Paper No. 1
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION
`
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`
`Patent Owner
`
`
`
`U.S. Patent 6,237,095
`
`TITLE: APPARATUS FOR TRANSFER OF SECURE INFORMATION
`BETWEEN A DATA CARRYING MODULE AND
`AN ELECTRONIC DEVICE
`
`Issue Date May 22, 2001
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312
`
`
`

`

`Petitioner’s Exhibit List
`
`1002
`1003
`
`1004
`
`1005
`
`Exhibit No. Description
`1001
`U.S. Patent No. 6,237,095 (filed January 6, 1998) (issued May 22,
`2001) (“‘095 Patent”)
`Declaration of Dr. James L. Olivier (“Olivier Declaration”)
`PETER L. HAWKES ET AL., INTEGRATED CIRCUIT CARDS, TAGS AND
`TOKENS, NEW TECHNOLOGY AND APPLICATIONS, (Peter L. Hawkes
`et al. eds., BSP Professional Books 1990) (“Hawkes”)
`U.S. Patent No. 5,577,121 (filed June 9, 1994) (issued Nov. 19,
`1996) (“Davis”)
`U.S. Patent No. 5,297,279 (filed May 30, 1990) (issued March 22,
`1994) (“Bannon”)
`U.S. Patent No. 5,327,559 (filed Oct. 23, 1990) (issued July 5, 1994)
`(“Priven”)
`U.S. Patent No. 4,575,621 (filed Mar. 7, 1984) (issued March 11,
`1986) (“Dreifus”)
`European Pat. Pub. 0588339 A2 (“Ishiguro”)
`U.S. Patent No. 4,906,828 (filed May 31, 1988) (issued March 6,
`1990) (“Halpern”)
`Prosecution history for the ‘095 Patent
`Square, Inc. v. J. Carl Cooper, IPR 2014-00157, Papers 12 and 17
`Compass Bank, American Express Company, American Express
`Travel Related Services Company, Inc., Discover Financial
`Services, Discover Bank, Discover Products Inc., and State Farm
`Mutual Automobile Insurance Company v. Maxim Integrated
`Products, Inc., CBM 2015-00102, Paper 16
`
`1006
`
`1007
`
`1008
`1009
`
`1010
`1011
`1012
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`TABLE OF CONTENTS
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`Page
`
`INTRODUCTION .......................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1 
`A. 
`Real Party in Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................... 1 
`C. 
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................. 2 
`D. 
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 2 
`E. 
`Payment of Fees ................................................................................... 3 
`III.  REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. §42.104 ................................................................................................ 3 
`A.  Grounds for Standing Under 37 C.F.R. §42.104(a) ............................. 3 
`B. 
`Identification of Challenge Under 37 C.F.R. § 42.104(b) ................... 3 
`1.
`Claims for Which Review is Requested (37 C.F.R. §
` 
`42.104(b)(1)) .............................................................................. 3 
`Statutory Grounds of Challenge (37 C.F.R. §
`42.104(b)(2)) .............................................................................. 3 
`IV.  REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(A)(2) AND 42.104(B)(4) ..................................................................... 6 
`A. 
`Background .......................................................................................... 6 
`1.
`The ‘095 Patent .......................................................................... 6 
` 
`Relevant Prosecution History ............................................................... 9 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 13 
`Summary of the Prior Art ................................................................... 14 
`1.
`Hawkes ..................................................................................... 14 
` 
`2.
`Davis ........................................................................................ 18 
` 
`3.
`Bannon ..................................................................................... 19 
` 
`4.
`Priven ....................................................................................... 19 
` 
`5.
`Dreifus ...................................................................................... 20 
` 
`
`B. 
`C. 
`D. 
`
`2.
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`E. 
`F. 
`
`2.
` 
`
`3.
` 
`
`4.
` 
`
`Ishiguro .................................................................................... 21 
`6.
` 
`Halpern ..................................................................................... 21 
`7.
` 
`Summary regarding the prior art references ....................................... 23 
`The Challenged Claims Are Invalid Under 35 U.S.C. § 103(a) ........ 23 
`1.
`Ground 1 – Claims 1, 2, 5, and 6 are obvious under 35
` 
`U.S.C. § 103(a) over Hawkes in view of Davis ....................... 24 
`a. 
`Claim 1 ......................................................................................... 24 
`b. 
`Claim 2 ......................................................................................... 36 
`c. 
`Claim 5 ......................................................................................... 37 
`d. 
`Claim 6 ......................................................................................... 37 
`Ground 2 – Claim 3 is obvious under 35 U.S.C. § 103(a)
`over Hawkes, in view of Davis, and in further view of
`Bannon, or in the alternative, in further view of Priven .......... 39 
`Ground 3 – Claim 4 is obvious under 35 U.S.C. § 103(a)
`over Hawkes, in view of Davis, and in further view of
`Dreifus ...................................................................................... 41 
`Ground 4 – Claims 1, 2, and 5 are obvious under 35
`U.S.C. § 103(a) over Ishiguro in view of Halpern ................... 44 
`a. 
`Claim 1 ......................................................................................... 44 
`b. 
`Claim 2 ......................................................................................... 55 
`c. 
`Claim 5 ......................................................................................... 55 
`Ground 5 – Claim 3 is obvious under 35 U.S.C. § 103(a)
`over Ishiguro, in view of Halpern, and in further view of
`Bannon, or, in the alternative, in further view of Priven ......... 56 
`Ground 6 – Claim 4 is obvious under 35 U.S.C. § 103(a)
`over Ishiguro, in view of Halpern, and in further view of
`Dreifus ...................................................................................... 57 
`Ground 7 – Claim 6 is obvious under 35 U.S.C. § 103(a)
`over Ishiguro, in view of Halpern, and in further view of
`Davis ........................................................................................ 58 
`CONCLUSION ............................................................................................. 60 
`
`5.
` 
`
`6.
` 
`
`7.
` 
`
`V. 
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., United Services
`
`Automobile Association (“Petitioner”) requests inter partes review of claims 1-6
`
`(the “Challenged Claims”) of U.S. Patent No. 6,237,095 (“the ‘095 Patent,” Ex.
`
`1001), which issued on May 22, 2001. The fees for this petition have been paid by
`
`credit card. The Board is authorized to deduct any underpayment of fees associated
`
`with this petition from Norton Rose Fulbright US LLP Deposit Account No. 06-
`
`2380, under Order No. 11505386.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party in Interest Under 37 C.F.R. § 42.8(b)(1)
`
`United Services Automobile Association, USAA Federal Savings Bank, and
`
`USAA Capital Corporation are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ’095 Patent is involved in the following proceedings that may affect or be
`
`affected by a decision in this proceeding:
`
` CBM 2015-00102; and
`
` Maxim Integrated Products, Inc., v. USAA Federal Savings Bank, W.D.
`
`Texas, C.A. No. 5:14-CV-1031-XR; Maxim Integrated Products, Inc.,
`
`v. The American Express Company and American Express Travel
`
`Related Services Company, Inc., W.D. Texas, C.A. No. 5:14-CV-
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`01027; Maxim Integrated Products, Inc., v. Compass Bank, d/b/a
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`BBVA Compass, W.D. Texas, C.A. No. 5:14-CV-01028; Maxim
`
`Integrated Products, Inc., v. Discover Bank, W.D. Texas, C.A. No.
`
`5:14-CV-01029; Maxim Integrated Products, Inc., v. State Farm
`
`Mutual Automobile Ins. Co., W.D. Texas, C.A. No. 5:14-CV-01030-
`
`XR; Maxim v. M&T Bank Corp., C.A. No. 1:15-cv-02167; Maxim
`
`Integrated Products, Inc., v. HSBC Bank USA, Nat’l Ass’n, C.A. No.
`
`1:15-cv-02168; Maxim Integrated Products, Inc., v. Santander Bank,
`
`NA, C.A. No. 1:15-cv-02169; Branch Bank and Trust Company v.
`
`Maxim Integrated Products, Inc., C.A. No. 2:12-cv-00945, No. 2:12-
`
`mc-00244 (W.D. Pa.).
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner designates Nathan Rees (Reg. No. 63,820) as Lead Counsel, and
`
`Allan Braxdale (Reg. No. 64,276), and Ross Viguet (Reg. No. 42,203), as Back-Up
`
`Counsel.
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Email: USAA095IPR@nortonrosefulbright.com
`
`
`
`Post: Nathan J. Rees, Norton Rose Fulbright US LLP, 2200 Ross Avenue,
`
`Suite 3600, Dallas, Texas 75201
`
`Phone: 214.855.7164
`
`Fax: 214.855.8200
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`Petitioner consents to electronic service.
`
`E.
`
`Payment of Fees
`
`The fees for this petition have been paid by credit card. The Board is
`
`authorized to deduct any underpayment of fees associated with this petition and any
`
`related fees from Norton Rose Fulbright US LLP Deposit Account No. 06-2380,
`
`under Order No. 11504607.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§42.104
`
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`
`This petition has been filed within one year of the earliest date Petitioner was
`
`served with a complaint in the case number 5:14-cv-1031-XR. Petitioner certifies
`
`that the ‘095 Patent is available for inter partes review, and that Petitioner is not
`
`barred or estopped from requesting this inter partes review.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`
`
`1.
`
`Claims for Which Review
`42.104(b)(1))
`
`is Requested (37 C.F.R. §
`
`Petitioner requests review and the cancellation as invalid of claims 1-6 of the
`
`‘095 Patent.
`
`
`2.
`
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
`
`Petitioner requests inter partes review of Challenged Claims 1-6 of the ‘095
`
`Patent on the grounds set forth in the table shown below, and requests that each of
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`the Challenged Claims be found unpatentable. An explanation of how these claims
`
`are unpatentable under the statutory grounds identified below is provided in the form
`
`of detailed description that follows, indicating where each of the claim elements can
`
`be found in the cited prior art, and the relevance of that prior art. Additional
`
`explanation and support for each ground of rejection is set forth in Ex. 1002,
`
`referenced throughout this Petition.
`
`Hawkes as Primary Reference:
`
`Ground
`
`‘095 Patent Claims
`
`Basis for Rejection
`
`Ground 1
`
`1, 2, 5, and 6
`
`Ground 2
`
`Ground 3
`
`3
`
`4
`
`35 U.S.C. § 103(a) based on Hawkes in
`view of Davis
`35 U.S.C. § 103(a) based on Hawkes, in
`view of Davis, and in further view of
`Bannon, or, in the alternative, in further
`view of Priven
`35 U.S.C. § 103(a) based on Hawkes, in
`view of Davis, and in further view of
`Dreifus
`
`Ishiguro as Primary Reference:
`
`Ground
`
`‘095 Patent Claims
`
`Basis for Rejection
`
`Ground 4
`
`1, 2, and 5
`
`Ground 5
`
`3
`
`35 U.S.C. § 103(a) based on based on
`Ishiguro in view of Halpern
`35 U.S.C. § 103(a) based on Ishiguro, in
`view of Halpern, and in further view of
`Bannon, or, in the alternative, in further
`view of Priven
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`Ground
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`‘095 Patent Claims
`
`Basis for Rejection
`
`Ground 6
`
`Ground 7
`
`4
`
`6
`
`35 U.S.C. § 103(a) based on Ishiguro, in
`view of Halpern, and in further view of
`Dreifus
`35 U.S.C. § 103(a) based on Ishiguro, in
`view of Halpern, and in further view of
`Davis
`
`The ‘095 Patent issued May 22, 2001 from Application No. 09/003,541
`
`(“‘541 Appln.”), which was filed Jan. 6, 1998. The ‘541 Appln. is a divisional
`
`application of the 08/595,014 Application, filed Jan. 31, 1996, which claims
`
`priority to Provisional Application No. 60/004,510, filed Sep. 29, 1995.
`
`Accordingly, the earliest possible date to which the ‘095 Patent could claim
`
`priority (hereinafter the “earliest effective filing date”) is September 29, 1995.
`
`Further, Petitioner does not concede that the ‘095 Patent is entitled to this
`
`priority date, but has elected not to argue the issue in the Petition because all prior
`
`art references identified in the Grounds presented below pre-date the earliest
`
`possible priority date for the ‘095 Patent. However, Petitioner explicitly reserves the
`
`right to present such an argument in this proceeding or other proceedings involving
`
`the ‘095 Patent.
`
`Hawkes was published in 1990 by BSP Professional Books. Ex. 1003. The
`
`Ishiguro patent application was published on March 23, 1994. Ex. 1004. The
`
`Bannon, Priven, Dreifus, and Halpern patents were each issued/published by the
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`United States Patent and Trademark Office more than one year before the earliest
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`priority date of the ‘095 Patent. Ex. 1005 – Ex. 1009. Therefore, the Hawkes,
`
`Ishiguro, Bannon, Priven, Dreifus, and Halpern references of Grounds 1-7 are
`
`available as prior art under 35 U.S.C. §102(b). Davis was filed on June 9, 1994,
`
`which is more than one year before the earliest effective filing date of the ‘095
`
`Patent. Therefore, the Davis reference of Grounds 1-3 and 7 is available as prior art
`
`under 35 U.S.C. § 102(e).
`
`IV. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(A)(2) AND 42.104(B)(4)
`
`A. Background
`
`
`1.
`
`The ‘095 Patent
`
`The ‘095 Patent is directed to an electronic module capable of exchanging
`
`encrypted information with a service provider’s equipment to facilitate secure
`
`transactions. Ex. 1001, Abstract. The electronic module may be incorporated into
`
`an articulatable item, such as a credit card, a ring, a watch, a wallet, a purse, a
`
`necklace, jewelry, an ID badge, a pen, a clipboard, a token, etc. Ex. 1001, 32:15-20.
`
`As illustrated in FIG. 1 of the ‘095 Patent, reproduced below, the electronic module
`
`includes a microprocessor, a clock, a math coprocessor, memory circuitry, an
`
`input/output circuit, and an energy circuit. Ex. 1001, 2:34-67, 3:1-9.
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`The math coprocessor is designed to perform known mathematics operations
`
`for RSA encryption and decryption (e.g., public/private key encryption/decryption)
`
`that would not otherwise be handled by the microprocessor. Ex. 1001, 2:34-67, 3:1-
`
`9. The memory circuity may include read-only-memory and non-volatile random-
`
`access-memory. Ex. 1001, 2:34-67, 3:1-9. The input/output circuit enables
`
`bidirectional communication between the electronic module and an external device,
`
`and may include a one-wire interface. Ex. 1001, 2:34-67, 3:1-9. The energy circuit
`
`may consist of a battery, capacitor, R/C circuit, photovoltaic cell, or any other
`
`equivalent energy producing circuit or means. Ex. 1001, 2:34-67, 3:1-9.
`
`In the described mode of operation representative of the operations of the
`
`claims at issue, the ‘095 Patent discloses that the electronic module is programmed
`
`by a service provider to operate as digital cash dispenser or a cash reservoir that
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`allows the end user to make payments for goods and services using the electronic
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`module. Ex. 1001, 7:66-8:8. The electronic module initially contains a locked
`
`money object containing a given cash value. Ex. 1001, 8:9-19. The electronic
`
`module generates certificates on demand, where the certificates are signed
`
`documents attesting to the fact that the amount of money requested (e.g., for a
`
`purchase) was subtracted from the value of the money object. Ex. 1001, 8:9-19.
`
`The memory of the electronic module stores a transaction count object, a private
`
`key, and other information. Ex. 1001, 9:13-67.
`
`After the electronic module has been programmed by the service provider, the
`
`electronic module may be provided to an end user, who uses the electronic module
`
`to make purchases. Ex. 1001, 9:13-67. To prevent “replays” (i.e., duplication) of
`
`transactions, a challenge/response mode is used whereby a payee (e.g., a merchant)
`
`generates a random challenge number and provides it to the electronic module. Ex.
`
`1001, 8: 20-29. In addition to the challenge number, the payee also provides the
`
`amount of a purchase to the electronic module. Ex. 1001, 9:41-49. The electronic
`
`module, upon receiving the challenge number and the amount of the purchase,
`
`subtracts the amount of the purchase from the money object, and generates a signed
`
`certificate (e.g., using the private key stored in the memory) that includes the
`
`challenge number, the value of the transaction counter object, and the purchase
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`amount. Ex. 1001, 8:35-43, 9:36-67. The payee, upon receiving the certificate from
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`the electronic module, verifies the challenge number and the purchase amount match
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`the challenge number and purchase amount sent to the electronic module, and, upon
`
`determining a match, delivers the purchased goods to the payer. Ex. 1001, 9:58-62.
`
`The payee provides the certificate received from the electronic module to the
`
`payee’s bank to receive payment in the amount of the purchase from the payee’s
`
`bank. Ex. 1001, 9:63-10:16.
`
`B. Relevant Prosecution History
`
`The ‘095 Patent was filed on January 6, 1998 and assigned U.S. Patent
`
`Application No. 09/003,541 (hereinafter “the ‘541 Application”). The ‘541
`
`Application, as originally filed, included 28 claims. Claims 1-15 were canceled in a
`
`preliminary amendment. Ex. 1010 January 6, 1999 Preliminary Amendment at 1.
`
`Claim 1 of the ‘095 Patent resulted from the prosecution of claim 21 of the ‘541
`
`Application. Further, claims 2-6 of the ‘095 Patent correspond to originally filed
`
`claims 23-27.
`
`Claim 21, as originally filed, recited:
`
`An apparatus for receiving and transmitting encrypted
`data, comprising:
`an input/output interface;
`a microprocessor circuit connected to said input/output interface;
`a coprocessor circuit, connected to said microprocessor circuit,
`for performing encryption and decryption algorithms, said
`apparatus being adapted to encrypt a data packet using a
`key and to transmit said encrypted data packet out of said
`input/output interface.
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`A first Office Action was mailed on June 18, 1998, which rejected the claims
`
`under 35 U.S.C. § 102 and 35 U.S.C. § 103. Ex. 1010 June 18, 1999 Office Action.
`
`In the response filed on October 18, 1999, claims 17 and 22 were canceled, new
`
`claims 29-33 were added, of which claims 29 and 30 correspond to claims 7 and 8 of
`
`the ‘095 Patent, and claim 21 was amended as follows:
`
`An apparatus for receiving and transmitting encrypted
`data, comprising:
`an input/output interface for receiving a challenge number from
`an electronic device;
`a microprocessor circuit connected to said input/output interface;
`a coprocessor circuit, connected to said microprocessor circuit,
`for performing encryption and decryption algorithms, said
`apparatus being adapted to encrypt a data packet using a
`key and to transmit said encrypted data packet out of said
`input/output interface;
`a first memory connected to said microprocessor circuit, said
`first memory for storing a first data object; and
`a second memory connected to said microprocessor circuit, said
`second memory including instructions readable by said
`microprocessor
`circuit
`to
`thereby
`cause
`said
`microprocessor circuit to:
`initiate generation of a certificate, said certificate
`including said challenge number and a second data
`object; and
`adjust said first data object according to said second data
`object responsive to a verification signal from said
`electronic device.
`
`Ex. 1010 October 18, 1999 Response at 2 and 3. Thus, claim 21 was broadened to
`
`no longer require that the coprocessor circuit performs encryption and decryption
`
`algorithms, and to no longer require that the coprocessor circuit be adapted to
`
`encrypt a data packet and transmit the encrypted data packet via the input/output
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`interface. A second Office Action was mailed on January 4, 2000 where claims 21,
`
`23, and 26-30 continued to be rejected under 35 U.S.C. § 102. Ex. 1010 January 4,
`
`2000 Office Action. In response to the second Office Action, a response after final
`
`was filed, and, in the response, claims 16, 18-20, 28, and 31-33 were canceled, and
`
`claim 21 was amended as follows:
`
`An apparatus for receiving and transmitting encrypted
`data, comprising:
`an input/output interface for receiving a challenge number from
`an electronic device;
`a microprocessor circuit connected to said input/output interface;
`a coprocessor circuit, connected to said microprocessor circuit;
`a timing circuit connected to the microprocessor, the timing
`circuit for generating a time stamp;
`a first memory connected to said microprocessor circuit, said
`first memory for storing a first data object; and
`a second memory connected to said microprocessor circuit, said
`second memory including instructions readable by said
`microprocessor
`circuit
`to
`thereby
`cause
`said
`microprocessor circuit to:
`initiate generation of a certificate, said certificate
`including said challenge number and a second data
`object; and
`adjust said first data object according to said second data
`object responsive to a verification signal from said
`electronic device;[[.]]
`store a transaction script, the transaction script including at
`least a representation of the time stamp generated
`by the timing circuit.
`
`Ex. 1010 April 4, 2000 Response. In the response filed on April 4, 2000, Applicant
`
`argued that the cited art did not disclose the timing circuit as in amended claim 21.
`
`An Advisory Action was mailed on April 11, 2000, and indicated that the limitation
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`of “store a transaction script, the transaction script including at least a representation
`
`of the time stamp generated by the timing circuit” raised a new issue requiring
`
`further search and consideration. Ex. 1010 April 11, 2000 Advisory Action. An
`
`RCE requesting entry of the previously filed amendment was filed on May 4, 2000,
`
`and a Notice of Allowance was mailed on July 17, 2000. Ex. 1010 May 4 2000
`
`Response, and July 17, 2000 Notice of Allowance. In the Notice of Allowance, the
`
`Examiner indicated that the ‘541 Application had been allowed because the prior art
`
`does not consider the possibility of “creating within the session key a transaction
`
`script that includes a time stamp generated by a timing circuit for each transaction.”
`
`Ex. 1010 July 17, 2000 Notice of Allowance mailed at 2. The ‘541 Application was
`
`issued on May 22, 2001 as U.S. Patent No. 6,237,095. Ex. 1001. Patent Owner has
`
`disclaimed claim 7 of the ‘095 Patent. CBM 2015-00102, Ex. 2003.
`
`Nowhere in the prosecution history of the ‘541 Application did the Examiner
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`appear to be aware of using a timing circuit to generate time stamps that are applied
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`to messages and/or records of transactions. However, generating time stamps using
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`a timing circuit and applying the time stamps to messages and/or records of
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`transactions stored was well known to a person of ordinary skill in the art at the time
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`the ‘541 Application was filed. Ex. 1002 at 43. As an example, Hawkes, which was
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`published in 1990, teaches that it is necessary to include time stamps in transaction
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`messages to avoid “replays” of transactions, and further discloses that time stamps
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`were used in call detail records to indicate the duration and time of the call(s). Ex.
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`1003, pages 70, 85, and 86.
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`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
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`In an inter partes review, a claim in an unexpired patent is given the “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). Alternatively, a claim term in an expired patent is
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`construed according to its ordinary and customary meaning, as understood by one of
`
`ordinary skill in the art. See Ex. 1009 Paper 12 at 3 and 4, and Paper 17 at 2 and 3.
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`Petitioner notes that the 20 year patent term for the ‘095 Patent will expire prior to a
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`final written decision in this proceeding. Below, Petitioner provides constructions
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`for certain claim terms in accordance 37 C.F.R. § 42.104(b)(3). Petitioner
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`respectfully submits that the constructions provided below would be the same under
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`both the broadest reasonable interpretation standard, which is used to construe claim
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`terms in an unexpired patent, and the ordinary and customary meaning standard,
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`which is used to construe claim terms in an expired patent. The following
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`summarizes how certain claim phrases of the ‘095 Patent should be construed for
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`purposes of this Inter Partes Review:
`
`1.
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`“coprocessor”: The claim term “coprocessor” should be construed as
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`a processor that works with another processor. Ex. 1002 at 30.
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`2.
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`“transaction counter”: A transaction counter is a data object that
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`stores a count representative of a number of transactions, and that is stored in a
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`memory. Ex. 1002 at 31.
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`3.
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`“timing circuit”: The claim term “timing circuit” should be construed
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`as continuously running clock circuitry that tracks time. Ex. 1002 at 32.
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`4.
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`“memory means for storing a predetermined program, said
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`memory means being connected to said microprocessor”: The ‘095 Patent
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`states:
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`The memory circuitry 20 may contain both read-only memory and non-
`volatile random-access-memory. Furthermore, one of ordinary skill in
`the art would understand that volatile memory, EPROM, SRAM and a
`variety of other types of memory circuitry could be used to create an
`equivalent device.
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` ‘095 Patent, 2:34-59. Therefore, the claim term “memory means for storing a
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`predetermined program,
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`said memory means being connected
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`to
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`said
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`microprocessor” should be construed to construed to be a memory that is connected
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`to a processor and that stores a program. Ex. 1002 at 33.
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`D.
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`Summary of the Prior Art
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`
`
` Hawkes 1.
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`Hawkes describes various design aspects of integrated circuit (IC) cards, tags,
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`and tokens, and describes various applications for which such devices may be used.
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`Ex. 1003, Preface, pages ix-xi, pages 1-11, Table 1.4. For example, Hawkes teaches
`
`that the tokens or smart cards may be operated as an electronic wallet capable of
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`storing and dispensing data transferred value (e.g., electronic money) in connection
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`with the purchase of goods or services. Ex. 1003, Preface, page x, pages 7, 36, 37,
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`65, 69-70.
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`An exemplary configuration of a token is shown in FIG. 6.3, reproduced
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`below.
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`
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`The token of FIG. 6.3 includes input/output interface (e.g., serial I/O); a
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`microprocessor circuit (e.g., control processor) connected to the input/output
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`interface; a coprocessor circuit (e.g., RSA processor) connected
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`to
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`the
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`microprocessor circuit; a timing circuit (e.g., clock) connected to the microprocessor
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`circuit; a first memory (e.g., data memory shown) connected to the microprocessor
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`circuit; and a second memory (e.g., program memory) connected to the
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`microprocessor circuit. See Ex. 1002 at 36-45.
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`A side-by-side comparison of the token illustrated in FIG. 6.3 of Hawkes
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`(left) and the electronic module illustrated in FIG. 1 of the ‘095 Patent (right) is
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`shown below.
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`As can be seen in the side-by-side comparison above, the token of Hawkes contains
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`the same basic hardware elements (e.g. processor, math coprocessor, memory, clock,
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`I/O circuitry) as the electronic module disclosed in the ‘095 Patent. See Ex. 1002 at
`
`
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`45.
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`Additionally, Hawkes teaches that the token may be powered by a battery
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`and/or via power supplied by a terminal. Ex. 1003, pages 86 and 88; Ex. 1002 at 46.
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`Hawkes teaches that tokens or smart cards may be programmable. See Ex. 1002 at
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`51. For example, Hawkes teaches that the RSA processor is programmed to perform
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`RSA encryption calculations, and all remaining functions of the IC card are
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`performed by programs executed by the control processor. Ex. 1003, pages 86-87.
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`Additionally, Hawkes indicates that it is advantageous to use both a control
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`processor and an RSA processor. See Ex. 1002 at 46. For example, use of different
`
`processors for applications and encryption allows the two processor to work in
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`parallel, which reduces and/or hides the encryption calculation time. Ex. 1003,
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`pages 86-87. Ex. 1002 at 46. Additionally, such a configuration enables the control
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`processor to be programmed using a high-level programming language. Ex. 1003,
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`pages 86-87. Ex. 1002 at 46.
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`Hawkes further teaches that the integrity of transaction messages that control
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`the movement of funds between the token user and retailer accounts is of significant
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`importance, and teaches that the token may utilize an encryption techniques to
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`generate signed transaction messages. Ex. 1003, pages 83, 84, 146-151. Ex. 1002 at
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`47. To further enhance the integrity of transactions, Hawkes indicates that, during a
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`transaction, a terminal may generate a random challenge number that may be
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`provided to the token, and, in response, the token may generate a signed reply by
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`signing the challenge number using an encryption technique, where the signed reply
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`is used for identity verification. Ex. 1003, page 84, FIG. 6.1; Ex. 1002 at 47. To
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`avoid “replays” of transactions, Hawkes teaches that a time and date field must be
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`included in messages (e.g., transaction messages) exchanged between the token and
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`the terminal. Ex. 1003, page 85, FIG. 6.2; Ex. 1002 at 47. Additionally, Hawkes
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`teaches that sequence numbers are applied to transaction messages to deter message
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`reuse, and that details of transactions which the token participates in are stored in the
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`data memory of the token. Ex. 1003, pages 70, 86, 153; Ex. 1002 at 47.
`
`
`2.
`
`Davis
`
`Davis discloses a transaction system and method of conducting a transaction
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`between in integrated circuit (IC) card and a transaction terminal. Ex. 1004,
`
`Abstract. In Davis, the IC card includes a microprocessor, memory (e.g., random
`
`access memory and non-volatile memory), and a plurality of electrical contacts to
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`facilitate an electrical connection between the IC card and a terminal. Ex. 1004,
`
`3:21-41; Ex. 1002 at 52. The memory stores programs, a transaction count, a serial
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`number, instructions for generating a random number, and at least one electronic
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`purse that enables the IC card to be used for the purchase of goods and/or services,
`
`whereby cash value stored in the electronic purse is transferred from the IC card to a
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`terminal in communication with the IC card. Ex. 1004, 3:37-67, 4:16-38, 11:36-64.
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`During a purchase, a dual-challenge procedure, illustrated in FIGs. 3A-3C, is
`
`used to establish a secure session between the IC card and the terminal (e.g., a point
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`of sale terminal). Ex. 1004, 10:21-26, 13:6-22, and FIGs. 3A-3C; Ex. 1002 at 53. If
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`the dual-challenge procedure is successful (i.e., the random number encrypted by the
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`IC card matches the random number provided by the terminal, and vice-versa), the
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`IC card is authorized to execute the desired value transfer to complete the purchase.
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`Ex. 1004, 13:23-14:51, FIGs. 3A-3C; Ex. 1002 at 53. Davis indicates that executing
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`the value transfer includes deducting a transaction amount from an available cash
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`value balance stored in the memory of the IC card, encrypting, by the IC card, the
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`transaction amount to produce a verification certificate that is provided from the IC
`
`card to the terminal where it is stored in a memory of the terminal . Ex. 1004, 6:13-
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`51, 14:22-55, FIG. 3C; Ex. 1002 at 53.
`
`
`3.
`
`Bannon
`
`Bannon discloses a database management system and method for providing
`
`support for long-term storage an