throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`SUBSTITUTE EXPERT DECLARATION OF GILLES LISIMAQUE
`
`
`I, Gilles Lisimaque, hereby declare and state as follows:
`
`I.
`1.
`
`INTRODUCTION
`
`Pursuant to the direction of the Board in its institution decision dated July
`
`25, 2016, I hereby present this individual substitute Declaration for the purposes of
`
`making apparent the statements from the Joint Declaration (Exhibit 1007) that are
`
`attributable to me. This substitute Declaration does not otherwise alter the content
`
`of my prior existing statements or introduce new statements. This declaration sets
`
`forth my opinion as requested by the United States Department of Justice
`
`concerning the construction and validity of the claims of U.S. Patent No. 6,111,506
`
`(identified in the Petition as Exhibit 1001; hereinafter “the ‘506 patent”).
`
`II.
`
`PROFESSIONAL BACKGROUND AND QUALIFICATIONS
`
`
`
`1
`
`
`
`
`Case No. IPR2016-00497
`
`In re Inter Partes Review of U.S.
`Patent No. 6,111,506
`
`
`
`
`
`))))))))))))
`
`
`
`DEPARTMENT OF JUSTICE,
`
`
`
`Petitioner,
`
`v.
`
`Patent Owner.
`
`
`
`
`IRIS CORPORATION BERHAD,
`
`
`
`
`
`1/47
`
`DOJ EX. 1029
`
`

`

`2.
`
` My background, education, qualifications, and pertinent experience relevant
`
`to the issues in this proceeding are summarized below. My curriculum vitae
`
`comprises Exhibit 1009 to the Petition.
`
`3.
`
`I started my career in 1971 as1 a computer system engineer on IBM
`
`mainframes and was given the responsibility of the whole Management
`
`Information System of the Semiconductor plant Eurotechnique in 1979. This plant
`
`was created to provide second sources smart card components for the two French
`
`smart card applications: Prepaid telephone cards and Banking cards. In 1987,
`
`because of the my strong software and security background, I was given the
`
`responsibility of the Eurotechnique team in charge of developing smart card
`
`software, inside the semiconductor chip manufactured by the plant. This smart card
`
`operating system, operational in 1988, was called COS (Chip Operating System) as
`
`it was the first smart card Operating System using a concept of directories and file
`
`structures also allowing card issuers to download their own program code to tailor
`
`the card to the specific functions required by the issuer’s application. This
`
`Operating system evolved later into the MCOS (multiple directories) and the
`
`MPCOS (added payment functions in the OS) as the computing capabilities of the
`
`silicon chip improved. In 1988, as Eurotechnique (then bought by SGS-Thomson)
`
`
`1 The word “has” as it appeared in the first sentence of paragraph 17 of the original Declaration
`has been changed herein to “as,” which constitutes a non-substantive change to correct an
`obvious typographical error.
`
`2
`
`
`
`2/47
`
`DOJ EX. 1029
`
`

`

`started to offer more than just silicon chips, with the chip embedded operating
`
`system software as an option, and eventually embedded in a card using a new chip
`
`embedding technology in injected ABS plastic cards, it was decided to spin off the
`
`Chip OS and the Card embedding out of the chip manufacturing business itself. As
`
`a result, the company GEMPLUS Card International was created in May 1988, and
`
`I (one of the five founders), became in charge of all the Software Research and
`
`Development of the new company. Working in close relationship with the Card
`
`and Packaging Research and Development Director (Jean-Pierre Gloton, also a
`
`Gemplus founder), this allowed Gemplus to provide its customers with a complete
`
`offer of cards, embedded OS in the chips of cards, and the necessary development
`
`tools along with the personalization system related to these cards. During this
`
`period, I was an active participant in the French Standard group (AFNOR) related
`
`to Smart Cards; I also was a member of the GSM group which became later ETSI
`
`(European Telecommunications Standards Institute); a committee providing
`
`contributions to the international standard for SIM (Subscriber Identity Module)
`
`specification used in cellular phones for user authentication. In 1988, I, working
`
`with the French Telecom CCETT center, developed the first On-Card Biometric
`
`verification system, using an SGS-Thomson hand signature digitization tablet and
`
`a COS card.
`
`
`
`3
`
`3/47
`
`DOJ EX. 1029
`
`

`

`4.
`
`In 1989, as it seemed at the time the US was going to embrace Smart Cards,
`
`I was charged to create a GEMPLUS subsidiary in the US. I became an active
`
`member of the INCITS Identity and Smart Card B10 and B10.12 US national
`
`committees, representing for many years the United States at the International
`
`standardization level in the ISO/SC17/WG4 committee (and some it’s
`
`subcommittees) working on standards such as ISO/IEC 7816, ISO/IEC 14443,
`
`ISO/IEC 10373 and ISO/IEC 24727. During the early 1990’s, I was one of the
`
`international technical advisors to the Financial Industry, developing the EMV
`
`(Europay, MasterCard and Visa) card specifications which are now used in all
`
`financial cards used all around the world. During my whole career, I filed ten
`
`International Patents related to smart card logical and physical security, some of
`
`which have been used as the foundation for the JavaCard specification based on the
`
`SUN Java software. For seven years, I was under a non-compete agreement with
`
`SUN, period during which I was a board member of the company Integrity Arts
`
`(joint venture with SUN which initially finalized the JavaCard operating system)
`
`using one of my patent (US 5,923,884).
`
`5.
`
`During my years in the US at Gemplus with the title of Vice-President or
`
`Technical Marketing Director, I participated in many projects related to identity or
`
`payment and using smart cards; these projects included the MAC/Corestate smart
`
`card electronic purse program , the use of prepaid cards in Pitney Bowes Machines
`4
`
`
`
`4/47
`
`DOJ EX. 1029
`
`

`

`and the MARC Defense Department Program; I was also very active in industry
`
`groups such as the Smart Card Forum, the ISTPA (International Security, Trust and
`
`Privacy Alliance), as well as the National and International standardization bodies
`
`already mentioned. I also participated in specific studies such as the development
`
`of a Protection profile developed by NIST for smart cards (Smart Card Security
`
`User Group - Smart Card Protection Profile [SCSUG-SCPP]) as well as the TWIC
`
`project.
`
`6.
`
`After leaving Gemplus in 2005, I became a partner in Identification
`
`Technology Partners Inc., working as senior consultant for private companies but
`
`mostly for the US government; mainly for NIST, helping to develop the FIPS 201
`
`specification, and as well for the Department of Defense, helping them to migrate
`
`their existing smart card system to the new FIPS 201 standard being developed. I
`
`was also appointed by NIST during a couple of years as the editor of the testing
`
`part of the ISO/IEC 24727 standard.
`
`7.
`
`Lately, among other projects, I have been working as a senior consultant for
`
`the Department of Homeland Security (Transportation Security Administration) on
`
`the TIM (Technology Infrastructure Modernization) and the TWIC (Transportation
`
`Worker’s Identification Credential) programs.
`
`III. MATERIALS CONSIDERED
`
`
`
`5
`
`5/47
`
`DOJ EX. 1029
`
`

`

`8.
`
`In forming my opinions and preparing my content reflected in the original
`
`declaration (Exhibit 1007), I have considered the following documents and
`
`references either for (1) general background knowledge, (2) the general state of the
`
`art, or (3) specific analysis and application in this declaration.
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`
`Ex. 1022
`
`Description
`U.S. Patent No. 6,111,506
`File History for U.S. Patent No. 6,111,506
`U.S. Patent No. 5,528,222 to Moskowitz et al.
`U.S. Patent No. 5,106,719 to Oshikoshi et al.
`U.S. Patent No. 5,581,445 to Horejs et al.
`U.S. Patent No. 5,041,395 to Steffen
`U.S. Patent No. 5,583,489 to Loemker et al.
`U.S. Patent No. 4,510,489 to Anderson et al.
`U.S. Patent No. 4,921,160 to Flynn et al.
`U.S. Patent No. 5,457,747 to Drexler et al.
`U.S. Patent No. 5,214,566 to Dupre et al.
`Canadian Patent Application Publication No. CA 2,091,109 to
`Irwin
`U.S. Patent No. 5,350,945 to Hayakawa
`U.S. Patent No. 5,480,842 to Clifton et al.
`U.S. Patent No. 5,470,411 to Gloton et al.
`U.S. Patent No. 5,569,879 to Gloton et al.
`U.S. Patent No. 5,200,601 to Jarvis
`Excerpts from Dorothy Elizabeth Robling Denning,
`“Cryptography and Data Security,” Addision-Wesley Publishing
`Company, 1982
`Trilochan, Padhi “Theory of Coil Antenna,” Harvard University,
`Radio Science Journal of Research (1965)
`
`
`
`6
`
`6/47
`
`DOJ EX. 1029
`
`

`

`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`Ex. 1028
`
`
`
`INTERNATIONAL ORGANIZATION FOR
`STANDARDIZATION (ISO)/IEC No. 7816-1:1987
`Identification cards – Integrated circuit(s) cards with contacts –
`Physical Characteristics
`INTERNATIONAL ORGANIZATION FOR
`STANDARDIZATION (ISO)/IEC No. 7810:1996 Identification
`cards - Physical characteristics
`Moore, Gordon, “Chapter 7: Moore's law at 40.” From, Brock,
`David. Understanding Moore’s Law: Four Decades of
`Innovation. Chemical Heritage Foundation. pp. 67–84, 2006.
`Excerpts from The New IEEE Standard Dictionary of Electrical
`and Electronics Terms (5th ed. 1993)
`U.S. Patent No. 5,337,063 to Takahira
`Excerpts from Motorola 1992 textbook
`
`IV. STATE OF THE ART THROUGH OCTOBER 14, 1996
`9.
`At its most basic level security identification documents employing an
`
`integrated circuit (IC) can be classified into three broad form factors; (1) credit
`
`card sized documents, (2) Passport form factors, and (3) custom form factors such
`
`as, for example, tokens (e.g. the iButton® available from Maxim Integrated), Radio
`
`Frequency ID (RFID) tags, and cellular phone Subscriber Identity Module (SIM)
`
`smart cards.
`
`10.
`
`Identification cards of different sizes are defined under the International
`
`Standards Organization (ISO) by ISO/IEC 7810. In the second version of this
`
`standard published in 1996, see Ex. 1024, three form factors were standardized:
`
`ID-1 for credit cards, ID-2 for secure ID cards and ID-3 for Passports.
`
`
`
`7
`
`7/47
`
`DOJ EX. 1029
`
`

`

`Identification cards with an integrated circuit are governed by the ISO/IEC 7816
`
`Standard and its many parts. Such cards are commonly referred to as “smart
`
`cards”, “integrated circuit cards”, “IC cards” or “chip cards”.
`
`11. Contactless smart cards existed at this time (i.e., as of October 14, 1996)
`
`using Radio Frequency Identification (RFID) integrated circuits, known as “RFID
`
`tags”, and several other bi-directional contactless communication protocols that
`
`were under consideration for standardization.
`
`12. Europe, especially France, had many implementations of smart cards
`
`between 1985 and 1996 using both contact smart cards and contactless smart cards.
`
`Many of the early lessons of durability and longevity of smart cards were a direct
`
`result of these scaled implementations. One of the earliest large scale applications
`
`using smart cards in this time period was pay phone smart cards used as an
`
`alternative to coins. Tens of millions of smart cards were produced annually and
`
`used at pay phones in France alone. In the early 1990s microprocessor based smart
`
`cards for use in the maturing cellular telephone industry began to appear in large
`
`quantities along with the French banking card equipped with an integrated chip
`
`which was rolled out at the same time.
`
`13. From an internal Gemplus document (card failure analysis made in the late
`
`90’s on microprocessor based cards), the cause for failure of Gemplus banking
`
`cards in the field was distributed as follow: PIN or Password blocked: 60%, Chip
`8
`
`
`
`8/47
`
`DOJ EX. 1029
`
`

`

`broken by mechanical stress: 12%, dirty contacts: 8%, all other defects individually
`
`lower than 12% (unknown, assembly, chip, printing, etc.): 20% as a whole.
`
`14. Besides trying to get as much as computing power required in the chip
`
`embedded in the card, research and production processes from the 1980s and early
`
`1990s focused primarily on one or more of the following techniques to reduce
`
`failures of the chip due to mechanical stress:
`
`a. Limiting the size of the chip to less than 25 square millimeters (most
`
`of the largest chips have been constructed to this day to occupy 18 to
`
`20 square millimeters by silicon manufacturers),
`
`b. Encapsulating the chip, or chip and other components, within a
`
`mechanical protection preventing the silicon component from being
`
`mechanically stressed by the normal bending of the card happening
`
`during its usage. Various solutions have been proposed or used,
`
`including metal ring, hard plastic, or very strong epoxy materials
`
`resulting in added “stiffness” to the resulting electronic module
`
`structure, and/or
`
`c. Producing the chip as a thin flexible silicon layer that could be placed
`
`in the center of a smart card laminated sheets, thereby reducing (or
`
`eliminating) mechanical stress on the chip from mechanical bending
`
`or torsion.
`
`9
`
`
`
`9/47
`
`DOJ EX. 1029
`
`

`

`Each of these techniques will be further detailed in terms of prior art.
`
`15. With respect to (a) maximum chip size, chip technology was advancing at
`
`this time by manufacturing integrated circuit chips containing more and more
`
`transistors (gates) per millimeter square. The advance in density of transistors in a
`
`chosen size of an integrated circuit chip is defined by Moore’s Law which
`
`generally stands for the prediction (which has been proven accurate) that the
`
`number of transistors on a chip would double every two years. See Ex. 1025, at 10
`
`(Figure 9 generally reflecting the increase in circuit components per die over time).
`
`A timeline including the period before the date of the claimed invention is
`
`provided in Ex. 1025, at 10. Additional gates (transistors) for a given size allowed
`
`smart card functions to increase in functionality, and for existing functions the
`
`required size of the chip would decrease. Most smart card chips as of October 14,
`
`1996, had limited memory sizes, making sure the resulting integrated circuit was
`
`small enough to minimize the possibility of cracking said integrated circuit due to
`
`mechanical stress or shock. It was known in 1988, as a rule of thumb, that the
`
`maximum size of a smart card integrated circuit should be lower than 25 square
`
`millimeters. Even with a size under this maximum limit, it was required to have
`
`additional protections against mechanical stress and shock to protect the fragile
`
`silicon device inserted in the thin plastic of the card. For example, Ex. 1012 (US
`
`4,921,160 Flynn et al.), states in the Background Art “The Uden personal data
`10
`
`
`
`10/47
`
`DOJ EX. 1029
`
`

`

`card is believed to suffer from the disadvantage that stresses applied to the card
`
`during flexing are likely to be transmitted through the card body and into the
`
`encapsulant and semiconductor chip, possibly causing chip cracking which will
`
`render the card inoperative. The incidence of chip cracking can be lessened by
`
`employing semiconductor chips which occupy a small surface area, typically less
`
`than 25 square millimeters. However, the amount of data that can be stored in a
`
`memory chip decreases when the size of the chip is decreased. Thus, restricting the
`
`size of the chip below 25 square millimeters restricts the amount of data that can
`
`be stored on the card. Therefore, there is a need for a personal data card which
`
`exhibits reduced incidence of chip cracking without restricting the chip size.” Ex.
`
`1012 at 1:44-59.
`
`16. With respect to (b) encapsulation techniques, several techniques and
`
`standard tests for smart card manufacturers were well known between 1987 and
`
`1996 addressing bending and flexing of an integrated circuit card to mitigate issues
`
`with mechanical stress and shock of the integrated circuit chip. These known
`
`techniques were applied to both contact smart cards and contactless smart cards.
`
`For example, Ex. 1020 (Jarvis, in US patent 5,200,601 from 1989), discloses in the
`
`Background of the Invention: “Such a token is commonly termed a ‘Smart Card’
`
`or ‘integrated circuit card’ It is important that such cards are flexible so that they
`
`can be placed in the user’s pocket, wallet or purse and be capable of withstanding
`11
`
`
`
`11/47
`
`DOJ EX. 1029
`
`

`

`bending forces… It has been previously proposed to provide a contact-type smart
`
`card structure which protects the components, either by mounting them on a metal
`
`foil and encapsulating them in a hard resin as described in EP 0068539A, or
`
`providing a box-like structure of a plastics material within the token which
`
`encloses the components as described in U.S. Pat. No. 4,755,661.”Ex. 1020 at 1: 9-
`
`33. In addition to Ex. 1020 , Standards and teachings from that time include the
`
`1987 edition of the ISO/IEC 7816 Standard, see Ex. 1023, which specifies two
`
`mechanical stress test methods for smart cards, allowing to verify the resistance of
`
`a given card to mechanical stress as taught by Ex. 1012 (Flynn et al., US
`
`4,921,160), Ex. 1014 (US 5,214,566 to Dupree et al. awarded May 25, 1993), or
`
`using a metal enclosure to protect the integrated circuit as taught by Ex. 1006 (US
`
`5,041,395 to Steffen filed in 1990), Ex. 1018 (US 5,470,411 to Gloton filed 1992),
`
`Ex. 1019 (US 5,569,879 to Gloton filed in 1995), and Ex. 1005 (US 5,581,445 to
`
`Horejs, Jr. et al. filed on February 14, 1994).
`
`17. With respect to (b) encapsulation techniques, an International Standard for
`
`integrated circuit cards ISO 7816, first published in 1987, includes in Part 1 of the
`
`Standard entitled “Physical Characteristics.” Ex. 1023. Clause 4.2.4 of this ISO
`
`Standard details “Mechanical Strength (of cards and contacts).” Ex. 1023 at 5.
`
`Specifically Ex. 1022 at 5 provides that “The card shall resist damage to its
`
`surface and to any components contained in it and shall remain intact during
`12
`
`
`
`12/47
`
`DOJ EX. 1029
`
`

`

`normal use, storage and handling. Each contact surface and contact area (entire
`
`galvanic surface) shall not be damaged by a working pressure equivalent to a steel
`
`ball of diameter 1 mm to which is applied a force of 1,5 N. See the test methods in
`
`clauses A.1 and A.2 of the annex.” Id. Annex A.1 in the same standard describes a
`
`test method entitled “Bending properties.” Id. at 6. The card is bent in 4 directions
`
`for a minimum of 250 bends per direction. Id. The criteria for (bending)
`
`acceptability, (Clause A.1.2) states “The card shall still function and shall not
`
`show any cracked part after 1,000 bendings.” Id. Annex A.2 describes a test
`
`method entitled “Torsion properties.” Id. at 6-7. The card is “twisted” on the short
`
`axis by 15 degrees (+/- 1 degree) in alternate directions at a rate of 30 torsions per
`
`minute. Id. at 6. The criteria for (torsion) acceptability (Clause A.2.2) states “The
`
`card shall still function and shall not show any cracked part after 1,000 torsions.”
`
`Id. at 7.
`
`18. With respect to (b) encapsulation techniques, Ex. 1012 (Flynn et al., US
`
`4,921,160) teaches a need for mechanical protection as illustrated in the Abstract,
`
`which provides that “A personal data card (10), comprised of a semiconductor
`
`chip (28), sealed by encapsulant (38) in an opening (26) in a body (12), is
`
`advantageously provided with a shock absorbing device (38) which substantially
`
`circumscribes the encapsulant to substantially isolates the encapsulant from the
`
`body of the card. By isolating the encapsulant from the card body, the shock
`13
`
`
`
`13/47
`
`DOJ EX. 1029
`
`

`

`absorbing device reduces the stresses transmitted from the card body into the
`
`capsulant and into the chip when the card is flexed. In this way the incidence of
`
`cracking of the card is reduced.” Ex. 1012, Abstract.
`
`19. With respect to (b) encapsulation techniques, Ex. 1014 (US Patent 5,214,566
`
`filed by Dupre et al. in July 1991) provides that “[t]he present invention relates to
`
`a reinforced integrated circuit card, I.C. card, i.e. a card whose body is better able
`
`to withstand the external mechanical stresses applied thereto while being handled
`
`by its user.” Id. at 1: 5-8. Ex. 1014 further provides in the Background of the
`
`Invention bending and flexing tests similar to test methods reflected in the
`
`international standard comprising Ex. 1023 (1987 edition of ISO 7816 Part 1). Ex.
`
`1014 further discloses that “[o]ne of the problems encountered with I.C. cards is
`
`their mechanical strength. To this end, in order to be acceptable for use by the
`
`general public, cards must be capable of passing severe stress testing. During such
`
`testing which simulates situations that may arise in use, a card is curved some
`
`number of times perpendicularly to its long axis or to its short axis. A card is
`
`considered as passing such a test if the micromodule has not become detached
`
`after a series of curving operations has been completed, and/or if the stresses have
`
`not been transferred to the micromodule sufficiently to break it. Other tests relate
`
`to the bending strength of card bodies. In such tests, manufactured cards are
`
`required to withstand as high a bending force as possible.” Ex. 1014, 1: 27-40.
`
`
`
`14
`
`14/47
`
`DOJ EX. 1029
`
`

`

`Ex. 1014, further explains that “[t]o this end, the graphite of the sheet 11 could
`
`even be replaced by a configuration of metal wires, e.g. wires made of copper or of
`
`aluminum. With different types of reinforcing materials, the expansion and the
`
`strength coefficients are adapted so that these coefficients lie in a range which is
`
`common to both card technologies: i.e. to magnetic cards and to electronic cards.”
`
`Ex. 1014, 4:9-16.
`
`20.
`
` With respect to (b) encapsulation techniques, in Ex. 1006 (US Patent
`
`5,041,395 filed by Steffen in 1990), the proposed solution describes hardening the
`
`silicon chip to encapsulate it in resin to protect it against mechanical and physical
`
`aggressions. Specifically, the references provides that “the chip and its wires are
`
`partially or totally covered with a protection against mechanical and chemical
`
`aggression; this protection may be provided by an epoxy resin or a silicone resin”
`
`Ex. 1006, 1: 28-31. In order to protect the chip, the resin is poured in a ring placed
`
`around the chip. For example, the references expressly provides that “the zone
`
`comprising the chip and its connections is surrounded by a protective ring with a
`
`height that is as small as possible but enough to go beyond the height of the chip
`
`and of the connections (especially if these connections are soldered wires). This
`
`ring is used to form a cavity into which the protective material is poured. It may be
`
`a metal ring.” Ex. 1006, 2: 41-47.
`
`
`
`15
`
`15/47
`
`DOJ EX. 1029
`
`

`

`21.
`
` With respect to (b) encapsulation techniques, Ex. 1018 (US Patent
`
`5,470,411 from Gloton filed in 1992) indicates in a very similar manner it is very
`
`important to minimize the stress during manufacturing as well as during usage of
`
`chips inserted into smart cards. For example, the reference provides that “[t]he
`
`mechanical stresses on the chip are particularly low during and after the
`
`manufacture owing to the interposition, between the metal and the chip, of a small
`
`thickness of polyimide which behaves like a buffer of plastic material… This is
`
`important when the micromodule is incorporated into a flat chip card for these
`
`cards are subject to very substantial twisting and bending stresses.” Ex. 1018,
`
`7:65-67; 8:1-4.
`
`22.
`
` With respect to (b) encapsulation techniques, Ex. 1019 (US Patent
`
`5,569,879 also from Gloton and filed in March 1995), the same concern is stressed.
`
`Specifically, the references provide that “[t]he mechanical stresses on the chip 100
`
`are particularly low during and after manufacture owing to the interposition,
`
`between the metal strip 10 and the chip 100, of a small thickness of polyamide or
`
`another dielectric strip 11 which behaves like a buffer of plastic or another
`
`insulating material. This is important when the micromodule is incorporated into a
`
`flat chip card for these cards are subject to very substantial twisting and bending
`
`stresses.” Ex. 1019, 7:1-8. In addition, the same reference also indicates that the
`
`same encapsulation protection techniques could be used for contactless chips
`16
`
`
`
`16/47
`
`DOJ EX. 1029
`
`

`

`intended for smart cards. The pertinent passage provides that “[i]n one variation
`
`of the invention (cf. FIG. 8), which is especially promising in the case of chip cards
`
`working in microwave applications and designed to receive and/or send an
`
`electromagnetic radiation, it is possible to provide for an arrangement where the
`
`dielectric strip 11 constitutes the dielectric of a radiating or electromagnetic
`
`antenna, of which the slotted metal strip or grid 10 constitutes an active part. The
`
`antenna is of the microstrip type constituted, for example, by conductors cut out in
`
`the metal strip 10 and acting as antennas instead of as connectors.” Ex. 1019,
`
`7:30-39.
`
`23.
`
` With respect to (b) encapsulation techniques, Ex. 1005 (US 5,581,445
`
`Horejs, Jr. et al. filed for on February 14, 1994) discloses “a reinforcement
`
`structure to protect an integrated circuit module within a smart card. The
`
`reinforcement structure, which has a modulus of elasticity higher than the modulus
`
`of elasticity of the smart card, substantially laterally surrounds the integrated
`
`circuit module in certain embodiments.” Ex. 1005, Abstract. Ex. 1005 (Horejs)
`
`teaches many reinforcement structures, illustrated throughout 42 drawings,
`
`including “[a]ny polygonal or round shape may be used for a plate-type
`
`reinforcement structure[,]” Ex. 1005, 5:2-3, and “[a]ny polygonal or round shape
`
`may be used as the substantially planar portion of a cap-type reinforcement
`
`structure.” Ex. 1005, 5:27-29. Ex. 1005 further teaches that “[i]n addition, a
`17
`
`
`
`17/47
`
`DOJ EX. 1029
`
`

`

`reinforcement structure/module pair may be located at various positions within the
`
`card. Furthermore, more than one module may be disposed within a single
`
`reinforcement structure.” Ex. 1005, 4:52-56. In addition, Ex. 1005 (Horejs)
`
`teaches that the “present invention can be used in flexible cards having dimensions
`
`other than the dimensions specified by ISO standards.” Ex. 1005, 11:34-36. The
`
`claims in Ex. 1005 also disclose pertinent features of the reinforcement structure.
`
`For example, Ex. 1005 (Horejs) recites in claim 5 “[t]he semi-rigid card of claim
`
`1, wherein said reinforcement structure comprises a metal.” and in claim 6”[t]The
`
`semi-rigid card of claim 1, wherein said reinforcement structure is polygonal or
`
`round.” Ex. 1005, 12: 13-17. Figures 3 and 7a-7d from Ex. 1005 are reproduced
`
`below to illustrate examples of the many disclosed reinforcement structures.
`
`
`
`18
`
`18/47
`
`DOJ EX. 1029
`
`

`

`
`
`
`
`
`
`19
`19
`
`
`
`19/4719/47
`
`
`
`DOJ EX. 1029DOJ EX. 1029
`
`19/47
`
`DOJ EX. 1029
`
`

`

`
`
`Horejs, Jr. et al. Examples of Reinforcement structures
`
`24. With respect to (c) where the chip is comprised of a thin silicon layer, Ex.
`
`1017 (US 5,480,842 Clifton et al. awarded January 2, 1996) teaches that “[t]he
`
`primary failure mode of existing smart cards is semiconductor die breakage
`
`resulting from applied mechanical stress. Unfortunately, mechanical stress is
`
`inherent in typical smart card operational environments, such as point-of-sale
`
`
`
`20
`
`20/47
`
`DOJ EX. 1029
`
`

`

`terminals, credit card reading devices, wallets, pockets, and purses.
`
`Semiconductor, die strength is a significant factor in determining the overall
`
`durability and reliability of a smart card. Die thickness directly affects the ability
`
`of a semiconductor die to withstand flexure and applied mechanical force. Existing
`
`smart card packages are approximately 0.030 inches thick. This dimension places
`
`constraints on the maximum allowable thickness of the semiconductor die which
`
`will fit within the package. In addition to the die itself, space must also be
`
`allocated for lead termination, protection, labeling, magnetic striping, and discrete
`
`circuit components. Therefore, die thicknesses on the order of 0.011 inches are
`
`employed, representing the maximum die thickness that can easily fit within a
`
`smart card package. Semiconductor die thinner than 0.011 inches are not
`
`generally used in smart cards, as such die have traditionally been difficult and
`
`expensive to fabricate. Furthermore, conventional wisdom dictates that, as the
`
`thickness of a die is decreased, the die become increasingly vulnerable to
`
`mechanical failure. For all of the aforementioned reasons, existing smart card
`
`design approaches have not advantageously exploited the use of die thinner than
`
`0.011 inches. One shortcoming of existing 0.011-inch die is that the die do not
`
`provide optimum immunity to mechanical flexure. Flexure is an important physical
`
`property to consider for certain specific applications such as smart cards… It
`
`would be desirable to develop a chemical stress relief process which is directed to
`
`
`
`21
`
`21/47
`
`DOJ EX. 1029
`
`

`

`improving die strength. Although a pure crystal of silicon has an inherent
`
`maximum strength, the strength of a crystal fabricated in conformance with state-
`
`of-the-art technology is compromised by the existence of crystallographic defects
`
`such as chips, scratches, inclusions, and lattice dislocations… Prevention or
`
`removal of these defects will enhance the actual strength of the crystal… For
`
`example, existing semiconductor integrated circuits typically have greater
`
`resistance to mechanical stress which is applied at the front or side of the circuit,
`
`as opposed to the back of the circuit. This phenomenon is due to crystallographic
`
`defects introduced in the fabrication process…Traditional smart card packaging
`
`techniques place the semiconductor die near the surface of the card, due to tight
`
`packaging and interconnect requirements, and also because the thickness of the
`
`die represents a substantial portion of the thickness of the actual smart card
`
`package. However, during mechanical flexure, the mechanical stresses are
`
`greatest near the card surface, and at a minimum value on the neutral axis of the
`
`card, i.e., at a depth equal to half the card thickness. Since the stresses are low or
`
`zero at this axis, it would be desirable to position the semiconductor die at this
`
`location. However, even if an existing 0.011 inch die is centered on the neutral
`
`axis, the sheer thickness of the die itself results in portions of the die being located
`
`in higher stress regions near the surface of the card. What is needed is a thinner
`
`die, such that the entire die can be situated at or near the neutral axis.” Ex. 1017,
`
`
`
`22
`
`22/47
`
`DOJ EX. 1029
`
`

`

`1: 12 through 2:36. Thus, as of October 14, 1996, it was well known in the art to
`
`reduce mechanical stresses both by using reinforcement structures, see Ex. 1005, as
`
`well as by optimizing placement of integrated circuit components within the card,
`
`all with an eye to reducing mechanical stress.
`
`25. Other form factors than cards were introduced in this timeframe. RFID tags
`
`and contactless smart cards such as MIFARE, introduced in 1994, were popular as
`
`tracking devices and identification means in this time period in a broad range of
`
`industries including access control, container shipping management, electronic
`
`identification of documents and individuals, and retail. Some RFID tags, operating
`
`at proprietary frequencies in this time period, used small chips and small loop
`
`antennas as compared to modern microprocessor based smart cards using much
`
`larger ISO/IEC 14443 Standard antennas operating at 13.56 MHz as defined in Part
`
`2 of the Standard.
`
`26.
`
` Other form factors used at the time by smart chips for secure applications
`
`were much more resistant to flexing and bending than the smart card ID-1 ISO
`
`format. For example, a proprietary form factor is described in Ex. 1016 (US Patent
`
`5,350,945 from Hayakawa filed in December 1992), where a smart card chip, using
`
`the same interface as applied in smart cards (ISO/IEC 7816), is packaged in a
`
`shape of a coin (or a watch) to be used on the wrist of the user. Ex. 1016 describes
`
`the underlying device as fol

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket