Declaration of Dr. Victor Shoup in support of Petition for
`Covered Business Method Review of U.S. Patent No- 8,577,813
`
`DOCKET NO._' 1033300— 00307USl
`
`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 lNC.,
`
`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 US. Patent No- 8,577,813
`
`TABLE OF CONTENTS
`
`Egg
`
`TABLE OF CONTENTS ........................................................................................... 1
`
`I.
`
`BACKGROUND _____________________________________________________________________________________________ 3
`
`II.
`
`LEGAL PRINCIPLES ..................................................................................... 5
`
`III- DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`
`TIMEFRAIVIE .................................................................................................. 7
`
`IV.
`
`The ’813 Patent ................................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`Specification and Claims ....................................................................... 8
`
`Prosecution History ............................................................................. 10
`
`Rejection of Patent Family Members Under §101 .............................. 16
`
`V.
`
`LEVEL OF ORDINARY SKILL .................................................................. 19
`
`VI. GROUNDS FOR STANDING (37 C.F.R. § 42.304(A)) .............................. 20
`
`A.
`
`The ’81 3 Patent Qualifies As A CBM Patent
`(37 C.F.R. § 42.301) ............................................................................ 20
`
`1.
`
`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 Or Service................ 20
`
`2.
`
`The ’813 Patent Is Not Directed To A “Technological
`Invention” .................................................................................. 22
`
`VII. PROPOSED CLAIM CONSTRUCTIONS FOR CBM REVIEW (37 C.F.R.
`§ 42.304(b)(3)) ............................................................................................... 28
`
`A.
`
`B.
`
`Biometric Input (All Challenged Claims) ........................................... 29
`
`Secret Information ............................................................................... 31
`
`C.
`
`Authentication Information ................................................................. 32
`
`1
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of US. Patent No- 8,577,813
`
`D.
`
`Point—of—Sale Device ........................................................................... 3 3
`
`E.
`
`Secure Registry (All Challenged Claims) ........................................... 36
`
`VIII- CLAIMS 1—26 OF THE ’81 3 PATENT ARE UNPATENTABLE UNDER
`
`35 U-S.C. § 101 (37 C-F.R- §42-304(b)(4)) __________________________________________________ 37
`
`A.
`
`B.
`
`Alice Step 1: The ’8 13 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 .......................................................................................... 39
`
`1.
`
`2.
`
`Independent Claim 1 ................................................................. 39
`
`The Remaining Claims ............................................................. 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 ................................................................. 50
`
`Independent Claims 16 and 24 .................................................. S4
`
`Dependent Claims ..................................................................... 54
`
`IX. AVAILABILITY FOR CROSS-EXAMINATION ...................................... 55
`
`X.
`
`RIGHT TO SUPPLEMENT .......................................................................... 55
`
`XI.
`
`JURAT ........................................................................................................... 56
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of US. Patent No- 8,577,813
`
`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 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 research scientist at Bellcore and at IBM Research Zurich-
`
`My work 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 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
`
`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
`
`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 credentials.
`
`6.
`
`I was also an editor of the 18018033—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
`
`4
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of US. Patent No- 8,577,813
`
`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 6 United States 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 CBM 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 fmancial interest in
`
`the ’813 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.
`
`5
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of US. Patent No- 8,577,813
`
`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 Alice Corp.
`
`Ply. v. CLS Bank Int’l, 137 S. Ct. 2347 (2014), articulates a two—step framework
`
`for distinguishing patents that claim ineligible abstract ideas fiom 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, 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.” Id. 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 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
`
`TIMEFRANIE
`
`20.
`
`I have reviewed and understand the specification, claims, and file
`
`history of the ’81 3 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 ’81 3 patent issued on November 5, 2013 from an application filed
`
`on September 20, 2011. Id. The ’8 13 patent is a continuation and a continuation—
`
`in—part 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 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 was filed 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 was filed February 26, 2008, and is the first application to disclose
`
`Figure 31 and the description of the embodiments claimed in the ’81 3 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
`
`USR database is designed to “take the place of [] conventional forms of
`
`identification” when conducting fmancial transactions to minimize the incidence of
`
`fraud. E.g. , id. at 4: 12—1 5. 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 fmgerprints, 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.” Id. at 109—15. The alleged invention is also “not limited to a particular
`
`computer platform, particular processor, or particular high—level programming
`
`language-” Id. at 10:58—60- The USR database itself “may be any kind of
`
`database” and communication with the database may take place over “any
`
`[network] protocol.” Id. at 10:24—26, 11:24—28, Fig- l- Transactions to and from
`
`the database are encrypted using known methods, and access restrictions for users
`
`are implemented using known cryptographic methods. Id. at 4: 1—1 1.
`
`24.
`
`In its 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 1]) 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-” Id. at 51:65—67- The claimed electronic ID
`
`device contains several generic components: (1) a biometric sensor that receives a
`
`biometric input fiom the user (367); (2) a user interface whereby a user can input
`
`secret information (such as a PIN code) and select the account he or she wants to
`
`access (364); (3) a communication interface that can communicate with the secure
`
`registry (3 66) and with a point of sale device (354) capable of communicating with
`
`the secure registry; and (4) a processor (not shown) that can grant access to the
`
`electronic [D 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 andfor secret information to send to the
`
`secure registry. Id. at 12:19—54-
`
`USER N0.N - ACCOUNTS
`
`UNIVERSAL SECURE REGISTRY
`
`USER No.1 - ACCOUNTS
`
`Ex—1001, ’813 patent, Fig- 31.
`
`B.
`
`Prosecution History
`
`25.
`
`I have been informed that the ‘813 patent was filed as US.
`
`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 US. 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.
`
`I have been informed that 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 Applications at 1, 8, 25.
`
`27.
`
`I have been informed that on September 26, 2011, Patent Owner filed
`
`a Petition to Make Special Based on Age for Advancement of Examination under
`
`37 CPR. § l-102(c)(1). See Ex—1006, ‘813 Patent File History, 09/26/2011
`
`Petition Automatically Granted by EFS. The petition was automatically granted.
`
`Id.
`
`28.
`
`I have 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 US. Patent App-
`
`Publication 20020178364 (“Weiss”)- Id. at 3. The examiner also rejected
`
`application claim 3 under 35 U.S.C. § 103 as obvious over Weiss in view of US.
`
`Patent App- Publication 20040117302 (“Weichart”) (explaining that although
`
`1 1
`
`

`

`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.
`
`I have been informed that the examiner rejected 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.” Id. at 9.
`
`30.
`
`I have been informed that the examiner rejected application claims 8—
`
`12 (issued claims 6—10) under § 103 as obvious over Weiss in view of Bolle and
`
`further in view of an Official Notice- Id. at 10. The reasoning of the Official
`
`Notice is included below.
`
`The Examiner takes Official Notice it is well known in the art a mismatch or non-
`
`matched biometric reading not belonging to the rightful user provides a negative result which
`
`prevents access. It would have been obvious to one of ordinary skill in the an 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 Weissr'Bolle Combination by
`
`incorporating a measure which prevents access when biometric readings do not match as taught
`
`31.
`
`I have been informed that the examiner also rejected claims under the
`
`non—statutory doctrine of double patenting. Id. 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
`
`32.
`
`I have been informed that Patent Owner responded to the Non—Final
`
`Office Action on December 17, 2012. See Err—1008, ‘813 Patent File History,
`
`12/17/2012 Amendment/Req. Reconsideration After Non—Final Rejection. Patent
`
`Owner amended the specification to properly reference the newly issued ‘220
`
`patent. Id. at 2.
`
`33.
`
`I have been informed that Patent Owner canceled application claim 3
`
`“without prejudice or disclaimer.” Id. 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). Id. at 3- Claim 1 (also issued claim 1) was amended as follows:
`
`I.
`
`(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 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
`
`information via the communication interface l-in-leto the secure registry.
`
`accounts;
`
`a communication interface Iinleconfigured to communicate with a secure registry; and
`
`a processor coupled to the biometric sensor to receive information concerning the biometric
`
`input. the user interface and the communication interface link. the processor being programmed to
`
`activate the electronic ID device based on successful authentication by the electronic ID device of at
`
`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 i_s configured to generate a non—
`
`predictable value and to generate encrypted authentication infom'iation from the non-predictable
`
`value, flae—rdent-r-fym-g—i-H-fofinet-to-n; and—at—least—one—ef 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
`
`34.
`
`I have been informed that Patent Owner argued that the amendment
`
`traversed Weiss because the prior 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.” Id. at 9-
`
`35.
`
`I have been informed that 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. Id. at 3—7.
`
`36.
`
`I have been informed that Patent Owner conducted a telephone
`
`interview with the examiner on March 7, 2013, the summary of which follows.
`
`See Ex—1010, ‘81 3 Patent File History, 03/ 19/201 3 Applicant Initiated Interview
`
`Summary at 5-
`
`Main discussion obiective was to provide greater ciarification of invention as it reiates to ciaim ianguage. it was
`pointed out to the Examiner that the p_ending aQQiication contains an additionai step that is not found in the Qrior art
`Weiss. After further discussion review and consideration- the Examiner a reed. To further start
`the invention as a
`whoie, ciaim 2 wiii be roiied into ciaim 1 and subieci matter reiated with ciaiin 2 wiii be added to the other indefindeni
`
`ciaims..
`
`37.
`
`I have 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. Id. at 8. Patent Owner
`
`14
`
`

`

`Declaration of Dr. Victor Shoup in Support of Petition for
`Covered Business Method Review of US. Patent No- 8,577,813
`
`amended application claims 1, 4—18, and 20—24 (issued claims 1, 2—16, and 18—22)-
`
`Id. Citing the examiner interview, Patent Owner explained that the parties “agreed
`
`that incorporation of dependent claim 2 into independent claim 1 results in
`
`allowable subject matter.” Id.
`
`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 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;
`
`device.
`
`a communication interface configured to communicate with a secure re gistiy;-and
`
`a processor coupled to the biometric sensor to receive information concerning the biometric
`
`input, the user interface and the communication interface, the processor being programmed to
`
`activate the electronic 1D device based on successful authentication by the electronic ID device of at
`
`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. information associated with derived—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 oint-of-sale POS device and wherein the secure re istr
`
`is
`
`
`configured to receive at least a portion of the encrypted authentication information from the POS
`
`38.
`
`I have been infomied that Patent Owner also amended application
`
`claims 4—14 (issued claims 2—12), adding the limitation of the “electronic ID”
`
`device that corresponds with claim 1- Id. 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—1 8 (issued claims 14—16) to include the limitation of the “electronic ID” device
`
`that corresponds with the amendments to claims 1 and 15 (issued claims 1 and 13).
`
`Id. at 5.
`
`39.
`
`I have been informed that Patent Owner also amended application
`
`claims 22—24 (issued claims 20—22) to include the limitation of the “electronic ID”
`
`device that corresponds to the amendments to claims 1 and 20 (issued claims 1 and
`
`18). Id. at 5.
`
`40.
`
`I have been informed that the examiner issued a Notice of Allowance
`
`on March 19, 2013. See Err—1012, ‘813 Patent File History, 03/19/2013 Notice of
`
`Allowance and Fees Due-
`
`41.
`
`The ‘813 patent subsequently issued on November 5, 2013.
`
`C.
`
`Rejection of Patent Family Members Under §101
`
`42.
`
`I have been informed that after the application that led to the ’813
`
`patent was granted, Patent Owner filed 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 9.g. Exs—1014—101 7-
`
`The rejected continuation patent applications contain claims that 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 US. Patent No- 8,577,813
`
`language of a currently—rejected claim of US. Patent Application No. 14/071,126
`
`(“’126 application”) and claim 1 of the ’813 patent:1
`
`’126 Patent A nlication Claim 21
`
`’813 Patent Claim 1
`
`An electronic 1]) device configured to
`encrypt information to enable execution of a
`secure operation, comprising:
`
`An electronic 1]) 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 a 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
`fi'om the plurality of accounts;
`
`a communication interface configured to
`communicate with a system configured to
`execute the secure operation;
`
`a communication interface configured to
`communicate with a secure registry;
`
`
`
`a processor coupled to the biometric
`sensor, the user interface, and the
`communication interface, the processor being
`programmed such that after the electronic [D
`device receives at least one of the biometric
`
`input and the secret authentication
`information, the processor is configured to
`generate a non-predictable value and to
`encrypt the non-predictable value,
`information derived from at least a portion of
`the biometric innut, and information derived
`
`a processor coupled to the biometric
`sensor to receive information concerning the
`biometric input, the user interface and the
`communication interface, the processor being
`programmed to activate the electronic 1])
`device based on successful authentication by
`the electronic [D device of at least one of the
`
`biometric input and the secret information, the
`processor also being programmed such that
`once the electronic 1]) device is activated the
`
`rocessor is confi
`
`ed to enerate a non-
`
`1 The claims of the other pending patents are similarly continuations of the
`
`‘813 patent and claim substantially the same subject matter as those in the chart
`
`and in the ”813 patent. The examiner similarly 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
`
`fi'om at least a portion of the secret
`authentication information to generate
`encrypted authentication information, and to
`communicate the encrypted authentication
`information via the communication interface
`to the system configured to execute the secure
`operation.
`
`predictable value and to generate encrypted
`authentication information from the non-
`predictable value, information associated with
`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 device.
`
`43.
`
`The patent examiner reasoned that the rejected pending claims of the
`
`’ 126 application are directed toward “automating mental tasks” and the abstract
`
`idea of “receiving and processing 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 beyond this abstract
`
`idea. Ex—1014 at 19. In addition, the examiner found that the incorporation of an
`
`implementing device into these claims “does not provide meaningfill limitations
`
`beyond generally linking the use of an abstract idea to a particular technology
`
`environment and requires no more than a generic computer to perform generic
`
`computer functions.” Id.
`
`44. On November 29, 2017, Patent Owner conducted a telephonic
`
`interview with the examiner to 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 persuaded by the applicant’s position and the claims stand
`
`rejected. Id. at 5.
`
`V.
`
`LEVEL OF ORDINARY SKJLL
`
`45.
`
`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 successfirlly carried out. I
`
`filrther understand that the level of skill in the art is evidenced by prior art
`
`references.
`
`46.
`
`The prior art demonstrates that a person of ordinary skill in the art, at
`
`the time the ’81 3 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 experi