IPR2018-00809
`
`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
`
`US. Patent No. 9,530,137
`
`PATENT OWNER’S EXHIBIT 2021
`
`DECLARATION OF MARKUS JAKOBSSON
`
`IN SUPPORT OF PATENT OWNER’S REPLY TO CONDITIONAL
`
`MOTION TO AMEND
`
`Apple 1 137
`
`Apple V. USR
`IPR2018-00809
`
`USR Exhibit 2021
`
`
`
`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
`
`US. Patent No. 9,530,137
`
`PATENT OWNER’S EXHIBIT 2021
`
`DECLARATION OF MARKUS JAKOBSSON
`
`IN SUPPORT OF PATENT OWNER’S REPLY TO CONDITIONAL
`
`MOTION TO AMEND
`
`Apple 1 137
`
`Apple V. USR
`IPR2018-00809
`
`USR Exhibit 2021
`
`
`
`IPR2018-00809
`
`l.
`
`I have been retained on behalf of Universal Secure Registry LLC
`
`(“Patent Owner”) in connection with the above-captioned inter partes review
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`(IPR). I have been retained to provide my opinions in support of USR’s Reply to
`
`its Conditional Motion to Amend. I am being compensated for my time at the rate
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`of $625 per hour. I have no interest in the outcome of this proceeding.
`
`2.
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`In preparing this declaration, I have reviewed and am familiar with the
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`Petition for IPR2018-00809, US. Patent No. 9,530,137 (hereinafter “the ’137
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`Patent”), and its file history, and all other materials cited and discussed in the
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`Petition (including all prior art references cited therein) and all other materials
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`cited and discussed in this Declaration.
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`3.
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`The statements made herein are based on my own knowledge and
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`opinion. This Declaration represents only the opinions I have formed to date. I may
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`consider additional documents as they become available or other documents that
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`are necessary to form my opinions. I reserve the right to revise, supplement, or
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`amend my opinions based on new information and on my continuing analysis.
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`I.
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`g QUALIFICATIONS
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`4.
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`My qualifications can be found in my Curriculum Vitae, which
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`includes my detailed employment background, professional experience, and list of
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`technical publications and patents. Ex. 2002.
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`USR Exhibit 2021, Page 1
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`IPR2018-00809
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`5.
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`I am currently the Chief of Security and Data Analytics at Amber
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`Solutions, Inc., a cybersecurity company that develops home and office automation
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`technology. At Amber, my research studies and addresses abuse, including social
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`engineering, malware and privacy intrusions. My work primarily involves
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`identifying risks, developing protocols and user experiences, and evaluating the
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`security of proposed approaches.
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`6.
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`I received a Master of Science degree in Computer Engineering from
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`the Lund Instituted of Technology in Sweden in 1993, a Master of Science degree
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`in Computer Science from the University of California at San Diego in 1994, and a
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`Ph.D. in Computer Science from the University of California at San Diego in 1997,
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`specializing in Cryptography. During and after my Ph.D. studies, I was also a
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`Researcher at the San Diego Supercomputer Center, where I did research on
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`authentication and privacy.
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`7.
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`From 1997 to 2001, I was a Member of Technical Staff at Bell Labs,
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`where I did research on authentication, privacy, multi-party computation, contract
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`exchange, digital commerce including crypto payments, and fraud detection and
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`prevention. From 2001 to 2004, I was a Principal Research Scientist at RSA Labs,
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`where I worked on predicting future fraud scenarios in commerce and
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`authentication and developed solutions to those problems. During that time I
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`predicted the rise of what later became known as phishing. I was also an Adjunct
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`USR Exhibit 2021, Page 2
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`
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`IPR2018-00809
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`Associate Professor in the Computer Science department at New York University
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`from 2002 to 2004, where I taught cryptographic protocols.
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`8.
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`From 2004 to 2016, I held a faculty position at the Indiana University
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`at Bloomington, first as an Associate Professor of Computer Science, Associate
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`Professor of Informatics, Associate Professor of Cognitive Science, and Associate
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`Director of the Center for Applied Cybersecurity Research (CACR) from 2004 to
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`2008; and then as an Adjunct Associate Professor from 2008 to 2016. I was the
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`most senior security researcher at Indiana University, where I built a research
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`group focused on online fraud and countermeasures, resulting in over 50
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`publications and two books.
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`9. While a professor at Indiana University, I was also employed by
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`Xerox PARC, PayPal, and Qualcomm to provide thought leadership to their
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`security groups. I was a Principal Scientist at Xerox PARC from 2008 to 2010, a
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`Director and Principal Scientist of Consumer Security at PayPal from 2010 to
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`2013, a Senior Director at Qualcomm from 2013 to 2015, and Chief Scientist at
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`Agari from 2016 to 2018. Agari is a cybersecurity company that develops and
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`commercializes technology to protect enterprises, their partners and customers
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`from advanced email phishing attacks. At Agari, my research studied and
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`addressed trends in online fraud, especially as related to email, including problems
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`such as Business Email Compromise, Ransomware, and other abuses based on
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`USR Exhibit 2021, Page 3
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`
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`IPR2018-00809
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`social engineering and identity deception. My work primarily involved identifying
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`trends in fraud and computing before they affected the market, and developing and
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`testing countermeasures, including technological countermeasures, user interaction
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`and education.
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`10.
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`I have founded or co-founded several successful computer security
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`companies. In 2005 I founded RavenWhite Security, a provider of authentication
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`solutions, and I am currently its Chief Technical Officer. In 2007 I founded
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`Extricatus, one of the first companies to address consumer security education. In
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`2009 I founded FatSkunk, a provider of mobile malware detection software; I
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`served as Chief Technical Officer of FatSkunk from 2009 to 2013, when FatSkunk
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`was acquired by Qualcomm and I became a Qualcomm employee. In 2013 I
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`founded ZapFraud, a provider of anti-scam technology addressing Business Email
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`Compromise, and I am currently its Chief Technical Officer. In 2014 I founded
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`Rigthuestion, a security consulting company.
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`11.
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`I have additionally served as a member of the fraud advisory board at
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`LifeLock (an identity theft protection company); a member of the technical
`
`advisory board at CellFony (a mobile security company); a member of the
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`technical advisory board at PopGiro (a user reputation company); a member of the
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`technical advisory board at MobiSocial dba Omlet (a social networking company);
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`and a member of the technical advisory board at Stealth Security (an anti-fraud
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`USR Exhibit 2021, Page 4
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`
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`IPR2018-00809
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`company). I have provided anti-fraud consulting to KommuneData (a Danish
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`government entity), JP. Morgan Chase, PayPal, Boku, and Western Union.
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`12.
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`I have authored five books and over 100 peer-reviewed publications,
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`and have been a named inventor on over 100 patents and patent applications.
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`13. My work has included research in the area of applied security,
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`privacy, cryptographic protocols, authentication, malware, social engineering,
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`usability and fiaud.
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`II.
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`LEGAL UNDERSTANDING
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`A.
`
`The Person of Ordinary Skill in the Art
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`14.
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`I understand that a person of ordinary skill in the relevant art (also
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`referred to herein as “POSITA”) is presumed to be aware of all pertinent art, thinks
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`along conventional wisdom in the art, and is a person of ordinary creativity—not
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`an automaton.
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`15.
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`I have been asked to consider the level of ordinary skill in the field
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`that someone would have had at the time the claimed invention was made. In
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`deciding the level of ordinary skill, I considered the following:
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`0
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`the levels of education and experience of persons working in the
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`field;
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`0
`
`0
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`the types of problems encountered in the field; and
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`the sophistication of the technology.
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`USR Exhibit 2021, Page 5
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`IPR2018-00809
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`16. A person of ordinary skill in the art relevant to the ’ 137 patent at the
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`time of the invention would have a Bachelor of Science degree in electrical
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`engineering and/or computer science, and three years of work or research
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`experience in the fields of secure transactions and encryption, or a Master’s degree
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`in electrical engineering and/or computer science and two years of work or
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`research experience in related fields.
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`17.
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`I am well-qualified to determine the level of ordinary skill in the art
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`and am personally familiar with the technology of the ’ 137 Patent. I was a person
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`of at least ordinary skill in the art at the time of the priority date of the ’ 137 Patent
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`in 2006. Regardless if I do not explicitly state that my statements below are based
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`on this timeframe, all of my statements are to be understood as a POSITA would
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`have understood something as of the priority date of the ’ 137 Patent.
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`B.
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`Legal Principles
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`18.
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`I am not a lawyer and will not provide any legal opinions.
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`19.
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`Though I am not a lawyer, I have been advised that certain legal
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`standards are to be applied by technical experts in forming opinions regarding the
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`meaning and validity of patent claims.
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`20.
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`I have been informed and understand that if the Board should accept
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`Petitioner’s arguments and cancel any of the original issued claims of the ’ 137
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`Patent, Patent Owner has made a conditional motion to amend to substitute the
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`USR Exhibit 2021, Page 6
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`
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`IPR2018-00809
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`canceled claim(s) with corresponding proposed amended claims 13-21, as set forth
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`in Section III of Ex. 2014 (my declaration in support of Patent Owner’s motion to
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`amend).
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`21.
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`I have been informed and understand that to permit the proposed
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`substitute claims to be entered, Patent Owner must show, among other things, that
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`the substitute claims are supported by the written description of the original
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`disclosure of the patent, as well as any patent application to which the claim seeks
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`the benefit of priority in this proceeding.
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`22.
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`I have been informed by counsel and understand that to satisfy the
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`written description requirement, the substitute claims must be disclosed in
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`sufficient detail such that one skilled in the art can reasonably conclude that the
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`inventor had possession of the claimed invention as of the filing date sought. I
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`understand that the Patent Owner can show possession of the claimed invention by
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`pointing to such descriptive means as words, structures, figures, diagrams, and
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`formulas that fiilly set forth the claimed invention.
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`23.
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`I have been informed by counsel and understand that incorporation by
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`reference is a method by which material from one or more documents may be
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`integrated into a host document. I understand that material incorporated by
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`reference is considered part of the written description of the patent that can be used
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`to show possession of the claimed invention.
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`USR Exhibit 2021, Page 7
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`IPR2018-00809
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`24.
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`I have been informed by counsel and understand that to permit the
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`proposed substitute claims to be entered, Patent Owner must show, among other
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`things, that the substitute claims do not introduce new subject matter.
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`25.
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`I understand that new matter is any addition to the claims without
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`support in the original disclosure.
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`26.
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`I have been informed by counsel and understand that to permit the
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`proposed substitute claims to be entered, Patent Owner must show, among other
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`things, the substitute claims do not broaden the scope of the original claims.
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`27.
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`I understand that claims in dependent form are construed to include all
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`the limitations of the claim incorporated by reference into the dependent claim and
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`further limit the claim incorporated by reference.
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`28.
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`It has been explained to me by counsel for the Patent Owner that in
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`proceedings before the USPTO, the claims of an unexpired patent are to be given
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`their broadest reasonable interpretation in view of the specification from the
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`perspective of one having ordinary skill in the relevant art at the time of the
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`invention. I have considered each of the claim terms using the broadest reasonable
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`interpretation standard.
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`III.
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`SUBSTITUTE CLAIMS ARE PATENT ELIGIBLE UNDER 101
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`29.
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`I understand that Petitioner argues that substitute claims 13-21 are
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`unpatentable under § 101 because they purportedly claim patent-ineligible abstract
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`USR Exhibit 2021, Page 8
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`IPR2018-00809
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`ideas. However, I have been informed that on September 19, 2018, United States
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`Magistrate Judge Sherry R. Fallon for the District Court of Delaware rejected
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`virtually identical arguments made by Petitioner when Judge Fallon issued a
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`Report and Recommendation (R&R) recommending that the District Court deny
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`Petitioner’s motion to dismiss under § 101 since claims 1-12 of the ’ 137 Patent are
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`“n_ot directed to an abstract idea because ‘the plain focus of the claims is on an
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`improvement to computer functionality itself, not on economic or other tasks for
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`which a computer is used in its ordinary capacity.” Ex. 2016, Universal Secure
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`Registry, LLC v. Apple, Inc, 1:17-cv-00585-JFB-SRF, Dkt. 137 at 21 (D. Del. Sep.
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`18, 2018) (emphasis added). Specifically, I understand that Judge Fallon stated:
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`[t]he ’ 137 patent is directed to an improvement in the security of
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`mobile devices by using biometric information to generate a time
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`varying or other type of code that can be used for a single transaction,
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`preventing the merchant from retaining identifying information that
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`could be fraudulently used in subsequent transactions. (’ 137 patent,
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`col. 18: 14-34) While certain elements of claim 12 recite generic
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`computer components, the claim as a whole describes an
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`improved authentication system with increased security.
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`Id. at 22 (emphasis added). As such, substitute claims 13 and 21, which are
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`narrower than claims 1 and 12, are patent eligible for the same reasons noted by
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`Judge Fallon.
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`30.
`
`I understand that the same conclusion was also reached by this Board
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`USR Exhibit 2021, Page 9
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`IPR2018-00809
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`when it rejected substantially similar arguments made by Petitioner for related US.
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`Patent 8,577,813 (“the ’813 Patent”) in CBM2018-00026. CBM2018-00026,
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`Paper 10 at 23-24. Indeed, in its Petition for CBM2018-00026, Petitioner
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`advanced the same abstract idea of “verifying an account holder’s identity based
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`on codes and/or information related to the account holder before enabling a
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`transaction” as it does here now, and also cites to the same cases making
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`substantially similar arguments for patent ineligibility. The Board dismissed these
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`arguments then, and in my opinion it should dismiss these arguments here now
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`because many of the reasons why the Board found the claims of the ’813 Patent are
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`not abstract equally apply to the present substitute claims.
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`31.
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`For instance, Petitioner has oversimplified the claimed inventions and
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`ignores many key claim limitations. The specification shows that the substitute
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`claims are directed to specific, concrete, technological improvements to secure
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`distributed transaction approval systems that incorporate both local and remote
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`authentication without compromising the user’s sensitive information, and these
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`inventions are demonstrably valid under the analysis of Alice and its progeny.
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`Moreover, the problems addressed by the ’ 137 Patent are firmly rooted in
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`technological challenges associated with distributed electronic transactions, and so
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`are the claimed solutions.
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`32.
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`I understand Petitioner argues that the substitute claims are directed to
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`USR Exhibit 2021, Page 10
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`IPR2018-00809
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`the abstract idea of “verifying an account holder's identity based on codes and/or
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`information related to the account holder before enabling a transaction” (Op. at
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`10), but Petitioner fails to account for the specific claim requirements. Substitute
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`claims 13 and 21 recite a unique and highly secure distributed transaction approval
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`system including a local “first device” that authenticates a user of the device based
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`on “secret information” (e.g., a PIN code) and retrieves or receives “biometric
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`information” (e.g., a fingerprint captured by the “biometric sensor” of the first
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`device) before the first device generates and Wirelessly transmits a transaction
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`approval request “signal” to a remote “second device.” The signal includes at least
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`three specific types of data: “first authentication information,” an “indicator of
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`biometric authentication” of the user by the first device, and a “time varying
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`value.” The remote second device receives the signal and, based on the specific
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`data contained therein, as well “second authentication information” of the user
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`available at the second device, the second device may provide the first device With
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`an “enablement signal” indicating the second device’s approval of the transaction.
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`None of these features are captured by Petitioner’s proffered overbroad abstract
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`idea.
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`33.
`
`Petitioner also fails to explain how the ordered combination of
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`elements in the claims manifestly claim no more than Petitioner’s purported
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`abstract idea. Although I understand that the “mere recitation of a generic
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`USR Exhibit 2021, Page 11
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`IPR2018-00809
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`computer” cannot transform a method claim directed to a patent-ineligible abstract
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`idea into a system claim directed to a patent-eligible invention, the substitute
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`claims do more than merely state an abstract idea while adding the words “apply
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`it.” Instead, they recite a specific, concrete, technological solution providing an
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`improved secure distributed transaction approval system that incorporates both
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`local and remote authentication without compromising the user’s sensitive
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`information. Thus, Petitioner fails to adequately address that the claimed
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`“biometric information” and “indicator of biometric authentication” are
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`specifically employed in two ways: the former used to locally authenticate the user
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`of the first device and the latter for remote authentication of the first device by the
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`second device when the indicator of biometric authentication is used to generate
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`one or more signals that are sent to the second device. Further, the claims do not
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`preempt the field of secure electronic transactions, but instead cover very specific
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`technologies used on specialized devices (e.g., with biometric sensors), while
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`leaving open other known or unknown technology for conducting such
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`transactions.
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`34.
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`Even assuming the substitute claims are directed to the Petitioner’s
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`abstract idea, it is my opinion that the ordered combination of elements in these
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`claims transform the nature of the claim into a patent-eligible application.
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`Petitioner does not substantively address the claims as an ordered combination.
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`USR Exhibit 2021, Page 12
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`IPR2018-00809
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`See Op. at 14-17. By contrast, the ’ 137 Patent’s specification teaches that the
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`ordered combination of elements do much more than merely recite an abstract idea
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`or a rudimentary prior art verification system. See, e.g., Ex. 1101 at 2:50-52, 3:63-
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`5:31, 13:62-14:53, 15:43-50, 16:49-17:54, 18:13-34, 19:45-20:37, 22:16-20, 29:21-
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`44, 32:31-34:6. Instead, the ordered combination of claim elements recite a highly
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`secure distributed transaction approval system including a local “first device” that
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`authenticates a user of the device based on “secret information” (e.g., a PIN code)
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`and retrieves or receives “biometric information” (e.g., a fingerprint captured by
`
`the “biometric sensor” of the first device) before the first device generates and
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`Wirelessly transmits a transaction approval request “signal” to a remote “second
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`device” that includes at least three specific types of data. The remote second
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`device may then provide the first device with an “enablement signal” indicating the
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`second device’s approval of the transaction based on the data contained in the
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`“signal.” For these reasons, it is my opinion the substitute claims are patent
`
`eligible.
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`IV.
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`SUBSTITUTE CLAIMS ARE NOVEL AND NONOBVIOUS
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`35. Not only do the substitute claims respond to a ground of
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`unpatentability, they are clearly distinguishable over the prior art of record. The
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`substitute claims filrther specify that the networked validation-information entity is
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`the claimed “second device” that is configured to enable the credit/debit/financial
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`USR Exhibit 2021, Page 13
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`IPR2018-00809
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`transaction based on authentication of the user. The substitute claims further recite
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`that the first authentication information included a multi-digit identification (ID)
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`code allowing the networked validation-information entity to map the multi-digit
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`ID code to a credit/debit card (or financial account) number. Substitute claim 13
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`additionally recites that the first processor is programmed to generate one or more
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`signals “having at least three separable fields” that include the first authentication
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`information, an indicator of biometric authentication, and a time varying value. As
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`described in more detail below, these amendments patentably distinguish the
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`substitute claims over the Jakobsson, Maritzen, and Schutzer references.
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`A.
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`It Would Not Have Been Obvious to Have the Claimed “Second
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`Device” Map the ID Code to a Card or Account Number
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`36.
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`I understand that Petitioner failed to present any arguments in its
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`Opposition with respect to the newly added limitation in substitute claims 13 and
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`21 that “the first authentication information include[ed] a multi-digit identification
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`(ID) code allowing a networked validation-information entity to map the multi-
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`digit ID code to a [credit and/or debit card/financial account] number,” but instead
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`referred solely to the arguments made its Petition with respect to disclaimed claims
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`8 and 11. Opp. at 17 -18. Petitioner has failed to establish this limitation is obvious
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`in view of Jakobsson, Maritzen, and Schutzer.
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`37. Disclaimed dependent claim 8 recited a multidigit public ID code for
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`which “a credit card issuer can map to a usable credit card number.” EX. 1001 at
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`USR Exhibit 2021, Page 14
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`IPR2018-00809
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`Cl. 8. Substitute claims 13 and 21, on the other hand, require “a networked
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`validation-information entity” to perform the mapping. This is a critical distinction
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`because Petitioner acknowledges (1) that Jakobsson fails to show or reasonably
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`suggest this claimed feature (see Pet. at 64), and (2) Schutzer merely discloses that
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`the “card issuer” can associate an “anonymous card number” with the “proper
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`cardholder.” See Pet. at 65. At no point in the Petition (or in its Opposition to
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`Patent Owner’s MTA) does Petitioner point to any disclosure of the “networked
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`validation-information entity”1 performing the mapping between multi-digit ID
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`code to a [credit and/or debit card/financial account] number. Petitioner had
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`therefore failed to meet its burden to establish any of the substitute claims are
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`obvious.
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`B.
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`It Would Not Have Been Obvious to Use “Three Separable
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`Fields”
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`1 Importantly, the claimed “networked validation-information entity” in the
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`substitute claims is the same claimed “second device” that is “configured to enable
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`the financial transaction based on authentication of the user.” Petitioner fails to
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`even allege that the prior art of record includes such an entity, nor could it since
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`neither Jakobsson, Maritzen, or Schutzer, alone or in combination, suggest using
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`the same entity to both map the multi-digit ID to a card/account number and enable
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`the financial transaction.
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`USR Exhibit 2021, Page 15
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`IPR2018-00809
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`38.
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`Substitute claim 13 recites that the claimed “one or more signals” has
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`“at least three separable fields” that include “the first authentication information,
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`an indicator of biometric authentication, and a time varying value in response to
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`valid authentication of the first biometric information.” Petitioner alleges that
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`Jakobsson discloses this claimed feature (Opp. at 18), but Jakobsson merely
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`discloses transmitting a unitary authentication code (either one of code 291, 292,
`
`or 293) to verifier 105. Ex. 1113 at W[0060], [0071]. In other words, there is no
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`disclosure in Jakobsson of transmitting authentication code 291 in addition to the
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`values (E) and (T) all in the same transmission. This is a fatal flaw in Petitioner’s
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`argument.
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`39. Moreover, as explained in more detail in Patent Owner’s sur-reply,
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`Petitioner’s mapping of the three recited types of information would require
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`transmitting authentication code 291 (Petitioner’s alleged “first authentication
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`information”) in addition to the values (E) (Petitioner’s alleged “indicator of
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`biometric authentication”) and (T) (Petitioner’s alleged “time varying value”) all in
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`the same transmission—which of course is not disclosed in Jakobsson.2
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`2
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`In its Opposition, Petitioner now appears to cite to (E), (T), and (P) as the
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`three claimed types of information, but does not explain why “user data value (P)”
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`can qualify as the claimed “first authentication information.” Opp. at 18.
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`USR Exhibit 2021, Page 16
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`IPR2018-00809
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`40. Moreover, as I have explained in my deposition, the one-way function
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`is a critical aspect of the invention described in the Jakobsson reference. Ex. 2017
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`at 12716-20. While certain embodiments of Jakobsson discuss prepending and
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`appending certain inputs, a one-way function is always used (optionally in
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`conjunction with other functions). A person of ordinary skill in the art would
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`understand that all the examples given involve a one-way function because
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`otherwise the system would not be secure. Id. at 134: 1-13; see also id. at 134:19-
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`135:7 (explaining that it would be “clear to a person of skill in the art reading this
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`that there has to be a one-way function”). Even Petitioner’s own expert, Dr. Juels,
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`acknowledged at his deposition that merely concatenating or XOR’ing inputs
`
`together, without more, was an inadequate way to generate or protect the
`
`authentication code from eavesdroppers. Ex. 2019 at 30:3-21 (eavesdropper can
`
`recover inputs if mere concatenation were used); 34: 12-36: 12 (same); 40: 14-41 :6
`
`(adversary can recover input if mere XOR is used as the combination function).
`
`41.
`
`In my opinion, a POSITA would have understood the disclosure of
`
`Jakobsson to require the use of a one-way function at some point during the
`
`authentication code generation process. As such, the resultant unitary
`
`Regardless, there is no disclosure in Jakobsson that the unitary authentication code
`
`includes “three separable fields” after the code is generated and transmitted.
`
`USR Exhibit 2021, Page 17
`
`
`
`IPR2018-00809
`
`authentication code does not have three separable fields that includes all three
`
`pieces of claimed information. In other words, a POSITA would not recognize
`
`Jakobsson’s system to transmit a code with three separable fields including the first
`
`authentication information, an indicator of biometric authentication, and a time
`
`varying value because the combination filnction transformed those pieces of
`
`information into a unitary authentication code prior to transmission.3
`
`C.
`
`Substitute Dependent Claim 18 Is Not Obvious
`
`42.
`
`Substitute claim 18 recites “the first authentication information fiirther
`
`including a digital signature generated using a private key associated with the first
`
`device.” I understand Petitioner alleges this limitation is obvious in view of
`
`Schutzer, which discloses that “the issuing bank 8 can require more secure
`
`authentication, such as
`
`digital signatures.” Opp. at 21-23. Regardless of
`
`3 Moreover, Petitioner’s own expert, Dr. Juels, testified that it would be
`
`computationally difficult to derive the inputs from the output of a one-way
`
`function, like the one-way functions described in Jakobsson and used to generate
`
`the authentication codes. EX-2019 at 7016-7 1 : 10, 7914-24. Since one cannot easily
`
`derive the inputs of a one-way function from its output, this is yet another reason
`
`why the authentication code described in Jakobsson does not have “three separable
`
`fields” or include the claimed three distinct types of information.
`
`USR Exhibit 2021, Page 18
`
`
`
`IPR2018-00809
`
`whether the “issuing ba
`
`” might require more secure authentication, Schutzer
`
`says nothing about the “first authentication information” having separable fields
`
`further including a digital signature generated using a private key associated with
`
`the first device. Schutzer is completely silent as to how the issuing bank receives
`
`the digital signature (for example, through the claimed “networked validation-
`
`information entity”), how the digital signature is generated, and whose private key
`
`(if any) is used.
`
`43.
`
`In particular, no express or inherent4 disclosure is made that the digital
`
`signature of Schutzer was generated using a private key associated with the first
`
`device. Accordingly, it is my opinion that Petitioner has failed to meet its burden
`
`to show dependent claim 18 is obvious.
`
`D.
`
`Petitioner Fails to Address Substitute Claims 17 and 20
`
`4 No inherent disclosure is made in Schutzer that the digital signature is
`
`necessarily generated by a private key associated with the first device. Ex parte
`
`Levy, 17 USPQ2d 1461, 1464 (Ed. Pat. App. & Inter. 1990) (requiring that the
`
`inherent characteristic necessarily flow from the teachings of the prior art). Indeed,
`
`Schutzer’s digital signature may be generated using the private key of a certificate
`
`authority and be used as part of a digital certificate to authenticate the user, as was
`
`common practice at the time of the Schutzer invention.
`
`USR Exhibit 2021, Page 19
`
`
`
`IPR2018-00809
`
`44.
`
`Substitute claims 17 and 20 has both been substantively amended
`
`from their original forms, yet I understand Petitioner has failed to address the
`
`patentability of these substitute claims in view of the prior art. In my opinion, both
`
`of these substitute claims recite new features not found in any of the prior art of
`
`record (particularly not in combination with the limitations found in substitute
`
`independent claim 13). These substitute claims are therefore non-obvious.
`
`V.
`
`SUBSTITUTE CLAIMS SATISFY 35 U.S.C.
`
`112
`
`45.
`
`I understand Petitioner contends that the claim limitation “the second
`
`device being the networked validation-information entity configured to enable the
`
`credit and/or debit card [or financial] transaction based on authentication of the
`
`user” does not have written description support because “the original disclosure
`
`does not show a financial institution being a networked validation-information
`
`entity.” Op. at 23-24. Petitioner’s entire § 112 argument as to claims 13 and 21
`
`hinges on the mistaken assumption that the claimed networked validation-
`
`
`information entity must be a financial institution. See id. In my opinion,
`
`Petitioner’s error proves fatal.
`
`46. While the claimed networked validation-information entity may be a
`
`USR Exhibit 2021, Page 20
`
`
`
`IPR2018-00809
`
`financial institution, such as a credit card company (CCC),5—
`
`_——
`
`For instance, the
`
`specification explicitly teaches that the system may comprise “a networked credit
`
`card validation-information entity configured to approve and deny financial
`
`transactions based on authentication of the user.” Ex. 2006 at 10:27-29
`
`(emphasis added)—
`
`—_— —
`
`The Specification also
`
`describes a “second device” that—like USR and networked credit card validation-
`
`information entity—performs authentication of a user (6. g. , first deVice). See, 6.g. ,
`
`5—
`
`6—
`
`USR Exhibit 2021, Page 21
`
`
`
`IPR2018-00809
`
`id. at 6:26-33, 38:11-14, 43:27-29, 44:3-12, 45:7-46:2. Thus, the specification
`
`provides ample support for a POSITA to understand that the inventor was in
`
`possession of the idea that a networked validation-information entity could be a
`
`“second device” (or a secure registry) that enables a credit/debit/financial
`
`transaction based on authentication of the user.
`
`47.
`
`Claim limitations l3[pre], l3[e], and l3[e] together also require that
`
`first authentication information includes a multi-digit ID code and the networked
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`validation-information entity map the multi-digit ID code to a credit and/or debit
`
`card number to enable the credit/debit card transaction. See Motion at B1. -
`
`USR Exhibit 2021, Page 22
`
`
`
`IPR2018-00809
`
`— Thus, the
`
`specification supports the amendments made to 13[pre], 13[c], and 13[e]. See also
`
`id. at FIG. 23, 42:24-44:12, 45:7-9 (describing public ID field 304 being sent from
`
`first device to second device as part of authentication signal).7
`
`48.
`
`I understand Petitioner also contends that the claim limitation
`
`“wherein the first device communicates with the second device periodically to
`
`prevent intentional deletion of information stored at the first device” (limitation
`
`l7[a]) does not have written description support because the disclosure provided in
`
`the specification allegedly only “relates to automatically deleting data upon failed
`
`communication between the first and second device. This is different from
`
`intentional deletion.” Op. at 25. In my opinion, Petitioner, takes an impermissibly
`
`narrow and twisted view of t
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