Declaration of Dr. Victor Shoup in support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`
`DOCKETNO.: 1033300-00307US 1
`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
`
`APPLEINC.,
`
`Petitioner,
`
`V.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`
`Patent Owner.
`
`
`
`Case CBM2018-00026
`
`U.S. Patent No. 8,577,813
`
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD REVIEW
`
`Apple 1002
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`
`TABLE OF CONTENTS
`
`Page
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`TEACLE COCNS so ccesonnenesexeseacessrene anesauesan tnanncencna ream asa erraunsea ues RRrETCEERIE 1
`
`L
`
`BACKGKOUNDereeee eeeeeeee 3
`
`Tl.
`
`LEGAL PRINCIPLES(022000. .000ccc cece ccec cece cece cence ceeeeeceeeeceneeceseeeseseeeseeeensees 5
`
`Ill. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`
`TIMEFRAME 0222. ooce cc ceec cece cceccceeecc cence ceececeeeecceeeeceseeeesaeessecensceessesenseeeeseeeees 7
`
`IV.
`
`The 7813 Patent ..............ecccceece cc cececccceeecccceeccecceeccceeeeeceeseeeeseseeeeeeseeeessseeseseeees 8
`
`A.=Specification and Claims ........ 2.2... cece ce eenee ccc eceneeeeeecessnseeeeeeensnaees 8
`
`B.—_Prosecution History .00..........000cceeeccecceeeeec ec eeeneneeeceeteneeeeeeeetsteeeeesenees 10
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`C.—_Rejection of Patent Family Members Under §101.......00000i. 16
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`V.
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`LEVEL OF ORDINARYSKILL ..22200...00ceecceee cee ceece cece cence cence eeeeeeeeeeeees 19
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`GROUNDSFOR STANDING(37 C.F.R. § 42.304(A))..000eee 20
`
`A.
`
`The ’813 Patent Qualifies As A CBM Patent
`(37 C_F_R. § 42.301) oo... ccc cece ceeec cece cee cece cc ceeee cece ceseeeeeseeeseceeseeenneeees 20
`
`1.
`
`2.
`
`At Least One Claim Of The ’813 Patent Is A Method Or
`Corresponding System Used In The Practice, Administration,
`Or Management Of A Financial Product OrService................ 20
`
`The ’813 Patent Is Not Directed To A “Technological
`Invention” ......... 2.2... cceeecceeeeeceeeescceceeseeecesseeceeeeeeesseeeeeesseeeeeeeseeees 22
`
`VII. PROPOSED CLAIM CONSTRUCTIONS FOR CBM REVIEW (37 C_F.R.
`§ 42.304(b)(3)).. occ cee ceeec cece cecc cece ccececeeeeceseeeceseecesaeeseaeesseecenseeenseeeeseeeeseeeeses 28
`
`A.—Biometric Input (All Challenged Claims) .....00000000eee 29
`
`B.=Secret Information ..........0........ccececcceeeecceeeececeeeceeeceeeeeeseeeeeseeeeeeeeseeees 31
`
`C.
`
`Authentication Information ............2..0...2.0..cccecccceeeceeeeecceeeeeceeeeeeeeeeeees 32
`
`1
`
`

`

`Wy,=Weerrii Ger cg cregeeeee a3
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`
`E.
`
`Secure Registry (All Challenged Claims).....0.2..000000. cece 36
`
`VIII. CLAIMS1-26 OF THE ’813 PATENT ARE UNPATENTABLE UNDER
`35 U.S.C. § 101 (37 CER. § 42.304(B)(4)) oo ecccecccecccsecseessessssessseesseesseesseeeeees 57
`
`A.
`
`B.
`
`Alice Step 1: The ’813 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 22... .......ccecccceeeeccecescceeeeececeesceeeeeseceeseseceeesseeecesseeeeeseseeesseees 39
`
`1.
`
`2.
`
`Independent Claim 1.2.2.2... cece cece cece eeeee eee eeeneeeeeeeeenees 39
`
`The Remaining Claims 0000000000000. eee eee cece c eee eeeeeeeeeeeeenseeeeee 43
`
`Alice Step 2: The Remaining Limitations Of The ’813 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......48
`
`1.
`
`2.
`
`3.
`
`Independent Claim 1.2.2.2... cece cece cece eeeee eee eeeneeeeeeeeenees 50
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`Independent Clermmns 1 6 ccm2cereeee 54
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`Dependent Claims....0.... 20.0.0... cece cceeeeececeeeeeneeceeeeensneeeeesenees 54
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`IX. AVAILABILITY FOR CROSS-EXAMINATION......00000..00...::::ceeceeeeeees 55
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`X.
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`RIGHT TO SUPPLEMENT. .......... cccescaseoeccuasmusrevnesummesmmssmmnammamocomnenaes So
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`XI
`
`JURAT...............................--.----+-----ee eee ree: 56
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`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`I, Victor Shoup, Ph.D., declare as follows:
`
`i.
`
`z.
`
`My nameis Victor Shoup.
`
`I have been retained by Apple to provide opinions in this proceeding
`
`relating to U.S. Patent No. 8,577,813 (813 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 researchscientist at Bellcore and at IBM Research Zurich.
`
`Mywork there 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 CourantInstitute 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 beenapart-
`
`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 ofprojects from the theoretical foundations of cryptography
`
`3
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`to the design and implementation of cryptographic protocols, such as
`
`homomorphicencryption.
`
`a.
`
`Myareas 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 contributionsin the sub-areasofdigital
`
`signatures, public key encryption, hash functions, distributed computation, session
`
`key exchange, and secure anonymouscredentials.
`
`6.
`
`I wasalso 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 numberof invited lectures on my research in
`
`cryptographic protocol design. In 2005, I published a textbook on the
`
`mathematical underpinningsof cryptographytitled 4 Computational Introduction
`
`4
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`to Number Theory and Algebra, which I have madeavailable 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.
`
`Iam listed as an inventor on 6 United States patents, several related to
`
`authenticated key exchange, one related to secure multi-party computation, and
`
`onerelated to public-key encryption.
`
`11. Acopy of my curriculum vitae is attached as Appendix A.
`
`12.
`
`Iam being compensated at my normalconsulting rate for my work.
`
`My compensation is not dependenton the outcome of this CBM proceedingor the
`
`related litigation, and doesnot affect the substance of my statements in this
`
`Declaration.
`
`13.
`
`Ihave no financial interest in Petitioner. I have no financial interest in
`
`the °813 patent.
`
`II.
`
`LEGAL PRINCIPLES
`
`14.
`
`Iam not an attorney. For purposesofthis declaration, I have been
`
`informed aboutcertain aspects of the law that are relevant to my analysis and
`
`opinions.
`
`15.
`
`[have been informedthat 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.
`
`5
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`
`16.
`
`[have been informedthat lawsof nature, abstract ideas, and natural
`
`phenomenaarenotpatenteligible.
`
`17.
`
`I have been informedthat an application of an abstract idea, such as a
`
`mathematical formula, may be patenteligible if the patent claims add significantly
`
`more than routine, conventional activity to the underlying concept.
`
`18.
`
`Ihave been informedthat an important and useful clue to patent
`
`eligibility is whether a claim 1s tied to a particular machine or apparatusor
`
`transformsaparticular article into a different state or thing, according to the so
`
`called “machine-or-transformationtest.” I have been informed that the machine-
`
`or-transformationtest is not the only test for patent eligibility.
`
`19.
`
`Ihave been informedthat the Supreme Court’s decision in Alice Corp.
`
`Pty. v. CLS Bank Int’l, 137 S. Ct. 2347 (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 claimsat 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, the
`
`elements of the claim must be searched, both individually and as an “ordered
`
`combination,” for an “inventive concept”
`
`
`
`—1.e., “an element or combination of
`
`elements that is “sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent uponthe [ineligible concept] itself.” Jd. at 2355
`
`6
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`(alteration in original). I am informed that a patentee cannot circumventthe
`
`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.
`
`Il, DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`
`TIMEFRAME
`
`20.
`
`Ihave reviewed and understandthe specification, claims, andfile
`
`history of the °813 patent. I have also reviewedthelist of exhibits attached hereto
`
`as Appendix B. Based on myreview 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 ’813 patent issued on November 5, 2013 from an application filed
`
`on September 20, 2011. Jd. The ’813 patent is a continuation and a continuation-
`
`in-part of numerous U.S. Applications, the earliest of which, App. No. 11/677,490
`
`(now US. Patent No. 8,001,055 (Ex-1004)), wasfiled on February 21, 2007. The
`
`patent also claimspriority to four provisional applications: Application Nos.
`
`60/775,046 (Ex-1121), 60/812,279 (Ex-1122), 60/859,235 (Ex-1123) and
`
`61/031,529, (Ex-1124). The earliest of which wasfiled on February 21, 2006; the
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`latest of which wasfiled February 26, 2008, andis the first application to disclose
`
`Figure 31 and the description of the embodiments claimedin the ’813 patent.
`
`IV.
`
`The ’813 Patent
`
`A.
`
`Specification and Claims
`
`22.
`
`The ’813 patent describes a secure database called a “Universal
`
`Secure Registry” (“USR’), which is “a universal identification system ... used to
`
`selectively provide personal, financial or other information about a person to
`
`authorized users.” Ex-1001, ’813 patent at 3:66-4:1. The patent states that the
`
`USRdatabase is designedto “take the place of [| conventional forms of
`
`identification” when conducting financial transactions to minimize the incidence of
`
`fraud. E.g., id. at 4:12-15. The patentstates 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 id. at 42:29-36, 12:19-31, 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
`
`8
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`available microprocessor” running “any ... commercially available operating
`
`system.” Jd. at 10:9-15. The alleged inventionis also “not limited to a particular
`
`computer platform, particular processor, or particular high-level programming
`
`language.” Id. at 10:58-60. The USRdatabaseitself “may be any kind of
`
`database” and communication with the database maytake place over “any
`
`[network] protocol.” Jd. at 10:24-26, 11:24-28, Fig. 1. Transactions to and from
`
`the database are encrypted using known methods,andaccessrestrictions for users
`
`are implemented using known cryptographic methods. Jd. at 4:1-11.
`
`24.
`
`Inits complaint against Apple, USR identified 813 patent claim 1 as
`
`“exemplary” of the other claims of the patent. Claim 1, which is described by, for
`
`example, Figure 31 (shown below), claims “an electronic ID device configured to
`
`allow a user to select any one of a plurality of accounts associated with the user to
`
`employ in a financial transaction.” Jd. at 51:65-67. The claimed electronic ID
`
`device contains several generic components: (1) a biometric sensorthat receives a
`
`biometric input from the user (367); (2) a user interface whereby a user can input
`
`secret information (such as a PIN code) andselect the account he or she wants to
`
`access (364); (3) a communication interface that can communicate with the secure
`
`registry (366) and with a point of sale device (354) capable of communicating with
`
`the secure registry; and (4) a processor (not shown) that can grant accessto the
`
`electronic ID device via authentication by biometric and/or secret information and
`
`9
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`generate encrypted authentication information from some combination of a
`
`nonpredictable value and the biometric and/or secret information to send to the
`
`secure registry. Id. at 12:19-54.
`
`360
`
`UNIVERSAL SECURE REGISTRY
`
`ow ! ACCOUNT1
`
`Ex-1001, ’°813 patent, Fig. 31.
`
`B.
`
`Prosecution History
`
`25.
`
`[have been informedthat the ‘813 patent wasfiled as U.S.
`
`Application No. 13/237,184 (“’813 application”) on September 20, 2011. (Ex-
`
`1001.) The ’813 application claimed priority back to the four provisional
`
`applications, No. 60/812,279, filed on June 9, 2006, Provisional Application No.
`
`10
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`60/859,235, filed on Nov. 15, 2006, Provisional Application No. 60/775,046,filed
`
`on February 21, 2006, and Provisional Application No. 61/031,529,filed on
`
`February 26, 2008.
`
`26.
`
`Ihave been informedthat with the filing, Patent Owner included
`
`International Search Reports from three PCT applications with the filing
`
`documentation of the ‘813 application as part of the Information Disclosure
`
`Statement. See Ex-1005, “813 Patent File History, 09/20/2011 Documents
`
`Submitted With 371 Applicationsat 1, 8, 25.
`
`27.
`
`Ihave been informed that on September 26, 2011, Patent Ownerfiled
`
`a Petition to Make Special Based on Age for Advancement of Examination under
`
`37 C.F.R. § 1.102(c)(1). See Ex-1006, ‘813 Patent File History, 09/26/2011
`
`Petition Automatically Granted by EFS. Thepetition was automatically granted.
`
`Id.
`
`28.
`
`Ihave been informed that the examiner issued a Non-Final Rejection
`
`on August 15, 2012. See Ex-1007, ‘813 Patent File History, 08/15/2012 Non-Final
`
`Rejection. The examiner rejected application claims 1-2, 4-6, and 13-20 (issued
`
`claims 1, 2-4, and 11-18) under 35 U.S.C. § 102 as anticipated by U.S. Patent App.
`
`Publication 20020178364 (“Weiss”). Id. at 3. The examineralso rejected
`
`application claim 3 under 35 U.S.C. § 103 as obvious over Weiss in view of U.S.
`
`Patent App. Publication 20040117302 (“Weichart’”) (explaining that although
`
`11
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`Weiss does not explicitly teach a POS system with a magnetic strip reader and a
`
`converter device to emulate the output, Weichart includes the missing limitations).
`
`Id. at 8.
`
`29.
`
`Ihave been informedthat the examinerrejected application claim 7
`
`(issued claim 5) under § 103 as obvious over Weiss in view of U.S. Patent No.
`
`6,819,219 (“Bolle”), explaining that Bolle “teaches a memory stor[ing]
`
`information employed by the device to authenticate the biometric received by the
`
`biometric sensor.” Jd. at 9.
`
`30.
`
`Ihave been informedthat the examiner rejected application claims 8-
`
`12 (issued claims 6-10) under § 103 as obvious over Weissin view of Bolle and
`
`further in view of an Official Notice. Jd. at 10. The reasoning of the Official
`
`Notice is included below.
`
`The Examinertakes Official Notice it is well knownin the art a mismatch or non-
`
`matched biometric reading not belongingto the rightful user provides a negative result which
`
`prevents access. It would have been obviousto one of ordinary skill in the art at the time of the
`
`by Official Notice in order to increase security to personal equipment and information.
`
`invention was made to modify the devices as disclosed by Weiss/Bolle Combination by
`
`incorporating a measure which prevents access when biometric readings do not match as taught
`
`31.
`
`Ihave been informedthat the examineralso rejected claims under the
`
`non-statutory doctrine of double patenting. Jd. at 13.
`
`12
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`Ihave been informed that Patent Owner respondedto the Non-Final
`
`32.
`
`Office Action on December 17, 2012. See Ex-1008, 813 Patent File History,
`
`12/17/2012 Amendment/Req. Reconsideration After Non-Final Rejection. Patent
`
`Owner amendedthe specification to properly reference the newly issued ‘220
`
`patent. Jd. at 2.
`
`33.
`
`Ihave been informed that Patent Ownercanceled application claim 3
`
`“without prejudice or disclaimer.” Jd. at 9. Patent Owner also amended
`
`application claims 1-2, 4-5, 9, 12-16, and 20 (issued claims 1, 2-3, 7, 10-14, and
`
`18). Jd. at 3. Claim 1 (also issued claim 1) was amended as follows:
`
`information via the communication interface Hnkto the secure registry.
`
`1.
`
`(Currently Amended) An electronic ID device configured to allow a userto select any one of
`
`a plurality of accounts associated with the user to employ in a financial transaction, comprising:
`
`a biometric sensor configured to receive a biometric input provided bythe user;
`
`a user interface configured to receive a user input including secret information knownto the
`
`user and identifying information concerning an accountselected by the userfrom the plurality of
`
`accounts;
`
`a communication interface #akconfigured to communicate with a secure registry; and
`
`a processor coupled to the biometric sensorto receive information concerning the biometric
`
`input, the user interface and the communication interface Hak, the processor being programmed to
`
`activate the electronic ID device based on successful authentication by the electronic ID device ofat
`
`least one of the biometric input and the secret information, the processor also being programmed
`
`such that once the electronic ID device is activated the processor is configured to generate a non-
`
`predictable value and to generate encrypted authentication information from the non-predictable
`
`
`
`value, theidentifyineinformation,
`
`and-atleast-one-of information derived from at least a portion of
`
`the biometric input, and the secret information, and to communicate the encrypted authentication
`
`13
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`Ihave been informed that Patent Ownerarguedthat the amendment
`
`34.
`
`traversed Weiss becausetheprior art does not “teach or suggest the generation of
`
`authentication information from the non-predictable value, information derived
`
`from at least a portion of the biometric input, and the secret information.” Jd. at 9.
`
`35.
`
`[have been informedthat the examiner issued a Final Office Action
`
`on January 17, 2013. See Ex-1009, “813 Patent File History, 01/17/2013 Final
`
`Rejection. In addition to reiterating the previous rejections, the examiner rejected
`
`all claims under 35 U.S.C. § 112 for indefiniteness, citing a lack of antecedent
`
`basis for the phrase “the device”in all claims. Jd. at 3-7.
`
`36.
`
`Ihave been informed that Patent Owner conducted a telephone
`
`interview with the examiner on March 7, 2013, the summary of whichfollows.
`
`See Ex-1010, “813 Patent File History, 03/19/2013 Applicant Initiated Interview
`
`Summary at 5.
`
`Main discussion objective was to provide greaterclarification of invention asit relates to claim lanquage. It was
`pointed out to the Examinerthat the pending application contains an additional step that is not found in the prior art
`Weiss. After further discussion, review, and consideration; the Examiner agreed. To further clarify
`the invention as a
`whole, claim 2 will be rolled into claim 1 and subject matter related with claim 2 will be added to the other independent
`
`claims..
`
`37.
`
`Ihave been informed that Patent Owner responded to the Final Office
`
`Action following the phone call on March 7, 2013. See Ex-1011, ‘813 Patent File
`
`History, 03/07/2013 Response After Final Action. Patent Owner canceled
`
`application claim 2 without prejudice or disclaimer. Jd. at 8. Patent Owner
`
`14
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`amended application claims 1, 4-18, and 20-24 (issued claims1, 2-16, and 18-22).
`
`Id. Citing the examiner interview, Patent Ownerexplainedthat the parties “agreed
`
`that incorporation of dependent claim 2 into independentclaim 1 results in
`
`allowable subject matter.” Id.
`
`device.
`
`1.
`
`(Currently Amended) An electronic ID device configured to allow a user to select any one of
`
`a plurality of accounts associated with the user to employ in a financial transaction, comprising:
`
`a biometric sensor configured to receive a biometric input provided by the user;
`
`a userinterface configured to receive a user input including secret information known to the
`
`user and identifying information concerning an accountselected by the user from the plurality of
`
`accounts;
`
`a communication interface configured to communicate with a secure registry;-and
`
`a processor coupled to the biometric sensorto receive information concerning the biometric
`
`input, the user interface and the communication interface, the processor being programmedto
`
`activate the electronic ID device based on successful authentication by the electronic ID device ofat
`
`least one of the biometric input and the secret information, the processor also being programmed
`
`such that once the electronic ID deviceis activated the processoris configured to generate a non-
`
`predictable value and to generate encrypted authentication information from the non-predictable
`
`value, information associated with dert-ed-from at least a portion of the biometric input, and the
`
`secret information, and to communicate the encrypted authentication information via the
`
`communication interface to the secure registry;and
`
`wherein the communication interface is configured to wirelessly transmit the encrypted
`
`authentication information to a point-of-sale (POS) device, and wherein the secure registry is
`
`
`configured to receive at least a portion of the encrypted authentication information from the POS
`
`38.
`
`Ihave been informed that Patent Owner also amendedapplication
`
`claims 4-14 (issued claims 2-12), adding the limitation of the “electronic ID”
`
`device that corresponds with claim 1. Jd. A similar amendment was made in
`
`15
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`application claim 15 (issued claim 13). Patent Owner amended application claims
`
`16-18 (issued claims 14-16) to include the limitation of the “electronic ID” device
`
`that corresponds with the amendmentsto claims 1 and 15 (issued claims 1 and 13).
`
`Id. at 5.
`
`39.
`
`Ihave been informed that Patent Owner also amendedapplication
`
`claims 22-24 (issued claims 20-22) to include the limitation of the “electronic ID”
`
`device that corresponds to the amendmentsto claims 1 and 20 (issued claims | and
`
`18). Id. at S.
`
`40.
`
`Ihave been informed that the examiner issued a Notice of Allowance
`
`on March 19, 2013. See Ex-1012, ‘813 Patent File History, 03/19/2013 Notice of
`
`Allowanceand Fees Due.
`
`41.
`
`The *813 patent subsequently issued on November 5, 2013.
`
`C.
`
`Rejection of Patent Family Members Under §101
`
`42.
`
`Ihave been informedthat after the application that led to the ’813
`
`patent was granted, Patent Ownerfiled four subsequent continuation applications.
`
`The applications are U.S. Appl. Nos. 14/071,126, 15/045,408, 15/661,943, and
`
`15/661,955. All four patent applications currently stand rejected, inter alia, for
`
`failing to claim patentable subject matter under §101. See e.g. Exs-1014-1017.
`
`The rejected continuation patent applications contain claimsthat are substantially
`
`similar to those in the ’813 patent. For example, the chart below provides the
`
`16
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`languageof a currently-rejected claim of U.S. Patent Application No. 14/071,126
`
`(“126 application’’) and claim 1 of the ’813 patent:!
`
`°126 Patent Application, Claim 21
`An electronic ID device configured to
`encrypt information to enable execution of a
`secure operation, comprising:
`
`°813 Patent, Claim 1
`
`allow a user to select any one of a plurality of
`accounts associated with the user to employ in
`a financial transaction, comprising:
`
`a biometric sensor configured to receive a
`biometric input provided bya user;
`
`a biometric sensor configured to receive
`a biometric input provided by the user;
`
`a user interface configured to receive a
`user input including secret authentication
`information known to the user and
`information indicative of a secure operation to
`be executed:
`
`a user interface configured to receive a
`user input including secret information known
`to the user and identifying information
`concerning an account selected by the user
`from the plurality of accounts;
`
`the biometric input, and information derived An electronic ID device configured to
`
`a communication interface configured to
`communicate with a system configured to
`execute the secure operation;
`
`a processor coupled to the biometric
`sensor, the user interface, and the
`communication interface, the processor being
`programmedsuchthat after the electronic ID
`device receives at least one of the biometric
`input and the secret authentication
`information, the processoris configured to
`generate a non-predictable value and to
`encrypt the non-predictable value,
`information derived from atleast a portion of
`
`a communication interface configured to
`communicate with a secure registry;
`
`a processor coupledto the biometric
`sensor to receive information concerning the
`biometric input, the user interface and the
`communication interface, the processor being
`programmedto activate the electronic ID
`device based on successful authentication by
`the electronic ID device ofat least one of the
`biometric input and the secret information, the
`processor also being programmed such that
`once the electronic ID deviceis activated the
`processoris configured to generate a non-
`
`! The claimsof the other pending patents are similarly continuationsof the
`
`“813 patent and claim substantially the same subject matter as those in the chart
`
`and in the ’813 patent. The examinersimilarly rejected the claims under § 101, as
`
`documented in the § 101 rejections provided for the three applications.
`
`17
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`from at least a portion of the secret
`predictable value and to generate encrypted
`authentication information to generate
`authentication information from the non-
`encrypted authentication information, and to|predictable value, information associated with
`communicate the encrypted authentication
`at least a portion of the biometric input, and
`information via the communication interface|the secret information, and to communicate
`to the system configured to execute the secure|the encrypted authentication information via
`operation.
`the communication interface to the secure
`registry; and
`
`information from the POS device.
`
`wherein the communication interface is
`configured to wirelessly transmit the
`encrypted authentication information to a
`point-of-sale (POS) device, and wherein the
`secure registry is configured to receive at least
`a portion of the encrypted authentication
`
`43.
`
`The patent examiner reasonedthat the rejected pending claims ofthe
`
`°126 application are directed toward “automating mental tasks” and the abstract
`
`idea of “receiving andprocessing data,” noting specifically that the elements of
`
`authenticating an identity and activation of an electronic device for use in
`
`transactions do not add “significantly more”to the claims beyondthis abstract
`
`idea. Ex-1014 at 19. In addition, the examiner foundthat the incorporation of an
`
`implementing device into these claims “does not provide meaningful limitations
`
`beyond generally linking the use of an abstract idea to a particular technology
`
`environment and requires no morethan a generic computer to perform generic
`
`computer functions.” Jd.
`
`44. On November 29, 2017, Patent Owner conducted a telephonic
`
`interview with the examinerto discuss the § 101 rejection of the ?126 application.
`
`18
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`As explained in the summary of the interview dated December 5, 2017, the
`
`examiner was not persuadedby the applicant’s position and the claims stand
`
`rejected. Id. at 5.
`
`V.
`
`LEVEL OF ORDINARYSKILL
`
`45.
`
`[understandthat a person of ordinary skill in the relevantfield 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 understandthat the level of skill in the art is evidenced bypriorart
`
`references.
`
`46.
`
`Theprior art demonstrates that a person of ordinary skill in theart, at
`
`the time the 813 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 computersciencefield
`
`including, for example, operating systems, database management, encryption,
`
`security algorithms, and secure transaction systems, though additional education
`
`can substitute for less work experience and viceversa.
`
`47.
`
`Based on my experience, I have an understandingof the capabilities
`
`of a person of ordinary skill in the relevantfield. 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 wasfiled.
`
`19
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of U.S. Patent No. 8,577,813
`
`VI. GROUNDS FOR STANDING (37 C.F.R. § 42.304(A))
`
`A.
`
`The ’813 Pat