UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`
`Patent Owner.
`
`_________________________________________
`
`Case IPR2018-00809
`
`U.S. Patent No. 9,530,137
`
`_________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP
`
`IN SUPPORT OF PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S CONDITIONAL MOTION TO AMEND
`
`Apple 1129
`Apple v. USR
`IPR2018-00809
`
`

`

`Table of Contents
`
`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`Page
`
`I.
`II.
`
`2.
`
`INTRODUCTION ...........................................................................................1
`LEGAL PRINCIPLES.....................................................................................2
`A.
`Claim Construction................................................................................2
`B.
`Obviousness...........................................................................................3
`C. Written Description...............................................................................5
`D.
`Enablement............................................................................................6
`E.
`Indefiniteness.........................................................................................6
`F.
`Subject Matter Eligibility......................................................................7
`III. OPINIONS.......................................................................................................8
`A.
`The Substitute Claims 13-21 Are Ineligible Under 35 U.S.C. § 101....9
`1.
`Alice Step 1: The Substitute Claims Are Directed to the
`Abstract Idea Of Verifying an Account Holder’s Identity Based
`On Codes And/Or Information Related to an Account Holder
`Before Enabling a Transaction..................................................11
`Alice Step 2: The Remaining Limitations Of The Substitute
`Claims Add Nothing Inventive To The Abstract Idea..............14
`Substitute Claims 13-14 and 19-21 Are Obvious Over Jakobsson In
`View Of Maritzen & Schutzer. ...........................................................16
`1.
`Substitute Claims 13 and 21 .....................................................16
`2.
`Substitute Claims 14 and 19 .....................................................20
`3.
`Substitute Claim 18...................................................................20
`The Substitute Claims Do Not Satisfy § 112. .....................................24
`1.
`Limitations 13[e] and 21[f] Lack Written Description Support.
`...................................................................................................25
`Limitation 17[a] Lacks Written Description Support...............26
`2.
`IV. CONCLUSION..............................................................................................27
`V. AVAILABILITY FOR CROSS-EXAMINATION ......................................27
`VI. RIGHT TO SUPPLEMENT..........................................................................28
`VII. JURAT...........................................................................................................28
`
`B.
`
`C.
`
`i
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`I, Victor Shoup, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Apple to provide opinions in this proceeding
`
`relating to Universal Secure Registry’s (“USR” or “Patent Owner”) Conditional
`
`Motion to Amend (“CMTA”) the claims of U.S. Patent No. 9,530,137 (“’137
`
`patent”). I previously prepared and submitted a Declaration in support of the
`
`Petition in this proceeding, dated April 4, 2018.
`
`2.
`
`Since preparing my previous Declaration, I have reviewed the
`
`following additional materials in connection with this Supplemental Declaration:
`
`(cid:120) USR’s Patent Owner’s Preliminary Response (“POPR”)
`
`(cid:120) Dr. Jakobsson’s declaration submitted in Support of USR’s POPR (Ex.
`
`2001)
`
`(cid:120) The Board’s Decision on Institution (“DOI”)
`
`(cid:120) USR’s Patent Owner Response (“POR”)
`
`(cid:120) Dr. Jakobsson’s Declaration in support of USR’s POR (Ex. 2010)
`
`(cid:120) USR’s CMTA
`
`(cid:120) Dr. Jakobsson’s Declaration in support of USR’s CMTA (Ex. 2014)
`
`(cid:120) The transcript of Dr. Jakobsson’s March 20, 2019 deposition (Ex. 1127)
`
`(cid:120) Declaration of Dr. Juels (Ex. 1130)
`
`(cid:120) USR’s CMTA for IPR2018-00812
`
`1
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`My background and qualifications are summarized in Section I of my
`
`3.
`
`previous Declaration and my curriculum vitae, which was attached thereto as
`
`Appendix A.
`
`4.
`
`I am being compensated at my normal consulting rate for my work.
`
`My compensation is not dependent on the outcome of this IPR proceeding or the
`
`related litigation, and does not affect the substance of my statements in this
`
`Supplemental Declaration.
`
`5.
`
`I have no financial interest in Petitioner. I have no financial interest in
`
`the ’137 patent.
`
`II.
`
`LEGAL PRINCIPLES
`
`6.
`
`I am not an attorney. For purposes of this Supplemental Declaration, I
`
`have been informed about certain aspects of the law that are relevant to my
`
`analysis and opinions.
`
`A.
`
`7.
`
`Claim Construction
`
`I have been informed that claim construction is a matter of law and
`
`that the final claim construction will be determined by the Board.
`
`8.
`
`I have been informed that the claim terms in an IPR review should be
`
`given their broadest reasonable construction in light of the specification as
`
`commonly understood by a person of ordinary skill in the art (“POSITA”). I have
`
`applied this standard in my analysis.
`
`2
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`B.
`
`9.
`
`Obviousness
`
`I have been informed and understand that a patent claim can be
`
`considered to have been obvious to a POSITA at the time the application was filed.
`
`I understand that this means that, even if all the requirements of a claim are not
`
`found in a single prior art reference, the claim is not patentable if the differences
`
`between the subject matter in the prior art and the subject matter in the claim
`
`would have been obvious to a POSITA at the time the application was filed.
`
`10.
`
`I have been informed and understand that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`(cid:120) the level of ordinary skill in the art at the time the application was
`
`filed;
`
`(cid:120) the scope and content of the prior art; and
`
`(cid:120) what differences, if any, existed between the claimed invention and
`
`the prior art.
`
`11.
`
`I have been informed and understand that the teachings of two or
`
`more references may be combined in the same way as disclosed in the claims, if
`
`such a combination would have been obvious to a POSITA. In determining
`
`whether a combination based on either a single reference or multiple references
`
`would have been obvious, it is appropriate to consider, among other factors:
`
`3
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`(cid:120) whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
`(cid:120) whether a POSITA could implement a predictable variation, and
`
`would see the benefit of doing so;
`
`(cid:120) whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
`(cid:120) whether a POSITA would have recognized a reason to combine
`
`known elements in the manner described in the claim;
`
`(cid:120) whether the proposed modification would have a reasonable
`
`expectation of success by those skilled in the art;
`
`(cid:120) whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent;
`
`and
`
`(cid:120) whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`12.
`
`I have been informed and understand that a POSITA has ordinary
`
`creativity, and is not an automaton.
`
`13.
`
`I have been informed and understand that in considering obviousness,
`
`4
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered.
`
`14.
`
`I have also been informed that objective evidence can also be relevant
`
`to the question of obviousness. I understand that such evidence, which is
`
`sometimes referred to as “secondary considerations,” can include evidence of
`
`commercial success, long-felt but unsolved needs, failure of others, copying by
`
`others, and unexpected results. I also understand that when considering the
`
`strength of secondary considerations, weight is not given unless a nexus is
`
`established between the rebuttal evidence and the claimed invention. In other
`
`words, secondary considerations only carry weight when the secondary
`
`considerations are attributable to the claimed invention.
`
`C. Written Description
`
`15.
`
`I have been informed that a patent must satisfy the written description
`
`requirement separate from any enablement requirement. I understand that a patent
`
`owner seeking to amend the claims in an Inter Partes Review (“IPR”) proceeding
`
`must show that the substitute claims are supported by the specification.
`
`16.
`
`To satisfy the written description requirement under § 112, I
`
`understand that the patent’s description must describe the claimed invention in
`
`sufficient detail that a POSITA can reasonably conclude that the inventor had
`
`possession of the claimed invention. I understand that the breadth of the claims
`
`5
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`determines the extent of the required disclosure. I understand that the written
`
`description must be commensurate with the scope of the claims. In other words, I
`
`understand that the test is whether the disclosure of the application reasonably
`
`conveys to those skilled in the art that the inventor had possession of the claimed
`
`subject matter as of the filing date, which I have been informed to assume is
`
`February 21, 2006 for this proceeding. I understand that new matter is matter not
`
`supported by the disclosure.
`
`D.
`
`17.
`
`Enablement
`
`I have been informed that a patent must satisfy the enablement
`
`requirement separate from any written description requirement.
`
`18.
`
`To satisfy the enablement requirement, the patent’s description must
`
`describe the invention such that one skilled in the art is enabled to make and use it
`
`without undue or unreasonable experimentation. I understand that certain factors
`
`are relevant, including the breadth of the claims, the nature of the invention, the
`
`state of the prior art, the level of one of ordinary skill, the level of predictability in
`
`the art, the amount of direction provided by the inventor, the existence of working
`
`examples, and the quantity of experimentation needed to make or use the invention
`
`based on the content of the disclosure.
`
`E.
`
`19.
`
`Indefiniteness
`
`I have been informed that a patent claims must be definite.
`
`6
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`To be definite, I understand that patent claims must particularly point
`
`20.
`
`out and distinctly claim the subject matter that the patentee regards as his or her
`
`invention. Definite claims definite claims clearly and precisely inform persons of
`
`ordinary skilled in the art of the boundaries of protected subject matter. I
`
`understand that determining if a claim is definite requires a determination of
`
`whether those skilled in the art would understand what is claimed when the claim
`
`is read in light of the specification.
`
`F.
`
`21.
`
`Subject Matter Eligibility
`
`I have been informed that laws of nature, abstract ideas, and natural
`
`phenomena are not patent eligible.
`
`22.
`
`I have been informed that an application of an abstract idea, such as a
`
`mathematical formula, may be patent eligible if the patent claims add significantly
`
`more than routine, conventional activity to the underlying concept.
`
`23.
`
`I have been informed that an important and useful clue to patent
`
`eligibility is whether a claim is tied to a particular machine or apparatus or
`
`transforms a particular article into a different state or thing, according to the so-
`
`called machine-or-transformation test. I have been informed that the machine-or-
`
`transformation test is not the only test for patent eligibility.
`
`24.
`
`I have been informed that the Supreme Court’s decision in the Alice
`
`Corp. case in 2014 articulates a two-step framework for distinguishing patents that
`
`7
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`claim ineligible abstract ideas from those that claim eligible applications of those
`
`ideas. In step one, the court must determine whether the claims at issue are
`
`directed to a patent-ineligible abstract concept. If the claim is directed to an
`
`abstract idea, the analysis proceeds to step two. In step two, I understand that the
`
`elements of the claim must be searched, both individually and as an ordered
`
`combination, for an inventive concept—i.e., an element or combination of
`
`elements that is sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself. I am informed
`
`that a patentee cannot circumvent the prohibition on patenting abstract ideas by
`
`limiting the idea to a particular technological environment, nor by adding
`
`insignificant postsolution activity, or well-understood, routine, conventional
`
`features.
`
`III. OPINIONS
`
`25. USR’s CMTA introduces subject matter that I have already addressed
`
`in my previous Declaration. As I show in the chart below, substitute limitations
`
`13[c], 13[e], 21[d], and 21[f] are virtually identical to claims 8 and 11, which I
`
`believe are unpatentable. I have been informed that USR has disclaimed claims 8
`
`and 11. However, my analysis of claims 8 and 11 in my previous Declaration is
`
`applicable to these substitute limitations, as well as other substitute limitations
`
`requiring financial, credit card, and/or debit card transactions.
`
`8
`
`

`

`Original ’137 Claims
`8. “The system of claim
`1, wherein the first
`authentication
`information includes a
`multidigit public ID code
`for a credit card account,
`which a credit card issuer
`can map to a usable
`credit card number.”
`
`11. “. . . the second
`device that is a
`networked credit card
`validation-information
`entity configured to
`approve or deny financial
`transactions based on
`authentication of the
`user.”
`
`Proposed Claim 13
`13[c] “. . . the first
`authentication
`information including a
`multi-digit identification
`(ID) code allowing a
`networked validation-
`information entity to map
`the multi-digit ID code to
`a credit and/or debit card
`number . . .”
`13[e] “. . . the second
`device being the
`networked validation-
`information entity
`configured to enable the
`credit and/or debit card
`transaction based on
`authentication of the user
`. . .”
`
`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`Proposed Claim 21
`21[d] “. . . the first
`authentication information
`including a multi-digit
`identification (ID) code
`allowing a networked
`validation-information
`entity to map the multi-
`digit ID code to a financial
`account number . . .”
`
`21[f] “. . . the second
`device being the networked
`validation-information
`entity configured to enable
`the financial transaction
`based on
`authentication of the user .
`. .”
`
`A.
`
`26.
`
`The Substitute Claims 13-21 Are Ineligible Under 35 U.S.C. § 101.
`
`The substitute claims recite ineligible subject matter under 35 U.S.C.
`
`§ 101. I have been informed that IPR petitions are restricted to anticipation and
`
`obviousness, but when a patent owner moves to amend during an instituted IPR,
`
`the substitute claims must satisfy all conditions for patentability, including § 101. I
`
`understand that Petitioner has already challenged eligibility of the unamended
`
`claims under § 101 in CBM2018-00022, and I have already submitted a declaration
`
`explaining why the unamended claims are unpatentable under § 101 in that
`
`proceeding. For at least the reasons documented in my declaration in that
`
`9
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`proceeding, and further below, the substitute claims are also ineligible under § 101.
`
`27.
`
`I have been informed that in Alice Corp. Pty. v. CLS Bank Int’l, the
`
`Supreme Court invalidated claims directed toward computer-based schemes to
`
`manage settlement risk in financial transactions. I understand that the Court
`
`confirmed that, in light of the ubiquity of computers, limiting a claim covering an
`
`abstract concept to a wholly generic computer implementation is insufficient to
`
`transform the idea into a patent-eligible invention.
`
`28.
`
`I have been informed that when applying the Alice two-step
`
`framework for distinguishing patents that claim ineligible abstract ideas from those
`
`that claim eligible applications of those ideas, the Board, in step one, must
`
`determine whether the claims at issue are directed to a patent-ineligible abstract
`
`concept. I understand that if the claim is directed to an abstract idea, the analysis
`
`proceeds to step two wherein the elements of the claim must be searched, both
`
`individually and as an ordered combination, for an inventive concept—i.e., an
`
`element or combination of elements that is sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent upon the ineligible concept
`
`itself. I also understand that a patentee cannot circumvent the prohibition on
`
`patenting abstract ideas by limiting the idea to a particular technological
`
`environment, or by adding insignificant postsolution activity or well-understood,
`
`routine, conventional features. I have been informed that the mere recitation of a
`
`10
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`generic computer cannot transform a patent-ineligible abstract idea into a patent-
`
`eligible invention.
`
`Alice Step 1: The Substitute Claims Are Directed to the
`1.
`Abstract Idea Of Verifying an Account Holder’s Identity Based
`On Codes And/Or Information Related to an Account Holder
`Before Enabling a Transaction.
`
`29.
`
`The substitute claims fail the first step of Alice because the claims are
`
`directed to the abstract idea of verifying an account holder’s identity based on
`
`codes and/or information related to the account holder before enabling a
`
`transaction. USR’s expert, Dr. Jakobsson, agrees that “[t]he ’137 patent is
`
`generally directed to the idea of verifying an account holder’s identity to enable a
`
`transaction based on codes or information related to an account holder.” Ex-1127,
`
`Jakobsson Dep., 92:14-20. For example, substitute claim 21 recites in its
`
`preamble “a system for authenticating a user for enabling a financial transaction.”
`
`Although claim 21 is limited to a computer system and financial transactions, the
`
`underlying problem that the claim purports to solve is age old: “authenticating
`
`identity or verifying the identity of individuals and other entities seeking access to
`
`certain privileges.” ’137 patent, 1:45-48. I understand that limiting this pre-
`
`Internet problem to using a computer database, generic encryption techniques, and
`
`known authentication values does not confer patent eligibility.
`
`30.
`
`The claimed verification system is also directed to an abstract concept
`
`for the additional reason that the claim recites nothing more than a mental process,
`
`11
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`which I understand is also patent ineligible. For example, a user seeking access to
`
`a private account could arrive at a bank and present a dynamic passcode. The bank
`
`teller would then compare the received passcode to information in a spreadsheet
`
`containing an entry for the account holder. If the received code matches the
`
`expected code in the spreadsheet, access is granted. The account holder could also
`
`give the teller a code that is different from his or her account number from which
`
`the teller could identify the correct account number. As a result, the identity
`
`verification system of claim 21 is drawn to an unpatentable abstract idea.
`
`31.
`
`The patent specification also fails to meaningfully limit the abstract
`
`idea to specific hardware or software and instead emphasizes the broad and generic
`
`nature of components and systems in which the invention can be implemented.
`
`Ex-1001, ’137 patent, 11:45-46 (“[t]he computer system may be a general purpose
`
`computer system”), 12:1-3 (“the database may be any kind of database”), 12:34-36
`
`(“It also should be understood that the invention is not limited to a particular
`
`computer platform, particular processor, or particular high-level programming
`
`language”), 12:67-13:2 (“[c]ommunication between the interface centers 27 and
`
`the computer 10 system may take place according to any protocol…”). The
`
`specification merely recites generic computer components.
`
`32.
`
`For the foregoing reasons, substitute claim 21 is directed to an
`
`unpatentable abstract idea. The remaining substitute independent and dependent
`
`12
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`claims all claim the same abstract idea, and only recite varied permutations of post-
`
`solution, generic, and well-known encryption, security, biometric, and
`
`authentication techniques that existed in the prior art. In fact, Dr. Jakobsson
`
`admits that these additional encryption and authentication techniques were well
`
`known in the prior art. See, e.g., Ex-1127, Jakobsson Dep., 30:16-34:24 (admitting
`
`that prior art discloses time-varying codes, encrypting messages between devices
`
`including authentication information, such as a credit card or account number or
`
`biometric information, authenticating a user based on encrypted messages, public
`
`key cryptography), 36:10-12 (admitting that prior art discloses key encryption
`
`keys), 44:10-12, 46:2-5, and 56:20-24 (admitting that prior art discloses hybrid
`
`cryptosystems), 76:11-77:19 (admitting that prior art discloses digital signatures),
`
`95:3-5 (admitting that prior art discloses PIN-based authentication), 95:19-96:18
`
`(admitting that prior art discloses biometric authentication), 96:23-98:15 (admitting
`
`that prior art discloses PIN and biometric authentication together), 98:22-99:18
`
`(admitting that prior art discloses local authentication), 99:19-101:7 (admitting that
`
`prior art discloses remote authentication), 101:2-7 (admitting that prior art
`
`discloses combined local and remote authentication), 161:14-63:12 (admitting that
`
`prior art discloses encryption and decryption, symmetric and asymmetric
`
`encryption, public key encryption), 198:2-4 (admitting that prior art discloses
`
`fingerprint sensors capturing biometric information). Thus, these remaining claims
`
`13
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`are similarly abstract under the Alice test step 1.
`
`Alice Step 2: The Remaining Limitations Of The Substitute
`2.
`Claims Add Nothing Inventive To The Abstract Idea.
`
`33.
`
`The substitute claims also fail the second step of the Alice test. The
`
`substitute claims take the abstract idea of verifying an account holder’s identity
`
`based on codes and/or information related to the account holder before enabling a
`
`transaction and add nothing but the instruction to automate the process using
`
`conventional, generic computer hardware. As I described above, all substitute
`
`claims are directed to systems using generic hardware and database software that
`
`was well known at the time of filing. Indeed, the written description emphasizes
`
`that the claimed invention can be implemented in “a general purpose computer
`
`system” and is “not limited to a particular computer platform, particular processor,
`
`or . . . high-level programming language.” ’137 patent, 11:45-48, 12:34-39; see
`
`also id., 12:47-60. Furthermore, Dr. Jakobsson admits there is nothing inventive in
`
`the algorithms, software, components, or arrangement of components disclosed in
`
`the ’137 patent:
`
`Q: The ’137 and ’826 patents don’t propose any new encryption
`algorithm, correct?
`
`A: That is correct.
`
`Q: The ’137 and ’826 patents don’t disclose any new computer or
`computer components to perform encryption, correct?
`
`A: That’s also true.
`
`14
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`
`Q: The ’137 and ’826 patents don’t disclose any new software to
`perform encryption, correct?
`
`A: That is correct.
`A. Sorry. That’s correct.
`
`Q: The ’137 and ’826 patents don’t disclose any new arrangement of
`components to perform encryption, correct?
`
`A: That is correct.
`
`Ex-1127, Jakobsson Dep., 161:20-162:131; see also id. at 30:16-34:24, 36:10-12,
`
`44:10-12, 46:2-5, 56:20-24, 76:11-77:19, 95:3-5, 95:19-96:18, 96:23-98:15, 98:22-
`
`99:18, 99:19-101:7, 101:2-7, 161:14-63:12, 198:2-4. These general-purpose
`
`elements are neither inventive nor do they add significantly more than the abstract
`
`idea of verification, as Alice requires.2
`
`34.
`
`The limitations of each claim, considered separately and as an ordered
`
`combination, do not meaningfully limit the scope of the underlying abstract idea to
`
`which the claims are directed.
`
`35. None of the substitute claims changes the character of the invention,
`
`1 Objections omitted unless otherwise indicated.
`
`2 The claims would similarly fail under the machine or transformation test
`
`because the claims do not cover any particular machine and do not transform any
`
`article from one state to another.
`
`15
`
`

`

`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`but rather all merely claim different permutations of an identity verification
`
`system. I understand that limiting an abstract idea to one field of use or adding
`
`token post-solution components does not make the concept patentable.
`
`Accordingly, like the original claims which I discussed in my Declaration for the -
`
`022 proceedings, USR’s substitute claims also fail at Alice step 2. Therefore, the
`
`substitute claims are not drawn to patent eligible subject matter.
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`B.
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`Substitute Claims 13-14 and 19-21 Are Obvious Over Jakobsson
`In View Of Maritzen & Schutzer.
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`1.
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`Substitute Claims 13 and 21
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`a)
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`Limitations 13[c], 13[e], 21[d], and 21[f]
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`36. As I discussed above and in my previous Declaration, claims 8 and
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`11, which depended from claim 1, are obvious over Jakobsson, Maritzen, and
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`Schutzer. See Petition, Paper No. 3, 63-65, 69-71; Ex-1102, Shoup-Decl., ¶¶166-
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`168, 175-179. Substitute limitations 13[c], 13[e], 21[d], and 21[f] add similar
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`limitations to claims 1 and 12, and are obvious for at least the same reasons claims
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`8 and 11 are obvious. It would have been obvious to combine Jakobsson,
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`16
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`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`Maritzen, and Schutzer for at least the same reasons discussed in my previous
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`Declaration. See Ex-1102, Shoup-Decl., ¶¶169-174, 180-181.
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`37.
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`Substitute limitation 13[c] further adds that the one or more signals
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`recited in claim 1 “ha[s] at least three separable fields.” Jakobsson also discloses
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`this limitation.
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`38.
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`In the Decision Granting Institution, the Board found “Jakobsson’s
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`‘event state (E)’ to correspond to the claimed indicator of biometric
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`authentication[,] . . . Jakobsson’s ‘dynamic[, time-varying] value (T)’ to
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`correspond to the claimed time varying value[, and] . . . the remainder of
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`Jakobsson’s authentication code, comprising the ‘user data value (P)’ and ‘secret
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`(K)’ to correspond with the claimed first authentication information.” Decision,
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`Paper No. 9, 11. The Board further found that Jakobsson “discloses a variety of
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`implementations in which the function may combine certain values at one stage
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`and then combine the resulting authentication code with further values to result in
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`another authentication code” and “Jakobsson’s combination of values may occur in
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`any sequence; the end result is an ‘authentication code’ that includes multiple types
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`of information.” Id.
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`39.
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`For example, Jakobsson teaches that combination function 230 can
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`generate an authentication code 292 (another authentication code) by “prepending
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`or appending the PIN (P) to A (K, T, E).” Ex-1113, Jakobsson, ¶73. A POSITA
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`17
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`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`would have understood that the event state (E), the dynamic value (T), and the user
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`data value (P) could be combined using any of the disclosed combination
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`techniques, including prepending or appending. Id. at 63, 73; see also id. at ¶15
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`(disclosing that particular bits can be dedicated to “reporting the occurrence of an
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`event,” which a POSITA would understand would be separated out by the verifier
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`to obtain the information from those bits). A POSITA also would have understood
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`that an authentication code including prepended or appended elements would be
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`capable of being separated by a device receiving the combined authentication code.
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`Accordingly, it would have been obvious to a POSITA to append the event state
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`(E), the dynamic value (T), and the user data value (P) to form the combined
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`authentication code of Jakobsson such that they would be separable to from one
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`another.
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`40. A POSITA would have been motivated to do so because such a
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`combination of the values of Jakobsson would be a combination of prior art
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`elements (the “event state (E),” the “dynamic value (T),” and the “user data value
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`(P)”) according to known methods (appending or prepending combination 230 of
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`Jakobsson) to yield predictable results (a combined authentication code that can be
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`used to securely authenticate the user of an authentication device).
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`41.
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`Jakobsson also explicitly teaches, suggests, and motivates selecting
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`different inputs and combination functions: “It should be understood that the
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`18
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`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`manner of combination and the input provided to the combination function 230
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`could vary from these examples.” Ex-1114, Jakobsson, ¶63; see also id. at 15 (“In
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`one embodiment, the occurrence of an event is communicated explicitly in the
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`authentication code. For example, one or more bits included in the authentication
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`code can be dedicated to reporting the occurrence of an event, i.e., reporting the
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`event state (and herein we refer to event state data as data representing,
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`communicating, or derived from the event state) where the event state is
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`information about the state of a device with respect to the occurrence or non-
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`occurrence of event(s)”), 73 (“Of course, it should be understood that the
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`combination can include as variations other values or processing.”). Thus, it would
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`have obvious to try the prepending or appending combination function of
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`Jakobsson as one of a finite number of Jakobsson’s identified and predictable
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`combination functions. A POSITA would have had a reasonable expectation of
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`success in prepending or appending the event state (E), the dynamic value (T), and
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`the user data value (P) because Jakobsson explicitly contemplates varying the
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`combination functions and the results of such variation would have been
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`foreseeable.
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`b)
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`Limitations 13[pre], 13[g], 13[h], 21[pre], 21[h], 21[i]
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`42.
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`Substitute limitations 13[pre], 13[g], and 13[h] are amended to recite a
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`“credit and/or debit card transaction.” Substitute limitations 21[pre], 21[h], and
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`19
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`U.S. Patent No. 9,530,137
`Declaration of Dr. Shoup
`21[i] are amended to recite “financial transaction.” As I discussed above,
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`Jakobsson in view of Maritzen and Schutzer disclose the limitations 13[c], 13[e],
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`21[d], and 21[f], which include enabling a “credit and/or debit card transaction” or
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`a “financial transaction.” See supra, Section III.B.1.(a). Accordingly, limitations
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`13[pre], 13[g], 13[h], 21[pre], 21[h], and 21[i] are obvious over Jakobsson in view
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`of Maritzen and Schutzer for at least the same reasons. See id.
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`2.
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`Substitute Claims 14 and 19
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`43. As discussed in my previous Declaration, claims 2 and 7, which
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`correspond to substitute claims 14 and 19, are obvious over Jakobsson in view of
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`Maritzen. See Ex-1102, Shoup-Decl., ¶¶102-105, 113-115. Substitute claims 14
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`and 19 add similar limitations to original claims 2 and 7, and are obvious for at
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`least the same reasons claims 2, 7, 8, and 11 are obvious.
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`3.
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`Substitute Claim 18
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`44. As discussed in my previous Declaration, claim 6, which corresponds
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`to su