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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`APPLE, INC.
`Petitioner,
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`v.
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`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case CBM-00024
`U.S. Patent No. 8,577,813
`________________
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`
`
`PATENT OWNER’S EXHIBIT 2004
`DECLARATION OF ALLAN M. SCHIFFMAN IN SUPPORT
`OF PATENT OWNER’S PRELIMINARY RESPONSE
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`USR Exhibit 2004
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`1.
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`I have been retained on behalf of Universal Secure Registry LLC
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`(“Patent Owner”) in connection with the above-captioned covered business method
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`review (CBM). I have been retained to provide my opinions in support of USR’s
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`Preliminary Response. I am being compensated for my time at the rate of $475 per
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`hour. I have no interest in the outcome of this proceeding.
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`2.
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`In preparing this declaration, I have reviewed the Petition for Covered
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`Business Method Review, CBM2018-00024, U.S. Patent No. 8,577,813 and its file
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`history, the declaration of Dr. Victor Shoup, and the materials cited herein.
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`3.
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`The statements made herein are based on my own knowledge and
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`opinion. This Declaration represents only the opinions I have formed to date. I may
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`consider additional documents as they become available or other documents that
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`are necessary to form my opinions. I reserve the right to revise, supplement, or
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`amend my opinions based on new information and on my continuing analysis.
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`I.
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`QUALIFICATIONS
`4. My qualifications can be found in my Curriculum Vitae, which
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`includes my detailed employment background, professional experience, and list of
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`technical publications and patents. Ex. 2005.
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`5.
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`I am a principal at CommerceNet, a non-profit organization with the
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`mission of supporting innovation, standards-setting, and entrepreneurship in
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`applying the Internet to public benefit. My current work primarily involves
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`USR Exhibit 2004, Page 1
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`advising new companies on product development. I am President of
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`CommerceNet, and I have held that position since 2005.
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`6.
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`I received a Master of Science degree in Computer Science from
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`Stanford University in 1986.
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`7.
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`In my early career (through 1991), I held a variety of hardware and
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`software engineering positions, eventually leading to Vice-President of
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`Technology at ParcPlace Systems, a company specializing in software
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`development tools, which ultimately became a successful public company.
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`8.
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`In early 1991, I co-founded Enterprise Integration Technologies (EIT)
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`and served as Chief Technical Officer. I continued as CTO through mid-1995
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`when EIT was acquired by Verifone, then (and now) the global market leader in
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`point-of-sales payment systems. At EIT I led projects in secure distributed network
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`computer systems, focusing on the then-novel web. Many of those projects
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`involved the design and development of new network security protocols as well as
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`analysis and application of existing protocols. This work had a common theme of
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`applying cryptography to the problems of identification, authentication,
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`confidentiality, non-repudiability, and privacy in Internet electronic commerce.
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`9.
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`In 1994, EIT chartered the non-profit organization CommerceNet to
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`create Internet electronic commerce standards, receiving a Federal research award
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`from the Technology Reinvestment Program; I served as Principal Investigator.
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`USR Exhibit 2004, Page 2
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`Our accomplishments included the first secure Internet credit-card transactions and
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`use of XML-based messaging.
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`10. From 1993 through 1998, I was an active participant in multiple
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`standards bodies beyond CommerceNet, including the World-Wide Web
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`Consortium (W3C) and the Internet Engineering Task Force (IETF).
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`11.
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`I was a member of the team that designed the Secure Electronic
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`Transactions payment card protocol commissioned by MasterCard and Visa. This
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`protocol included novelties such as dual signatures, use of OAEP, in-band
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`certificate revocation and employment of ASN.1v3 certificate attributes.
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`12.
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`In 1995, I founded Terisa Systems and served as CTO and acting
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`CEO, with backing from Verifone, RSA Data Security, Netscape, IBM and AOL.
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`Terisa’s mission was to standardize Internet communications security protocols
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`and provide implementations of these. Our products included officially-
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`commissioned “reference” implementations of the SSL and SET protocols. Terisa
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`was acquired by Spyrus, Inc. in 1997.
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`13.
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`In 2007, I co-founded Usable Security Systems as CTO to provide
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`“plug-in” multi-factor authentication system for the web. In the process of product
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`development I investigated and experimented with the integration of hardware for
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`user authentication (such as fingerprint readers) into our product. Usable was
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`acquired by Webroot, Inc. in 2010.
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`USR Exhibit 2004, Page 3
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`14.
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`In addition to the standardization activities already mentioned, I have
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`served as a member on several security-oriented committees: the W3C Security
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`Advisory Board, Netscape’s Security Advisory Board, and the National Research
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`Council Committee on Information Systems Trustworthiness.
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`15.
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`I have authored six peer-reviewed papers, I am a named inventor on
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`two US patents, and a co-author of two IETF RFCs.
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`16.
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`I have over twenty-five years of research and development experience
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`in the areas of secure distributed systems, secure network protocols, application of
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`cryptography/encryption, authentication, electronic commerce transactions, and
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`online payment systems.
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`II. LEGAL UNDERSTANDING
`A. The Person of Ordinary Skill in the Art
`17.
`I understand that a person of ordinary skill in the relevant art (also
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`referred to herein as “POSITA”) is presumed to be aware of all pertinent art, thinks
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`along conventional wisdom in the art, and is a person of ordinary creativity—not
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`an automaton.
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`18.
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`I understand that it is Patent Owner’s position that a person of
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`ordinary skill in the art (“POSITA”) relevant to the ’813 patent at the time of the
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`invention would have a Bachelor of Science degree in electrical engineering,
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`computer science or computer engineering, and three years of work or research
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`USR Exhibit 2004, Page 4
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`experience in the fields of secure transactions and encryption; or a Master’s degree
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`in electrical engineering, computer science or computer engineering, and two years
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`of work or research experience in related fields.
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`19.
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`I have reviewed the declaration of Dr. Victor Shoup, including his
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`opinions regarding the POSITA. Ex. 1202 at ¶ 38. I understand that it is
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`Petitioner’s position that a POSITA relevant to the ’813 patent at the time of the
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`invention would have a Bachelor of Science degree in electrical engineering,
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`computer science or related scientific field, and approximately two years of work
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`experience in the computer science field, including for example, operating systems,
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`database management, encryption, security algorithms, and secure transaction
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`systems, though additional education can substitute for less work experience and
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`vice versa.
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`20. The opinions set forth in this Declaration would be the same under
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`either Patent Owner or Petitioner’s proposal.
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`21.
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`I was a person of at least ordinary skill in the art at the time of the
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`priority date of the ‘813 patent in 2006. Regardless if I do not explicitly state that
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`my statements below are based on this timeframe, all of my statements are to be
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`understood as a POSITA would have understood something as of the priority date
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`of the ’813 patent.
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`USR Exhibit 2004, Page 5
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`B.
`22.
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`Legal Principles
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`I am not a lawyer and will not provide any legal opinions. Though I
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`am not a lawyer, I have been advised that certain legal standards are to be applied
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`by technical experts in forming opinions regarding the meaning and validity of
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`patent claims.
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`1. Obviousness
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`23.
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`I understand that to obtain a patent, a claimed invention must have, as
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`of the priority date, been nonobvious in view of prior art in the field. I understand
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`that an invention is obvious when the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art.
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`24.
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`I understand that to prove that prior art, or a combination of prior art,
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`renders a patent obvious, it is necessary to: (1) identify the particular references
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`that singly, or in combination, make the patent obvious; (2) specifically identify
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`which elements of the patent claim appear in each of the asserted references; and
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`(3) explain how the prior art references could have been combined to create the
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`inventions claimed in the asserted claim.
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`25.
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`I understand that a patent composed of several elements is not proved
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`obvious merely by demonstrating that each of its elements was, independently,
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`USR Exhibit 2004, Page 6
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`known in the prior art, and that obviousness cannot be based on the hindsight
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`combination of components selectively culled from the prior art to fit the
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`parameters of the patented invention.
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`26.
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`I understand that a proposed modification to a reference is improper if
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`such a modification would render the reference inoperable for its intended purpose.
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`2. My Understanding of Claim Construction Law
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`27.
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`I understand that in this CBM review the claims must be given their
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`broadest reasonable interpretation, but that interpretation must be consistent with
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`the patent specification. In this Declaration, I have used the broadest reasonable
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`interpretation (“BRI”) standard when interpreting the claim terms.
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`28.
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`I understand Petitioner identifies five terms that purportedly require
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`construction. Pet. at 19-24. The construction for these terms do not impact my
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`opinion in this declaration.
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`III. OVERVIEW OF JAKOBSSON (EXHIBIT 1214)
`29.
`Jakobsson discloses a user device (the authentication device) that uses
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`a “combination function 230” to generate authentication codes from inputs such as
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`a “Secret (K),” a “Dynamic Value (T),” an “Event State (E),” and “User Data (P),”
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`as shown below:
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`USR Exhibit 2004, Page 7
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`Jakobsson at Fig. 2. The authentication code that is generated by the authentication
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`device (called AD) is transmitted to a back-end (called the “verifier”). Id., ¶ 118.
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`30. On the back-end, the verifier uses the combination function and the
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`inputs it has stored in its system to generate an authentication code (Av). Id. ¶ 117
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`(“[T]he authentication code generated by the authentication device 120 is
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`represented by (Ad) in order to distinguish it from the authentication code
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`generated by the verifier…which will be referred to as (Av).”), 60 (“Referring to
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`FIG. 2, in one embodiment of the user authentication device 120 and verifier 105
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`of FIG. 1, various values are combined by a combination function 230 to generate
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`an authentication code 290.”). The verifier compares the value of the
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`authentication code it generates (A1V) “with the value of the received
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`authentication code (AD) generated by the authentication device 120.” Id. ¶ 118.
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`USR Exhibit 2004, Page 8
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`“The authentication code (AD) is accepted by the verifier if (AD) is equal to (A1V).”
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`Id.
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`VI. THERE IS NO MOTIVATION TO COMBINE BECAUSE THE
`COMBINED SYSTEM WOULD BE INOPERABLE
`31.
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`I understand that each of the independent claims of the ’813 patent
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`require generating a specific type of encrypted authentication information. For
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`example, claim limitation 1[f] of the ’813 patent recites:
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`the processor also being programmed such that once the
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`electronic ID device is activated the processor is
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`configured to generate a non-predictable value and to
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`generate encrypted authentication information from the
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`non-predictable value, information associated with at
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`least a portion of the biometric input, and the secret
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`information.
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`Ex. 1001 at 51:65-52:29. Claim limitations 16[e] and 24[b] include similar
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`limitations. Id. at 53:25-48, 54:24-46.
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`32.
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`I understand that Petitioner argues that limitations 1[f], 16[e] and
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`24[b] are “obvious in view of Maes and Jakobsson.” I disagree. A person of
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`ordinary skill in the art would not be motivated to combine Maes and Jakobsson in
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`the manner Petitioner proposes because the combined system would be inoperable.
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`USR Exhibit 2004, Page 9
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`33.
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`In my opinion, one skilled in the art would not be able to implement
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`the combination of Maes and Jakobsson in the manner Petitioner proposes. As
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`explained in the prior section, Jakobsson discloses the back-end system (the
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`verifier) authenticates the user by generating an authentication code A1V and
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`compares it to the authentication code of the user device (AD) to determine if there
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`is a match. For the verifier to generate an authentication code A1V that matches AD
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`(i.e., for the verifier to be able to authenticate the authentication code of the user
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`device AD), it is essential that the authentication device use inputs that can be
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`exactly determined by the verifier. Unless all inputs that are supplied to the
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`combination function can be determined by the verifier, the verifier will be unable
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`to produce a matching authentication code with the combination function. Put
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`another way, if the authentication device is using inputs that are unknown or not
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`synchronized with the verifier, the verifier will be unable to use its combination
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`function and stored (or computed) values to match the authentication code
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`generated by the authentication device. The differing inputs will result in different
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`authentication codes being produced, as shown below:
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`USR Exhibit 2004, Page 10
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`34.
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`I understand that Petitioner contends that it would be obvious to
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`combine Jakobsson’s combination function with the authentication system of
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`Maes, such that the combination would generate “an authentication code A (K, T,
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`E, P) 292.” Pet. at 42-50. I further understand that Petitioner contends that in its
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`combination “user data (P)” can be the PIN and biometric data provided by the
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`user. Pet. at 46 (citing paragraph [0072] of Jakobsson as discloses that “[t]he user
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`data (P) can be the actual PIN, password, biometric data,, etc. that is provided by
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`the user”), id (citing paragraph [0074] (“[i]t should be understood that there can be
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`more than one item of user data (P), for example, provided by PIN entry and a
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`fingerprint reader.”). I disagree because the combination would not render an
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`operable device.
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`35.
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`Jakobsson’s combination function and inputs is reproduced below:
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`USR Exhibit 2004, Page 11
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`36.
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`Jakobsson teaches that the values of “K” and “E” are precise values.
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`Jakobsson, ¶ 64 (“The stored secret (K) is a unit of information such as a numerical
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`value,” for example a value “manufactured into and stored inside the device.”), 83
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`(“event state (E) is one bit, and there are two secrets…event state of 0 selects one
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`secret … even state of 1 selects the other secret”). Similarly, a PIN is also a string
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`with a precise value (e.g., “1234”). Jakobsson also teaches that “T” is a time value
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`that is “synchronized between the device 120 and the verifier 105.” Jakobsson, ¶
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`66 (“The dynamic value (T) is uniquely associated with a particular pre-determined
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`time interval demarcated by a particular starting time and ending time….only
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`requirement is that the time interval schedule be roughly synchronized between the
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`device 120 and the verifier 105.”). Each of these items is a precise, reproducible
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`value.
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`USR Exhibit 2004, Page 12
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`37. But a person of skill in the art would understand that biometric inputs
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`are necessarily approximate (one could say “fuzzy”), such that two sensor readings
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`(samples) are extremely unlikely to produce the same result. Indeed, a person of
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`skill in the art would understand that biometric devices, such as fingerprint sensors,
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`are known to produce different outputs for each sample. For example, if the same
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`user provides two biometric inputs it is almost certain that the user’s finger will
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`have been placed on the fingerprint sensor at a slightly different orientation and
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`therefore different scanned fingerprints would be generated. Similarly, since
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`fingerprint readers read the valleys and the ridges of the fingerprint, they are very
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`sensitive to changing pressure, causing readings to change as a user cannot help
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`but apply different finger pressure to the sensor at each reading. The image below,
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`for instance, shows three fingerprint readings that have different results each time:
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`USR Exhibit 2004, Page 13
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`38. Other types of biometrics, such as voice or facial recognition, also
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`produce different outputs per sample for similar reasons (e.g., the voice and facial
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`sample will differ somewhat in each instance).
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`39.
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`In fact, a major component of using biometrics to recognize a user’s
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`identity is addressing the difficult problem of necessarily approximate (as opposed
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`to exact) matching of noisy, varying sensor sample data against a verifier’s stored
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`parameters (“templates”), and making the engineering trade-offs between false-
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`negative and false-positive recognition. When a biometric input is used to verify a
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`user’s identity there is no need for the biometric input to have exact equality to the
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`stored parameters or templates. Instead, a complex computation is used that
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`measures goodness of fit (i.e., how well the match is) between the sample and the
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`stored template, accepting approximate matches if they are within an allowed
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`tolerance.
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`40. Since we cannot expect an exact value for biometric data, a person of
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`skill in the art would not be motivated to use the biometric input “P" for the
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`combination function in the authentication device as Petitioner proposes in its
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`combination of Maes and Jakobsson. Indeed, if “P” is a biometric input the value
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`P at Maes’ PDA is extremely unlikely to be exactly the same as any biometric
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`value previously captured and stored by the verifier. For example, in the image
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`below the value of P entered into the combination function of the authentication
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`USR Exhibit 2004, Page 14
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`device varies each time (e.g., because the user cannot avoid placing their finger on
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`the fingerprint sensor at a slightly different orientation each time) such that the
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`authentication code generated by the authentication device will not match or be the
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`one expected by the verifier:
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`And given that the verifier will not know the exact value of the biometric, since it
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`is variable, the verifier could not produce an authentication code A1V that matches
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`
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`AD.
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`41.
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`I have reviewed the Petition and the declaration of Dr. Shoup. Neither
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`provides any explanation of how the proposed combination would operate,
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`including how the biometric value could be used to generate an authentication code
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`that can be matched by the verifier.
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`USR Exhibit 2004, Page 15
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`42. Nor does Jakobsson provide this disclosure. Indeed, Jakobsson does
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`not teach one skilled in the art how a biometric can be used as an input to the
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`combination function. For example, Jakobsson does not provide any disclosures of
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`how a biometric value can be generated that is reproducible and not fuzzy. It does
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`not disclose how the system (e.g., the combination function on the verifier) could
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`account for the fuzziness of the biometric input. In fact, Jakobsson does not include
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`any disclosure of how the verifier would use the combination function to generate
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`a matching authentication code A1V using a biometric input. Nor does Jakobsson
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`explain how it would deal with the fact that biometric devices, such as fingerprint
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`scanners, produce different outputs for each sample. One skilled in the art would
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`not know how to use biometric data as an input into the combination function such
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`that the verifier could predict its exact value.
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`43. Accordingly, in my opinion, a person of skill in the art would not be
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`motivated to make the combination Petitioner proposes because the combination
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`would lead to an inoperable device. A person of skill in the art would not know
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`how to use a biometric as an input to the combination function since doing so
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`would lead to authentication codes that could not be matched between the
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`authentication device and verifier.
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`USR Exhibit 2004, Page 16
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`VII. CONCLUSION
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`44.
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`In signing this declaration, I recognize that the declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office. I also recognize that I may be
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`subject to cross-examination in the case and that cross-examination will take place
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`within the United States. If cross-examination is required of me, I will appear for
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`cross-examination within the United States during the time allotted for cross-
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`examination.
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`45.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on the information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Executed: August 29, 2018
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`Allan M. Schiffman
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`USR Exhibit 2004, Page 17
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