UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FIRST DATA CORPORATION
`
`Petitioner
`
`CARDSOFT INTERNATIONAL PTY LIMITED
`
`Patent Owner
`
`U.S. Patent No. 6,934,945
`
`Filing Date: October 22, 1999
`
`Issue Date: August 23, 2005
`
`Title: METHOD AND APPARATUS FOR
`
`CONTROLLING COMMUNICATIONS
`
`Inter Partes Review No. Unassigned
`
`DECLARATION OF STEPHEN GRAY
`
`Petitioner First Data - Exhibit 1009 - Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FIRST DATA CORPORATION
`
`Petitioner
`
`CARDSOFT INTERNATIONAL PTY LIMITED
`
`Patent Owner
`
`U.S. Patent No. 6,934,945
`
`Filing Date: October 22, 1999
`
`Issue Date: August 23, 2005
`
`Title: METHOD AND APPARATUS FOR
`
`CONTROLLING COMMUNICATIONS
`
`Inter Partes Review No. Unassigned
`
`DECLARATION OF STEPHEN GRAY
`
`Petitioner First Data - Exhibit 1009 - Page 1
`
`
`
`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. .. 1
`
`QUALIFICATIONS .......................................................................................................... .. 1
`
`III.
`
`MATERIALS REVIEWED ............................................................................................... ..4
`
`IV.
`
`LEGAL STANDARDS ..................................................................................................... ..5
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART ............................................................. ..6
`
`VI.
`
`OVERVIEW OF THE ’945 PATENT ............................................................................... ..7
`
`VII.
`
`CLAIM CONSTRUCTION ............................................................................................... ..9
`
`VIII.
`
`PRIOR ART CONSIDERED .......................................................................................... ..12
`
`IX.
`
`APPLICATION OF THE PRIOR ART TO THE CLAIMS ........................................... ..13
`
`X.
`
`MOTIVATION TO COMBINE REFERENCES ............................................................ ..13
`
`XI.
`
`CONCLUSION ................................................................................................................ .. 15
`
`i
`
`Petitioner First Data - Exhibit 1009 - Page 2
`
`
`
`1, Stephen Gray, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by First Data Corporation (“First Data” or “Petitioner”) as an
`
`independent expert consultant in this proceeding before the United States Patent and Trademark
`
`Office.
`
`2.
`
`3.
`
`I am being compensated at a rate of $405/hour for my work.
`
`My compensation is in no way contingent on the nature of my findings, the
`
`presentation of my findings in testimony, or the outcome of any proceeding.
`
`4.
`
`I understand that this proceeding involves U.S. Patent No. 6,934,945 (“the ’945
`
`patent”). The application for the ’945 patent was filed on October 22, 1999, as U.S. Patent
`
`Application No. 09/381,143 (“the ’ l43 application”) with priority to a PCT filed March 16,
`
`1998. The ’ 143 application issued as the ’945 patent on August 23, 2005.
`
`5.
`
`I have been asked to consider whether certain references disclose or suggest the
`
`features recited in the claims of the ’945 patent. My opinions are set forth below.
`
`II.
`
`QUALIFICATIONS
`
`6.
`
`I am an independent consultant. All of my opinions stated in this declaration are
`
`based on my own personal knowledge and professional judgment. In forming my opinions, I
`
`have relied on my knowledge and experience in designing, developing, and deploying digital
`
`image processing systems, distributed client/server systems, graphical user interfaces, and
`
`website platforms, and e-commerce systems, and on the documents and information referenced
`
`in this declaration.
`
`7.
`
`I am over 18 years of age and, if I am called upon to do so, I would be competent
`
`to testify as to the matters set forth herein. 1 have attached to this declaration a copy of my
`
`1
`
`Petitioner First Data - Exhibit 1009 - Page 3
`
`
`
`current curriculum vitae, which details my education and experience, and a list of all other cases
`
`during the previous four years in which I testified as an expert at trial or by deposition. The
`
`following provides an overview of some of my experience that is relevant to the matters set forth
`
`in this declaration.
`
`8.
`
`I graduated from California Polytechnic University in 1973 with a Bachelor’s
`
`Degree in Economics.
`
`9.
`
`Since the mid-1970s, I have designed, developed, and deployed distributed
`
`computing systems and products that operate in distributed computing environments, including
`
`image processing systems. As such, I have acquired expertise and am an expert in the areas of
`
`distributed computing architecture and design, graphical user interfaces, website platforms,
`
`eCommerce systems, image processing systems, operating systems, local area and wide area
`
`networks, and various programming languages used in the development of those systems and
`
`products. I have been employed by or retained as a consultant, including acting as a litigation
`
`consultant, for numerous companies such as Burroughs, Filenet, Fujitsu, Marriott Corporation,
`
`MCI, Northern Telecom, Olivetti, TRW, and Xerox, as well as other companies.
`
`10.
`
`As a consultant to TRW Financial Systems (TFS) in the late 1980s and early
`
`1990s, I worked on several projects that performed various aspects of image-assisted item
`
`processing. I worked on a joint project with TFS and IBM to develop a distributed remote item
`
`processing system using IBM components including Check Processing Control System (CPCS),
`
`High Performance Transaction Systems (HPTS), CIMS, and others. Also I led the design of a
`
`high performance, LAN-based image capture and statement printing subsystem using IBM
`
`system components including CPCS, Multiple Virtual Storage/Enterprise Systems Architecture
`
`(MVS/ESA) and DB2 relational database for TFS. Finally, I led the design of an image assisted,
`
`Petitioner First Data - Exhibit 1009 - Page 4
`
`
`
`remittance processing system using IBM system components such as CPCS, MVS/ESA and
`
`Sybase relational database in a client/server architecture for TFS.
`
`l 1.
`
`I have developed and presented numerous public and in-house courses in
`
`computer system technology, including courses relating to applications for IBM MVS, UNIX,
`
`Linux, IBM OS/2, Microsoft Windows, and related networking technologies.
`
`1 have lectured on
`
`distributed image processing in numerous publicly offered training sessions oriented to engineers
`
`interested in maintaining their professional credentials with continuing education units.
`
`12.
`
`As my curriculum vitae shows, much of my career has been spent as a software
`
`development professional. As a software development professional, I have had numerous
`
`occasions to write, modify, analyze, and otherwise review bodies of source code. I have
`
`analyzed source code written in several variants of C, SQL, COBOL, RPG, variants of Basic,
`
`Java, Perl, several Assembler languages, and others. For example, as an individual contributor at
`
`Xerox during the mid-1980s to 1990, 1 evaluated the quality of source code from third party
`
`software providers for possible inclusion in the Xerox product line. Also, as another example, 1
`
`evaluated the source code of several application software packages for completeness and
`
`maintainability for possible inclusion into the NTN product line in 2000-2001. During my early
`
`career, I spent time maintaining source code written by others. In each of these assignments, I
`
`analyzed the source code to identify the data structures, logical flow, algorithms and other
`
`aspects.
`
`13.
`
`In addition, on several occasions, I have served as an expert witness where source
`
`code analysis was required to render an opinion. These matters include Autobytel v. Dealix;
`
`NetRatings v. Coremetrics, et al.; Ampex v. Kodak, et al.; AB Cellular v. City of Los Angeles;
`
`Petitioner First Data - Exhibit 1009 - Page 5
`
`
`
`Oracle V. Mangosoft; Harrah’s Casino V. Station’s Casino; Autobytel V. Dealix; MediaTek V.
`
`Sanyo; MathWorks V. Comsol; and other matters still pending.
`
`14.
`
`Also, I haVe served as an expert witness where operating system technology was
`
`an issue in the matter. These matters include SuperSpeed V. IBM; FedEx V. U.S.; MathWorks V.
`
`Comsol; Ametron-American Electronic Supply V. Entin, et al; BMC Software V. Peregrine
`
`Systems, Inc.; and ADV Freeman V. Boole & Babbage.
`
`15.
`
`I was retained as an expert witness by US Bank in the DataTreasury V. Wells
`
`Fargo et al. litigation and testified during that litigation.
`
`III. MATERIALS REVIEWED
`
`16.
`
`In forming my opinions, IhaVe reviewed the ’945 patent and its file history, as
`
`well as the following documents:
`
`1001
`
`1002
`
`1004
`
`1005
`
`1008
`
`1010
`
`Ogilvy U.S. Patent No. 6,934,945 (the “‘945 Patent,”)
`
`EMV ’96, Integrated Circuit Card Terminal Specification for Payment
`Systems, Version 3.0, June 30, 1996 (EMV ’96) l02(b) prior art
`
`OMNI 300 Series Terminal, Programmer’s Manual, Volume 1 and Volume 2
`(“OMNI 300”), l02(b) prior art)
`
`Custy US Pat. No. 5,774,879, assigned to First Data (“First Data ‘879
`Patent”) lO2(e) prior art
`
`Claim Construction Order in Cardsoft, Inc., et al. V. Verifone Holdings, Inc.,
`et al., case no. 2:08-CV-98-CE
`
`Europay Open Terminal Architecture — A Forth-based Token System for
`Payment Terminals (“OTA”) l02(b) prior art
`
`Petitioner First Data - Exhibit 1009 - Page 6
`
`
`
`17.
`
`All of the opinions contained in this declaration are based on the documents I
`
`reviewed and my knowledge and professional judgment. My opinions have also been guided by
`
`my appreciation of how a person of ordinary skill in the art would have understood the claims of
`
`the ’945 patent at the time of the alleged invention, which I have been asked to initially consider
`
`as March 16, 1998, the PCT filing date of the ’l43 application, and earlier.
`
`IV.
`
`LEGAL STANDARDS
`
`18.
`
`For purposes of this declaration, I have been asked to opine only on issues
`
`regarding 35 U.S.C. §§ 102 and 103. I have been informed of the following legal standards,
`
`which I have applied in forming my opinions.
`
`19.
`
`I have been advised that a claim is invalid under 35 U.S.C. § 102 when a single
`
`prior art reference discloses all of the subject matter of the claim, and the claim is said to be
`
`“anticipated by the prior art.”
`
`20.
`
`I have been advised that a patent claim may be invalid as obvious under 35 U.S.C.
`
`§ 103 if the differences between the subject matter patented and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person of ordinary skill in the art at the
`
`time the invention was made. I have also been advised that several factual inquiries underlie a
`
`determination of obviousness. These inquiries include (1) the scope and content of the prior art,
`
`(2) the level of ordinary skill in the field of the invention, (3) the differences between the claimed
`
`invention and the prior art, and (4) any objective evidence of non-obviousness.
`
`21.
`
`I also have been advised that the law requires a “common sense” approach of
`
`examining whether the claimed invention would have been obvious to a person skilled in the art.
`
`For example, I have been advised that combining familiar elements according to known methods
`
`Petitioner First Data - Exhibit 1009 - Page 7
`
`
`
`and in a predictable way is likely to suggest obviousness when such a combination would yield
`
`predictable results.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`22.
`
`In my opinion, the art relevant to the ’945 patent relates to controlling remote
`
`payment transactions over a distributed network.
`
`23.
`
`I have been advised that “a person of ordinary skill in the art in the relevant field”
`
`is a hypothetical person to whom one could assign a routine task in the relevant field (e. g., the
`
`field of networking or software for business or financial activities) with reasonable confidence
`
`that the task would be successfully carried out.
`
`24.
`
`I was asked to give an opinion as to the level of one of ordinary skill in the art
`
`pertinent to the subject matter set forth in the ’945 patent at the time of the invention.
`
`25.
`
`I am familiar with the level of experience required of a person of ordinary skill in
`
`the art to be able to understand, make, and use the technology presented in the ’945 patent. In
`
`my opinion, a person of ordinary skill in the art would be someone with a degree in Management
`
`Information Systems, Computer Science, or Electrical Engineering, or equivalent professional
`
`system development experience, plus two years of work experience with payment systems and
`
`computer networking. It is my opinion that work experience would substitute for formal
`
`education and that additional formal education, such as graduate studies, could substitute for
`
`work experience.
`
`26.
`
`The basis for my familiarity with the level of ordinary skill is my interaction with
`
`large numbers of workers in the computing field who were at this level of skill as well as my
`
`own professional experience in the pertinent field. The pertinent art was the configuration and
`
`arrangement of commercially available computer components, networks, systems, and software
`
`Petitioner First Data - Exhibit 1009 - Page 8
`
`
`
`to satisfy particular customer payment system specifications, together with such programming as
`
`might be necessary to tie the components together to operate in the desired manner.
`
`27.
`
`In reaching this opinion as to the hypothetical person of ordinary skill in the art, I
`
`have considered the types of problems encountered in the art, the prior art solutions to those
`
`problems, the rapidity with which innovations are made, the sophistication of the technology,
`
`and the educational level and professional capabilities of workers in the field.
`
`VI.
`
`OVERVIEW OF THE ’945 PATENT
`
`28.
`
`The ’945 patent is entitled “METHOD AND APPARATUS FOR
`
`CONTROLLING COMMUNICATIONS” and issued to Ian Charles Ogilivy on August 23,
`
`2005. (Ex. 1001). The application that resulted in the ’945 patent was filed on March 16, 1998
`
`as Appl. No.: 09/381,143. There are seventeen claims in the ‘945. Claims 1, 12 and 14 are the
`
`independent claims.
`
`29.
`
`The ‘945 Patent is directed to “preparing and processing information to be
`
`communicated via a networ ” using a “virtual machine” (see Abstract). The main embodiment
`
`discussed is a POS device for payment transactions using credit cards.
`
`30.
`
`Figure 2 is a schematic that illustrates the architecture of the purported invention:
`
`Petitioner First Data - Exhibit 1009 - Page 9
`
`
`
`
`
`I01
`
`
`
`/00
`
`HW DRIVERS
`HARDWARE
`
`<—.~.:=:=""{:7//i/?DV\//IRE /1557??/iC770r’-’
`‘
`_!./IYER.
`INTERFACE
`
`/auows EXIS77N6'1SI05'.
`0;? Hi/ DR/I/£R.s
`
`'05’
`
`
`
`FIGS. 2
`
`31.
`
`The patent describes the “virtual machine” as containing two separate virtual
`
`processors 103, (1) a “virtual function processor” 107 for controlling operation of the device,
`
`including calling (2) a “virtual message processor” 105 to carry out “message handling tasks.”
`
`The message handling tasks include such things as receiving the input card number, PIN, etc. and
`
`transmitting them to a remote financial institution for authorization. The use of dual virtual
`
`processors is a common technique in computer operating systems of having different modules or
`
`subroutines for different tasks.
`
`32.
`
`According to the ‘945 specification, the application of the concept of a virtual
`
`machine is not inventive: “The technique of creating a virtual processor (or in this case
`
`microprocessor) is well known and referred to as an interpreter” (‘945 Patent, col. 3, 11 34-36).
`
`The ‘945 specification describes the “virtual machine” as being emulatable on different hardware
`
`platforms but, again, the specification states that the use of emulations is well understood prior
`
`art. Cardsoft ‘945 Patent, col. 3, 34-36.
`
`Petitioner First Data - Exhibit 1009 - Page 10
`
`
`
`33.
`
`However, the ‘945 specification claims that the specific embodiment of the virtual
`
`machine emulation is done in “native code” which is claimed to be inventive. Since
`
`“emulatable” logically means the code implementing the virtual machine can be rewritten to run
`
`on different machines, any code would satisfy this:
`
`A virtual machine is computer programmed to emulate a
`hypothetical computer. Different incompatible computers
`may be programmed to emulate the same hypothetical
`computer.
`
`(‘945 Patent, col. 3, 11. 40-43).
`
`34.
`
`It should be noted that the use of “native code” is not required in the independent
`
`claims as discussed under claim construction below.
`
`35.
`
`Some of the dependent claims are directed to various combinations of different
`
`modules being in native code (e.g., claim 3 claims a protocol processor in native code; claim 5
`
`claims a message processor in native code; claim 6 claims a function processor in native code).
`
`These are all shown by prior art where all modules are in native code.
`
`VII. CLAIM CONSTRUCTION
`
`36.
`
`In preparing this declaration, I was asked to consider the meaning that certain
`
`claim terms would have had to those of ordinary skill in the art. I understand that, for each claim
`
`term construed, I should use the broadest reasonable interpretation that would have been
`
`understood by one of ordinary skill in the art reading the specification of the ’945 patent at the
`
`time of the patent filings.
`
`37.
`
`I understand that the standard for claim construction at the United States Patent
`
`and Trademark Office is different fiom the standard used in United States District Courts.
`
`I
`
`understand that a U.S. District Court interprets claim terms based on the plain and ordinary
`
`Petitioner First Data - Exhibit 1009 - Page 11
`
`
`
`meaning. I understand also that the United States Patent and Trademark Office interprets claim
`
`terms based on the broadest reasonable interpretation.
`
`38.
`
`I understand that the broadest reasonable interpretation may be broader in scope
`
`than the plain and ordinary meaning. Accordingly, I understand that the United States Patent and
`
`Trademark Office may adopt a different construction from a district court when the broadest
`
`reasonable interpretation is different from the plain and ordinary meaning. The table below
`
`defines the meaning of terms used in this declaration:
`
`virtualfunction processor
`
`software which controls and/or selects general
`
`operations of a communication device
`
`function processor instructions
`
`a set of instructions that control operation of the
`
`communications device
`
`virtual message processor
`
`software that processes messages, including assembling,
`
`disassembling and/or comparing messages, for
`
`communication to and/or from a communications device
`
`virtual machine means
`
`not construed as means plus function language
`
`protocol processor means
`
`not construed as means plus function language
`
`emulatable in diflerent computers
`
`the code can be rewritten to run on otherwise
`
`having incompatible hardware or
`
`incompatible hardware
`
`operating systems
`
`protocol processor instruction
`
`instructions for the protocol processor
`
`means
`
`the function is: providing directions for operation ofthe
`
`10
`
`Petitioner First Data - Exhibit 1009 - Page 12
`
`
`
`virtual message processor;
`
`the structure is: 13:29-14:2; 15:23-34; Figure 11 and
`
`Figure 8, and equivalents thereof.
`
`
`
`processing means
`
`processor
`
`39.
`
`I note that the meanings for several of the terms stated above are the same as
`
`those definitions found in the claim construction order from Cardsoft v. Verifone (Ex. 1008).
`
`Any proposed differences between the claims construed in the Cardsoft v. Verifone matter and
`
`those proposed above are discussed below.
`
`40.
`
`The term virtual message processor was construed by the court in the Cardsoft v.
`
`Verifone matter to mean “software implemented in the native code of the communications
`
`device that processes messages, including assembling, disassembling and/or comparing
`
`messages, for communication to and/or fiom a communications device.” First Data has
`
`proposed that the words “implementation in the native code of the communication device” be
`
`eliminated fiom this construction. The term “native code” does not appear in claim 1 with this
`
`language, but does appear in dependent claim 5, which recites the native code of the processor.
`
`There would be no difference between the native code of the processor and native code of the
`
`device. The doctrine of claim differentiation would thus suggest that the claim 1 language is
`
`broader under the IPR standard of “broadest reasonable interpretation.” 1 have considered First
`
`Data’s proposal and agree with the change to the definition of the term virtual message
`
`processor for the purposes of this declaration.
`
`41.
`
`The term emulatable in diflerent computers having incompatible hardware or
`
`operating systems was construed by the court in the Cardsoft v. Verifone matter to mean
`
`ll
`
`Petitioner First Data - Exhibit 1009 - Page 13
`
`
`
`“capable of executing programs on different computers having incompatible hardware or
`
`operating systems.” See ‘945 Patent at 3 :43-46 (“Any computer programmed to emulate the
`
`hypothetical computer will thus be capable of executing programs for the virtual computer. ”)
`
`First Data has proposed that the term “emulatable” means that the code can be rewritten to run
`
`on otherwise incompatible hardware, and thus would cover any code under a broadest reasonable
`
`construction. The patent says “the virtual machine processors are constructed using C” (‘945
`
`patent 11:10-1 l) in the preferred embodiment,C is a popular source code language that multiple
`
`application programs can be written in. I have considered First Data’s proposal and agree with
`
`the change to the definition of the term emulatable in diflerent computers having incompatible
`
`hardware or operating systems for the purposes of this declaration.
`
`VIII. PRIOR ART CONSIDERED
`
`42.
`
`1. EMV ’96, Integrated Circuit Card Terminal Specification for Payment
`
`Systems, Version 3.0, June 30, 1996 (EMV ’96) 102(b) prior art. This is a specification by EMV
`
`(Europay, MasterCard & Visa) for terminals that accept integrated circuit cards (smart cards with
`
`chips, as opposed to mag stripe cards). It describes a virtual machine instruction set to allow
`
`terminals to emulate a virtual machine.
`
`43.
`
`2. OMNI 300 Series Terminal, Programmer’s Manual, Volume 1 and Volume 2
`
`(“OMNI 300” 1, 102(b) prior art). This manual was provided with the 300 series terminals and
`
`includes description of the message assembling, disassembling and comparison functions.
`
`44.
`
`3. Custy US Pat. No. 5,774,879, assigned to First Data (“First Data ‘879 Patent”[
`
`102(e) prior art. This is a patent of the petitioner that describes dividing the software for a
`
`terminal into a virtual execution control processor (the claimed function processor) and a virtual
`
`communication processor (the claimed message processor).
`
`12
`
`Petitioner First Data - Exhibit 1009 - Page 14
`
`
`
`45.
`
`4. Europay Open Terminal Architecture — A Forth-based Token System for
`
`Payment Terminals §“OTA”[ l02(b) prior art. This 1996 paper was presented at the June 19-22,
`
`1996 Rochester Forth Conference - Open Systems, in Toronto Canada. It describes prototypes
`
`exhibited and used for 4060 transactions at an Europay Members meeting in Seville, Spain June
`
`5-7, 1996 (see Ex.
`
`, p. 29). The paper describes a “virtual machine” with a “kemel” having
`
`functions that “can be run on any [POS] terminal” in “native code.” The fiJIlClIlOIlS include
`
`“message management” (the claimed virtual message processor).
`
`IX.
`
`APPLICATION OF THE PRIOR ART TO THE CLAIMS
`
`46.
`
`It is my opinion that claims 1 to 17 of the ‘945 patent are anticipated by EMV ‘96.
`
`Details regarding my analysis and opinion are found in Exhibit A to this declaration.
`
`47.
`
`It is my opinion that claims 1 to 17 of the ‘945 patent are obvious over EMV ’96
`
`in view of OMNI 300. Details regarding my analysis and opinion are found in Exhibit A to this
`
`declaration.
`
`48.
`
`It is my opinion that claims 1 to 17 of the ‘945 patent are obvious over EMV ’96
`
`in view of OTA, OMNI 300 and First Data’s ‘879 Patent. Details regarding my analysis and
`
`opinion are found in Exhibit A to this declaration.
`
`X.
`
`MOTIVATION TO COMBINE REFERENCES
`
`49.
`
`EMV ’96 and OMNI 300. OMNI 300 describes software for mag stripe POS
`
`terminals using Verifone’s TXO operating system with source code in the standard C language.
`
`EMV ’96 provides standards for terminals reading integrated circuit cards (ICCs). EMV ’96
`
`basically describes desired upgrades for mag stripe terminals, such as the OMNI 300 series, to
`
`support ICC cards. EMV ’96 states “This specification provides the requirements necessary to
`
`support the implementation of ICCs. These requirements are in addition to those already defined
`
`13
`
`Petitioner First Data - Exhibit 1009 - Page 15
`
`
`
`by individual payment systems and acquirers for terminals that accept magnetic stripe cards.” (p.
`
`vii). Both EMV ‘96 and OMNI 300 are directed to POS devices and one of skill in the art
`
`looking at updating the OMNI 300 in 1998 would want to make sure it complied with EMV ’96,
`
`the de facto industry standard.
`
`50.
`
`EMV ’96 OTA OMNI 300 and First Data ‘879. It would be obvious to combine
`
`these references because all relate to POS terminals. In 1998, it would have been obvious to a
`
`person looking to improve EMV ’96 to incorporate aspects of OTA because both documents are
`
`directed to point of service (POS) terminals, both relate to ICC readers, and both relate to
`
`Europay terminals. The OTA title refers to Europay, the E in EMV ’96. The First Data ‘879
`
`Patent describes a virtual processor with virtual processor modules for a POS terminal, and thus
`
`would be obvious to combine with the virtual machines of EMV ’96 and OTA. Both deal with
`
`virtual processors for such devices. EMV ‘96 and the First Data ‘879 Patent disclose financial
`
`processing systems that are intended to be portable among various software and hardware
`
`platforms (see First Data ‘879 col. 2, lines 43-45), and thus are not just related POS subject
`
`matter, but are both directed to the same “emulation” concept. The First Data ‘879 Patent would
`
`show one of skill in the art the division of the virtual machine into different modules, to provide
`
`a robust implementation of the EMV and OTA systems. The OMNI 300 would need to comply
`
`with the EMV and OTA industry standards as described in paragraph 52 above. OMNI 300
`
`would provide one of skill in the art with the details of message processing that would need to be
`
`accomplished by a virtual machine as described in EMV and OTA, and to implement a virtual
`
`communication processor as described in the First Data ‘879 Patent.
`
`14
`
`Petitioner First Data - Exhibit 1009 - Page 16
`
`
`
`XI.
`
`CONCLUSION
`
`51.
`
`In summary, as set forth in this declaration and in the attached exhibits, it is my
`
`opinion that all of the features recited in claims 1-17 of the ’945 patent are invalid as anticipated
`
`or obvious to a person of ordinary skill in the art at the time of the invention.
`
`52.
`
`In signing this declaration, I understand that the declaration will be filed as
`
`evidence in a contested case before the Patent Trial and Appeal Board of the United States Patent
`
`and Trademark Office. I acknowledge that I may be subject to cross-examination in this case
`
`and that cross-exarnination will take place within the United States. If cross-examination is
`
`required of me, I will appear for cross-exarnination within the United States during the time
`
`allotted for cross-exarnination.
`
`53.
`
`I declare that all statements made herein of my knowledge are true, and that all
`
`statements made on information and belief are believed to be true, and that these statements were
`
`made with the knowledge that willful false statements and the like so made are punishable by
`
`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`Dated: April 30, 2014
`
`§%2z«~
`
`66242l89V.l
`
`15
`
`Petitioner First Data - Exhibit 1009 - Page 17
`
`
`
`
`
`EXHIBIT AEXHIBIT A
`
`
`
`Petitioner First Data - Exhibit 1009 - Page 18Petitioner First Data - Exhibit 1009 - Page 18
`
`
`
`Claim Charts
`
`Preamble. The preamble simply refers to admitted prior art. Further, EMV
`
`’96 — Integrated Circuit Card Terminal Specification for Payment Systems (“EMV
`
`‘96”) and Europay Open Terminal Architecture — A Forth-based Token System for
`
`Payment Terminals (“OTA”) both refer to the use of a virtual machine being
`
`implemented.
`
`The ‘945
`
`Patent
`
`1. A
`
`EMV ‘96
`
`A point-of-service terminal which communicates
`communication
`with a host via messages is presented: “This specification
`device which is
`applies to all terminals operating in attended or unattended
`arranged to process
`environments, having offline or online capabilities, and
`messages for
`supporting transaction types such as purchase of goods,
`communications,
`services, and cash. Terminals include but are not limited to
`comprising a virtual
`machine means which automated teller machines (ATMs), branch terminals,
`includes
`cardholder-activated terminals, electronic cash registers,
`personal computers, and point of service (POS) terminals.”
`EMV ’96, at p. vii, 112.
`
`“An interpreter implementation defines a single
`software kernel, common across multiple terminal types.
`This kernel creates a virtual machine ....” Id., at §l.4.l,
`pp. II-3—II-4.
`
`The ‘945 Patent — Admitted Prior Art
`
`“The technique of creating a virtual processor (or in
`this case microprocessor) is well known and referred to as
`an interpreter. This allows programs to operate
`independent of processor. With the newer technique of
`also creating virtual peripherals then the whole is referred
`to as a ‘virtual machine’.” The ‘945 Patent, col. 3, ll. 34-
`39.
`
`Petitioner First Data - Exhibit 1009 - Page 19
`
`
`
`OTA
`
`. a target
`.
`“The hardware environments include .
`which is some form of payment terminal.” OTA, p. 73, 113.
`
`“Such payment terminals are used for
`communication: “In the embedded systems for which
`OTA is targeted, system functions cover not only OTA
`functions such as communications .
`.
`. .” Id. at p. 75, 118.
`
`“A virtual machine is used on OTA terminals by
`implementing code that controls the device: “OTA
`terminal code is based on a single virtual machine which is
`emulated on the actual devices.” Id., at p. 74, 113. “The
`software in every OTA terminal is written in terms of a
`common virtual machine.” Id., at p. 74, 4.
`
`Element A. The first element of the ‘945 Patent is directed to a virtual
`
`function processor that includes instructions for controlling operating of the
`
`communication device. The concept of using a virtual machine that includes
`
`instructions for controlling operation of a device is taught by EMV ’96. EMV’96
`
`describes “a theoretical microprocessor” which is the claimed “virtual function
`
`processor.” A “virtual processor” is actually redundant with a “virtual machine,”
`
`since the processor is what necessarily runs the machine. In EMV ’96, a virtual
`
`processor interprets instructions and allows a point of service terminal to be
`
`controlled based on such instructions. Further, OTA indicates that a virtual
`
`machine may be implemented in the form of software on an OTA terminal.
`
`[A] a virtual
`function rocessor
`
`EMV ‘96
`“In the case of an interpreter capability, these
`
`_ 2 _
`
`Petitioner First Data - Exhibit 1009 - Page 20
`
`
`
`and function
`processor instructions
`for controlling
`operation of the
`device, and
`
`modules will be code, written in a virtual machine
`instruction set implemented within the terminal, to be
`interpreted by the terminal control program.” EMV ’96, at
`§l.2, p. II-2 (emphasis added).
`
`“An interpreter implementation defines a single
`software kernel, common across multiple terminal types.
`This kernel creates a virtual machine that may be
`implemented on each CPU type and that provides drivers
`for the terminal’s input/output (I/O) and all low-level
`CPU-specific logical and arithmetic functions. High-level
`libraries, terminal programs and payment applications
`using standard kernel functions may be developed and
`certified once; thereafter, they will run on any conforming
`terminal implementing the same virtual machine without
`change. Therefore, a significant consequence of an
`interpreter is a simplified and uniform set of test and
`certification procedures for all terminal functions.” Id., at
`§l.4. l , pp. II-3-H-4.
`
`“The application software in every terminal using
`the interpreter approach is written in terms of a common
`virtual machine. The virtual machine is a theoretical
`
`microprocessor with standard characteristics that define
`such things as addressing mode, registers, address space,
`etc.” 1d,, at §l.4.2, p. II-4 (emphasis added).
`
`“Virtual machine emulation may be accomplished
`by one of three methods: interpreting virtual machine
`instructions, translating the virtual machine language into a
`directly executable ‘threaded code’ form, or translating it
`into actual code for the target CPU.” 1d,, at §l.4.4, p. II-5.
`“Programs may be converted to an intermediate language,
`between the high level source language used by the
`programmer and the low-level machine code required by
`the microprocessor, and subsequently transported to the
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
