Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`DOCKET NO.: 1033300-00308US1
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
` ben.fernandez@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`Apple 1002
`
`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`TABLE OF CONTENTS
`I.  BACKGROUND ............................................................................................... 1 
`II.  LEGAL PRINCIPLES ....................................................................................... 3 
`A.  Claim Construction ........................................................................................ 3 
`B.  Obviousness ................................................................................................... 4 
`III.  LEVEL OF ORDINARY SKILL ..................................................................... 6 
`IV.  DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME ............................................................................................................ 7 
`V.  THE ’826 PATENT ........................................................................................... 7 
`A.  Specification and Claims ............................................................................... 7 
`B.  Prosecution History ....................................................................................... 9 
`C.  Claim Construction ........................................................................................ 9 
`1.  Biometric Information .............................................................................. 10 
`2.  Authentication Information ...................................................................... 12 
`VI.  Overview of Primary Prior Art Reference Maritzen ...................................... 13 
`VII. 
`Specific Grounds for Petition ...................................................................... 16 
`A.  Prior Art Patents and Publications .............................................................. 16 
`1.  Ex-1004 – Maritzen .................................................................................. 16 
`2.  Ex-1005 – Jakobsson ................................................................................ 16 
`3.  Ex-1107 – Niwa ....................................................................................... 17 
`B.  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 Are
`Obvious in View of Maritzen, Jakobsson, and Niwa .......................................... 18 
`1. 
`Independent Claim 1 ................................................................................ 18 
`2.  Dependent Claim 2 ................................................................................... 49 
`3.  Dependent Claim 7 ................................................................................... 52 
`4.  Dependent Claim 8 ................................................................................... 55 
`5. 
`Independent Claim 10 .............................................................................. 56 
`6.  Dependent Claim 11 ................................................................................. 58 
`7.  Dependent Claim 14 ................................................................................. 58 
`8.  Dependent Claim 15 ................................................................................. 59 
`9. 
`Independent Claim 21 .............................................................................. 59 
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`10.  Dependent Claim 22 .............................................................................. 65 
`11.  Dependent Claim 24 .............................................................................. 66 
`12.  Dependent Claim 26 .............................................................................. 69 
`13.  Dependent Claim 27 .............................................................................. 69 
`14. 
`Independent Claim 30 ........................................................................... 72 
`15.  Dependent Claim 31 .............................................................................. 74 
`16.  Dependent Claim 34 .............................................................................. 74 
`VIII.  CONCLUSION ........................................................................................... 75 
`IX.  AVAILABILITY FOR CROSS-EXAMINATION ....................................... 75 
`X.  RIGHT TO SUPPLEMENT ............................................................................ 75 
`XI. 
`JURAT ............................................................................................................ 76 
`
`
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`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`I, Victor Shoup, Ph.D., declare as follows:
`1. My name is Victor Shoup.
`
`2.
`
`I have been retained by Apple to provide opinions in this proceeding
`
`relating to U.S. Patent No. 9,100,826 (“’826 patent”).
`
`I.
`
`BACKGROUND
`3.
`I received a Bachelor of Science in Computer Science and
`
`Mathematics from the University of Wisconsin at Eau Claire in 1983. I received
`
`my Doctorate in Computer Science from the University of Wisconsin at Madison
`
`in 1989. I worked as a research scientist at Bellcore from 1995 to 1997 and at IBM
`
`Research Zurich from 1997 to 2002. My work included design of cryptographic
`
`protocols such as a new public key cryptosystem (now called the Cramer-Shoup
`
`cryptosystem) that achieved higher levels of security than were previously thought
`
`possible in a practical scheme.
`
`4.
`
`I have been Professor of Computer Science at the Courant Institute of
`
`Mathematical Sciences at New York University since 2002 (initially as an
`
`Associate Professor, and as a Professor since 2007). I teach a variety of graduate
`
`and undergraduate courses on cryptography. Since 2012, I have also been a part-
`
`time visiting researcher at the IBM T. J. Watson Research Center in Yorktown,
`
`New York, where I collaborate with the Cryptography Research Group, which
`
`does work on a range of projects from the theoretical foundations of cryptography
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`to the design and implementation of cryptographic protocols, such as
`
`homomorphic encryption.
`
`5. My areas of research include cryptography and number-theoretic
`
`algorithms, and I have published over 60 papers in these areas. In the area of
`
`cryptography, I have made substantial contributions in the sub-areas of digital
`
`signatures, public key encryption, hash functions, distributed computation, session
`
`key exchange, and secure anonymous transactions.
`
`6.
`
`I was also an editor of the ISO18033-2 standard for public-key
`
`encryption, which was published in 2006.
`
`7.
`
`I have been on the program committee of numerous international
`
`conferences on cryptography, and was the Program Chair at Crypto 2005 (Crypto
`
`is the premier international conference on cryptography). I have also acted as a
`
`consultant on cryptographic protocols for several companies.
`
`8.
`
`In recognition of my contributions to the field of cryptography, I was
`
`named a Fellow of the International Association for Cryptographic Research
`
`(IACR) in 2016, for fundamental contributions to public-key cryptography and
`
`cryptographic security proofs, and for educational leadership.
`
`9.
`
`I have given a number of invited lectures on my research in
`
`cryptographic protocol design. In 2005, I published a textbook on the
`
`mathematical underpinnings of cryptography titled A Computational Introduction
`
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`

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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`to Number Theory and Algebra, which I have made available online for free at
`
`http://www.shoup.net/ntb. I am also currently writing a textbook on applied
`
`cryptography. It is available in draft form at http://toc.cryptobook.us.
`
`10.
`
`I am listed as an inventor on six U.S. patents, several related to
`
`authenticated key exchange, one related to secure multi-party computation, and
`
`one related to public-key encryption.
`
`11. A copy of my curriculum vitae is attached as Appendix A.
`
`12.
`
`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
`
`Declaration.
`
`13.
`
`I have no financial interest in Petitioner. I have no financial interest in
`
`the ’826 patent.
`
`II. LEGAL PRINCIPLES
`14.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinions.
`
`A. Claim Construction
`15.
`I have been informed that claim construction is a matter of law and
`
`that the final claim construction will ultimately be determined by the Board.
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`I have been informed that the claim terms in an IPR review should be
`
`16.
`
`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.
`
`B. Obviousness
`17.
`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.
`
`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. 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:
`
` the level of ordinary skill in the art at the time the application was
`
`filed;
`
` the scope and content of the prior art; and
`
` what differences, if any, existed between the claimed invention and
`
`the prior art.
`
`18.
`
`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
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`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:
`
` whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
` whether a POSITA could implement a predictable variation, and
`
`would see the benefit of doing so;
`
` 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;
`
` whether a POSITA would have recognized a reason to combine
`
`known elements in the manner described in the claim;
`
` whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent;
`
`and
`
` whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`19.
`
`I have been informed and understand that a POSITA has ordinary
`
`creativity, and is not an automaton.
`
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`

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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`I have been informed and understand that in considering obviousness,
`
`20.
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered.
`
`III. LEVEL OF ORDINARY SKILL
`21.
`I have been informed that a POSITA is a hypothetical person to whom
`
`an expert in the relevant field could assign a routine task with reasonable
`
`confidence that the task would be successfully carried out. The level of skill in the
`
`art is evidenced by prior art references.
`
`22. The prior art demonstrates that a POSITA, at the time the ’826 patent
`
`was effectively filed, would have a Bachelor’s Degree in electrical engineering,
`
`computer science, or a related scientific field, and approximately two years of
`
`work experience in the computer science field including, for example, operating
`
`systems, database management, encryption, security algorithms, and secure
`
`transaction systems, though additional education can substitute for less work
`
`experience and vice versa.
`
`23. Based on my experience, I have an understanding of the capabilities
`
`of a person of ordinary skill in the relevant field. I have supervised and directed
`
`many such persons over the course of my career. Further, I had at least those
`
`capabilities myself at the time the patent was filed.
`
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`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`IV. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`24.
`I have reviewed and understand the specification, claims, and file
`
`history of the ’826 patent. I have also reviewed each of the exhibits identified in
`
`the Table of Exhibits attached hereto as Appendix B. Based on my review of these
`
`materials, I believe that the relevant field for purposes of my analysis is computer
`
`science, including the areas of data security, encryption, and security algorithms.
`
`As described above, I have extensive experience in the relevant technology.
`
`25. The ’826 patent issued on August 4, 2015 from an application filed on
`
`September 16, 2013. The ’826 patent also claims priority to three provisional
`
`applications: No. 60/775,046, filed on February 21, 2006, No. 60/812,279, filed on
`
`June 9, 2006, and No. 60/859,235 filed on November 15, 2006.
`
`V. THE ’826 PATENT
`A. Specification and Claims
`26. The ’826 patent describes systems and methods for authenticating a
`
`user using biometric information, authentication information that is based on the
`
`biometric information, a handheld device (a “first device”) configured to scan the
`
`biometric information, and a database server (a “second device”) that receives the
`
`authentication information. Ex-1001, ’826 patent at Abstract (“the invention
`
`provides a system for authenticating identities of a plurality of users. In one
`
`embodiment, the system includes a first handheld device including a wireless
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`transceiver which is configured to transmit authentication information, a second
`
`device including a wireless receiver, where the second device is configured to
`
`receive the authentication information.”); 4:27-32 (“The identity of the user
`
`possessing the identifying device may be verified at the point of use
`
`via…biometric identification such as a fingerprint, voice print, signature, iris or
`
`facial scan, or DNA analysis, or any other method.”). I understand that the patent
`
`owner has described the claimed invention in similar terms, asserting that it relates
`
`to “an improved distributed authentication system that authenticates a user's
`
`identity at a handheld device using local biometric information, and also remotely
`
`authenticates at a second device based on authentication information (e.g., a
`
`variable one-time token) determined from the user's biometric information.”
`
`Plaintiff’s Answering Brief in Opposition to Defendants’ Motion to Dismiss
`
`(“Opp.”) at 13 (Ex-1009).
`
`27. The ’826 patent acknowledges that embedded processors coupled to
`
`biometric sensors were known in the art, but nonetheless claims that there is a
`
`“need for an identification system that will enable a person to be accurately
`
`identified” and “a need for an identification system that will enable a person to be
`
`identified universally without requiring the person to carry multiple forms of
`
`identification.” Ex-1001, ’826 patent at 2:57-62 (“devices have seen technological
`
`advances that increase their capabilities and improve their security. For example,
`
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`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`such devices may now include embedded processors, integral biometric sensors
`
`that sense one or more biometric feature (e.g., a fingerprint) of the user, and
`
`magnetic stripe emulators.”); 3:55-62. It suggests solutions to this alleged need
`
`including: “a smart ID card, or …a cell phone, pager, wrist watch, computer,
`
`personal digital assistant such as a Palm Pilot™, key fob, or other commonly
`
`available electronic device.” ’826 patent at 4:23-27; see also id. at 14:5-7 (“the
`
`user of the database will carry a SecurIDTM card available from RSA Security,
`
`formerly Security Dynamics Technologies, Inc., of Cambridge Mass.”).
`
`B. Prosecution History
`28.
`I have been informed and understand that the ’826 patent was filed as
`
`U.S. Application No. 14/027,860 (the ’826 application) on September 16, 2013. A
`
`Notice of Allowance was issued on March 18, 2015 after the Applicant filed a
`
`terminal disclaimer in response to a double patenting rejection over parent patent
`
`U.S. Patent No. 8,538,881. See Ex-1008, Notice of Allowance.
`
`29.
`
`I have been informed and understand that the Examiner did not
`
`receive or consider prior art references Maritzen (Ex-1004), Jakobsson (Ex-1005),
`
`and Niwa (Ex-1007), which render obvious each of the claims challenged.
`
`C. Claim Construction
`30.
`I have been informed and understand that a claim in an inter partes
`
`review is given the broadest reasonable construction in light of the specification.
`
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`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`31. The following discussion proposes a construction and support for that
`
`construction. Any claim terms not included are given their broadest reasonable
`
`interpretation in light of the specification as commonly understood by those of
`
`ordinary skill in the art. Should the Patent Owner contend that the claim has a
`
`construction different from its broadest reasonable interpretation, the appropriate
`
`course is for the Patent Owner to seek to amend the claim to expressly correspond
`
`to its contentions in this proceeding.
`
`1. Biometric Information
`32. Under the broadest reasonable interpretation claim construction
`
`standard, “biometric information” as used in the ’826 patent means “information
`
`about a user’s physical characteristics, such as fingerprint, voice print, signature,
`
`iris or facial scan, DNA analysis, or personal photograph.”
`
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`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`33. This construction is supported by the specification, which describes
`
`biometric information using substantially identical language.1 Ex-1001, ’826
`
`patent at 4:27-32 (“The identity of the user possessing the identifying device may
`
`be verified at the point of use via any combination of a memorized PIN number or
`
`code, biometric identification such as a fingerprint, voice print, signature, iris or
`
`facial scan, or DNA analysis, or any other method of identifying the person
`
`1 The ’826 patent specification includes one passage that describes a “personal
`
`identification number (PIN)” as an example of biometric information. Ex-1001,
`
`’826 patent at 14:39-42. That passage is inconsistent with other statements in the
`
`intrinsic record that describe biometric information as information that relates to a
`
`user’s physical characteristics and is distinct from a PIN. For example, the
`
`specification elsewhere distinguishes PIN numbers from biometric information.
`
`Ex-1001, ’826 patent at 13:53-58 (“the information may include any of a secret
`
`known by the user (e.g., a pin, a phrase, a password, etc.), a token possessed by the
`
`user that is difficult to counterfeit (e.g., a secure discrete microchip), and/or a
`
`measurement such as a biometric (e.g., a voiceprint, a fingerprint, DNA, a retinal
`
`image, a photograph, etc.)”); 4:27-32; 28:13-17 (distinguishing keypads for PIN
`
`entry and scanners for scanning biometric information); 28:60-65; 29:65-30:3.
`
`Furthermore, a POSITA would not have considered a PIN to be biometric
`
`information because it is unrelated to any physical characteristic of the user.
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`possessing the device”). Consistent with the use of the biometric information in
`
`the specification, Webster’s Dictionary defines biometric authentication as “[a]
`
`method of authentication that requires a biological scan of some sort, such as a
`
`retinal scan or voice recognition.” Ex-1010, Webster’s Dictionary, 65. Similarly,
`
`Microsoft Computer Dictionary defines biometrics as “the science of measuring
`
`and analyzing human biological characteristics. In computer technology,
`
`biometrics relates to authentication and security techniques that rely on measurable,
`
`individual biological stamps to recognize or verify an individual's identity. For
`
`example, fingerprints, handprints, or voice-recognition might be used to enable
`
`access to a computer, to a room, or to an electronic commerce account. Ex-1011,
`
`Microsoft Computer Dictionary, 50. A POSITA would have understood that the
`
`basis for electronic security systems can be organized into one of three categories:
`
`1) things a person has, 2) things a person knows, and 3) things a person is.
`
`Biometric information falls into the third category of things a person is. In contrast,
`
`a PIN or passcode is something a person knows.
`
`2. Authentication Information
`34. Under the broadest reasonable interpretation claim construction
`
`standard, “authentication information” as used in the ’826 patent means
`
`“information used by the system to verify the identity of an individual.” For
`
`example, authentication information can include a PIN, passcode, or biometric
`
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`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`information. Ex-1001, ’826 patent at 4:27-34 (“The identity of the user possessing
`
`the identifying device may be verified at the point of use via any combination of a
`
`memorized PIN number or code, biometric identification such as a fingerprint,
`
`voice print, signature, iris or facial scan, or DNA analysis, or any other method of
`
`identifying the person possessing the device”).
`
`35. This construction is consistent with the plain meaning of the term and
`
`the patent specification. The patent uses the terms “verification,” “identification,”
`
`and “authentication” interchangeably. Ex-1001, ’826 patent at 3:55-59 (“There is
`
`thus a need for an identification system that will enable a person to be accurately
`
`identified (‘identification’ sometimes being used hereinafter to mean either
`
`identified or verified) and/or authenticated without compromising security, to gain
`
`access to secure systems and/or areas.”).
`
`VI. OVERVIEW OF PRIMARY PRIOR ART REFERENCE MARITZEN
`36. Like the ’826 patent, Maritzen is directed toward an electronic user
`
`authentication system that involves a handheld device configured to receive
`
`biometric information from a user and transmit authentication information to a
`
`secure database that verifies the user’s identity based on the authentication
`
`information. See Ex-1004, Maritzen at [0029] (“A system and method for
`
`conducting a financial transaction are described. In one embodiment,
`
`communication is established between a vehicle-accessed, payment-gateway
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`terminal (VAPGT) and a pre-registered, key-enabled, personal transaction device
`
`(PTD). The PTD is accessed using a biometric control and a transaction request is
`
`transmitted to a server. Further, a transaction authorization message is received
`
`from the server to complete the transaction in real time between the user and the
`
`VAPGT provider. In this embodiment, the funds are uniquely identified with the
`
`owner of the PTD and, thus, if the PTD is stolen, the funds cannot be used by
`
`another user.”); see also id. at Figs. 1 and 11.
`
`37. Maritzen in view of Jakobsson and Maritzen discloses the systems and
`
`methods of independent claims 1, 10, 21, and 30. For example, Maritzen discloses
`
`a financial transaction system that utilizes a personal transaction device 100 (PTD)
`
`[a first device] that wirelessly communicates with a clearing house 130 [a second
`
`device]. Ex-1004, Maritzen at [0038] (“Referring to FIG. 1, a personal transaction
`
`device (PTD) 100 communicates via communication link 150 with a vehicle-
`
`accessed, payment-gateway terminal (VAPGT) 120 to conduct a financial
`
`transaction.”); [0040] (“VAPGT 120 and clearing house 130 may be connected via
`
`a wireless communication link such as, for example, a mobile telecommunications
`
`link, a radio communications link, an infrared link, a satellite link, a wireless WAN
`
`link, or the like.”).
`
`38. The PTD [first device] determines a “biometric key” [first
`
`authentication information] from the user’s biometric information. See Ex-1004,
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`Maritzen at [0039] (“PTD 100 and privacy card 110 may be within the same
`
`device”); [0044] (“if the biometric input is valid for the device, privacy card 110
`
`creates a biometric key that is transmitted to PTD 100. If privacy card 110 is
`
`within PTD 100, validation of the biometric information may be conducted by
`
`PTD 100.”). The PTD [first device] transmits the biometric key to the clearing
`
`house 130 [second device] via a network. Ex-1004, Maritzen at [0045] (“If the
`
`biometric key is valid, PTD 100 creates a transaction key. In one embodiment, the
`
`transaction key may include the biometric key and a PTD identifier.”); [0046]
`
`(“Once VAPGT 120 receives the transaction key, VAPGT 120 generates a
`
`transaction request….The transaction request is transmitted via communication
`
`link 160 to clearing house 130”); [0090] (“transaction key 340 may be transmitted
`
`directly to clearing house 130”).
`
`39. The clearing house 130 [second device] uses the biometric key [first
`
`authentication information] and a pre-established biometric key [second
`
`authentication information] to authenticate the user. Ex-1004, Maritzen at
`
`[0048] (“Clearing house 130 also verifies that the biometric key is valid by
`
`comparison of the biometric key transmitted to clearing house 130 with a known
`
`biometric key maintained within clearing house 130.”); [0054] (“Once the account
`
`is authorized, clearing house 130 transmits a transaction authorization message via
`
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`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`communication link 160 to VAPGT 120. The transaction authorization message
`
`allows the financial transaction to be completed.”).
`
`VII. SPECIFIC GROUNDS FOR PETITION
`A. Prior Art Patents and Publications
`1. Ex-1004 – Maritzen
`40. U.S. Patent Application Publication No. 2004/0236632 (“Maritzen”)
`
`(Ex-1004) was filed on Dec. 6, 2001 and published on Nov. 25, 2004, more than
`
`one year before the earliest possible priority date of the ’826 patent. I have been
`
`informed that Maritzen accordingly qualifies as prior art under at least 35 U.S.C.
`
`§§ 102(b) and 102(e). Maritzen was not considered during the prosecution of the
`
`’826 patent. Like the ’826 patent, Maritzen relates to a handheld authentication
`
`device (“personal transaction device (PTD) 100”) configured to authenticate a user
`
`based on biometric information and a second device (“clearing house 130”)
`
`configured to authenticate a user based on biometric information. Ex-1004,
`
`Maritzen Abstract; [0039]; [0047].
`
`2.
`41.
`
`Ex-1005 – Jakobsson
`International Patent Application Publication No. WO 2004/051585
`
`(“Jakobsson”) (Ex-1005) was filed on November 26, 2003 and published on June
`
`17, 2004, more than one year before the earliest possible priority date of the ’826
`
`patent. I have been informed that Jakobsson accordingly qualifies as prior art
`
`under at least 35 U.S.C. §§ 102(b) and 102(e). Jakobsson was not considered
`
`- 16 -
`
`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`during prosecution of the ’826 patent. Like the ’826 patent, Jakobsson relates to a
`
`portable authentication device (“user authentication device 120”) configured to
`
`authenticate a user based on biometric information. Ex-1005, Jakobsson at [0013].
`
`Also like the’826 patent, Jakobsson’s system includes secure database (“verifier
`
`105”) that uses stored biometric information to verify a user’s identity.
`
`3.
`Ex-1107 – Niwa
`42. U.S. Patent No. 6,453,301 (“Niwa”) (Ex-1107) issued on September
`
`17, 2002, more than one year prior to the earliest possible priority date of the ’826
`
`patent. I have been informed that Niwa accordingly qualifies as prior art under at
`
`least 35 U.S.C. §§ 102(b) and 102(e). Niwa was filed on February 23, 2000 as
`
`U.S. Patent Application No. 09/510,811 (“Niwa Application”) (Ex-1106), which is
`
`expressly incorporated by reference in Maritzen (Ex-1104). See Ex-1004,
`
`Maritzen at [0043] (“In one embodiment, privacy card 110 is a biometric control.
`
`A suitable biometric control device that may be used is described in U.S. patent
`
`application Ser. No. 09/610,811 [sic] entitled “Method of Using Personal Device
`
`With Internal Biometric In Conducting Transactions Over A Network”, which is
`
`herein incorporated by reference.”).
`
`43. Niwa was not considered during the prosecution of the ’826 patent.
`
`Like the ’826 patent, Niwa is directed toward a secure financial transaction system
`
`that includes a user device (“fingerprint identification device 50”) and a central
`
`- 17 -
`
`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`server configured to authenticate the user (“processing unit 22”). Ex-1007, Niwa
`
`at Abstract; Fig. 1. I understand that Niwa was expressly incorporated by
`
`reference in Maritzen. The serial number of the application was incorrectly listed
`
`in Maritzen, but it was obvious that the incorrect serial number referred to an
`
`unrelated patent and that the Niwa patent was the intended citation.
`
`B. Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 Are
`Obvious in View of Maritzen, Jakobsson, and Niwa
`44. Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 are
`
`obvious in view of Maritzen, Jakobsson, and Niwa as explained in greater detail
`
`below.
`
`1. Independent Claim 1
`a. Preamble
`45. The preamble of claim 1 recites “[a] system for authenticating
`
`identities of a plurality of users, the system comprising.” Maritzen discloses the
`
`preamble of claim 1.
`
`- 18 -
`
`

`

`Declaration of Dr. Victor Shoup in support of Petition for
`Inter Partes Review of U.S. Patent No. 9,100,826
`
`
`
`Ex-1004, Maritzen at Fig. 1
`
`46. As illustrated in Figure 1, Maritzen disc