Unified Patents Inc.
`
`v.
`
`Universal Secure Registry LLC
`
`Case No. IPR2018-00067
`
`U.S. Patent No. 8,577,813
`
`Patent Owner’s Demonstratives
`
`Hearing Date: January 30, 2019
`
`Demonstrative Exhibit – Not Evidence
`
`1
`
`
`
`v.
`
`Universal Secure Registry LLC
`
`Case No. IPR2018-00067
`
`U.S. Patent No. 8,577,813
`
`Patent Owner’s Demonstratives
`
`Hearing Date: January 30, 2019
`
`Demonstrative Exhibit – Not Evidence
`
`1
`
`
`
`Overview
`
`Maes + Pare
`
`Maes + Labrou
`
`Pizarro + Pare
`
`Demonstrative Exhibit – Not Evidence
`
`2
`
`
`
`Overview of the ’813 Patent
`
`POR at 4-6.
`
`POR at 4-5.
`
`Demonstrative Exhibit – Not Evidence
`
`3
`
`
`
`Overview of the ’813 Patent
`
`POR at 4-6.
`
`Demonstrative Exhibit – Not Evidence
`
`4
`
`POR at 5-6; Ex. 1001 (’705 Patent) at Fig. 31.
`
`
`
`Overview of the ’813 Patent
`
`POR at 4-6.
`
`Demonstrative Exhibit – Not Evidence
`
`5
`
`POR at 4-6; Ex. 1001 (‘813 Patent) at 46:14-31.
`
`
`
`Instituted Grounds – ’813 Patent
`
`Inst. Dec. at 30-31
`
`#
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Instituted Grounds
`
`Claims 1-3, 5, 11, 13-17, 20, and 22-26 obvious over Maes and Pare.
`
`Claims 1-3, 5, 11-17, and 19-26 obvious over Maes and Labrou.
`
`Claims 12-15, 17, 19-23, 25, and 26 obvious over Maes, Pare, and Labrou.
`
`Claims 6-9 and 18 obvious over Maes, Pare, and Burger.
`
`Claims 6-10 and 18 obvious over Maes, Labrou, and Burger.
`
`Claim 10 obvious over Maes, Pare, Burger, and Labrou.
`
`Claims 1, 2, 5, 11, 13, 16, 17, and 24 obvious over Pizarro and Pare.
`
`Demonstrative Exhibit – Not Evidence
`
`Inst. Dec. at 30-31.
`
`6
`
`
`
`’813 Patent: Independent Claim Limitation at Issue
`
`POR at 18-34, 38-48, and 64-68
`
`No.
`
`1[p]
`
`1[a]
`
`1[b]
`
`1[c]
`
`1[d]
`
`Claim 1
`
`Claim Limitation
`
`An electronic ID device configured to allow a user to select any one of a plurality of accounts associated with the user to
`employ in a financial transaction, comprising:
`
`a biometric sensor configured to receive a biometric input provided by the user;
`
`a user interface configured to receive a user input including secret information known to the user and identifying
`information concerning an account selected by the user from the plurality of accounts;
`
`a communication interface configured to communicate with a secure registry;
`
`a processor coupled to the biometric sensor to receive information concerning the biometric input, the user interface and
`the communication interface,
`
`1[d][i]
`
`the processor being programmed to activate the electronic ID device based on successful authentication by the electronic
`ID device of at least one of the biometric input and the secret information,
`
`1[d][ii]
`
`the processor also being programmed such that once the electronic ID device is
`activated the processor is configured to generate a non-predictable value and to
`generate encrypted authentication information from the non-predictable value,
`information associated with at least a portion of the biometric input, and the secret
`information, and
`
`1[d][iii]
`
`to communicate the encrypted authentication information via the communication interface to the secure registry; and
`
`1[e][i]
`
`1[e][ii]
`
`wherein the communication interface is configured to wirelessly transmit the encrypted authentication information to a
`point-of-sale (POS) device, and
`
`wherein the secure registry is configured to receive at least a portion of the encrypted authentication information from the
`POS device.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1001 (’813 Patent) at claim 1.
`
`7
`
`
`
`Overview
`
`Maes + Pare
`
`Maes + Labrou
`
`Pizarro + Pare
`
`Demonstrative Exhibit – Not Evidence
`
`8
`
`
`
`Claim Limitation 1[d][ii]: Maes + Pare (Grounds 1, 3, 4, 6)
`
`POR at 18-34; Sur-reply at 2-13; Jakobsson Decl. (Ex. 2004) at ¶¶ 47-70.
`
` Petitioner Admits that Maes alone does not disclose claim limitation 1[d][ii].
`
`Petition at 18; POR at 19.
`
` Petitioner Alleges Claims 1-3, 5, 11, 13-17, 20, 22-26 are obvious over Maes and Pare.
`
`Inst. Dec. at 30-31.
`
` Patent Owner Asserts:
`
`• Point No. 1: Pare’s tokenless system teaches away from Maes’ token-based systems.
`
`POR at 19-23; Sur-reply at 2-8;
`Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`• Point No. 2: Maes + Pare renders Maes’ “authorization number” inoperable for its
`intended purpose.
`
`POR at 26-28, 32; Sur-reply at 8-10, 12-13;
`Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`• Point No. 3: Maes + Pare frustrates Maes’ purpose of being backwards compatible.
`
`POR at 28-29, 34; Sur-reply at 10-11;
`Jakobsson Decl. (Ex. 2004) at ¶¶64-66, 70.
`
`Demonstrative Exhibit – Not Evidence
`
`9
`
`
`
`Maes – Background
`
`POR at 6-9, 35-36.
`
`Demonstrative Exhibit – Not Evidence
`
`10
`
`Maes at FIGS. 2, 3; POR at 6-9, 35-36.
`
`
`
`Maes – Background
`
`POR at 6-9; Sur-reply 3.
`
`Demonstrative Exhibit – Not Evidence
`
`11
`
`Maes at FIG. 1; POR at 6-9; Sur-reply at 3.
`
`
`
`Maes – Background
`
`POR at 6-9.
`
`Demonstrative Exhibit – Not Evidence
`
`12
`
`Maes at FIG. 5; POR 6-9.
`
`
`
`Maes – Background
`
`POR at 6-9.
`
`Maes at FIG. 6; POR 6-9.
`
`Maes at 12:30-54; POR at 27.
`
`Demonstrative Exhibit – Not Evidence
`
`13
`
`
`
`Pare – Background
`
`POR at 10-13.
`
`Demonstrative Exhibit – Not Evidence
`
`14
`
`Pare at FIG. 3; POR at 10-13.
`
`
`
`Pare – Background
`
`POR at 10-13.
`
`Demonstrative Exhibit – Not Evidence
`
`15
`
`Pare at FIG. 5; POR at 10-13.
`
`
`
`Pare – Background
`
`POR at 10-13.
`
`Demonstrative Exhibit – Not Evidence
`
`16
`
`Pare at FIG. 8; POR at 10-13.
`
`
`
`Pare – Background
`
`POR at 10-13.
`
`Demonstrative Exhibit – Not Evidence
`
`17
`
`Pare at FIG. 9; POR at 10-13.
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Pare at 9:9-18; POR at 21.
`
`Pare at 7:56-60; POR at 21.
`
`Pare at 3:23-32; POR at 21.
`
`Pare at 7:23-36; Sur-reply at 3.
`
`Demonstrative Exhibit – Not Evidence
`
`18
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Pare at 1:12-18; POR at 20-21.
`
`Pare at 3:25-30; POR at 21.
`
`Pare at 7:56-60; POR at 20-21.
`
`Pare at 7:51-55; POR at 21.
`
`Pare at Abstract; POR at 21.
`
`Demonstrative Exhibit – Not Evidence
`
`19
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Pare at 10:40-49; Sur-reply at 2-3.
`
`Pare at FIG. 3; POR at 12; Sur-reply at 3.
`
`Pare at 11:23-29; POR at 11; Sur-reply at 2-3.
`
`Demonstrative Exhibit – Not Evidence
`
`20
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Maes:
`
`Maes at FIG. 1; POR at 6-9; Sur-reply at 3.
`
`Maes at 2:23-30; POR at 6-7.
`
`Demonstrative Exhibit – Not Evidence
`
`21
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Petitioner:
`
`Petitioner’s Reply at 2-3.
`
`Petitioner:
`
`Demonstrative Exhibit – Not Evidence
`
`Petitioner’s Reply at 3.
`
`22
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Pare at 11:22-28; Sur-reply at 2-3.
`
`Pare at FIG. 3; POR at 12; Sur-reply at 3.
`
`Pare at 7:56-60; POR at 21.
`
`Demonstrative Exhibit – Not Evidence
`
`23
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Petitioner’s Expert:
`
`Petitioner’s Exp. Depo Tr. (Ex. 2015) at 59:18-22;
`Sur-reply (Paper 42) at 7.
`
`Demonstrative Exhibit – Not Evidence
`
`24
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Gullman:
`
`Gullman at FIG. 2; Sur-reply at 5-6.
`
`Pare at 2:54-66; Sur-reply at 5.
`
`Demonstrative Exhibit – Not Evidence
`
`25
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from Maes’ Token-
`
`Based System. POR at 19-23; Sur-reply at 2-8; Jakobsson Decl. (Ex. 2004) at ¶¶48-55.
`
`Pare:
`
`Maes:
`
`Pare at 11:1-11; POR at 22; Sur-reply at 7-8.
`
`Maes at FIG. 1; POR at 22, Sur-reply at 3, 7-8.
`
`Demonstrative Exhibit – Not Evidence
`
`26
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Petitioner:
`
`“However, Maes teaches that upon user verification for a transaction (i.e., once
`the device is activated), the PDA generates an authorization number. See Maes
`(EX1003) at 12:40-54; see also id. at 12:64-65. The authorization number is used
`to authenticate the user… Id. at 12:55-13:5.”
`
`Petition at 18.
`
`Petitioner:
`
`“It would have been obvious to a PHOSITA to substitute the
`encrypted authentication information taught in Pare or Labrou for
`the authorization number of Maes which itself teaches encrypting a
`user’s information.”
`
`Petition at 21.
`
`Demonstrative Exhibit – Not Evidence
`
`27
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Maes:
`
`Maes:
`
`Maes at 12:30-54; POR at 27.
`
`Maes at FIG. 6; POR 6-9.
`
`Demonstrative Exhibit – Not Evidence
`
`28
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Petitioner:
`
`“Although Maes teaches that the authorization number may be displayed or verbally
`communicated to a merchant (id. at 12:47-54), a PHOSITA would recognize based
`on other teachings in Maes that it would be obvious that this number could be
`transmitted wirelessly to the POS device from the PDA. See id. at Abstract (“The
`PDA … is capable of transmitting or receiving information through wireless
`communications …”), 13:34-38 (“The selected card information, as well as the
`encrypted information file, would be transmitted to the POS terminal (via the
`Universal Card, RF, or IR) …”).”
`
`Petition at 23-24.
`
`Petitioner:
`
`“It would have been obvious to a PHOSITA to substitute the encrypted
`authentication information taught in Pare or Labrou for the authorization number of
`Maes which itself teaches encrypting a user’s information.”
`
`Demonstrative Exhibit – Not Evidence
`
`Petition at 21.
`
`29
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Petitioner’s Expert:
`
`“Indeed, performing these encryption steps in Maes would have simply required, for
`example, substituting the authorization number in Maes with the encrypted
`commercial transaction message taught in Pare or the hash-function techniques
`taught in Labrou. A PHOSITA would have appreciated that this would have furthered
`Maes’ objective of enhancing security in electronic financial transactions so as to
`reduce fraud. And a PHOSITA would have been motivated to use encrypted
`authentication information instead of, for example, an authorization number, to
`further enhance security and make the information less accessible to would-be
`thieves or unethical merchants.”
`
`Petitioner’s Expert (Ex. 1009) at ¶54.
`
`Demonstrative Exhibit – Not Evidence
`
`30
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Petitioner:
`
`“And it is not true that the authorization number in Maes is only ever verbally
`communicated or displayed—in one embodiment involving money transfers,
`Maes teaches that an authorization number may be transmitted wirelessly. See
`Maes (EX1003) at 14:58-67.”
`
`Petitioner’s Reply at 7.
`
`Demonstrative Exhibit – Not Evidence
`
`31
`
`
`
`Point No. 2 – Maes + Pare renders Maes’ “Authorization Number” Inoperable for its
`
`Intended Purpose POR at 26-28; Sur-reply at 8-10; Jakobsson Decl. (Ex. 2004) at ¶¶62-63, 69.
`
`Maes:
`
`Maes at 14:47-67; Sur-reply 10.
`
`Demonstrative Exhibit – Not Evidence
`
`32
`
`
`
`Point No. 3 – Maes + Pare Frustrates Maes’ Purpose of Being Backwards Compatible
`
`POR at 28-29; Sur-reply at 10-11; Jakobsson Decl. (Ex. 2004) at ¶¶ 64-66, 70.
`
`Maes:
`
`Maes:
`
`Maes at 2:43-49; POR at 28.
`
`Maes at 4:12-18; POR at 28.
`
`Demonstrative Exhibit – Not Evidence
`
`33
`
`
`
`Point No. 3 – Maes + Pare Frustrates Maes’ Purpose of Being Backwards Compatible
`
`POR at 28-29; Sur-reply at 10-11; Jakobsson Decl. (Ex. 2004) at ¶¶ 64-66, 70.
`
`Petitioner:
`
`“Such a combination would have required only minor modifications in software and
`would have yielded predictable results …”
`
`Petition at 22.
`
`Petitioner’s Expert:
`
`“It would have required only minor modifications in software to the device in Maes
`to incorporate the more specific teachings of Pare or Labrou regarding the
`generation of encrypted authentication information from a non-predictable value,
`information associated with at least a portion of the biometric data, and the secret
`(PIN) information.”
`
`Petitioner’s Exp. Decl. (Ex. 1009) at ¶54.
`
`Demonstrative Exhibit – Not Evidence
`
`34
`
`
`
`Point No. 3 – Maes + Pare Frustrates Maes’ Purpose of Being Backwards Compatible
`
`POR at 28-29; Sur-reply at 10-11; Jakobsson Decl. (Ex. 2004) at ¶¶ 64-66, 70.
`
`Petitioner’s Expert:
`
`Petitioner’s Expert:
`
`Petitioner’s Exp. Depo. Tr. (Ex. 2015) at 121:17-21.
`
`Petitioner’s Exp. Depo. Tr. (Ex. 2015) at 124:15-17.
`
`Demonstrative Exhibit – Not Evidence
`
`35
`
`
`
`Point No. 3 – Maes + Pare Frustrates Maes’ Purpose of Being Backwards Compatible
`
`POR at 28-29; Sur-reply at 10-11; Jakobsson Decl. (Ex. 2004) at ¶¶ 64-66, 70.
`
`Patent Owner’s Expert:
`
`“Pare teaches a very specific transaction protocol, and the
`infrastructure available at the time of Maes, Pare, and the ’813
`patent was unable to process Pare’s specific protocol…To process
`Pare’s commercial transaction message every element of Maes’s
`system—the PDA, point of sales terminal, and central server—
`would need to be modified to handle Pare’s protocol.”
`
`Ex. 2004 at ¶ 64.
`
`Dr. Jakobsson (PO’s Expert)
`
`Demonstrative Exhibit – Not Evidence
`
`36
`
`
`
`Overview
`
`Maes + Pare
`
`Maes + Labrou
`
`Pizarro + Pare
`
`Demonstrative Exhibit – Not Evidence
`
`37
`
`
`
`Claim Limitation 1[d][ii]: Maes + Labrou (Grounds 2, 3, 5, 6)
`
`POR at 38-48; Sur-reply at 14-20.; Jakobsson Decl. (Ex. 2004) at ¶¶ 80-96.
`
` Petitioner alleges that Maes in view of Labrou renders obvious the claimed
`authentication information.
`
`Petition at 20-23.
`
` Patent Owner Asserts:
`
`• Point No. 1: Both Maes and Labrou fail to teach the claimed authentication
`information.
`
`POR at 39-41; Sur-reply at 14; Jakobsson Decl. (Ex. 2004) at ¶¶80-85.
`
`• Point No. 2: It was not obvious to modify Labrou’s PIE to use both a PIN and a
`biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`• Point No. 3: Even if it were obvious to modify the PIE, it is not obvious to
`combine Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Demonstrative Exhibit – Not Evidence
`
`38
`
`
`
`Labrou – Background
`
`POR at 14-15.
`
`Demonstrative Exhibit – Not Evidence
`
`39
`
`Labrou at FIG. 2.
`
`
`
`Labrou – Background
`
`POR at 14-15.
`
`Demonstrative Exhibit – Not Evidence
`
`40
`
`Labrou at FIG. 29; POR at 14-15.
`
`
`
`Labrou – Background
`
`POR at 14-15.
`
`Demonstrative Exhibit – Not Evidence
`
`41
`
`Labrou at FIG. 30; POR at 14-15.
`
`
`
`Point No. 1: Both Maes and Labrou Fail to Teach the Claimed Authentication
`
`Information.
`
`POR at 39-41; Sur-reply at 14; Jakobsson Decl. (Ex. 2004) at ¶¶80-85.
`
`Maes:
`
`Labrou:
`
`Demonstrative Exhibit – Not Evidence
`
`42
`
`
`
`Point No. 1: Both Maes and Labrou Fail to Teach the Claimed Authentication
`
`Information.
`
`POR at 39-41; Sur-reply at 14; Jakobsson Decl. (Ex. 2004) at ¶¶80-85.
`
`Petitioner:
`
`Petitioner’s Expert:
`
`Petition at 18.
`
`Demonstrative Exhibit – Not Evidence
`
`43
`
`Petitioner’s Exp. Decl. (Ex. 1009) at ¶48.
`
`
`
`Point No. 1: Both Maes and Labrou Fail to Teach the Claimed Authentication
`
`Information.
`
`POR at 39-41; Sur-reply at 14; Jakobsson Decl. (Ex. 2004) at ¶¶80-85.
`
`Labrou:
`
`Demonstrative Exhibit – Not Evidence
`
`44
`
`Labrou at Fig. 29; POR at 40-41.
`
`
`
`Point No. 1: Both Maes and Labrou Fail to Teach the Claimed Authentication
`
`Information.
`
`POR at 39-41; Sur-reply at 14; Jakobsson Decl. (Ex. 2004) at ¶¶80-85.
`
`Labrou:
`
`Demonstrative Exhibit – Not Evidence
`
`45
`
`Labrou at ¶524; POR at 40-41.
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Labrou:
`
`Demonstrative Exhibit – Not Evidence
`
`46
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner:
`
`Petitioner’s Expert:
`
`Petition at 21.
`
`Demonstrative Exhibit – Not Evidence
`
`47
`
`Petitioner’s Exp. Decl. (Ex. 1009) at ¶53.
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Labrou:
`
`Petitioner’s Expert:
`
`Labrou at Fig. 29; POR at 40-41.
`
`Demonstrative Exhibit – Not Evidence
`
`48
`
`Petition at 21.
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner:
`
`Petitioner’s Expert:
`
`Petition at 21.
`
`Petitioner’s Exp. Decl. (Ex. 1009) at ¶53.
`
`Demonstrative Exhibit – Not Evidence
`
`49
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner:
`
`Petitioner’s Expert:
`
`Petition at 21.
`
`Petitioner’s Exp. Decl. (Ex. 1009) at ¶53.
`
`Demonstrative Exhibit – Not Evidence
`
`50
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner:
`
`Petitioner’s Expert:
`
`Petitioner’s Reply at 12.
`
`Petitioner’s Exp. Decl. (Ex. 1032) at ¶5.
`
`Demonstrative Exhibit – Not Evidence
`
`51
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Patent Owner’s Expert:
`
`Demonstrative Exhibit – Not Evidence
`
`52
`
`Jakobsson Decl. (Ex. 2004) at ¶88.
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner’s Expert:
`
`Petitioner’s Exp. Decl. (Ex. 1032) at ¶10.
`
`Demonstrative Exhibit – Not Evidence
`
`53
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Petitioner’s Expert:
`
`Petitioner’s Exp. Decl. (Ex. 1032) at ¶30.
`
`Bohannon:
`
`Demonstrative Exhibit – Not Evidence
`
`54
`
`Petitioner’s Exp. Decl. (Ex. 1032) at ¶¶10-12.
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Bohannon:
`
`Bohannon at Abstract; Petitioner’s Exp. Decl. (Ex. 1032) at ¶11, n. 6; Sur-reply at n. 4.
`
`Demonstrative Exhibit – Not Evidence
`
`55
`
`
`
`Point No. 2: It Was Not Obvious to Modify Labrou’s PIE to Use Both a PIN and a
`
`Biometric.
`
`POR at 40-44; Sur-reply at 14-18; Jakobsson Decl. (Ex. 2004) at ¶¶85-92.
`
`Institution Decision:
`
`Demonstrative Exhibit – Not Evidence
`
`56
`
`Inst. Dec. at 30-31.
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Maes:
`
`Labrou:
`
`Demonstrative Exhibit – Not Evidence
`
`57
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Federal Circuit in Personal Web Techs.:
`
`“[T]he Board nowhere clearly explained, or cited evidence showing,
`how the combination of the two references was supposed to work.
`At least in this case, such a clear, evidence-supported account of the
`contemplated workings of the combination is a prerequisite to
`adequately explaining and supporting a conclusion that a relevant
`skilled artisan would have been motivated to make the combination and
`reasonably expect success in doing so.”
`
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); POR at 45.
`
`Demonstrative Exhibit – Not Evidence
`
`58
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Petitioner:
`
`Petition at 22-23.
`
`Demonstrative Exhibit – Not Evidence
`
`59
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Maes:
`
`Labrou:
`
`Labrou at Fig. 29; POR at 45-46.
`
`Maes at Fig. 6; POR at 9-10, 33, 48.
`
`Demonstrative Exhibit – Not Evidence
`
`60
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Labrou:
`
`Labrou at FIG. 29; POR at 14, 15, 41, 46.
`
`Demonstrative Exhibit – Not Evidence
`
`61
`
`Labrou at ¶436; POR at 47-48, Sur-reply at 19.
`
`
`
`Point No. 3: Even If It Were Obvious to Modify the PIE, It Is Not Obvious to Combine
`
`Maes and Labrou.
`
`POR at 45-48; Sur-reply at 18-20; Jakobsson Decl. (Ex. 2004) at ¶¶93-96.
`
`Maes:
`
`Maes at 2:43-49; POR at 47-48.
`
`Maes at 4:12-18; POR at 47-48.
`
`Demonstrative Exhibit – Not Evidence
`
`62
`
`Maes at 11:52-56; POR at 47-48.
`
`
`
`’813 Patent: Dependent Claim 2
`
`POR at 35-38.
`
`Claim 2
`
`2. The electronic ID device of claim 1, wherein
`the electronic ID device comprises a discrete
`code associated with the electronic ID device.
`
`Ex. 1001 (’813 Patent) at claim 2.
`
`Demonstrative Exhibit – Not Evidence
`
`63
`
`
`
`’813 Patent: Dependent Claims 12 and 21
`
`POR at 48-55 and 59; Sur-reply at 20-23.
`
`Claim 12
`
`Claim 21
`
`12. The electronic ID device of claim 11,
`wherein the processor is configured to
`generate account identifying information
`for the respective one of the plurality of
`accounts, wherein the account identifying
`information does not identify an account
`number of the respective one of the
`plurality of accounts.
`
`21. The method of claim 16, further comprising
`an act of generating an account identifier for
`the selected one of the plurality of user
`accounts that does not include an account
`number, and wherein the act of generating
`encrypted authentication information includes
`using the account identifier for the identifying
`information.
`
`Ex. 1001 (’813 Patent) at claim 12.
`
`Ex. 1001 (’813 Patent) at claim 21.
`
`Demonstrative Exhibit – Not Evidence
`
`64
`
`
`
`Claims 12 and 21: Maes [+ Pare] + Labrou (Grounds 2, 3)
`
`POR at 48-55 and 59; Sur-reply at 20-23.
`
` Petitioner alleges that this limitation is met by Labrou’s “account aliases.”
`
`Petition at 31, 37-38.
`
` Patent Owner Asserts:
`
`• Point No. 1: Aliases in Labrou are generated before an account is “selected.”
`
`POR at 48-50; Sur-reply at 20-21; Jakobsson Decl. (Ex. 2004) at ¶¶99-101.
`
`• Point No. 2: No disclosure in Labrou that selecting an alias leads to generating the
`recited account identifier.
`
`POR at 50-51; Sur-reply at 21-22; Jakobsson Decl. (Ex. 2004) at ¶¶101-102.
`
`• Point No. 3: No motivation to combine Labrou with Maes.
`
`POR at 51-55; Sur-reply at 22-23; Jakobsson Decl. (Ex. 2004) at ¶¶103-107.
`
`Demonstrative Exhibit – Not Evidence
`
`65
`
`
`
`Point No. 1: Aliases in Labrou Are Generated before an Account Is “Selected.”
`
`POR at 48-50; Sur-reply at 20-21; Jakobsson Decl. (Ex. 2004) at ¶¶99-101.
`
`Claim 12
`
`Claim 21
`
`1. An electronic ID device configured to allow
`a user to select any one of a plurality of
`accounts associated with the user to employ
`in a financial transaction, comprising:
`***
`a user interface configured to receive a user
`input including secret information known to
`the user and identifying information
`concerning an account selected by the
`user from the plurality of accounts;
`***
`12. The electronic ID device of claim 11,
`wherein the processor is configured to
`generate account identifying information for
`the respective one of the plurality of
`accounts, wherein the account identifying
`information does not identify an account
`number of the respective one of the plurality
`of accounts.
`
`Ex. 1001 (’813 Patent) at claim 12.
`
`16. A method of generating authentication
`information comprising acts of:
`***
`receiving, in a user interface, identifying
`information from the user concerning a
`selected one of a plurality of user
`accounts;
`
`***
`21. The method of claim 16, further
`comprising an act of generating an account
`identifier for the selected one of the
`plurality of user accounts that does not
`include an account number, and wherein the
`act of generating encrypted authentication
`information includes using the account
`identifier for the identifying information.
`
`Ex. 1001 (’813 Patent) at claim 21.
`
`Demonstrative Exhibit – Not Evidence
`
`66
`
`
`
`Point No. 1: Aliases in Labrou Are Generated before an Account Is “Selected.”
`
`POR at 48-50; Sur-reply at 20-21; Jakobsson Decl. (Ex. 2004) at ¶¶99-101.
`
`Claim 21:
`
`Labrou:
`
`“…generating an account
`identifier for the selected
`one of the plurality of user
`accounts that does not
`include an account
`number…”
`
`Ex. 1001 (’813 Patent) at claim 21.
`
`Labrou at Fig. 52; POR at 49.
`
`Labrou at ¶293; POR at 49-50.
`
`Demonstrative Exhibit – Not Evidence
`
`67
`
`
`
`Point No. 2: No Disclosure in Labrou that Selecting an Alias Leads to Generating the
`
`Recited Account Identifier.
`
`POR at 50-51; Sur-reply at 21-22; Jakobsson Decl. (Ex. 2004) at ¶¶101-102.
`
`Petitioner:
`
`“a PHOSITA would have understood that the user’s selection of a particular account alias
`would cause information to be generated by the device specifying the alias that was selected
`so that the device could inform the server the correct account to use for the transaction”
`
`Petitioner’s Reply at 16.
`
`Ex Parte Levy:
`
`“In relying upon the theory of inherency, the [challenger] must provide a basis in fact and/or
`technical reasoning to reasonably support the determination that the allegedly inherent
`characteristic necessarily flows from the teachings of the applied prior art.”
`
`Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990); Sur-reply at 21.
`
`Demonstrative Exhibit – Not Evidence
`
`68
`
`
`
`Point No. 2: No Disclosure in Labrou that Selecting an Alias Leads to Generating the
`
`Recited Account Identifier.
`
`POR at 50-51; Sur-reply at 21-22; Jakobsson Decl. (Ex. 2004) at ¶¶101-102.
`
`Claim 12
`
`Claim 21
`
`12. The electronic ID device of claim 11,
`wherein the processor is configured to
`generate account identifying information for
`the respective one of the plurality of
`accounts, wherein the account identifying
`information does not identify an account
`number of the respective one of the plurality
`of accounts.
`
`Ex. 1001 (’813 Patent) at claim 12.
`
`21. The method of claim 16, further comprising
`an act of generating an account identifier for the
`selected one of the plurality of user accounts
`that does not include an account number,
`and wherein the act of generating encrypted
`authentication information includes using the
`account identifier for the identifying information.
`
`Ex. 1001 (’813 Patent) at claim 21.
`
`Demonstrative Exhibit – Not Evidence
`
`69
`
`
`
`Point No. 2: No Disclosure in Labrou that Selecting an Alias Leads to Generating the
`
`Recited Account Identifier.
`
`POR at 50-51; Sur-reply at 21-22; Jakobsson Decl. (Ex. 2004) at ¶¶101-102.
`
`Claim 21:
`
`Labrou:
`
`“…generating an account
`identifier for the selected
`one of the plurality of user
`accounts that does not
`include an account
`number…”
`
`Ex. 1001 (’813 Patent) at claim 21.
`
`Labrou at ¶532; POR at 50-51.
`
`Demonstrative Exhibit – Not Evidence
`
`70
`
`Labrou at ¶293; POR at 49-50, Sur-reply at 22.
`
`
`
`Overview
`
`Maes + Pare
`
`Maes + Labrou
`
`Pizarro + Pare
`
`Demonstrative Exhibit – Not Evidence
`
`71
`
`
`
`Pizarro in View of Pare
`
`POR at 64-68; Sur-reply at 23-24; Jakobsson Decl. (Ex. 2004) at ¶¶ 128-134.
`
`Petitioner Argues That Claims 1, 2, 5, 11, 13, 16, 17, and 24 are
`Obvious Over Pizarro And Pare.
`
`Petition at 5, 57-58.
`
`Petitioner:
`
`“A PHOSITA would have been motivated to incorporate Pare’s specific teachings of
`using a random DES key to encrypt biometric input and a PIN into the system in
`Pizarro, which already teaches encrypting authentication information that includes
`biometric input.”
`
`Petition at 57-58.
`
`Demonstrative Exhibit – Not Evidence
`
`72
`
`
`
`Pizarro in View of Pare
`
`POR at 64-68; Sur-reply at 23-24; Jakobsson Decl. (Ex. 2004) at ¶¶ 128-134.
`
`A POSITA would not be motivated to combine Pizarro with Pare because:
`
` Point No. 1: Pare’s Tokenless Transaction System
`Teaches Away from Pizarro’s Token-Based System
`That Relies on a Cell-phone.
`
`POR at 19-23, 65; Sur-reply at 2-8, 23-24;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 48-55, 131.
`
` Point No. 2: Pizarro fails to disclose “user input
`including secret information known to the user.”
`
`Petition at 51; POR at 65;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
` Point No. 3: Petitioner fails to show why a POSITA
`would be motivated to modify Pizarro with Pare’s
`commercial transaction message.
`
`POR at 67-68; Sur-reply at 24;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
`Demonstrative Exhibit – Not Evidence
`
`73
`
`
`
`Pizarro – Background
`
`POR at 16, 66.
`
`Demonstrative Exhibit – Not Evidence
`
`74
`
`Pizarro at FIG. 2; Petition at 48.
`
`
`
`Point No. 1: Pare’s Tokenless Transaction System Teaches Away from
`
`Pizarro’s Token-Based (Cellphone) System POR at 19-23, 65; Sur-reply at 2-8, 23-24;
`
`Jakobsson Decl. (Ex. 2004) at ¶¶ 48-55, 131.
`
`Pizarro:
`
`Pizarro:
`
`Pizarro at FIG. 2.
`
`Pizarro at 5:47-52.
`
`Demonstrative Exhibit – Not Evidence
`
`75
`
`
`
`Point No. 2: Pizarro Fails to Disclose “User Input Including Secret Information
`
`Known to the User” Petition at 51; POR at 65; Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
`Petitioner:
`
`“Pizarro does not expressly describe ‘user input including secret information
`known to the user.’ But Pare expressly teaches a system authenticating a buyer
`using a PIN (i.e. ‘secret information’), at least one biometric sample, and at least one
`financial account. Pare (EX1004) at 4:18-24.”
`
`Petition at 51.
`
`Demonstrative Exhibit – Not Evidence
`
`76
`
`
`
`Point No. 3: Petitioner Fails to Show Why a POSITA Would Be Motivated to
`
`Modify Pizarro with Pare’s Commercial Transaction Message
`
`POR at 67-68; Sur-reply at 24;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
`Petitioner:
`
`Demonstrative Exhibit – Not Evidence
`
`77
`
`Petition at 56.
`
`
`
`Point No. 3: Petitioner Fails to Show Why a POSITA Would Be Motivated to
`
`Modify Pizarro with Pare’s Commercial Transaction Message
`
`POR at 67-68; Sur-reply at 24;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
`Petitioner:
`
`Petition at 58.
`
`Demonstrative Exhibit – Not Evidence
`
`78
`
`
`
`Point No. 3: Petitioner Fails to Show Why a POSITA Would Be Motivated to
`
`Modify Pizarro with Pare’s Commercial Transaction Message
`
`POR at 67-68; Sur-reply at 24;
`Jakobsson Decl. (Ex. 2004) at ¶¶ 130.
`
`Pizarro:
`
`Pizarro at 9:25-39; POR at 67-68.
`
`Demonstrative Exhibit – Not Evidence
`
`79
`
`
`
`’813 Patent: Dependent Claims 10 and 19
`
`POR at 55-58 and 60-63; Sur-reply at 20.
`
`Claim 10
`
`Claim 19
`
`10. The electronic ID device of claim 7,
`further comprising a memory coupled to the
`processor and configured to store an
`electronic serial number of the electronic ID
`device, wherein the processor is configured
`to generate a seed using at least two of the
`electronic serial number, a discrete code
`associated with the electronic ID device, the
`PIN, a time value, and the biometric input to
`generate the encrypted authentication
`information, and wherein the seed is
`employed by the processor to generate the
`non-predictable value.
`
`Ex. 1001 (’813 Patent) at claim 10.
`
`19. The method of claim 16, further
`comprising an act of generating a seed from
`which the authentication information is
`generated by employing at least two of the
`biometric data, the secret information known
`to the user, and an electronic serial number
`of the electronic ID device.
`
`Ex. 1001 (’813 Patent) at claim 19.
`
`Demonstrative Exhibit – Not Evidence
`
`80
`
`
`
`Claims 10 and 19: The Board Found Petitioner Failed to Meet Its Burden.
`
`POR at
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