conventional. Storing information
`
`in a data store (e.g., memory, hard drive), storing information on a standard
`
`smart card (or “data carrier”), receiving requests for data, receiving data,
`
`responding to requests, responding to data, transmitting data read from a
`
`storage medium, generating data from different pieces of data, forwarding
`
`data, confirming data, communicating between two computing devices,
`
`writing data on a standard smart card (i.e., “data carrier”), outputting data
`
`over a communications interface, and selecting data to be outputted are all
`
`generic, conventional, routine computer functions that were well known in
`
`the prior art to the ’317 patent.
`
`61. Claim 7’s addition of “content synthesis code to generate substantially
`
`complete item data from partial item data provided from two or more
`
`sources” merely claims the idea of putting two things together from two
`
`sources to generate a more complete thing—an action that in the abstract
`
`does not even require a computer. Combining data to generate new data—a
`
`standard, routine computer function—does not transform claim 7 into
`
`01980-00035/6749489.3
`
`
`20
`
`Google Exhibit 1002 Page 000020
`
`
`
`
`
`
`something more than a conventional “computer system” that controls access
`
`to data based on payment (whether that data be “partial item data” or
`
`“substantially complete item data”).
`
`62. Reading and writing data in the context of computational machines dates
`
`back at least to Charles Babbage’s and Lady Augusta Ada Lovelace’s
`
`pioneering work on the “Analytical Engine” in the mid-1800s. Transmitting,
`
`receiving, and responding to data among a network of multiple computing
`
`devices dates back at least to the ARPANET project of the late 1960s.
`
`63. To be clear, claims 7, 12, and 17 of the ’317 patent do not recite the use of
`
`generic computer hardware and functions to override some routine or
`
`conventional sequence of events. Instead, claims 7, 12, and 17 recite the use
`
`of a general purpose computer to perform routine, conventional, well-known
`
`computer functions.
`
`C.
`
`It Is My Opinion That Claims 7, 12, and 17 of The ’317 Patent
`Are Patent Ineligible
`In light of the above, it is my opinion that claims 7, 12, and 17 are not
`
`directed to patent eligible subject matter and are thus invalid.
`
`
`
`
`
`64.
`
`
`
`01980-00035/6749489.3
`
`
`21
`
`Google Exhibit 1002 Page 000021
`
`
`
`
`
`I hereby declare that all statements made herein of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`
`
`
`
`DATE:____________________
`
`
`DR. JUSTIN DOUGLAS TYGAR
`
`
`
`
`
`
`01980-00035/6749489.3
`
`
`22
`
`15 May 2015
`
`Google Exhibit 1002 Page 000022
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
