`
`Paper No. 26
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`____________
`
`Case IPR2018-00067
`U.S. Patent No. 8,577,813
`____________
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
`
`
`
`
`
`
`
`
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .......................................................................... ii
`
`LIST OF EXHIBITS ...................................................................................... iii
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION .................................................................................1
`
`THE SUBSTITUTE CLAIMS DO NOT EXPAND THE
`SCOPE OF THE CLAIMS OF THE ’205 PATENT ............................2
`
`PO PROPOSES A REASONABLE NUMBER OF
`SUBSTITUTE CLAIMS .......................................................................3
`
`IV. THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER ...............................................................................................3
`
`V.
`
`THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO
`AND OVERCOME THE GROUNDS OF RECORD ..........................4
`
`VI. Support for substitute claims 27-52 .......................................................5
`
`VII. CONCLUSION .................................................................................. 12
`
`APPENDIX A .................................................................................................. i
`
`
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Aqua Products, Inc. v. Joseph Matal et al.,
`Case No. 2015-1177 (Fed. Cir. Oct. 4, 2017) ......................................... 1, 4
`
`Statutory Authorities
`
`35 U.S.C. § 316(d) .......................................................................................... 1
`
`35 U.S.C. § 316(d)(1)(B) ................................................................................ 3
`
`35 U.S.C. § 316(d)(3) ..................................................................................... 2
`
`35 U.S.C. § 316(e) .......................................................................................... 4
`
`Rules and Regulations
`
`37 C.F.R. § 42.121 .......................................................................................... 1
`
`37 C.F.R. § 42.121(a)(2) ................................................................................. 4
`
`37 C.F.R. § 41.121(a)(2)(ii) ............................................................................ 2
`
`37 C.F.R. § 42.121(a)(3) ................................................................................. 3
`
`37 C.F.R. § 42.121(b)(1)................................................................................. 3
`
`37 C.F.R. § 42.121(b)(2)................................................................................. 4
`
`
`
`
`
`ii
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`LIST OF EXHIBITS
`
`Exhibit #
`
`Description
`
`Ex. 2003
`
`U.S. Application No. 13/237,184.
`
`
`
`
`
`
`iii
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner
`
`Universal Secure Registry LLC (“USR”) submits this contingent motion
`
`(“Motion”) to substitute proposed claims 27-52 shown in Appendix A for original
`
`claims 1-26 of U.S. Patent No. 8,577,813 (“the ’813 Patent”) should any of claims
`
`1-3 and 5-26 (“Challenged Claims”) be found unpatentable. Patent Owner has
`
`conferred with the Board prior to filing this Motion, as required by 37 C.F.R. §
`
`42.121, and Board authorized the filing of this Motion in an Order Conduct of
`
`Proceedings entered June 20, 2018. See Paper 21.
`
`In Aqua Products, Inc. v. Joseph Matal et al., Case No. 2015-1177 (Fed. Cir.
`
`Oct. 4, 2017) (en banc), the Federal Circuit held that the burden of persuasion to
`
`establish that proposed amendments are patentable no longer rests with the patent
`
`owner. Id. at 5-6. Instead, it is the petitioner’s burden to prove unpatentability of
`
`the proposed amendments. Id. In a motion to amend, a patent owner need only
`
`satisfy its burden of production under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
`
`As explained below, the proposed substitute claims satisfy the requisite
`
`showing for a motion to amend. They (1) “do not impermissibly enlarge the scope
`
`of the claims;” (2) present a “reasonable number of substitute claims;” (3) “do not
`
`introduce new subject matter;” and (4) “respond to a ground of unpatentability in
`
`the trial.” See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121. Patent Owner has thus met
`
`
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`its burden of production. Accordingly, should any of the Challenged Claims be
`
`determined to be unpatentable, Patent Owner respectfully requests that the ’813
`
`Patent be amended to include the corresponding substitute claims.
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`THE CLAIMS OF THE ’205 PATENT
`
`35 U.S.C. § 316(d)(3) and 37 C.F.R. § 41.121(a)(2)(ii) require that an
`
`amendment not “enlarge the scope of the claims of the patent . . . .” Here, the
`
`proposed substitute claims do not broaden the scope of the original claims.
`
`Substitute independent claims 27, 42, and 50 include all of the original
`
`features of original independent claims 1, 16, and 22, respectively, and further
`
`include: “the processor is further configured to generate a seed . . .” (claim 27);
`
`“data stored in the electronic ID device is subject to a mathematical operation
`
`employing the secret information . . .” (claim 42); and “generating a seed using at
`
`least two of . . .” (claim 50). Substitute claims 27 and 50 amend independent
`
`claims 1 and 24, respectively, to include substantive features found in dependent
`
`claim 10, features for which the Board indicated in its Decision instituting trial that
`
`the Petition “ha[d] not adequately shown that a person of ordinary skill in the art
`
`would have combined the teachings as asserted.” Paper 14 at 24.
`
`Substitute dependent claim 36, which indirectly depends from substitute
`
`independent claim 27, amends dependent claim 10 to remove limitations that have
`
`already been added by amendment to substitute independent claim 27. Therefore,
`
`
`
`2
`
`

`

`substitute dependent claim 36 is not broader than dependent claim 10 since any
`
`limitation removed from dependent claim 10 has been added to independent claim
`
`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`27.
`
`The remaining substitute dependent claims are substantively identical to
`
`their respective dependent claims that they propose to replace and differ only with
`
`respect to the claim numbers from which they depend and/or include antecedent
`
`basis changes necessary based on amendments to the independent claims. Thus, the
`
`proposed claims 27-52 are narrower than the original, granted versions of those
`
`claims.
`
`III. PO PROPOSES A REASONABLE NUMBER OF SUBSTITUTE
`CLAIMS
`
`35 U.S.C. § 316(d)(1)(B) and 37 CFR § 42.121(a)(3) require that, for each
`
`challenged claim, Patent Owner “propose a reasonable number of substitute
`
`claims.” There exists a “presumption . . . that only one substitute claim would be
`
`needed to replace each challenged claim.” 37 C.F.R. § 42.121(a)(3). Consistent
`
`with the aforementioned presumption, the present Motion provides only one
`
`substitute claim for each challenged claim that may be replaced.
`
`IV. THE SUBSTITUTE CLAIMS DO NOT ADD NEW SUBJECT
`MATTER
`
`The chart included in Section VI indicates where support can be found for
`
`the substitute claims from the original filing of the ’813 Patent (i.e., app. No.
`
`
`
`3
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`

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`Case No. IPR2018-00067
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`13/237,184).1 Thus, the Motion satisfies the requirement set out in 37 C.F.R. §
`
`42.121(b)(1) and (2) that substitute claims show support in the original disclosure
`
`and earlier-filed disclosures for which the benefit of priority is sought.
`
`V. THE PROPOSED SUBSTITUTE CLAIMS RESPOND TO AND
`OVERCOME THE GROUNDS OF RECORD
`
`The proposed substitute claims also “respond to a ground of unpatentability
`
`involved in the trial.” 37 C.F.R. § 42.121(a)(2). In view of Aqua Products, the
`
`burden of establishing the unpatentability of the amended claims has been placed
`
`on Petitioner. Aqua Products, slip op. at *5-6. Nevertheless, PO’s claim
`
`amendments overcome the asserted grounds of unpatentability.
`
`Substitute independent claims 27, 42, and 50 respond to grounds 1 and 3 of
`
`unpatentability set forth in the Petition for corresponding claims 1, 16, and 24.
`
`Paper 12 at 4-5. Specifically, the amendments included in substitute independent
`
`claims 27, 42, and 50 further differentiate the claims from the cited art Maes in
`
`view of Pare further in view of Labrou (ground 1), and Pizarro in view of Pare
`
`
`1 Patent Owner does not provide support found in earlier-filed disclosures to
`
`which the ’813 patent claims priority for the substitute claims filed in this Motion.
`
`However, Patent Owner reserves the right to provide support found in earlier-filed
`
`disclosures for any existing claim in the ‘813 patent or other related patent(s) in
`
`this or other proceedings before the Board or any other court or tribunal.
`
`
`
`4
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`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`(ground 3). For example, Maes alone or in combination with Pare, Labrou, and/or
`
`Burger does not disclose “generate a seed using at least two of . . . to generate the
`
`non-predictable value” (claims 27 and 50). As to this substantive limitation, the
`
`Board also stated in its analysis of claims 10 and 19 that the Petition failed to
`
`provide a reason why a person of ordinary skill in the art at the time of the
`
`invention (POSITA) would have combined Labrou with Maes. As another
`
`example, Maes alone or in combination with Pare, Labrou, and/or Burger does not
`
`disclose “data stored in the electronic ID device is subject to a mathematical
`
`operation . . . render the data legible” (claim 42). Moreover, Pizarro alone or in
`
`combination with Pare does not disclose the aforementioned limitations.
`
`Consequently, substitute claims 27, 42, and 50 are novel and nonobvious over the
`
`cited art. Dependent claims 28-41, 43-49, and 51-52 depend either directly or
`
`indirectly from their respective independent claims and thus overcome the cited art
`
`for at least the same reasons of their parent claims and for their own unique
`
`features.
`
`VI. SUPPORT FOR SUBSTITUTE CLAIMS 27-52
`
`Support for substitute claims 27-52 may be found in at least the sections in
`
`shown in the table below:
`
`
`
`
`
`
`
`5
`
`

`

`Claims
`
`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`Exemplary Support
`in the ’184
`Application
`
`Proposed Claim 27
`[[1]]27. 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, 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, 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 to communicate the encrypted
`authentication information via the communication
`interface to the secure registry; [[and]]
`wherein the processor is further configured to generate a
`seed using at least two of an electronic serial number, a
`discrete code associated with the electronic ID device, a
`PIN, a time value, and the biometric input to generate the
`encrypted authentication information, the seed being
`employed by the processor to generate the non-predictable
`
`
`
`6
`
`See, e.g., pg. 9, ln.
`23-24; pg. 18, ln. 21-
`23; FIG. 31 (352).
`
`See, e.g., pg. 63, lines
`7-9; FIG. 31 (367);
`Cl. 1.
`See, e.g., pg. 21, ln.
`21-23; FIG. 31 (364);
`Cl. 1.
`
`See, e.g., pg. 62, ln.
`26 - pg. 63, ln. 1;
`FIG. 1 (366); Cl. 1.
`See, e.g., Abstract;
`pg. 9, ln. 31 – pg. 10,
`ln. 3; pg. 65, ln. 25-
`30; pg. 67, ln. 10-16;
`pg. 72, ln. 24-26; pg.
`73, ln. 13-15.
`
`See, e.g., pg. 67, ln.
`28 – pg. 68, ln. 13;
`Cl. 12.
`
`

`

`value; and
`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.
`
`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`See, e.g., pg. 73, ln.
`1-3; Cl. 2.
`
`Proposed Claim 28
`[[2]]28. The electronic ID device of claim 27,[[1,]]
`wherein the electronic ID device comprises a discrete code
`associated with the electronic ID device.
`Proposed Claim 29
`[[3]]29. The electronic ID device of claim 27,[[1,]]
`wherein at least a portion of the biometric input received
`by the biometric sensor is communicated to the secure
`registry for authentication prior to generation of the
`encrypted authentication information.
`Proposed Claim 30
`[[4]]30. The electronic ID device of claim 27,[[1,]]
`wherein the secret information includes the identifying
`information.
`
`Proposed Claim 31
`[[5]]31. The electronic ID device of claim 27,[[1,]] further
`comprising a memory coupled to the processor, wherein
`the memory stores information employed by the electronic
`ID device to authenticate the biometric received by the
`biometric sensor.
`
`Proposed Claim 32
`[[6]]32. The electronic ID device of claim 31,[[5,]]
`wherein the electronic ID device does not permit the entry
`of the user input if the biometric input received by the
`biometric sensor is determined to not belong to an
`authorized user of the electronic ID device.
`Proposed Claim 33
`[[7]]33. The electronic ID device of claim 32,[[6,]]
`wherein the secret information known to the user includes
`the [[a ]]PIN, and wherein the authentication of both the
`secret information and the biometric input activate the
`
`See, e.g., pg. 68, ln.
`13-17.
`
`See, e.g., pg. 67, ln.
`20-25; Cl. 5.
`
`See, e.g., pg. 72, ln.
`31; Cl. 6.
`
`See, e.g., pg. 73, ln.
`8-12; Cl. 7.
`
`See, e.g., pg. 73, ln.
`10-12; Cl. 8.
`
`See, e.g., pg. 73, ln.
`13-15; Cl. 9.
`
`
`
`7
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`electronic ID device for a financial transaction.
`Proposed Claim 34
`[[8]]34. The electronic ID device of claim 33,[[7,]] further
`comprising a memory coupled to the processor, wherein
`data stored in the memory is unavailable to an individual
`in possession of the electronic ID device until the
`electronic ID device is activated.
`Proposed Claim 35
`[[9]]35. The electronic ID device of claim 34,[[8,]]
`wherein the data is subject to a mathematical operation
`that acts to modify the data such that it is unintelligible
`until the electronic ID device is activated.
`Proposed Claim 36
`[[10]]36. The electronic ID device of claim 33,[[7,]]
`further comprising a memory coupled to the processor and
`configured to store the [[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.
`Proposed Claim 37
`[[11]]37. The electronic ID device of claim 27,[[1,]]
`wherein the biometric sensor is configured to receive and
`process at least one of a fingerprint, a speech/voice input,
`an iris scan, a retina scan, a facial scan, written
`information and a DNA input.
`
`Proposed Claim 38
`[[12]]38. The electronic ID device of claim 37,[[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.
`Proposed Claim 39
`[[13]]39. The electronic ID device of claim 27,[[1,]]
`wherein the processor is configured to display indicators
`
`
`
`8
`
`See, e.g., pg. 73, ln.
`15-17; Cl. 10.
`
`See, e.g., pg. 73, ln.
`17-19; Cl. 11.
`
`See, e.g., pg. 66, ln.
`23-28; Cl. 12.
`
`See, e.g., pg. 6, ln. 2-
`7; pg. 18, ln. 26-28;
`pg. 63, ln. 7-9; Cl. 13.
`
`See, e.g., pg. 74, ln.
`3-5.
`
`See, e.g., pg. 52, ln.
`22-26; pg. 54, ln. 24 –
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`for the plurality of accounts in the user interface, and the
`user interface is configured to accept user selection of a
`respective one of the plurality of accounts.
`Proposed Claim 40
`[[14]]40. The electronic ID device of claim 27,[[1,]]
`wherein the user interface is configured to display options
`for purchase.
`
`Proposed Claim 41
`[[15]]41. The electronic ID device of claim 40,[[14,]]
`wherein the user interface is configured to accept selection
`of at least one product or service.
`Proposed Claim 42
`[[16]]42. A method of generating authentication
`information comprising acts of:
`authenticating an identity of a user to an electronic ID
`device based on at least one of biometric data received by
`the electronic ID device from the user and secret
`information known to the user and provided to the
`electronic ID device;
`activating the electronic ID device based on successful
`authentication;
`generating, responsive to activating, a non-predictable
`value with the electronic ID device;
`receiving, in a user interface, identifying information from
`the user concerning a selected one of a plurality of user
`accounts;
`generating encrypted authentication information from the
`non-predictable value, information associated with at least
`a portion of the biometric data, and the secret information;
`[[and]]
`communicating, by a communication interface, the
`encrypted authentication information from the electronic
`ID device to a secure registry via a point-of-sale (POS)
`device to authenticate the electronic ID device with the
`secure registry; and [[.]]
`wherein data stored in the electronic ID device is subject to
`a mathematical operation employing the secret information
`that acts to modify the data such that it is unintelligible
`until the electronic ID device is activated, and the
`
`pg. 55, ln. 5.
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`14.
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`14.
`
`See, e.g., pg. 73, ln.
`20-21; Cl. 15.
`See, e.g., pg. 73, ln.
`21-23; Cl. 15.
`
`See, e.g., pg. 65, ln.
`25-26.
`See, e.g., pg. 73, ln.
`23-24; Cl. 15.
`See, e.g., pg. 73, ln.
`24-25; Cl. 15.
`
`See, e.g., pg. 73, ln.
`26-27; Cl. 15.
`
`See, e.g., pg. 74, ln.
`11-13.
`
`See, e.g., pg. 66, ln.
`1-5; pg. 66, ln. 8-12;
`pg. 73, ln. 17-19; Cl.
`11.
`
`
`
`9
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`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`electronic ID device uses the secret information to reverse
`the mathematical operation and render the data legible.
`Proposed Claim 43
`[[17]]43. The method of claim 42,[[16,]] further
`comprising an act of displaying, on the user interface
`indicators for the plurality of user accounts stored in a
`memory of the electronic ID device.
`Proposed Claim 44
`[[18]]44. The method of claim 42,[[16,]] further
`comprising an act of de-activating the electronic ID device
`without generating the encrypted authentication
`information if the identity of the user is not successfully
`authenticated to the electronic ID device.
`Proposed Claim 45
`[[19]]45. The method of claim 42,[[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.
`
`Proposed Claim 46
`[[20]]46. The method of claim 42,[[16,]] further
`comprising an act of generating encrypted authentication
`information in a manner that allows the identification of
`the user and the selected one of the plurality of user
`accounts by a secure registry.
`
`Proposed Claim 47
`[[21]]47. The method of claim 42,[[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.
`
`Proposed Claim 48
`[[22]]48. The method of claim 42,[[16,]] further
`comprising displaying options for purchase on the user
`interface.
`
`Proposed Claim 49
`
`
`
`10
`
`See, e.g., pg. 52, ln.
`22-26; pg. 54, ln. 24 –
`pg. 55, ln. 5.
`
`See, e.g., pg. 74, ln.
`1-3; Cl. 17.
`
`See, e.g., pg. 67, ln.
`26 – pg. 68, ln. 9; Cl.
`18.
`
`See, e.g., pg. 74, ln.
`3-5; Cl. 19.
`
`
`
`See, e.g., pg. 74, ln.
`3-5.
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`14.
`
`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`[[23]]49. The method claim 48,[[22,]] further comprising
`selecting with the user interface at least one product or
`service for purchase.
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`14.
`
`Proposed Claim 50
`[[24]]50. A method of controlling access to a plurality of
`accounts, the method comprising acts of:
`generating, with an electronic ID device, a non-predictable
`value;
`generating, with the electronic ID device, encrypted
`authentication information from the non-predictable value
`generated by the electronic ID device, information
`associated with at least a portion of a biometric of a [[the
`]]user received by the electronic ID device, and secret
`information provided to the electronic ID device by the
`user;
`generating a seed using at least two of an electronic serial
`number, a discrete code associated with the electronic ID
`device, a PIN, a time value, and the information associated
`with at least the portion of the biometric of the user,
`wherein the seed is employed by the electronic ID device
`to generate the non-predictable value;
`communicating the encrypted authentication information
`from the electronic ID device to a secure registry via a
`point-of-sale (POS) device to authenticate or not
`authenticate the electronic ID device with the secure
`registry;
`authorizing the POS device to initiate a financial
`transaction involving a transfer of funds to or from an [[the
`]]account selected by the user when the encrypted
`authentication information is successfully authenticated;
`and
`denying the POS device from initiation of the financial
`transaction involving a transfer of funds to or from the
`account selected by the user when the encrypted
`authentication information is not successfully
`authenticated.
`
`Proposed Claim 51
`[[25]]51. The method of claim 50,[[24,]] further
`comprising displaying options for purchase on the user
`
`See, e.g., pg. 74, ln.
`6-7.
`See, e.g., pg. 74, ln.
`7-8.
`See, e.g., pg. 74, ln.
`7-11.
`
`See, e.g., pg. 67, ln.
`28 – pg. 68, ln. 9.
`
`See, e.g., pg. 74, ln.
`11-13.
`
`See, e.g., pg. 74, ln.
`13-16.
`
`See, e.g., pg. 74, ln.
`16-18.
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`
`
`
`11
`
`

`

`interface.
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`14.
`
`Proposed Claim 52
`[[26]]52. The method claim 51,[[25,]] further comprising
`selecting with the user interface at least one product or
`service for purchase.
`
`
`See, e.g., pg. 65, ln.
`16-24; pg. 71, ln. 9-
`14.
`
`VII. CONCLUSION
`
`Accordingly, should any of claims 1-3 and 5-26 be determined to be
`
`unpatentable, PO respectfully requests that the Board grant this contingent motion
`
`such that the ’813 Patent be amended to include the substitute claim(s) 1-26.
`
`
`
`Date: August 24, 2018
`
` Respectfully submitted,
`
`
`By: /s/ James M. Glass, Reg. No. 46,729
`
` James M. Glass (Reg. No. 46,729)
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`
`Email: jimglass@quinnemanuel.com
`
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`
`
`12
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`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`APPENDIX A
`
`CLAIM LISTING
`
`
`27. (Proposed Substitute for Claim 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 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,
`
`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, 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 to communicate the
`
`encrypted authentication information via the communication interface to the secure
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`registry; [[and]]
`
`wherein the processor is further configured to generate a seed using at least
`
`two of an electronic serial number, a discrete code associated with the electronic
`
`ID device, a PIN, a time value, and the biometric input to generate the encrypted
`
`authentication information, the seed being employed by the processor to generate
`
`the non-predictable value; and
`
`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.
`
`
`
`28. (Proposed Substitute for Claim 2) The electronic ID device of claim 27,[[1,]]
`
`wherein the electronic ID device comprises a discrete code associated with the
`
`electronic ID device.
`
`
`
`29. (Proposed Substitute for Claim 3) The electronic ID device of claim 27,[[1,]]
`
`wherein at least a portion of the biometric input received by the biometric sensor is
`
`communicated to the secure registry for authentication prior to generation of the
`
`
`
`ii
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`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`encrypted authentication information.
`
`
`
`30. (Proposed Substitute for Claim 4) The electronic ID device of claim 27,[[1,]]
`
`wherein the secret information includes the identifying information.
`
`
`
`31. (Proposed Substitute for Claim 5) The electronic ID device of claim 27,[[1,]]
`
`further comprising a memory coupled to the processor, wherein the memory stores
`
`information employed by the electronic ID device to authenticate the biometric
`
`received by the biometric sensor.
`
`
`
`32. (Proposed Substitute for Claim 6) The electronic ID device of claim 31,[[5,]]
`
`wherein the electronic ID device does not permit the entry of the user input if the
`
`biometric input received by the biometric sensor is determined to not belong to an
`
`authorized user of the electronic ID device.
`
`
`
`33. (Proposed Substitute for Claim 7) The electronic ID device of claim 32,[[6,]]
`
`wherein the secret information known to the user includes the [[a ]]PIN, and
`
`wherein the authentication of both the secret information and the biometric input
`
`activate the electronic ID device for a financial transaction.
`
`
`
`
`
`iii
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`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`34. (Proposed Substitute for Claim 8) The electronic ID device of claim 33,[[7,]]
`
`further comprising a memory coupled to the processor, wherein data stored in the
`
`memory is unavailable to an individual in possession of the electronic ID device
`
`until the electronic ID device is activated.
`
`
`
`35. (Proposed Substitute for Claim 9) The electronic ID device of claim 34,[[8,]]
`
`wherein the data is subject to a mathematical operation that acts to modify the data
`
`such that it is unintelligible until the electronic ID device is activated.
`
`
`
`36. (Proposed Substitute for Claim 10) The electronic ID device of claim 33,[[7,]]
`
`further comprising a memory coupled to the processor and configured to store the
`
`[[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.
`
`
`
`37. (Proposed Substitute for Claim 11) The electronic ID device of claim 27,[[1,]]
`
`wherein the biometric sensor is configured to receive and process at least one of a
`
`
`
`iv
`
`

`

`fingerprint, a speech/voice input, an iris scan, a retina scan, a facial scan, written
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`
`information and a DNA input.
`
`
`
`38. (Proposed Substitute for Claim 12) The electronic ID device of claim 37,[[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.
`
`
`
`39. (Proposed Substitute for Claim 13) The electronic ID device of claim 27,[[1,]]
`
`wherein the processor is configured to display indicators for the plurality of
`
`accounts in the user interface, and the user interface is configured to accept user
`
`selection of a respective one of the plurality of accounts.
`
`
`
`40. (Proposed Substitute for Claim 14) The electronic ID device of claim 27,[[1,]]
`
`wherein the user interface is configured to display options for purchase.
`
`
`
`41. (Proposed Substitute for Claim 15) The electronic ID device of claim 40,[[14,]]
`
`wherein the user interface is configured to accept selection of at least one product
`
`or service.
`
`
`
`v
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`

`

`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`
`
`42. (Proposed Substitute for Claim 16) A method of generating authentication
`
`information comprising acts of:
`
`authenticating an identity of a user to an electronic ID device based on at
`
`least one of biometric data received by the electronic ID device from the user and
`
`secret information known to the user and provided to the electronic ID device;
`
`activating the electronic ID device based on successful authentication;
`
`generating, responsive to activating, a non-predictable value with the
`
`electronic ID device;
`
`receiving, in a user interface, identifying information from the user
`
`concerning a selected one of a plurality of user accounts;
`
`generating encrypted authentication information from the non-predictable
`
`value, information associated with at least a portion of the biometric data, and the
`
`secret information; [[and]]
`
`communicating, by a communication interface, the encrypted authentication
`
`information from the electronic ID device to a secure registry via a point-of-sale
`
`(POS) device to authenticate the electronic ID device with the secure registry; and
`
`[[.]]
`
`wherein data stored in th