IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`Case No. IPR2016-00497
`
`In re Inter Partes Review of U.S.
`Patent No. 6,111,506
`
`))))))))))))
`
`DEPARTMENT OF JUSTICE,
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`IRIS CORPORATION BERHAD,
`
`Patent Owner.
`
`
`
`
`
`
`
`SUBSTITUTE EXPERT DECLARATION OF GERALD W. SMITH
`
`
`I, Gerald W. Smith, 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
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`DOJ EX. 1030
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`
`
`
`Case No. IPR2016-00497
`
`In re Inter Partes Review of U.S.
`Patent No. 6,111,506
`
`))))))))))))
`
`DEPARTMENT OF JUSTICE,
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`IRIS CORPORATION BERHAD,
`
`Patent Owner.
`
`
`
`
`
`
`
`SUBSTITUTE EXPERT DECLARATION OF GERALD W. SMITH
`
`
`I, Gerald W. Smith, 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
`
`
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`2. My background, education, qualifications, and pertinent experience relevant
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`to the issues in this proceeding are summarized below. My curriculum vitae
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`comprises Exhibit 1008 to the Petition.
`
`3.
`
`I have been working with smart cards, terminals, and transaction solutions
`
`since 1983. I have worked in a wide range of aspects relating to smart cards (e.g.,
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`silicon, operating systems, card applications, packaging, printing technologies,
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`edge interfaces, terminals, and host system applications). For the past 15 years, I
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`have focused on security and identity attributes of smart cards and smart card
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`enabled solutions. I have served as an International Standards Organization (ISO)
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`project editor and as a contributor to a number of major smart card standards (e.g.
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`ISO/IEC 7816, ISO/IEC 14443, ISO/IEC 24727, FIPS 201, FIPS 140). I have
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`actively participated in the Java Card Forum, PC/SC implementations, MULTOS
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`smart card O/S application development, Microsoft Windows Smart Card O/S
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`evaluations. In addition, I have in-depth knowledge and experience with
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`proprietary O/S smart card implementations (e.g.; ORGA Micardo, Siemens
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`CardOS, Schlumberger MultiFlex, Gemplus MPCOS, G&D StarCOS).
`
`4.
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`From 1978 to 1983, I was assigned out of Officer Basic training in the
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`United States Army Signal Corps to the Communications Electronics Command at
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`Fort Monmouth, New Jersey. The Signal Corps is a division of the US Army that
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`develops, tests, provides, and manages communications and information systems
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`support for the command and control of combined arms forces. In the Signal
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`corps, I actively participated in the research and development of software intensive
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`terminals and peripherals encompassing device mechanisms, microprocessor
`
`technologies (HW/SW) and system integration. I was part of a high level research
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`team exploring distributed processing configurations. I achieved the rank of
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`Captain prior to leaving the service for private industry.
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`5.
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`In 1983, I began work as a technologist at Mars Electronics International, a
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`company directed to unattended payment systems. I was promoted to product line
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`manager for all of North American coin mechanisms, the core product for the
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`business at that time.
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`6.
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`From 1989-1993, I was employed at VeriFone where I served as the Director
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`of Engineering in a unit that developed food service and vending industry
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`applications implemented through computer software and hardware. During my
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`time at VeriFone, I worked on development of the ValuCardTM Stored Value card
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`system to complement the company’s Point Of Service (POS) business.
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`7.
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`From 1993-1995, I was employed at Schlumberger where I competed for,
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`obtained, and developed technology business relating to smart card pilot projects
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`for VISA and smart card applications for MasterCard.
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`8.
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`From 1995-1996, I worked at Zenith Data Systems / Groupe BULL as a
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`technical manager for Smart Card Technology and Internet Commerce.
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`9.
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`From 1996-1999, I served as Director of New Business Development for
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`ORGA Card Systems Inc., where I was responsible for managing the Americas
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`region and coordinating with international business units in Germany, Latin
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`America, and the Far East. In this position, I worked as Project leader on the
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`MasterCard Smart Card Access project using the MULTOS platform for secure
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`card transactions.
`
`10.
`
`In 1999, I joined American Express as a Development Leader for the "Blue
`
`from American Express" Smart Card product development initiative. In that
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`position, I served as Advanced Card Technology leader on IP Management, chip
`
`card specifications, security models using smart cards, and external standards. I
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`was promoted to Vice President in 2001. Among other duties at American
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`Express, I served as Product Manager, Business and Technical Architect of the
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`“Summer Concerts in Blue” product launch (summer of 2000), a Board Member of
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`Global Platform governance body from 2000-2002, a contributing member to
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`GlobalPlatform Card and Card Management System specification, a JavaCard
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`Forum representative, and a representative to ISO/IEC JTC1 SC17 including
`
`contact card, contactless card, and test methods.
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`11. From 2003-2007, I worked at SHARP Microelectronics of the Americas, a
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`world leader in LCD, Integrated Circuits, RF, Imaging, and Optoelectronics
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`technology, where I served as the Senior Smart Card Business Development
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`Manager / Senior Field Technical Manager. Among other duties, I served as a
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`subject matter expert in the area of Smart Card technologies working as a
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`development leader for integration of smart card technology into identity, payment,
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`and telecommunication solutions.
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`12. Since 2007, I have been employed with ID Technology Partners as a subject
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`matter expert for a diverse range of engagements related to smart cards, biometrics
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`and other high assurance identification verification initiatives. Projects have
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`included government and non-government credentialing programs as well as one-
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`off enterprise solutions.
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`III. MATERIALS CONSIDERED
`13.
`In forming my opinions and preparing my content reflected in the original
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`declaration (Exhibit 1007), I considered the following documents and references
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`either for (1) general background knowledge, (2) the general state of the art, or (3)
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`specific analysis and application in the original declaration (Exhibit 1007)..
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`
`
`
`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.
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`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
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`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)
`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
`
`
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`Ex. 1028
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`Excerpts from Motorola 1992 textbook
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`IV. OVERVIEW OF THE ’506 PATENT
`
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`LEVEL OF SKILL IN THE ART
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`14. A person of ordinary skill in the art of the ’506 patent at the time of the
`
`alleged invention (“POSITA”) would have had at least a Bachelor's degree in
`
`Electrical Engineering or Computer Science, or related field, as well as at least two
`
`years of work experience relating to working with integrated circuit cards and
`
`smart cards, including familiarity with identification cards as reflected in all parts
`
`of ISO/IEC 7816 as it existed on October 14, 1996, which is an International
`
`Standard related to electronic identification cards. I was at least a person of skill in
`
`this art in October of 1996.
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`V. CLAIM CONSTRUCTION
`15.
`I am not a lawyer. However, the legal principles used to construe claims
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`have been explained to me. I have used those standards in formulating my
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`opinions, set forth in the original declaration (Exhibit 1007). My understanding of
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`those standards is as described in the next paragraph.
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`16.
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`I have been asked to offer my opinion regarding how a POSITA would have
`
`understood certain claim terms in the ’506 Patent. I understand that in this
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`proceeding, claim terms are interpreted in accordance with their broadest
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`reasonable construction consistent with the specification (“BRC”). I have been
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`informed that the process of construing a claim term begins with the words of the
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`claims. However, I also understand that the claims must be read in view of the
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`specification, of which they are a part. I also have been informed that while the
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`Courts and this Board are permitted to consider extrinsic evidence, like expert
`
`testimony, dictionaries, treatises, and relevant prior art, such evidence is generally
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`of less significance than the intrinsic record. Also, I understand that extrinsic
`
`evidence may not be used to contradict claim meaning that is unambiguous in light
`
`of the intrinsic evidence.
`
`A. “Integrated Circuit”
`I have reviewed the specification citations in section IV.E.1. of the Petition
`
`17.
`
`relating to construction of "integrated circuit." A POSITA would understand
`
`"integrated circuit" as used in claim 1 of the '506 to mean electronic circuitry or
`
`components including microprocessors for the following additional reason that Ex.
`
`1023 (the International Standard ISO 7816 from 1987) is entitled “Integrated
`
`Circuit Cards with Contacts.” Specifically, Section 3.1 in Ex. 1023 defines
`
`integrated circuit as “Electronic component(s) designed to perform processing
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`and/or memory functions.” Ex. 1023 at 4. This definition in Ex. 1023 is consistent
`
`with the above construction because it encompasses a circuit with a
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`microprocessor, but may also include (without requiring) both processing and
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`memory functions. Thus, the broadest reasonable interpretation of the claim
`
`language “integrated circuit” means electronic circuitry or components including
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`microprocessors. A POSITA would agree and concur with this construction.
`
`B. “Antenna”
`I have reviewed the specification citations in section IV.E.2. of the Petition
`
`18.
`
`relating to construction of "antenna." Extrinsic evidence, not inconsistent with the
`
`specification, provides that the definition of antenna is “a conductor by which
`
`electromagnetic waves are sent out or received, consisting commonly of a wire or
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`set of wires.” See Exhibit 1022. An antenna is described in the ’506 patent to be
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`incorporated into a substrate by connection to an electronic component carried in
`
`the same substrate. A substrate resident antenna, such as used in smart cards as of
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`October of 1996, is often formed of thin wires made of magnetic soft iron
`
`commonly covered with an insulating layer. A substrate resident antenna is formed
`
`of such wires flattened into a bundle or a strip. Many smart card related patents
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`detail such antennas which are often called a “coil antenna.” See Exhibit 1027. A
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`coil antenna may be realized as a single or multi-loop antenna meaning the coil
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`antenna consists of one or more complete turns of wire. The fundamental theory of
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`coil antennas, such as coil antennas used in smart cards, was well known at the
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`time of the invention. Many published scientific papers on coil antennas existed
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`before the date of the claimed invention such as Exhibit 1022 (entitled the “Theory
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`of Coil Antenna” by Trilochan Padhi from Harvard University (published in 1965).
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`Thus, the broadest reasonable interpretation of “antenna” in light of the
`
`specification is: a conductor by which electromagnetic waves are sent out or
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`received, consisting commonly of a wire or set of wires. A POSITA would agree
`
`and concur with this construction.
`
`C. “Radio frequency input/output device”
`I have reviewed the specification citations in section IV.E.3. of the Petition
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`19.
`
`relating to the construction of “radio frequency input/output device.” The
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`specification makes clear that to function for its intended use, “frequency and
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`amplitude modulation” is performed by the radio frequency input/output device
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`“using known discrete electronic components and signal processing methods.”
`
`Ex.1001 at 13:40-43. A preeminent technical dictionary defines “modulation” as:
`
`(1) (data transmission). (A) (Carrier). (i) The process by which some
`characteristic of a carrier wave is varied in accordance with a
`modulating wave. (ii) The variation of some characteristic of a carrier.
`(B) (Signal transmission system). (i) A process whereby certain
`characteristics of a wave, often called the carrier, are varied or
`selected in accordance with a modulating function. (ii) The result of
`such a process.
`
`
`The New IEEE Standard Dictionary of Electrical and Electronics Terms 816-817
`
`(5th ed. 1993) (Ex. 1026). Thus, extrinsic evidence supports the definition of
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`“radio frequency input/output device” as used in the ’506 patent to mean electronic
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`circuitry that receives and transmits radio frequency signals, converts the received
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`signals using frequency or amplitude modulation, and transmits the converted
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`signals. A POSITA would agree and concur with this construction.
`
`
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`D. “Controller”
`20. The ’506 patent does not explain this term and it only appears in claim 1 and
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`in the abstract. See Ex. 1001, Abstract, Claim 1. In such a case, I understand that
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`the term is given its broadest reasonable construction. A general reference from
`
`the time provides that a “controller” simply refers to electronics or circuitry that
`
`controls some specific function in the system. See Ex. 1028 (Motorola 1992
`
`textbook), at 14-15 (explaining that “controller” means something that controls
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`something else like other “electrical devices such as relays or motors”). For
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`instance, prior art describes an example of control functions as a part of a
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`“conventional non-contact IC” used to control the radio frequency communication
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`to and from the microprocessor. See Ex. 1027 (U.S. Patent No. 5,337,063 to
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`Takahira). For example, item 4 in FIG. 5 of Ex. 1027 indicates the control of the
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`modulation and demodulation circuit (i.e., the “modem circuit” item 5) located
`
`between an antenna circuit and the bus (item number 8) connecting other system
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`components including a microprocessor (CPU item 1). In the context of this
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`definition, the ‘506 patent describes control functions in its reference to “including
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`suitable signal processing electronic components and circuitry.” Ex 1001, 12:53-
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`54. Similarly, the ’506 patent discloses “suitable programming and/or electronic
`
`components [to] first determine[] whether an authorized” signal is received. Ex
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`1001, 13:29-30. This describes a control function. Thus, extrinsic evidence
`
`supports the definition of “controller” as used in the ’506 patent to mean
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`electronics or circuitry that controls some specific function in the system. A
`
`POSITA would agree and concur with this construction.
`
`E. “Tamper-proof stitching”
`
`21.
`
`I have reviewed the specification citations in section IV.E.5. of the Petition
`
`relating to the construction “tamper-proof stitching”. The phrase appears in the
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`’506 patent in two places, but no explanation is provided as to what qualifies as
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`“tamper-proof stitching.” See Ex. 1001, 6:37; 20:37-42 (Claim 3). Extrinsic
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`evidence provides that the definition of “tamper-proof stitching” is “stitching that
`
`is at least partially protected from unintended removal or unraveling.” For
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`example, Exhibit 1015 (Canadian Patent Application Publication No. CA
`
`2,091,109 to Irwin, applied for on March 5, 1993 and published on September 6,
`
`1994) discloses a “security document, such as a passport, is provided with secure
`
`binding means to prevent unravelling or other form of manual removal of the
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`binding thread. The document is thereby secured against tampering in the form of
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`page removal/replacement. The security document comprises a plurality of sheets
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`held together by means of stitching, the stitching comprised of successive loops of
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`thread. At least portions of the thread of a plurality of the loops is fusible and
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`those portions are subject to becoming, or have been, fused by application of heat.
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`When the thread is fused it is secure and is not subject to becoming unraveled.”
`
`Ex. 1015, Abstract. Thus, the broadest reasonable interpretation of “tamper-proof
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`stitching” in light of the specification is: stitching that is at least partially protected
`
`from unintended removal or unraveling. A POSITA would agree and concur with
`
`this construction.
`
`F. “Encrypted”
`I have reviewed the specification citations in section IV.E.6. of the Petition
`
`22.
`
`relating to construction of "encrypted." Extrinsic evidence, not inconsistent with
`
`the specification, provides that the definition of encrypted is “information that has
`
`been transformed from plaintext to ciphertext.” Exhibit 1021 (Dorothy Elizabeth
`
`Robling Denning, “Cryptography and Data Security,” Addision-Wesley Publishing
`
`Company, 1982), which provides that “[t]he process of transforming plaintext into
`
`ciphertext is called encipherment or encryption; the reverse process of
`
`transforming ciphertext into plaintext is called decipherment or decryption. Both
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`encipherment and decipherment are controlled by a cryptographic key or keys”
`
`Ex. 1021, at 16; see also Ex. 1021, Figure 1.1 (reproduced below). Thus, the
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`broadest reasonable interpretation of “encrypted” in light of the specification is
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`“information that has been transformed from plaintext to ciphertext.” A POSITA
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`would agree and concur with this construction. Figure 1.1 in Ex. 1021 is
`
`reproduced below.
`
`
`
`Denning Description of Encryption / Decryption (Page 1)
`
`
`
`VI. PATENTABILITY ANALYSIS
`23.
`In this section, I set forth my opinions as to whether the combined teachings
`
`of the prior art render claims 1-7 unpatentable for obviousness. I have been
`
`informed that a patent claim is unpatentable as “obvious” under 35 U.S.C. § 103 in
`
`light of one or more prior art references if it would have been obvious to a person
`
`of ordinary skill in the art at the time the invention was made (POSITA) and I have
`
`been informed that a patent claim composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
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`known in the prior art. I have been further informed that it can be important to
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`identify a reason that would have prompted a POSITA in the relevant field, at the
`
`time of the invention, to combine the elements in the same manner as reflected in
`
`the claims. I have also been informed that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. For the reasons that follow, claims 1-7 represent nothing
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`more than a routine and predictable combination of well-known elements.
`
`24.
`
`I have reviewed and agree with the scope and content of the prior art as
`
`applied to claims 1-7 of the ’506 patent as reflected in the charts appearing in
`
`section VI. B-G of the Petition. Those charts are reproduced below for
`
`convenience of the reader. In addition, charts are included that correspond to
`
`Grounds IV-VI that replace the citations to Horejs (Ex. 1005) with the teachings
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`and disclosure of Steffen (Ex. 1006).
`
`
`
`A. Moskowitz discloses a microprocessor, inherently a controller,
`and a radio frequency input/output device as recited in claim 1.
`
`25. Claim 1 recites in pertinent part: “electrically connecting an integrated
`
`circuit including a microprocessor, a controller, a memory unit, a radio frequency
`
`input/output device and an antenna.” Ex. 1001, claim 1.
`
`26. Moskowitz discloses the general components in, and functional operations
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`of, an RFID tag system. Ex. 1003, 1:11-20. The RF signal is used to interrogate
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`the tag, after which information is transferred from the tag (i.e., an output) to a
`
`base station “as the reflected signal is modulated by the tag according to its
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`programmed information protocol.” Ex. 1003, 1:18-20. Moskowitz discloses
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`known applications for the “automatic toll industry, e.g. on thruway and bridge
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`tolls[,]” “[e]mployee identification badges[,]” and “fare cards for busses.” Ex.
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`1003, 1:51-55. Later disclosed applications include an electronic passport that
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`carries stored “information on the identity of the passport owner, visas, dates of
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`entry, restrictions, or any other desirable information[,]” see Ex. 1003, 6:64-66,
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`which “may be in encrypted form for added security.” Ex. 1003, 6:66-67.
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`Moskowitz discloses that “the tag consists of a semiconductor chip having RF
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`circuits, logic, and memory. The tag also has an antenna, often a collection of
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`discrete components, capacitors and diodes, for example, a battery in the case of
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`active tags[.]” Ex. 1003, 1:20-25; see also Ex. 1003, 7:44-52 (disclosing an
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`antenna, a modulator circuit, a logic circuit, a memory circuit, and chip
`
`connectors). Thus, Moskowitz expressly discloses the claimed “memory unit” and
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`“antenna.”
`
`27. As to the claimed “radio frequency input/output device,” Moskowitz teaches
`
`this element by virtue of the “RF circuits” disclosed in that reference. Ex. 1003,
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`1:20-25. In the context of an RFID system as disclosed by Moskowitz, the “RF
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`circuits” disclosed by Moskowitz necessarily correspond to the claimed “radio
`
`frequency input/output device” since during operation, radio waves will be input to
`
`the system, acted on by the underlying hardware/software according to
`
`predetermined instructions (i.e., “according to its programmed information
`
`protocol[,]” Ex. 1003, 1:18-20), and output to an antenna for reading by an external
`
`device. For example, in an application for an “RF passport 900[,]” the memory is
`
`stored with identifying data including “information on the identity of the passport
`
`owner, visas, dates of entry, restrictions, or any other desirable information.” Ex.
`
`1003, 6:64-66. During operation, radio frequency (RF) signals from an external
`
`reader will serve as a signal input to communicate with the system and its memory.
`
`During communication, data can then be output and read from the system. As
`
`another input, an external device can, under control of the microprocessor, write
`
`permanent data to the memory, such as the identity of the passport holder, or
`
`changing data can be input, such as, “dates of entry.” Ex. 1003, 6:64-66.
`
`28. The “RF circuits” in Moskowitz necessarily include the “modulator circuit”
`
`disclosed therein. Ex. 1003, 7:46 (disclosing a “modulator circuit”). For example,
`
`Moskowitz provides in pertinent part that:
`
`The heart of the RF ID system lies in an information carrying tag. The tag
`functions in response to a coded RF signal received from a base station.
`Typically, the tag reflects the incident RF carrier back to the base station.
`Information is transferred as the reflected signal is modulated by the tag
`according to its programmed information protocol.
`17
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`17/51
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`DOJ EX. 1030
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`
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`Ex. 1003, 1:17-20 (emphasis added).
`
`And, a preeminent technical dictionary defines “modulation” as:
`
`(1) (data transmission). (A) (Carrier). (i) The process by which some
`characteristic of a carrier wave is varied in accordance with a
`modulating wave. (ii) The variation of some characteristic of a carrier.
`(B) (Signal transmission system). (i) A process whereby certain
`characteristics of a wave, often called the carrier, are varied or
`selected in accordance with a modulating function. (ii) The result of
`such a process.
`
`
`The New IEEE Standard Dictionary of Electrical and Electronics Terms 816-817
`
`(5th ed. 1993) (Ex. 1026). Thus, the “RF circuits” and “modulator circuit” of
`
`Moskowitz function to receive a coded RF signal from a base station, modulate the
`
`signal according to its preprogrammed information protocol, and serve to transmit
`
`a reflected signal back to a base station. Consistent with the proper construction of
`
`“radio frequency input/output device,” as used in the ’506 patent, the “RF circuits”
`
`and “modulator circuit” of Moskowitz correspond to electronic circuitry that
`
`receives and transmits radio frequency signals, converts the received signals using
`
`frequency or amplitude modulation, and transmits the converted signals. For
`
`example, the reception, modulation, and transmission of RF signals to and from the
`
`antenna of the RF passport in Moskowitz will be performed by the “RF circuits”
`
`and “modulator circuit” disclosed therein. Therefore, the “RF circuits” and
`
`“modulator circuit” disclosed in Moskowitz, Ex. 1003, 1:20-25, Ex. 1003, 7:46
`
`correspond to the “radio frequency input/output device,” recited in claim 1.
`18
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`29. As to the claimed “microprocessor,” Moskowitz teaches this element by
`
`virtue of the “logic circuit” disclosed in that reference. Ex. 1003, 1:20-25. This is
`
`because a “logic circuit” as that term was used and known in the context of
`
`semiconductor circuits before October 15, 1996, corresponds generally to decision-
`
`making circuits in a computer system that are designed to perform a specified
`
`function or process. For example, a preeminent technical dictionary defines “logic
`
`design,” “logic board,” and “digital logic elements” respectively as follows:
`
`logic design: (electronic computation). (A) The planning of a
`computer or data-processing system prior to its detailed engineering
`design. (B) The synthesizing of a network of logic elements to
`perform a specified function. (C) The result of (A) and (B) above,
`frequently called the logic of the system, machine, or network.
`
`logic board: (power-system communication). An assembly of
`decision-making circuits on a printed-circuit mounting board.
`
`digital logic elements: (analog computers). In an analog computer, a
`number of digital functional modules, consisting of logic gates,
`registers, flip-flops, timers, etcetera, all operating in parallel, either
`synchronously or asynchronously, and whose inputs and outputs are
`interconnected according to a ‘logic program,’ via patch cards, on a
`patch board.
`The New IEEE Standard Dictionary of Electrical and Electronics Terms 739. 349
`
`(5th ed. 1993) (attached as Ex. 1026). Thus, taken together, a “logic circuit” was
`
`known in 1993 to correspond to a network of decision-making circuits in a
`
`computer system designed to perform specific functions. And, where those
`
`
`
`19
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`19/51
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`DOJ EX. 1030
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`
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`functions amount to general purpose computer functions such as receiving, storing,
`
`retrieving, and transmitting data, all of which necessarily occurs in the system of
`
`Moskowitz, the term “logic circuit” as used in Moskowitz is synonymous with a
`
`structure and function of a known “microprocessor” as recited in the ’506 patent
`
`for use in receiving, storing, retrieving and transmitting data. Ex 1001, 12:36-42
`
`(“As is well known, the microprocessor 14 includes memory and is programmable
`
`and capable of receiving, storing, retrieving and transmitting data.”). Therefore,
`
`the “logic circuit” disclosed in Moskowitz, Ex. 1003, 1:20-25, corresponds to the
`
`“microprocessor,” recited in claim 1.
`
`30. As to the claimed “controller,” the ’506 patent does not define this term, nor
`
`does it appear outside the abstract and the claims in the ’506 patent other than in
`
`the form “microcontroller.” See Ex. 1001, 5:45-50. As set forth above,
`
`“controller” as properly construed means “electronics or circuitry that controls
`
`some specific function in the system.” Applying this definition, Moskowitz
`
`teaches the claimed controller by virtue of a “logic circuit” as disclosed in that
`
`reference as described in the paragraph above. Ex. 1003, 7:44-52. For example,
`
`Moskowitz discloses a logic circuit in combination with an antenna, a modulator
`
`circuit, a memory circuit, and chip connectors. see also Ex. 1003, 7:46-48
`
`(disclosing an antenna, a modulator circuit, a logic circuit, a memory circuit, and
`
`chip connectors). Moskowitz discloses an RFID system explaining:
`20
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`20/51
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`DOJ EX. 1030
`
`
`
`The heart of the RF ID system lies in an information carrying tag.
`The tag functions in response to a coded RF signal received from a
`base station. Typically, the tag reflects the incident RF carrier back to
`the base station. Information is transferred as the reflected signal is
`modulated by the tag according to its programmed information
`protocol.
`
`
`Ex. 1003, 1:17-20. Beyond disclosing an RFID tag, Moskowitz does not provide
`
`specific detail as to the logic circuits used to implement the system. Nonetheless,
`
`control functions were an inherent known part of a circuit chip as used in the
`
`implementation of this tag. Control functions would be used, for example, to
`
`control access to the memory, access to the radio interface, and to control power
`
`provided to the logic circuits. One example of a conventional known control
`
`application for use in a non-contact IC card is provided by Takahira, Ex. 1027.
`
`FIG. 5 of Ex. 1027 clearly illustrates the conventional use of a control circuit (item
`
`4) for use in controlling the signals from the modem circuit (i.e.,
`
`modulator/demodulator) item 5 to the microprocessor/bus interface (item 8). This
`
`image is reproduced below.
`
`
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`DOJ EX. 1030
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`
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`31. Even as of 1991 (the Japanese application’s filing date for Ex. 1027), FIG. 5
`
`was a well-known and conventional circuitry arrangement in a known non-contact
`
`IC card. Either a “controller” was an inherent logic function in Moskowitz or it
`
`was a known circuit that could be used in RFID applications disclosed in
`
`Moskowitz. Therefore, the “controller” recited in claim 1 is either inherent in
`
`Moskowitz or a known circuit that could be used as of October 1996. See Ex.
`
`1027, FIG. 5.
`
`B. a POSITA would have been motivated to incorporate the
`teachings of Drexler disclosing a temporary storage medium 30
`and a permanent data storage medium 23 into the identification
`document of Moskowitz.
`
`32. Ex. 1003 (Moskowitz et al.) discloses that the memory unit contains
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`personal identification data without specific details of memory type(s) or the
`
`
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`22
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`DOJ EX. 1030
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`
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`personal identification data. The patent provides that “[t]he tag contains in its
`
`memory information on the identity of the passport owner, visas, dates of entry,
`
`restrictions, or any other desirable information.” Ex. 1003, 6: 63-66. In addition,
`
`Ex. 1013 (“Drexler et al.”),
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