Case IPR2016-00497
`U.S. Patent No. 6,111,506
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`Filed on behalf of Patent Owner IRIS Corporation Berhad
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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` _______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`______________________
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`DEPARTMENT OF JUSTICE
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`Petitioner
`
`v.
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`IRIS CORPORATION BERHAD
`
`Patent Owner
`
`_____________________
`
`
`
`Case IPR2016-00497
`U.S. Patent No. 6,111,506
`
`
`____________________
`
`DECLARATION OF DATUK TAN SAY JIM
`MANAGING DIRECTOR OF IRIS CORPORATION BERHAD
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`
`
`PROTECTIVE ORDER MATERIAL
`
`IRIS
`EXHIBIT 2031 PAGE 1
`DOJ v. IRIS
`IPR 2016-00497
`
`
`U.S. Patent No. 6,111,506
`
`
`Filed on behalf of Patent Owner IRIS Corporation Berhad
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
` _______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`______________________
`
`DEPARTMENT OF JUSTICE
`
`Petitioner
`
`v.
`
`IRIS CORPORATION BERHAD
`
`Patent Owner
`
`_____________________
`
`
`
`Case IPR2016-00497
`U.S. Patent No. 6,111,506
`
`
`____________________
`
`DECLARATION OF DATUK TAN SAY JIM
`MANAGING DIRECTOR OF IRIS CORPORATION BERHAD
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`IRIS
`EXHIBIT 2031 PAGE 1
`DOJ v. IRIS
`IPR 2016-00497
`
`
`
`
`I, Datuk Tan Say Jim, hereby declare and state as follows:
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`1. I reside in Kuala Lumpur, Malaysia, and am the managing director
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`
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`of IRIS CORPORATION BERHAD, the patent owner.
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`
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`2. I officially joined IRIS as its CEO in January 1998, but as far back
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`as the late 1980’s, I was involved with IRIS’ predecessor and affiliated
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`corporations and was in fact instrumental in the formation of the current
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`IRIS corporation.
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`
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`3. I have reviewed the following documents prior to signing the
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`instant declaration:
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` a. The Declaration of Dr. Mahathir bin Mohamad,
`former Prime Minister of Malaysia, Dated June 10,
`2016 Exhibit 2030;
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`b. Exhibit 2004 to IRIS’ Preliminary Response filed
`herein which I assert is a true copy of a December 30,
`2003 newspaper article concerning chip-based
`passports;
`
`c. Exhibit 2009 to IRIS’ Preliminary Response filed
`herein, which I assert is a true copy of two clippings
`from a March 24, 1998 newspaper article concerning
`Malaysia’s electronic passport, the first electronic
`passport in the word;
`
`d. Exhibit 2010 to IRIS’ Preliminary Response filed
`herein, which I assert is a true copy of a March 24
`1998 newspaper article relating to the issuance, of the
`first electronic passport to Malaysia’s Prime Minister
`Dr. Mahathir, which occurred at a ceremony IRIS’
`headquarters in my presence.
`
`
`PROTECTIVE ORDER MATERIAL
`
`IRIS
`2
`EXHIBIT 2031 PAGE 2
`DOJ v. IRIS
`IPR 2016-00497
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`4. I state from my own personal knowledge, having been directly
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`
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`involved in all of the activity described in Prime Minister Mahathir’s
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`declaration, (Exhibit 2030) as well as in the events reported in the newspaper
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`articles, Exhibits 2004, 2009, and 2010, that the aforementioned Declaration
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`and Articles accurately set forth the occurrences described therein.
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`
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`5. By way of background to the events depicted above: during the
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`course of my involvement with IRIS and its predecessor and affiliated
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`corporations, I became aware of the growing problem of forged and
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`fraudulent Malaysian passports circulating in our part of the world due to the
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`high value of our national passport, a passport of a country with the rights
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`and privileges of a member of the British Commonwealth, surrounded by
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`neighbors whose national passports were of much more limited value.
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`
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`6. In light of that fact the Malaysian Government, as described in
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`Prime Minister Mahathir’s declaration, had been searching for years for a
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`way to make it more difficult if not impossible to forge the Malaysian
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`passport. Solutions explored included, but were not limited to, the use of
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`better and more sophisticated holograms, invisible and specialty inks and
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`customized watermarks.
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`
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`7. Sometime in the late 1990’s, our company, IRIS, sent a proposal to
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`the Malaysian Immigration office concerning the creation of a secure
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`PROTECTIVE ORDER MATERIAL
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`IRIS
`3
`EXHIBIT 2031 PAGE 3
`DOJ v. IRIS
`IPR 2016-00497
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`passport referred to as an electronic passport, containing an encrypted, write
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`once, read many chip which would store biometric information pertaining to
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`the passport owner. The chip would be connected to an antenna and would
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`be capable of being read by immigration officials through secure, contactless
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`communication. At the time of the proposal, the method of manufacturing
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`this electronic passport was the subject of our pending U.S Patent
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`application. That application matured into U.S. Patent No. 6,111,506.
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`
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`8. With a view towards possibly adopting the IRIS electronic passport
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`as a solution to the widespread problem of alteration and fraud, the
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`Malaysian Government authorized us to manufacture sample passports for
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`testing by Immigration Malaysia.
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`
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`9. Features of the proposed IRIS electronic passport that were
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`important to Immigration Malaysia included the inlay with a chip containing
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`encrypted biometric data, including a still photograph of the passport owner,
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`the stored data of which could be read by the immigration officer without
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`contact with the embedded chip. The immigration office also wanted the
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`security of having the biometric data on a “write once” chip, to prevent
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`alteration. Another feature important to the government was having a page
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`with human readable identification information so that the immigration
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`officer could compare the visible text and photograph with the stored photo
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`PROTECTIVE ORDER MATERIAL
`
`IRIS
`4
`EXHIBIT 2031 PAGE 4
`DOJ v. IRIS
`IPR 2016-00497
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`and data, to make certain there had not been any alteration to that human
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`readable page. The inclusion of an antenna attached to the chip allowed for
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`contactless communication for the comparison of the written data with the
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`electronic stored encrypted data. It was especially important to the
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`immigration department that the chip be protected from damage. Our
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`national passports were designed to last ten years. They are subject to
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`numerous immigration officer stamping and other physical use and abuse.
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`Protection of the chip from physical damage by the inclusion of a protective
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`ring, coupled with multiple sheets of base material joined to the substrate
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`upon which the chip was located, along with rigid material being joined to
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`the those sheets provided the protection that was needed. Finally to protect
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`the integrity of the entire passport, the government was interested in tamper-
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`proof stitching as an added layer of protection against tampering as well as
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`an added component to further enable the detection of tampered documents.
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`
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`10. Before adopting the IRIS electronic passport, the Malaysian
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`Immigration Service put samples through rigorous testing. The testing
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`included repeated immigration officer stamping to ascertain whether or not
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`there would be damage to the chip or related components of the chip inlay.
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`The samples passed these tests.
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`PROTECTIVE ORDER MATERIAL
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`IRIS
`5
`EXHIBIT 2031 PAGE 5
`DOJ v. IRIS
`IPR 2016-00497
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`11. The first electronic passport in the world was issued at a ceremony
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`at IRIS Corporation’s Headquarters in Kuala Lumpur, Malaysia. I, was
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`present as Managing Director of IRIS when that first electronic passport was
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`issued to Malaysia’s Prime Minister, Dr. Mahathir. This event is
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`memorialized in the newspaper article, Exhibit 2010.
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`
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`13. The subsequent success of the IRIS electronic passport is well
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`known. It has been adopted as a world-wide standard, and its adoption is a
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`condition precedent to any nation’s participation in the United States visa
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`waiver program.
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`
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`14. As Managing Director of IRIS I know that the United States
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`government is challenging the validity of the ‘506 patent that we had
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`obtained from the U.S. Government to provide patent protection for a
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`product that we take pride in having introduced to the world. Our country’s
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`immigration department and our country welcomed U.S. officials and shared
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`information with them. I personally met with Special Agent Neville Cramer,
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`of the U.S. Department of Justice Immigration and Naturalization Service,
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`when he visited Kuala Lumpur to learn more about the IRIS/Malaysian
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`PROTECTIVE ORDER MATERIAL
`
`IRIS
`6
`EXHIBIT 2031 PAGE 6
`DOJ v. IRIS
`IPR 2016-00497
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`PROTECTIVE ORDER MATERIAL
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`IRIS
`EXHIBIT 2031 PAGE 7
`DOJ v. IRIS
`IPR 2016-00497
`
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