UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Twilio, Inc.
`Petitioner
`
`v.
`
`Telesign Corporation
`Patent Owner
`
`Patent No. 9,300,792 B2
`Filing Date: April 3, 2015
`Issue Date: March 26, 2016
`
`TITLE: REGISTRATION, VERIFICATION AND NOTIFICATION SYSTEM
`
`
`
`DECLARATION OF MICHAEL SHAMOS, PH.D.
`
`Covered Business Method Patent Review No. _______
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Twilio, Inc.
`Petitioner
`
`v.
`
`Telesign Corporation
`Patent Owner
`
`Patent No. 9,300,792 B2
`Filing Date: April 3, 2015
`Issue Date: March 26, 2016
`
`TITLE: REGISTRATION, VERIFICATION AND NOTIFICATION SYSTEM
`
`
`
`DECLARATION OF MICHAEL SHAMOS, PH.D.
`
`Covered Business Method Patent Review No. _______
`
`
`
`Declaration of Michael Shamos, Ph.D.
`
`
`I, Michael Shamos, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`
`I have been engaged by Petitioner Twilio Inc. (“Twilio”) to opine on
`
`certain matters regarding U.S. Patent No. 9,300,792 (the “’792 patent”).
`
`Specifically, this declaration addresses the validity of claims 1-18 (the
`
`“Petitioned Claims”), that is, all the claims, of the ’792 patent. I receive $600 per
`
`hour for my services. No part of my compensation is dependent on my opinions
`
`or on the outcome of this proceeding. I have no financial interest, beneficial or
`
`otherwise, in any of the parties to this review.
`
`A. Education
`2.
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American University
`
`in Technology of Management, an M.S. degree from Yale University in Computer
`
`Science, an M. Phil from Yale University in Computer Science, a Ph.D. from Yale
`
`University in Computer Science, and a J.D. degree from Duquesne University. My
`
`C.V. is attached as Exhibit 1029.
`
`B. Career
`3.
`From 1979-1987, I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania: Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`4.
`
`I currently teach graduate courses at Carnegie Mellon in Electronic
`1
`
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`
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`Declaration of Michael Shamos, Ph.D.
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`Commerce, including Ubiquitous Computing, Electronic Payment Systems, and
`
`Law of Computer Technology. Since 2001, I have been a Visiting Professor at the
`
`University of Hong Kong, where I also teach an annual course in Electronic
`
`Payment Systems.
`
`5.
`
`I hold the title of Distinguished Career Professor in the School of
`
`Computer Science at Carnegie Mellon University in Pittsburgh, Pennsylvania. I
`
`was a Founder and Co-Director of the Institute for eCommerce at Carnegie Mellon,
`
`and I am now Director of the Master of Science in Information Technology degree
`
`program in eBusiness Technology.
`
`6.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office (“USPTO” or “Patent
`
`Office”) since 1981. I have been asked to render opinions in this declaration as a
`
`technical expert. I have not been asked to offer any opinions about the law.
`
`7.
`
`I am a named co-inventor on the following five issued patents relating
`
`to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278, 7,747,465,
`
`8,195,197, and 8,280,773.
`
`8.
`
`I have been engaged as a technical expert in over 200 computer cases
`
`and have previously testified in a number of cases concerning computer systems,
`
`including patent, copyright, and trade secret cases. My C.V. contains a list of cases
`
`in which I have testified in at least the past ten years. My C.V. also lists the
`
`
`
`2
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`Declaration of Michael Shamos, Ph.D.
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`relevant publications I have authored during the past ten years.
`
`C. Materials Considered
`9.
`The analysis that I provide in this Declaration is based on my
`
`experience, as well as the documents I have considered, including the ’792 patent
`
`[Ex. 1001]. I have also reviewed the prosecution history of the ’792 patent and the
`
`materials listed below. Specifically, I have reviewed the following:
`
`LIST OF EXHIBITS
`
`Exhibit
`Number
`1001
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`Document
`U.S. Patent No. 9,300,792 B2 (“ ’792 patent”)
`U.S. Patent Application Publication No. 2005/0273442 to Bennett
`U.S Patent Application Publication No. 2006/0020816 to Campbell
`U.S. Patent No. 6,934,858 to Woodhill
`Webster’s Third New International Dictionary (1993)
`U.S. Patent No. 8,302,175 to Thoursie
`U.S. Patent Application No. 2004/0203595 to Singhal (“Singhal”)
`U.S. Patent Application No. 2007/0042755 to Singhal (“Singhal
`II”)
`Roget’s 21st Century Thesaurus in Dictionary Form (1992)
`U.S. Patent Application No. 2003/0221125 to Rolfe
`U.S. Patent Application No. 2001/0032192 to Putta
`U.S. Patent No. 7,577,847 to Nguyen
`U.S. Patent Application Publication No. 2001/0007983 to Lee
`U.S. Patent No. 8,024,567 to Han
`U.S. Patent Application Publication No. 2002/0032874 to Hagen
`U.S. Patent Application Publication No. 2004/0219904 to De Petris
`UK Patent Application No. 011673.1 to Chang et. al
`The American Heritage Dictionary (2nd College Ed.) (1991)
`U.S. Patent No. 8,462,920 to Gonen (“ ’920 patent”)
`U.S. Patent Application No. 11/538,989
`Prosecution History of U.S. Patent Application No. 11/538,989
`(excerpted)
`
`
`
`3
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`Declaration of Michael Shamos, Ph.D.
`
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`
`1028
`1029
`1030
`1031
`1032
`
`
`Prosecution History of U.S. Patent Application No. 11/538,989
`(excerpted)
`Prosecution History of U.S. App. No. 14/678,815 (excerpted)
`(Information Disclosure Statement)
`Prosecution History of U.S. App. No. 11/538,989 (excerpted)
`(Request for Continued Examination)
`U.S. Patent Application No. 11/034,421
`J. Kotanchik, Kerberos and Two-Factor Authentication (March
`1994)
`U.S. Patent No. 7,142,840 to Geddes, et al.
`Curriculum Vitae of Michael Shamos, Ph. D.
`U.S. Patent Application Publication No. 2004/0024682 to Popovitch
`U.S. Patent Application Publication No. 2003/0193413 to Jones
`U.S. Patent Application Publication No. 2008/0032703 to Krumm
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`10. Attorneys for the Petitioner have explained certain legal principles to
`
`me that I have relied upon in forming my opinions set forth in this report. I have
`
`also relied on my personal knowledge gained through experiences and exposure to
`
`the field of patent law.
`
`A.
`11.
`
`Person Having Ordinary Skill in the Art
`
`I understand that my assessment of claims of the ’792 patent must be
`
`undertaken from the perspective of what would have been known or understood by
`
`a person having ordinary skill in the art, reading the ’792 patent on its relevant
`
`filing date and in light of the specification and prosecution history of the ’792
`
`patent. I will refer to such a person as a "POSA."
`
`12.
`
`I understand that, to determine the appropriate level of one of ordinary
`
`
`
`4
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`Declaration of Michael Shamos, Ph.D.
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`skill in the art, the following four factors may be considered: (a) the types of
`
`problems encountered by those working in the field and prior art solutions thereto;
`
`(b) the sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`13.
`
`I am well acquainted with the level of ordinary skill required to
`
`implement the subject matter of the ’792 patent. I have direct experience with and
`
`am capable of rendering an informed opinion on what the level of ordinary skill in
`
`the art was for the relevant field as of October 2006.
`
`14. The Patent describes the field of invention as follows:
`
`The present invention generally relates to on-line or website
`registration. More particularly, the present invention relates to a
`process for verifying an on-line registration by a telephone connection
`separate from the on-line connection between the web-site and
`potential registrant. The present invention also relates to a process for
`notifying registrants of predetermined events using information
`obtained during the registration process.
`
`(Ex. 1001 at 1:29-36.)
`
`15. The “Background of the Invention” section of the specification sets
`
`forth that the context of the invention is verifying users of Internet websites.
`
`Therefore, in order to make and use the invention in that context without undue
`
`
`
`5
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`Declaration of Michael Shamos, Ph.D.
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`experimentation, one would need a basic familiarity with Internet communications.
`
`16.
`
`It is therefore my opinion that one of ordinary skill in the art would
`
`have at least an undergraduate degree in computer science, or equivalent
`
`experience and, in addition, would be familiar with Internet and telephone
`
`communications.
`
`17. Based on my experience, I have a professional understanding of the
`
`capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to
`
`being a person of at least ordinary skill in the art, I have worked closely with—and
`
`taught—many such persons over the course of my career.
`
`18. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’792 patent have been based on the perspective of a person
`
`of ordinary skill in the art at the time of the alleged invention.
`
`19. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, the content of the ’792 patent, my years of experience in
`
`the field, my understanding of the basic standards that would be relevant to
`
`telecommunications networks, and my familiarity with the backgrounds of
`
`colleagues, both past and present.
`
`20. My opinions herein regarding the person of ordinary skill in the art,
`
`and my other opinions set forth herein, would remain the same if the person of
`
`
`
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`Declaration of Michael Shamos, Ph.D.
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`ordinary skill in the art were determined to have somewhat more or less education
`
`or experience than I have identified above.
`
`B.
`21.
`
`Prior Art
`
`I understand that the law provides categories of information that
`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`To be prior art to a particular patent claim under 35 U.S.C. Section 102(a), I
`
`understand that a reference must have been known or used in this country, or
`
`patented or described in a printed publication before the priority date of the
`
`Petitioned Claims. To be prior art under 35 U.S.C. Section 102(b), I further
`
`understand that a reference must have been in public use or on sale in this country,
`
`or patented or described in a printed publication more than one year prior to the
`
`date of application for the Petitioned Claims. To be prior art under 35 U.S.C.
`
`Section 102(e), I further understand that a patent application must have been
`
`published or a patent application subsequently granted must have been filed before
`
`the priority date. I also understand that the POSA is presumed to have knowledge
`
`of all relevant prior art. Below is a table identifying the main prior art references
`
`that will be discussed in detail in this declaration.
`
`
`
`7
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`Declaration of Michael Shamos, Ph.D.
`
`
`Table 1
`
`Reference U.S. Patent or
`Publication No.
`EX1003
`2005/0273442
`A1
`“Bennett”
`
`
`Title
`System and Method of
`Fraud Reduction
`
`
`EX1004
`“Campbell”
`
`2006/0020816
`A1
`
`
`Method and System for
`Managing
`Authentication
`Attempts
`
`
`Date
`Filed:
`May 23, 2005
`Published:
`Dec. 8, 2005
`Effective Filing Date:
`May 21, 2004
`Filed:
`July 5, 2005
`Published:
`Jan. 26, 2006
`Effective Filing Date:
`July 8, 2004
`
`
`C.
`22.
`
`Identification of Combinations of Prior Art
`
`I understand that the Petitioner is requesting covered business method
`
`patent review of claims 1-18 of the ’792 patent under the grounds set forth in Table
`
`1, below. I will sometimes refer to these combinations as Ground Nos. 1 or 2 in
`
`the remainder of my declaration below.
`
`Table 2
`
`Ground
`1
`
`’792 Patent
`Claims
`1-6, 8-15, 17
`
`2
`
`1-18
`
`Basis for Challenge
`Obvious under § 103(a) in view of Bennett, further
`in view of Campbell.
`Unpatentable under 35 U.S.C. § 101
`
`
`
`D. Broadest Reasonable Interpretations
`23.
`I understand that, in a covered business method patent review, the
`
`claim terms are to be given their broadest reasonable interpretation (BRI) in light
`8
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`Declaration of Michael Shamos, Ph.D.
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`of the specification. See 37 C.F.R. § 42.100(b).
`
`24.
`
`In performing my analysis and rendering my opinions, I have
`
`interpreted claim terms for which the Petitioner has not proposed a BRI by giving
`
`them the ordinary meaning they would have to a POSA, reading the ʼ792 Patent
`
`with its priority filing date (October 5, 2006) in mind, and in light of its
`
`specification and prosecution history. I note that the same analysis would apply if
`
`the priority date of the ’792 patent were found to be January 11, 2005 and my
`
`opinions would be the same.
`
`III. STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT THE TIME OF THE
`ALLEGED INVENTION
`25.
`
`In the late 1990s, technological development and the availability of
`
`low-cost data communication
`
`tools altered
`
`the
`
`information
`
`technology
`
`environment for business and services. (EX1018 at 1:11-18; EX1017 at [0002]; see
`
`also, e.g., EX1003; EX1007.) Many types of services were facilitated by a system
`
`using a data communication network, such as the Internet or a telecommunications
`
`platform. (EX1018 at 1:11-18; EX1017 at [0002]-[0003]; see also, e.g., EX1003;
`
`EX1007.) Implementing these systems over communications networks increased
`
`security risks because fraudsters were able to steal information and take over
`
`online accounts. (EX1003 at [0003]-[0008]; EX1011 at [0002]-[0003]; EX1018 at
`
`1:14-22.)
`
`26. Because of the potential for fraud, it was important to be able to
`9
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`Declaration of Michael Shamos, Ph.D.
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`authenticate a user’s identity remotely. The earliest solutions for verifying a user
`
`over a network included a traditional username and password. (EX1003 at [0005];
`
`EX1007 at 1:18-2:4; EX1008 at [0003]-[0006].) But password protection could
`
`easily be hacked by someone posing as the user. (EX1003 at [0008].) In the early
`
`2000’s, methods for providing additional computer-network security were
`
`implemented using telephone numbers. (E.g., EX1003; EX1004; EX1005;
`
`EX1011; EX1007; EX1016.) The use of a user’s telephone number to verify
`
`identity provides improved security, because a telephone call is a second
`
`authentication channel—referred to as an “out-of-band” communication. It is
`
`difficult or impossible for the fraudster to impersonate the user over the Internet
`
`and, simultaneously, gain access to the user’s telephone. (EX1003 at [0044];
`
`EX1008 at [0030]-[0040]; EX1017 [0008]-[0012].) For example, during a
`
`transaction, a user may be communicating with a banking website over the Internet
`
`(the first channel). That website’s authentication system may contact that user by
`
`phone (the second channel) and provide the user with a code that can be entered
`
`into the website. (EX1003 at [0044], [0046], [0051], [0052], [0055], [0058];
`
`EX1008 at [0024], [0030]-[0040].)
`
`27. Collectively, these types of security systems use what is referred to as
`
`“two-factor authentication” because they require users to prove their identity in
`
`two separate ways (e.g., knowing the username/password and possessing a given
`
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`10
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`Declaration of Michael Shamos, Ph.D.
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`telephone). Two-factor authentication systems existed before 2005. Further, two-
`
`factor authentication systems based on telephone numbers also existed before
`
`2005. (E.g., EX1003; EX1007; EX1011; EX1005; EX1018; EX1016; EX1008;
`
`EX1009; EX1013.)
`
`28. For added security, some authentication systems in the pre-2005 time
`
`frame might subject the same user to the two-factor authentication process several
`
`times. (EX1003; EX1007; EX1016; EX1005; EX1004.) For example, the two-
`
`factor authentication system could contact a user via phone to verify online access
`
`to a banking website from an unfamiliar computer. In this system, the user would
`
`logon using the typical user name and password combination. The system would
`
`then call the user and provide a code that the user would enter into the website. The
`
`next time the user logged in from that same home computer, the authentication
`
`system would not require this telephone-based form of verification. (See EX1003
`
`at [0115]-[0123].) But when that same user tried to login from her work computer,
`
`the two-factor authentication system would notify the user of that event via the
`
`verified telephone number in order to complete another two-factor verification in
`
`order to ensure it was the same user. (Id.)
`
`29. Some systems triggered a notification and required subsequent two-
`
`factor verification at the occurrence of certain events at higher risk for fraudulent
`
`activity, such as logging on from a suspicious IP address or requesting a password
`
`
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`11
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`Declaration of Michael Shamos, Ph.D.
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`reset. (E.g., EX1003; EX1004.) Other systems triggered notifications and required
`
`subsequent two-factor verification every time a user tried to access certain systems.
`
`(E.g., EX1007; EX1016; EX1005.) Other systems established rules engines that
`
`evaluated multiple factors to determine whether a user presented enough of a
`
`security risk to justify requiring another two-factor authentication. (EX1003 at
`
`[0115].) Many of these systems notified users of the occurrence of events for
`
`further security, a technique well known in the art. For example, a person could be
`
`contacted via email, page, cell, fax, or postal mail about recent account activity.
`
`(See, e.g., EX1003; EX1012 at [0123]; EX1011 at [0088]-[0090]; EX1014;
`
`EX1004.) It was also well known in the art to request or require an
`
`acknowledgment by the user of the account activity. (EX1004; EX1003.) For
`
`example, it was well known for credit card companies to use a phone number
`
`associated with an account to contact the user and confirm suspicious activity, such
`
`as foreign transactions.
`
`IV. THE ’792 PATENT
`A. Overview of the ’792 Patent
`30. The ’792 patent
`is directed at a
`
`telephone-based
`
`two-factor
`
`authentication and notification process. (EX1001 at Abstract, FIG. 8, FIG. 9, 8:8-
`
`9:6.) After obtaining and verifying a user’s telephone number, the ’792 patent
`
`discloses maintaining a record of one or more “notification events.” (Id. at cl. 1.)
`
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`12
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`Declaration of Michael Shamos, Ph.D.
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`According to the ’792 patent, a notification event could be as simple as a request to
`
`access a user’s account or to modify account information. (EX1001 at 8:62-9:24.)
`
`After the occurrence of a notification event, the ’792 patent discloses transmitting a
`
`message to the user, and receiving a user acknowledgment of an action associated
`
`with the notification event. (Id. at 9:25-10:4.)
`
`B.
`31.
`
`Interpretation of Claim Terms in the ’792 Patent
`
`In performing my analysis and rendering my opinions, I have
`
`interpreted claim terms for which the Petitioner has not proposed a BRI by giving
`
`them the ordinary meaning they would have to a POSA, reading the ’792 patent
`
`with its priority filing date (October 5, 2006) in mind, and in light of its
`
`specification and prosecution history. Where relevant, I provide a discussion of
`
`what a POSA would understand the plain and ordinary meaning of certain claim
`
`terms to be.
`
`32.
`
`I understand that the Board, in IPR2016-00450 and -00451, construed
`
`a claim term in question. I have identified the BRI in question and the
`
`corresponding constructions in the table below:
`
`Term
`
`Petitioner’s Proposed BRI
`
`“notification
`event”
`
`“an event that results in the
`registrant being contacted either for
`re-verification or for notification
`that the event occurred”
`
`
`
`13
`
`Board’s BRI in Related
`Proceedings
`“an event that results in the
`registrant being notified that
`the event occurred”
`[IPR2016-00450]
`
`“an event that results in the
`
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`Declaration of Michael Shamos, Ph.D.
`
`
`user being notified that the
`event occurred”
`[IPR2016-00451]
`
`33. The Board’s construction is susceptible to different interpretations. If
`
`
`
`sending a verification code to the user as a result of the occurrence of an event for
`
`use in re-verification qualifies as notification under the Board’s construction, I find
`
`the construction accurately reflects the use of the term in the ’792 patent’s
`
`specification. I will address the validity of the Petitioned Claims under what I
`
`interpret the Board’s BRI to mean—that contacting the user and sending him a
`
`verification code during re-verification notifies him of the occurrence of an event. I
`
`will also address the validity of the Petitioned Claims under a more narrow
`
`interpretation in which a message is required that states a particular event has
`
`occurred.
`
`34.
`
`It is my opinion that sending a verification code to the user, as part of
`
`a re-verification process, is a form of notification, as the term is used in the
`
`specification of the ’792 patent. (See EX1001 at 9:25-10:4, 8:62-9:6.) Nothing in
`
`the specification or file history has ever specified the content or form of the
`
`notification—i.e., there is no teaching that a notification must include a sentence
`
`that states a particular event has occurred. In particular, the ’792 specification
`
`teaches in one embodiment of the invention that: “If a previously established event
`
`occurs, then the system will notify and/or verify the user.” (Id. at 9:25-26.)
`
`
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`14
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`Declaration of Michael Shamos, Ph.D.
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`Therefore, according to the specification, verification is sufficient notice. A POSA
`
`would understand that the “previously established event,” id. at 9:25-26, is
`
`referring to a “previously established notification event.”
`
`35. The ’792 patent specification confirms this when, in discussing the
`
`same embodiment of the invention, it explains that a verification message played to
`
`the user may include “either the verification code and/or occurrence of the
`
`notification event.” (Id. at 10:2-4.) The claimed message could not inform the user
`
`of a “notification event” if the “previously established event” was not referring to a
`
`“previously established notification event.” (See id.) Furthermore, the ’792 patent
`
`includes no separate discussion of how a “established event” may differ from a
`
`“established notification event” and never calls the term out as being distinct. The
`
`’792 patent consistently uses varying terms when actually referring to a previously
`
`established notification event. (See, e.g., id. at 3:24-28 (“a preestablished event”),
`
`3:36 (“the preestablished event”), 9:25-26 (“previously established event”), 4:12
`
`(“predetermined events established by . . .”).) Accordingly, the ’792 patent is
`
`referring to a previously established notification event as triggering a verification
`
`messages that includes either a verification code and/or occurrence of the
`
`notification event. Therefore, it is my opinion that a POSA would understand that
`
`any type of indication to the user that an event had occurred would serve as the
`
`required notification that the event had occurred. For example, sending a message
`
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`15
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`Declaration of Michael Shamos, Ph.D.
`
`to the user containing a verification code, e.g., for use in verifying that a logon
`
`attempt from an unknown device is legitimate, would serve as the required
`
`notification that a device notification event had occurred. The triggering of
`
`reverification would indicate to the user that an event occurred.
`
`36. The ’792 patent distinguishes the occurrence of a notification event
`
`from the establishment of a notification event. Establishing a notification event
`
`means informing the system which types of events require notification if they
`
`occur. A notification event occurs when a previously established notification event
`
`actually takes place. As discussed further below, it is my opinion that whether a
`
`notification event is “established” merely refers to whether it has yet been “fed into
`
`an embodiment of the invention either automatically from other systems or
`
`services connected to the HS 11, or manually via an administrator application.”
`
`(EX1003 at [0115]; EX1001 at 2:29-34, 2:19-23, 2:65, 8:62-9:1, 9:17-20; EX1006
`
`at 4; EX1019 at 4; see also infra at Part VI.A.1.j.)
`
`37. The communicating of a verification code to the user as a form of
`
`notification is further supported by the specification’s teachings that “[u]pon
`
`occurrence of a previously established notification event,” the registrant may be
`
`“notified” via a telephone call, during which a message is played. (EX1001 at 3:4-
`
`37.) The ’792 patent expressly states that this message used to “notify” the user
`
`may include either a verification code or notification of the occurrence of the
`
`
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`16
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`Declaration of Michael Shamos, Ph.D.
`
`event:
`
`Upon the occurrence of a previously established notification event,
`the registrant is notified by establishing a connection with the
`registrant, typically by contacting the registration through a telephonic
`connection with the registrant via at least one registrant telephone
`number provided by the registrant during the registration process.
`. . .
`If the telephone number provided by the registrant is not a direct-
`line number, or is a PBX number, the registrant during the registration
`process indicates that the telephone number requires an extension and
`whether a live operator will answer a call. In the event that a live
`operator answers the call, an automated message is played directing
`the live operator to dial the extension of the registrant. Afterwards, a
`pause for a predetermined amount of time occurs before an automated
`message is played which includes either the verification code or
`notifying the registrant of the occurrence of a preestablished
`event. However, if a live operator does not answer the call, after a
`pause, the extension is automatically dialed. After another pause, an
`automated message is played, including either the verification code
`or notification of the occurrence of the event.
`The registrant may be required to reverify, as described above,
`before permitting access or alteration of the registrant’s account or
`receiving notification of the occurrence of the preestablished event.
`
`(EX1001 at 3:4-36 (emphasis added).) In order for the BRI of “notification event”
`
`to encompass the embodiment described above, “notification event” must include
`
`
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`17
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`Declaration of Michael Shamos, Ph.D.
`
`events that trigger contacting the user with the type of message described above—
`
`those that include a verification code, rather than only a notification of the
`
`occurrence of the particular event. (See id.)
`
`38. The communicating of a verification code to the user as a form of
`
`notification is further supported by the ’792 patent family’s use of the term
`
`“notification event.” Claim 1 of related U.S. Patent No. 8,462,920 (“the ’920
`
`patent”) generally claims establishing a notification event, identifying an
`
`occurrence of the established notification event, and then, after identifying the
`
`occurrence of an established notification event, re-verifying the registrant by
`
`communicating a verification code to the user. (EX1020, cl. 1.) A POSA would
`
`understand that sending a verification code to the user is a notification because it
`
`occurs after identifying the occurrence of a notification event, and there would be
`
`no reason to require re-verifying except the occurrence of a notification event.
`
`Thus, based on a plain reading of the claims, an event that results in
`
`communicating a verification code to the user is a “notification” event. This is
`
`further confirmed by dependent claim 4 of the related ’920 patent that adds
`
`notifying the user of a notification event just by establishing telephone contact:
`
`“notifying the registrant of the occurrence of the established notification event by
`
`establishing a telephonic connection with the registrant via a registrant electronic
`
`contact.” (EX1020, cl. 4.) This would indicate to a POSA that the “notification
`
`
`
`18
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`Declaration of Michael Shamos, Ph.D.
`
`event” of claim 1 is broad enough to cover notifying the user during the re-
`
`verification process by simply sending a verification code, without specifying the
`
`particulars of the event, or by simply establishing a telephone connection with the
`
`user.
`
`39. The communicating of a verification code to the user as a form of
`
`notification is further supported by the prosecution history of the ’920 patent.
`
`40. During the ’920 prosecution, the Patent Owner explained what results
`
`after a notification event occurs—re-verification. The PO argued to the PTO, “an
`
`established notification event may include receiving a request to access an account
`
`associated with the registrant from a device that is not associated with the
`
`account.” (EX1022 at 30.) In the very next sentence, PO argued “Accordingly,
`
`fraud may be prevented by requiring that the registrant re-verify the
`
`previously-verified registrant electronic contact after an established
`
`notification event occurs.” (Id.) The claims require sending a verification code to
`
`the user’s previously verified number for re-verification. (EX1001, cl. 1.) Thus, the
`
`PO explicitly stated what happens after identifying an established notification
`
`event—sending the user a verification code as notification in order to re-verify the
`
`registrant electronic contact. (EX1022 at 30.)
`
`41. Finally, original claim 83, which issued as claim 1 of the ’920 parent
`
`patent, claimed a “verification and notification process” that comprised only of
`
`
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`19
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`Declaration of Michael Shamos, Ph.D.
`
`steps of verification and re-verification after a subsequent access request. (EX1021
`
`at 37 (preamble of claim 83 [issued claim 1] refers to steps of verifying user and
`
`requiring user to become re-verified upon subsequent access requests as “a
`
`verification and notification process”).) The limitation “notification event” was not
`
`part of the original claim. Thus, a POSA would understand the claimed re-
`
`verification process is a notification process. It follows that the event that results in
`
`communicating a verification code to the user for re-verification is the notification
`
`event. A POSA would understand that notifying the user of a “notification event”
`
`can be simply contacting the user with a verification code for reverification. (See
`
`EX1021 at 37; EX1001, 9:30-33.)
`
`42. Accordingly, it is my opinion that an event qualifies as a “notification
`
`event” when it triggers notifying the user of the occurrence of the notification
`
`event, including through re-verification of the user. Thus, it is my opinion that
`
`Bennett discloses a “notification event”, as discussed further below.
`
`C.
`Priority of the ’792 Patent Claims
`43. As indicated on its face, the ’792 patent issued from U.S. Application
`
`No. 14/678,815, which was filed April 3, 2015. (EX1001.) The following figure is
`
`an illustration of the ’792 patent parentage disclosed on the face of the patent:
`
`
`
`20
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`Declaration of Michael Shamos, Ph.D.
`
`
`App. No. 11/034,421
`Filed: Jan. 11, 2005
`Abandoned
`
`CIP
`
`Patent No. 8,462,920
`App. No. 11/538,989
`Filed: Oct. 5, 2006
`
`Cont.
`
`Patent No. 8,687,038
`App. No. 13/915,589
`Filed: June 11, 2013
`
`Cont.
`Patent No. 9,106,738
`App. No. 14/207,411
`Filed: Mar. 12, 2014
`
`Div.
`
`Patent No. 9,049,286
`App. No. 14/584,852
`Filed: Dec. 29, 2014
`
`Cont.
`
`Patent No. 9,300,792
`App. No. 14/678,815
`Filed: Apr. 3, 2015
`
`
`
`44.
`
`I understand that the priority date for a particular claim is based, in
`
`part, on when, in a chain of related patents, the written description that supports
`
`that claim first appeared. In this case, I have reviewed the previous applications to
`
`determine which patent specifications disclose supporting material for the
`
`Petitioned Claims. I have determined that the original ’421 application—now
`
`abandoned—does not support the Petitioned claims.
`
`45. Claims 1 and 10 are the only independent claims of the ’792 patent.
`
`(EX1001.) In relevant part, both independent claims recite a “notification event”
`
`that occurs after a user’s telephone number has already been verified. (Id. at cls. 1,
`
`10.) Specifically, claims 1 and 10 recite maintaining a record of one or more
`
`notification events, as well as transmitting a message to a user upon receiving
`
`indication of the occurrence of an established notification event. (Id.) The words
`
`“notification event” do not appear in the ’421 application, nor does any phrase of
`21
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`
`
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`Declaration of Michael Sh
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