DOCKET NO.: 1033300-00303US1
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case CBM2018-00022
`U.S. Patent No. 9,530,137
`_________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF PETITION
`FOR COVERED BUSINESS METHOD REVIEW
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:20)(cid:19)(cid:19)(cid:21)
`
`
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case CBM2018-00022
`U.S. Patent No. 9,530,137
`_________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF PETITION
`FOR COVERED BUSINESS METHOD REVIEW
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:20)(cid:19)(cid:19)(cid:21)
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`IV.
`
`BACKGROUND .....................................................................................1
`LEGAL PRINCIPLES.............................................................................3
`DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME..........................................................................................5
`The ’137 Patent........................................................................................6
`
`V.
`VI.
`
`Specification and Claims .............................................................. 6
`A.
`Prosecution History....................................................................... 8
`B.
`LEVEL OF ORDINARY SKILL...........................................................13
`GROUNDS FOR STANDING (37 C.F.R. § 42.304(A))........................14
`A.
`The ’137 Patent Qualifies As A CBM Patent (37 C.F.R. § 42.301)
`.....................................................................................................14
`1.
`At Least One Claim Of The ’137 Patent Is A Method Or
`Corresponding System Used In The Practice,
`Administration, Or Management Of A Financial Product Or
`Service...............................................................................15
`The ’137 Patent Is Not Directed To A “Technological
`Invention”..........................................................................16
`VII. PROPOSED CLAIM CONSTRUCTIONS FOR CBM REVIEW ........21
`
`2.
`
`Biometric Information (All Challenged Claims) ..........................22
`A.
`Secret Information .......................................................................24
`B.
`Authentication Information..........................................................25
`C.
`CLAIMS 1-12 OF THE ’137 PATENT ARE UNPATENTABLE
`VIII.
`UNDER 35 U.S.C. § 101 (37 C.F.R. § 42.304(b)(4)).............................27
`
`ii
`
`
`
`B.
`
`A. Alice Step 1: The ’137 Patent Claims Are Directed to the Abstract
`Idea Of Verifying an Account Holder’s Identity Based On Codes
`And/Or Information Related to an Account Holder Before
`Enabling a Transaction ................................................................28
`1.
`Independent Claim 12 ........................................................28
`2.
`The Remaining Claims ......................................................31
`Alice Step 2: The Remaining Limitations Of The ’137 Patent
`Claims Add Nothing Inventive To The Abstract Idea Of Verifying
`An Account Holder’s Identity Based on Codes And/Or Information
`Related To The Account Holder Before Enabling A Transaction.33
`1.
`Independent Claim 12 ........................................................35
`2.
`Independent Claim 1..........................................................39
`3.
`Dependent Claims..............................................................40
`AVAILABILITY FOR CROSS-EXAMINATION ................................42
`RIGHT TO SUPPLEMENT ..................................................................42
`JURAT ....................................................................................................1
`
`IX.
`X.
`XI.
`
`iii
`
`
`
`I, Victor Shoup, Ph.D., declare as follows:
`
`1.
`
`2.
`
`My name is Victor Shoup.
`
`I have been retained by Apple to provide opinions in this proceeding
`
`relating to U.S. Patent 9,530,137 (“’137 patent”).
`
`I. BACKGROUND
`3.
`I received a Bachelor of Science in Computer Science and
`
`Mathematics from the University of Wisconsin at Eau Claire in 1983. I received
`
`my Doctorate in Computer Science from the University of Wisconsin at Madison
`
`in 1989. I worked as a research scientist at Bellcore from 1995 to 1997 and at IBM
`
`Research Zurich from 1997 to 2002. My work included design of cryptographic
`
`protocols such as a new public key cryptosystem (now called the Cramer-Shoup
`
`cryptosystem) that achieved higher levels of security than were previously thought
`
`possible in a practical scheme.
`
`4.
`
`I have been Professor of Computer Science at the Courant Institute of
`
`Mathematical Sciences at New York University since 2002 (initially as an
`
`Associate Professor, and as a Professor since 2007). I teach a variety of graduate
`
`and undergraduate courses on cryptography. Since 2012, I have also been a part-
`
`time visiting researcher at the IBM T. J. Watson Research Center in Yorktown,
`
`New York, where I collaborate with the Cryptography Research Group, which
`
`does work on a range of projects from the theoretical foundations of cryptography
`
`1
`
`
`
`to the design and implementation of cryptographic protocols, such as
`
`homomorphic encryption.
`
`5.
`
`My areas of research include cryptography and number-theoretic
`
`algorithms, and I have published over 60 papers in these areas. In the area of
`
`cryptography, I have made substantial contributions in the sub-areas of digital
`
`signatures, public key encryption, hash functions, distributed computation, session
`
`key exchange, and secure anonymous transactions.
`
`6.
`
`I was also an editor of the ISO18033-2 standard for public-key
`
`encryption, which was published in 2006.
`
`7.
`
`I have been on the program committee of numerous international
`
`conferences on cryptography, and was the Program Chair at Crypto 2005 (Crypto
`
`is the premier international conference on cryptography). I have also acted as a
`
`consultant on cryptographic protocols for several companies.
`
`8.
`
`In recognition of my contributions to the field of cryptography, I was
`
`named a Fellow of the International Association for Cryptographic Research
`
`(IACR) in 2016, for fundamental contributions to public-key cryptography and
`
`cryptographic security proofs, and for educational leadership.
`
`9.
`
`I have given a number of invited lectures on my research in
`
`cryptographic protocol design. In 2005, I published a textbook on the
`
`mathematical underpinnings of cryptography titled A Computational Introduction
`
`2
`
`
`
`to Number Theory and Algebra, which I have made available online for free at
`
`http://www.shoup.net/ntb. I am also currently writing a textbook on applied
`
`cryptography. It is available in draft form at http://toc.cryptobook.us.
`
`10.
`
`I am listed as an inventor on six U.S. patents, several related to
`
`authenticated key exchange, one related to secure multi-party computation, and
`
`one related to public-key encryption.
`
`11. A copy of my curriculum vitae is attached as Appendix A.
`
`12.
`
`I am being compensated at my normal consulting rate for my work.
`
`My compensation is not dependent on the outcome of this IPR proceeding or the
`
`related litigation, and does not affect the substance of my statements in this
`
`Declaration.
`
`13.
`
`I have no financial interest in Petitioner. I have no financial interest in
`
`the ’137 patent.
`
`II. LEGAL PRINCIPLES
`14.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinions.
`
`15.
`
`I have been informed that the claim terms in a CBM review should be
`
`given their broadest reasonable construction in light of the specification as
`
`commonly understood by a person of ordinary skill in the art.
`
`3
`
`
`
`16.
`
`I have been informed that laws of nature, abstract ideas, and natural
`
`phenomena are not patent eligible.
`
`17.
`
`I have been informed that an application of an abstract idea, such as a
`
`mathematical formula, may be patent eligible if the patent claims add significantly
`
`more than routine, conventional activity to the underlying concept.
`
`18.
`
`I have been informed that an important and useful clue to patent
`
`eligibility is whether a claim is tied to a particular machine or apparatus or
`
`transforms a particular article into a different state or thing, according to the so
`
`called “machine-or-transformation test.” I have been informed that the machine-or-
`
`transformation test is not the only test for patent eligibility.
`
`19.
`
`I have been informed that the Supreme Court’s decision in the Alice
`
`Corp. case in 2014 articulates a two-step framework for distinguishing patents that
`
`claim ineligible abstract ideas from those that claim eligible applications of those
`
`ideas. In step one, the court must determine whether the claims at issue are
`
`directed to a patent-ineligible abstract concept. If the claim is directed to an
`
`abstract idea, the analysis proceeds to step two. In step two, I understand that the
`
`elements of the claim must be searched, both individually and as an “ordered
`
`combination,” for an “inventive concept”—i.e., an element or combination of
`
`elements that is ‘sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself. I am informed
`
`4
`
`
`
`that a patentee cannot circumvent the prohibition on patenting abstract ideas by
`
`limiting the idea to “a particular technological environment,” nor by adding
`
`insignificant postsolution activity, or well-understood, routine, conventional
`
`features.
`
`III. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`20.
`I have reviewed and understand the specification, claims, and file
`
`history of the ’137 patent. I have also reviewed the list of exhibits attached hereto
`
`as Appendix B. Based on my review of these materials, I believe that the relevant
`
`field for purposes of my analysis is computer science, including the areas of data
`
`security, encryption, and security algorithms. As described above, I have extensive
`
`experience in the relevant technology.
`
`21.
`
`The ’137 patent issued on December 27, 2016 from an application
`
`filed on February 9, 2016. The ’137 patent is a continuation of numerous U.S.
`
`Applications, the earliest of which, App. No. 11/677,490 (now U.S. Patent No.
`
`8,001,055 (Ex. 1004)) was filed on February 21, 2007. The patent also claims
`
`priority to three provisional applications: 60/775,046 filed on February 21, 2006
`
`(Ex.1016), 60/812,279, filed on June 9, 2006 (Ex. 1017), and 60/859,235, filed on
`
`November 15, 2006 (Ex. 1018).
`
`5
`
`
`
`IV. The ’137 Patent
`A.
`Specification and Claims
`22.
`The ’137 patent describes a secure database called a “Universal
`
`Secure Registry,” (“USR”) which is “a universal identification system…used to
`
`selectively provide information about a person to authorized users.” Ex-1001, ’137
`
`patent, 4:8-11. The patent states that the USR database is designed to “take the
`
`place of multiple conventional forms of identification” when conducting financial
`
`transactions to minimize the incidence of fraud. E.g., Ex-1001, ’137 patent, 4:23-
`
`25. The patent states that various forms of information can be stored in the
`
`database to verify a user’s identity and prevent fraud: (1) algorithmically generated
`
`codes, such as a time-varying multicharacter code or an “uncounterfeitable token,”
`
`(2) “secret information” like a PIN or password, and/or (3) a user’s “biometric
`
`information,” such as fingerprints, voice prints, an iris or facial scan, DNA
`
`analysis, or a photograph. See Ex-1001, ’137 patent, 14:1-7, 14:21-40, 44:54-61,
`
`Fig 3. The patent does not, however, describe any new technology for generating,
`
`capturing or combining such information.
`
`23.
`
`Instead, the patent emphasizes that the USR database can be
`
`implemented in “a general-purpose computer system” using “a commercially
`
`available microprocessor” running “any … commercially available operating
`
`system.” Id., 11:53-59. The alleged invention is also “not limited to a particular
`
`6
`
`
`
`computer platform, particular processor, or particular high-level programming
`
`language.” Id., 12:34-36. The USR database itself “may be any kind of database”
`
`and communication with the database may take place over “any [network]
`
`protocol.” Id., 12:1-3, 13:1-4, Fig. 1. Transactions to and from the database are
`
`encrypted using known methods, and access restrictions for users are implemented
`
`using known cryptographic methods. Id., 4:11-22. The database itself is also
`
`encrypted. See Id., 3:66-4:3.
`
`24.
`
`In its complaint against Apple, USR identified ’137 patent claim 12 as
`
`exemplary of the other claims of the patent. Ex-1003, Universal Secure Registry,
`
`LLC v. Apple Inc. et al., No. 17-585-VAC-MPT (D. Del.), ECF No. 1, Complaint,
`
`¶106. Claim 12 is a “system for authenticating a user for enabling a transaction.”
`
`Ex-1001, ’137 patent, 46:55-56. The claimed system comprises a first device
`
`including a biometric sensor, a first processor, and a wireless transceiver. The first
`
`processor is programmed to (1) authenticate a user based on secret information, (2)
`
`retrieve or receive biometric information from a user, (3) authenticate a user based
`
`on that biometric information, (4) in response to the biometric authentication,
`
`generate signals including first authentication information, an indicator of
`
`biometric authentication, and a time-varying value, (5) transmit the signals to a
`
`second device, and (6) if the second device confirms authentication, receive from
`
`7
`
`
`
`the second device an enablement signal to enable or not enable a transaction. Id.,
`
`46:55-47:14.
`
`25.
`
`In addition to the requirements of claim 12, Claim 1 affirmatively
`
`claims a second device including a second processor, which receives a signal from
`
`the first device that includes the indication of biometric information and the first
`
`authentication information.
`
`B.
`26.
`
`Prosecution History
`I have been informed that the ’137 patent was filed as U.S.
`
`Application No. 15/019,660 (the ’137 application) on February 9, 2016. The ’137
`
`application claims priority back to the three original provisional applications, the
`
`earliest of which was filed on February 21, 2006. Provisional Application Nos.
`
`60/859,235, 60/812,279, and 60/775,046. The patent owner filed a Request for
`
`Prioritized Examination under 37 CFR § 1.102(e) with the application on February
`
`9, 2016. See Ex. 1005, ’137 Patent File History, Track One Request.
`
`27.
`
`I have been informed that the examiner granted the Request for
`
`Prioritized Examination under Track One on March 22, 2016. See Ex. 1006, ’137
`
`Patent File History, Track One Request Granted. All claims in the application
`
`issued as the same numbered claim in the application. (For example, reference to
`
`“application claim 1” corresponds with issued claim 1, “application claim 2”
`
`corresponds to issued claim 2, etc.) The examiner issued a Non-Final Rejection on
`
`8
`
`
`
`April 15, 2016. See Ex. 1007, ‘137 Patent File History, 04/15/2016 Non-Final
`
`Rejection. The examiner rejected claims 1-11 under 35 U.S.C. § 112(b) for
`
`indefiniteness based on the structure of the claims. Id., 4-5.
`
`28.
`
`I have been informed that the examiner also rejected claims 1-2 and 5-
`
`12 under 35 U.S.C. § 103 as obvious over U.S. Patent App. Pub. 20020178364
`
`(“Weiss”) in view of U.S. Patent No. 6,819,219 (“Bolle”), explaining that Weiss
`
`“does not directly disclose a wireless transceiver and wireless signal; and a
`
`biometric sensor configured to capture a first biometric information of the user,”
`
`but it would have been obvious “to modify Weiss’ invention by incorporating the
`
`wireless technology as taught by Bolle.” Id., 6-14.
`
`29.
`
`I have been informed that the examiner also rejected claims under the
`
`non-statutory doctrine of double patenting. Id., 15. The examiner rejected
`
`application claims 1 and 12 as double patenting of claim 1 of U.S. Patent No.
`
`8,001,055 (“Weiss ’055”) and rejected application claims 1-12 as double patenting
`
`of claims 21-40 of co-pending U.S. App. No. 14/814,740. Id.
`
`30.
`
`I have been informed that the examiner also noted two other prior art
`
`references in the conclusion of the Non-Final Rejection that were pertinent to the
`
`9
`
`
`
`disclosure. Id., 17.
`
`31.
`
`I have been informed that the Patent Owner filed a Terminal
`
`Disclaimer Request on July 15, 2016. See Ex. 1008, ’137 Patent File History,
`
`07/15/2016 Terminal Disclaimer-Filed. The request limited the term of the ’137
`
`application to both U.S. App. No. 14/814,740 and U.S. Patent No. 8,001,055
`
`(“Weiss ’055”). Id. The request was electronically granted automatically on the
`
`same day.
`
`32.
`
`I have been informed that the Patent Owner responded to the Non-
`
`Final Office Action on July 15, 2016. See Ex. 1009, ’137 Patent File History,
`
`10
`
`
`
`07/15/2016 Amendment/Req. Reconsideration After Non-Final Reject. Patent
`
`Owner amended application claims 1-4, 6-7, and 10-12. Id. The amendments to
`
`exemplary claim 12 are shown below.
`
`33.
`
`I have been informed that the Patent Owner explained that the
`
`amendments to application claim 1 were made “to make it clear that both the first
`
`device and the second device are being positively recited,” and therefore traverse
`
`the indefiniteness rejection under § 112. Id., 7. Patent Owner also explained that
`
`“the Examiner has indicated the subject matter of dependent claims 3-4 is
`
`allowable if incorporated into independent claim 1” so Patent Owner “incorporated
`
`11
`
`
`
`the common subject matter of dependent claims 3-4 into independent claim 1.” Id.
`
`Patent Owner indicated that application claim 12 recited the same limitations as
`
`application claim 1 and should be allowable for the same reason. Id., 8.
`
`34.
`
`I have been informed that the examiner issued a Notice of Allowance
`
`on August 10, 2016. See Ex. 1010, ’137 Patent File History, 08/10/2016 Notice of
`
`Allowance and Fees Due. The examiner did not provide specific reasoning for why
`
`the claims were allowable over the prior art. Id., 4.
`
`35.
`
`I have been informed that the Patent Owner filed an Amendment after
`
`the Notice of Allowance on November 10, 2016. See Ex. 1011, ’137 Patent File
`
`History, 11/10/2016 Amendment after Notice of Allowance. Patent Owner
`
`amended application claims 1, 3, 4, 7, 10, and 12. Id. Dependent application
`
`claims 3, 4, 7, and 10 were amended to remove the “handheld” device limitation,
`
`mimicking the amendments to independent application claims 1 and 12.
`
`12
`
`
`
`36.
`
`I have been informed that the examiner entered the proposed
`
`amendments on November 18, 2016. See Ex. 1012, ’137 Patent File History,
`
`11/18/2016 Response to Amendment under Rule 312. The ’137 patent
`
`subsequently issued on December 27, 2016.
`
`V. LEVEL OF ORDINARY SKILL
`37.
`I understand that a person of ordinary skill in the relevant field is a
`
`hypothetical person to whom an expert in the relevant field could assign a routine
`
`task with reasonable confidence that the task would be successfully carried out. I
`
`further understand that the level of skill in the art is evidenced by prior art
`
`references.
`
`13
`
`
`
`38.
`
`The prior art demonstrates that a person of ordinary skill, at the time
`
`the ’137 patent was effectively filed, would have a Bachelor’s Degree in electrical
`
`engineering, computer science, or a related scientific field, and approximately two
`
`years of work experience in the computer science field including, for example,
`
`operating systems, database management, encryption, security algorithms, and
`
`secure transaction systems, though additional education can substitute for less
`
`work experience and vice versa.
`
`39.
`
`Based on my experience, I have an understanding of the capabilities
`
`of a person of ordinary skill in the relevant field. I have supervised and directed
`
`many such persons over the course of my career. Further, I had at least those
`
`capabilities myself at the time the patent was filed.
`
`VI. GROUNDS FOR STANDING (37 C.F.R. § 42.304(A))
`A.
`The ’137 Patent Qualifies As A CBM Patent
`(37 C.F.R. § 42.301)
`I have been informed that under Section 18 of the AIA, the Board may
`
`40.
`
`institute a CBM review proceeding for any patent that qualifies as a CBM patent. I
`
`have been informed that section 18 of the AIA defines a “covered business
`
`method” as a claim that both (1) claims a method or corresponding apparatus for
`
`performing data processing or other operations used in the practice, administration,
`
`or management of a financial product or service; and (2) is not directed to a
`
`14
`
`
`
`technological invention. In my opinion, the ’137 patent satisfies both requirements
`
`for at least the reasons set forth below.
`
`1.
`
`At Least One Claim Of The ’137 Patent Is A Method Or
`Corresponding System Used In The Practice,
`Administration, Or Management Of A Financial Product
`Or Service
`I have been informed that a patent qualifies for CBM review as long
`
`41.
`
`as “the subject matter of at least one claim is directed to a covered business
`
`method.” I have been informed that the definition of ‘covered business method
`
`patent’ is not limited to products and services of only the financial industry, or to
`
`patents owned by or directly affecting the activities of financial institutions such as
`
`banks and brokerage houses. I have also been informed that the plain text of the
`
`statutory definition contained in § 18(d)(1) . . . on its face covers a wide range of
`
`finance-related activities. I have been informed that the correct inquiry is not
`
`whether the claimed invention only has application in business contexts, but
`
`whether the claimed invention is a method or apparatus for performing data
`
`processing or other operations used in the practice, administration, or management
`
`of a financial product or service. I have been informed that the claims should be
`
`read in light of the specification when making this determination.
`
`42. All claims of the ’137 patent meet these requirements. For example,
`
`independent claims 1 and 12 disclose systems for “authenticating a user for
`
`enabling a transaction” and contemplate the transmission and receipt of an
`
`15
`
`
`
`“enablement signal” that allows or denies the transaction. ’137 patent, claims 1
`
`and 12. Similarly, claims 3, 4, 10, and 11 explicitly recite a “transaction” or
`
`“financial transaction.” And claim 8 expressly claims using “a multidigit public ID
`
`code for a credit card account, which a credit card issuer can map to a usable credit
`
`card number.”
`
`43. Moreover, the patent specification makes clear that the “transactions”
`
`recited in all patent claims can be financial in nature. See, e.g., id., 6:57-61 (“In
`
`various embodiments, the event that is enabled or prevented may be a transaction
`
`(e.g., a financial transaction), access control (e.g., physical or electronic access) or
`
`other action that is either enabled or prevented.”); 8:25-28 (“In one embodiment
`
`the system further comprises a networked credit card validation-information entity
`
`configured to approve and deny financial transactions based on authentication of
`
`the user.”); Figs. 7-10 (illustrating transmission of credit card and/or bank account
`
`information).
`
`2.
`
`The ’137 Patent Is Not Directed To A “Technological
`Invention”
`I have been informed that a patent that otherwise qualifies as a CBM
`
`44.
`
`patent is nevertheless excluded from CBM review if it is directed to a
`
`“technological invention”—i.e., if “the claimed subject matter as a whole”
`
`(1) “recites a technological feature that is novel and unobvious over the prior art”
`
`and (2) “solves a technical problem using a technical solution.” In my opinion, the
`
`16
`
`
`
`claims of the ’137 patent do not meet either prong of the technological invention
`
`exclusion.
`
`i.
`
`The ’137 patent claims include only generic technology
`components that were well known in the art.
`I have been informed that the first prong of the test analyzes whether
`
`45.
`
`the differences between the claimed invention and the prior art are technological
`
`features. The Federal Circuit has affirmed the USPTO’s listed characteristics that,
`
`if found, would preclude a finding of a “technological invention”: 1) mere
`
`“recitation of known technologies”; 2) “reciting the use of known prior art
`
`technology”; and 3) “combining prior art structures to achieve the normal,
`
`expected, or predictable result of that combination.”
`
`46.
`
`The only arguably technological elements of the challenged claims are
`
`as follows:
`
`’137 Patent Claim Well-Known Technological Features
`Independent Claim 1
`Processors, wireless transceiver,
`biometric sensor
`No additional technological features
`
`Dependent Claim 2
`
`Dependent Claim 3
`
`Communication Interface
`
`Dependent Claim 4
`
`No additional technological features
`
`Dependent Claim 5
`
`No additional technological features
`
`Dependent Claim 6
`
`No additional technological features
`
`17
`
`
`
`Dependent Claim 7
`
`Memory
`
`Dependent Claim 8
`
`No additional technological features
`
`Dependent Claim 9
`
`No additional technological features
`
`Dependent Claim 10
`
`User interface
`
`Dependent Claim 11
`
`No additional technological features
`
`Independent Claim 12 Biometric sensor, processor, wireless
`transceiver
`
`47. Under these guidelines, the ’137 patent fails to disclose a
`
`“technological feature” because the claimed features—processors, wireless
`
`transceivers, memory, user interfaces, and a biometric sensor implementing an
`
`identity verification system—were indisputably well known as of the patent’s
`
`November 15, 2006 priority date and are implemented in a conventional manner.
`
`That is, the processor performs standard data operations such as comparing data,
`
`performing calculations, and executing commands, the transceivers transmit and
`
`receive signals, the memory stores information, the user interface receives input,
`
`and the biometric sensor gathers biometric information. See, e.g., ’137 patent, Cl.
`
`12 (“biometric sensor configured to capture a first biometric information of the
`
`user . . .a first processor programmed to . . . authenticate . . . retrieve . . .
`
`authenticate . . . generate . . . a first wireless transceiver . . . programmed to
`
`wirelessly transmit . . . wherein the first processor is further programmed to
`
`receive an enablement signal”).
`
`18
`
`
`
`48.
`
`The named inventor did not claim to have invented a new computer,
`
`processor, database, transceiver or Internet system. Instead, he leveraged known
`
`technology to claim a system and method for verifying an account holder’s identity
`
`based on codes and/or information related to the account holder before enabling a
`
`transaction. Indeed, the ’137 patent repeatedly touts the generic nature of its
`
`components and implementation, emphasizing that the claimed invention is not
`
`tied to any particular technology, instead explicitly states that it can be
`
`implemented in “a general-purpose computer system” using “a commercially
`
`available microprocessor” running “any commercially available operating system.”
`
`’137 patent, 11:45-64. Furthermore, the USR itself is not a special database; rather
`
`the USR database itself “may be any kind of database” that can communicate using
`
`“any [network] protocol.” ’137 patent, 12:1-3, 11:27-31, Fig 1.
`
`49.
`
`The ’137 prosecution history provides further evidence that the ’137
`
`claims are not technically distinguishable from the prior art. For example, the
`
`amendments made to overcome prior art during prosecution were all non-technical
`
`in nature, and the claims were ultimately allowed based on a non-technical
`
`distinction over the prior art. See Ex. 1009, ’137 Patent File History, 07/15/2016
`
`Amendment/Req. Reconsideration After Non-Final Reject. (adding limitations
`
`requiring generation of a signal in response to authentication of biometric
`
`19
`
`
`
`information and authentication based on a second piece of authentication
`
`information).
`
`ii. The ’137 patent does not solve a technical problem with
`a technical solution.
`The ’137 patent also fails the second prong of the technological
`
`50.
`
`invention test because it does not solve a technical problem with a technical
`
`solution. I understand that this prong requires a review of the patent’s
`
`specification to determine what problem the claimed invention purportedly solves.
`
`If the problem is nontechnical, the patent does not meet the technological invention
`
`exception. Moreover, I understand that where the specification recognizes that
`
`technology known in the art could be used to reach the desired result, the patent
`
`does not solve a technical problem with a technical solution.
`
`51.
`
`The ’137 patent states at the outset that it is directed to a system for
`
`“authenticating identity or verifying the identity of individuals and other entities
`
`seeking access to certain privileges and for selectively granting privileges and
`
`providing other services in response to such identifications/verifications.” ’137
`
`patent, 1:46-50 (describing the “field of invention”). How to control access to
`
`information stored in a particular location is a problem as old as society itself.
`
`Although humans have more recently employed computers to make identity
`
`verification more precise and transactions more secure, the underlying problem of
`
`20
`
`
`
`ensuring that people conducting a transaction are who they claim to be is
`
`inherently non-technical.
`
`52. Moreover, the patent does not provide a “technical solution” to this
`
`purported problem. Instead, it merely claims using wholly conventional and
`
`generic computers to perform common functions like comparing received values to
`
`stored values and controlling access to stored information based on the result. See,
`
`e.g., ’137 patent, 11:45-52, 12:61-13:11, Figs 1 & 2. This does not constitute a
`
`technical solution to the problem identified above. Moreover, as explained above,
`
`all amendments made during prosecution were nontechnical in nature. See supra,
`
`¶63. Thus, the claimed subject matter of the ’137 patent, taken as a whole, does
`
`not solve a technical problem using a technical solution.
`
`VII.
`
`PROPOSED CLAIM CONSTRUCTIONS FOR CBM REVIEW (37
`C.F.R. § 42.304(b)(3))
`53.
`I understand that for purposes of this Covered Business Method
`
`review proceeding, in comparing the claim language to the prior art, I am to
`
`construe that claim language as a person of ordinary skill in the art at the time of
`
`the alleged invention would do in light of the specification. I also understand that
`
`in proceedings before the Board, patent claims are to be given their broadest
`
`reasonable interpretation, consistent with the teachings of the specification and file
`
`history.
`
`21
`
`
`
`54.
`
`I have reviewed the claim constructions explicitly set forth in the
`
`Petition from that perspective and believe the constructions are consistent with the
`
`broadest reasonable interpretation in light of the specification. At this time, I have
`
`no opinion as to whether these constructions would be the proper constructions for
`
`any district court litigation involving the ’137 patent.
`
`A.
`55.
`
`Biometric Information (All Challenged Claims)
`I understand that Apple’s proposed construction for “biometric
`
`information” as used in the ’137 patent means “information about a user’s physical
`
`characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA
`
`analysis, or personal photograph.”
`
`56.
`
`This construction is consistent with the plain meaning of the term, and
`
`is further supported by the specification, which describes biometric information
`
`using substantially identical language.1 ’137 patent, 4:40-47 (“The identity of the
`
`1 The ’137 patent specification includes one passage that describes a
`
`“personal identification number (PIN)” as an example of biometric information.
`
`Ex-1001, ’137 Patent, 14:57-60. That passage is inconsistent with other statements
`
`in the intrinsic record that describe biometric information as information that
`
`relates to a user’s physical characteristics and distinct from a PIN. For example,
`
`the specification elsewhere distinguishes PIN numbers from biometric information.
`
`22
`
`
`
`user possessing the identifying device may be verified at the point of use via . . .
`
`biometric identification such as a fingerprint, voice print, signature, iris or facial
`
`scan, or DNA analysis, or any other me
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