IPR2018-00810
`
`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
`________________
`
`PATENT OWNER’S EXHIBIT 2015
`DECLARATION OF MARKUS JAKOBSSON
`IN SUPPORT OF PATENT OWNER’S REPLY TO OPPOSITION OF
`CONDITIONAL MOTION TO AMEND
`
`USR Exhibit 2015
`
`
`
`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
`________________
`
`PATENT OWNER’S EXHIBIT 2015
`DECLARATION OF MARKUS JAKOBSSON
`IN SUPPORT OF PATENT OWNER’S REPLY TO OPPOSITION OF
`CONDITIONAL MOTION TO AMEND
`
`USR Exhibit 2015
`
`
`
`IPR2018-00810
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`1.
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`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
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`Opposition of Conditional Motion to Amend. I am being compensated for my time
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`at the rate of $625 per hour. I have no interest in the outcome of this proceeding.
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`2.
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`In preparing this declaration, I have reviewed and am familiar with the
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`Petition for IPR2018-00810, U.S. Patent No. 9,100,826 (hereinafter “’826 patent”),
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`and its file history, and all other materials cited and discussed in the Petition
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`(including all prior art references cited therein) and all other materials cited and
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`discussed in this Declaration including the Conditional Motion to Amend, Paper 19
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`(“Motion”) and Petitioner’s Opposition to the Conditional Motion to Amend, Paper
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`25 (“Op.”).
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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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`USR Exhibit 2015, Page 1
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`I.
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`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. 2004.
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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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`USR Exhibit 2015, Page 2
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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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`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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`USR Exhibit 2015, Page 3
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`IPR2018-00810
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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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`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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`RightQuestion, 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
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`USR Exhibit 2015, Page 4
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`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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`company). I have provided anti-fraud consulting to KommuneData (a Danish
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`government entity), J.P. 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 fraud.
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`II.
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`LEGAL UNDERSTANDING
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`A.
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`14.
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`The Person of Ordinary Skill in the Art
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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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`USR Exhibit 2015, Page 5
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`
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`• the levels of education and experience of persons working in the
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`field;
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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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`16. A person of ordinary skill in the art relevant to the ’826 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 ’826 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 ’826 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 ’826 patent.
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`B.
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`18.
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`Legal Principles
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`I am not a lawyer and will not provide any legal opinions.
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`USR Exhibit 2015, Page 6
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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 ’826
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`patent, Patent Owner has made a conditional motion to amend to substitute the
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`canceled claim(s) with corresponding proposed amended claims 36-61, as set forth
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`in Section III of Ex. 2013 (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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`USR Exhibit 2015, Page 7
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`pointing to such descriptive means as words, structures, figures, diagrams, and
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`formulas that fully 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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`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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`USR Exhibit 2015, Page 8
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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. RESPONSIVE ARGUMENTS TO OPPOSITION
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`A.
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`29.
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`Claim 56 Has Written Description Support
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`I understand that Petitioner contends that substitute claim 56 lacks
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`written description support and is therefore invalid under 35 U.S.C. § 112. Op. at
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`3-4. I respectfully disagree.
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`30.
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`Limitations 56[c] and 56[e] specify that the first authentication
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`information includes a first key encrypted by a second key and that the encrypted
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`first key is decrypted using the second key to retrieve the first key. Motion at B6.
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`The specification describes that a first wireless signal includes “a PKI encrypted
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`one-time DES key.” Ex. 2008 at 49:24-26. The specification further describes how
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`“[t]he second wireless device uses the first public key to decrypt the PKI encrypted
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`DES key.” Id. at 50:30-31. I understand that in response to this disclosure,
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`Petitioner states “a value encrypted with a public key, which is an asymmetric key,
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`could not be decrypted using the same public key. Even with extensive
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`experimentation, it would be impossible for a POSITA to implement encryption
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`and decryption with a public key.” Op. at 4. In my opinion, the specification as
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`USR Exhibit 2015, Page 9
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`written contains an obvious error because a public key cannot be used to decrypt
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`ciphertext.
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`31.
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`I have been informed that an amendment to correct an obvious error
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`does not constitute new matter where the ordinary artisan would not only recognize
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`the existence of the error in the specification, but also recognize the appropriate
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`corrections. The obvious error noted by Petitioner in the ’860 Application would
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`immediately be recognized by a POSITA, who would also recognize the
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`appropriate corrections. In particular, a POSITA would know that a public key
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`cannot be used to both encrypt and decrypt data, and upon identifying this obvious
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`error, a POSITA would also readily recognize two corrections—both very trivial in
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`nature—that would clarify the specification.
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`32.
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`First, in my opinion, since a public key cannot be used to both encrypt
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`and decrypt data, a POSITA would readily understand that the recipient’s public
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`key would have been used to perform encryption of the data (e.g., second wireless
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`device’s public key used to encrypt DES key) and the recipient’s private key would
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`be used to decrypt the data (e.g., second wireless device’s private key used to
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`decrypt DES key). Also, since an asymmetric, public key cannot be used to
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`perform symmetric encryption/decryption, then the key described in the
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`specification as performing the desired symmetric encryption and decryption of the
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`DES key may simply be a symmetric key like the claimed “second key.” In my
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`USR Exhibit 2015, Page 10
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`opinion, both of these corrections in view of the specification’s teachings would be
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`readily recognizable to a POSITA. As such, I believe the specification provides
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`written description support for limitations 56[c] and 56[e].
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`B.
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`Petitioner Fails to address “the digital signature generated using a
`private key associated with the first handheld device”
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`33.
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`In my opinion, Petitioner fails to show that the prior art of record
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`discloses “the digital signature generated using a private key associated with the
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`first handheld device.” Motion at B1 (36[f]). Petitioner ignores this claim
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`limitation in its analysis of the prior art. See Op. at 5-10. Instead, Petitioner focuses
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`only on whether Schutzer discusses a “digital signature,” and neglects to dig
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`deeper as to whether Schutzer’s digital signature is specifically generated using a
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`private key associated with a handheld device. See Op. at 9 (citing Ex. 1030,
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`Schutzer, ¶29). A close review of the cited portion of Schutzer reveals that
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`Schutzer is silent on how the digital signature is generated, such as who or what
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`generated the digital signature. In particular, no explicit or implicit disclosure is
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`made that Schutzer’s digital signature was generated using a private key of a
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`handheld device.
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`34. Also, no implicit disclosure is made in Schutzer that the digital
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`signature is necessarily generated by a private key of the user’s computing device
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`10. For instance, Schutzer’s digital signature may be generated using the private
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`USR Exhibit 2015, Page 11
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`key of a certificate authority and be used as part of a digital certificate to
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`authenticate the user.
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`35. As another example, the digital signature may be that of the user itself
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`and not the user’s device. The distinction here may be subtle yet important. A user
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`may personally have its own private-public key pair that it uses to create digital
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`signatures that can be uniquely associated to him or her. That same user may,
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`however, own multiple different electronic devices that each have their own
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`public-private key pairs that may be used to create digital signatures that can be
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`used to identify the specific device itself and not necessarily its user.
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`36.
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`This same limitation can also be found in substitute claim 45. Motion
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`at B4 (45[c]). Since Petitioner applies the same unpatentability analysis for claim
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`45 as it did for claim 36 (Op. at 11), the same arguments above regarding
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`Petitioner’s failure to establish the limitation “the digital signature generated
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`using a private key associated with the first handheld device” equally apply to
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`claim 45.
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`C.
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`37.
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`Petitioner Fails to Address Several Limitations of Claim 45
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`I understand that Petitioner asserts that “Substitute claim 45 adds
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`similar amendments to claim 10 as substitute claim 36 to 1,” and then summarily
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`concludes that, “Accordingly, substitute claim 45 is obvious for at least the same
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`USR Exhibit 2015, Page 12
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`reasons claims 10 and 36 are obvious.” Op. at 11. But I believe Petitioner’s
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`dismissive analysis neglects limitations that are distinctly unique to claim 45.
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`38.
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`Petitioner fails to address limitations 45[e] and 45[g], which
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`respectively recite, “at least one of the digital signature and/or the one-time code
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`encrypted by the first handheld device” and “decrypting, with the second device, at
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`least one of the digital signature and/or the one-time code encrypted by the first
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`handheld device.” Motion at B3. Petitioner does not address anywhere in its
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`Opposition what prior art reference purportedly discloses these claim features. In
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`my opinion, these limitations are unique to claim 45 and are not found in claim 36.
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`Thus, Petitioner’s summary reliance on its limited analysis of claim 36 as the basis
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`for its opposition to claim 45 is explicitly deficient, leaving Petitioner with no
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`argument whatsoever with respect to limitations 45[e] and 45[g].
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`39. Next, limitation 45[d] requires that a first signal generated “include[]
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`the first authentication information of the first entity, the one-time code, and the
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`digital signature as separable fields of the first signal.” Motion at B4 (emphasis
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`added). Again, this “separable fields” requirement is not present in claim 36 and is
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`consequently not addressed by Petitioner in its analysis of claim 36. See Op. at 5-
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`10. While Petitioner discusses “separable fields” with respect to a different claim,
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`claim 42, Petitioner does not refer back to or cite to claim 42 in its analysis of
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`claim 45.
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`USR Exhibit 2015, Page 13
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`40. Moreover, in my opinion independent claim 45 includes other
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`distinctly different limitations not found in independent claim 36 or dependent
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`claim 42 (e.g., “at least one of the digital signature and/or the one-time code
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`encrypted by the first handheld device” and “decrypting…at least one of the digital
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`signature and/or the one-time code encrypted by the first handheld device”). These
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`limitations have a material impact on how claim 45 comes together as a whole to
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`define a distinctly different invention than claim 36 or claim 42. To satisfy its
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`burden, these differences require that Petitioner articulate in its Opposition how
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`and why the “separable fields” limitation was obvious with respect to claim 45 as a
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`whole. Petitioner does not.
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`41. By neglecting to analyze multiple features of claim 45 in its
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`Opposition, Petitioner fails to make a prima facie showing of unpatentability.
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`D.
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`A POSITA Would Not Combine Jakobsson, Maritzen, and
`Schutzer By Prepending First Authentication Information
`Claims 36 and 45
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`42.
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`I understand that Petitioner argues that a POSITA would be motivated
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`to “add[] the digital signature of Schutzer and one-time code disclosed by
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`Jakobsson to the key of Maritzen” by “prepending or appending values such as
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`Maritzen’s keys, Jakobsson’s one-time code, and Schutzer’s digital signature.” Op.
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`at 10 (emphasis added); see also id. at 13-14 (prepending or appending same
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`values to achieve limitations of claim 42). I strongly disagree. Even assuming that
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`USR Exhibit 2015, Page 14
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`Maritzen’s transaction or biometric key was derived from biometric information (it
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`is not), a POSITA would not prepend or append Maritzen’s keys to Jakobsson’s
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`code and Schutzer’s digital signature because doing so would be redundant.
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`Jakobsson already teaches that its authentication code incorporates biometric data
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`(e.g., authentication code A (K, T, E, P) 292 where P may be biometric data). See
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`Ex. 1005, Jakobsson at [0072], [0073]. Thus, there would be little motivation to
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`make the proposed modification in order to send substantially the same
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`information twice at the same time: once by prepending or appending and another
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`by incorporating the value into an authentication code.
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`43. Moreover, Maritzen frequently states that neither “biometric
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`information identifying the user” nor any other “user information” is transmitted
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`from the user device at any time during a transaction. Ex. 1004, Maritzen at [0044]
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`(“The biometric information identifying the user is not transmitted at any time.”);
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`see also id. at [0045], [0088], [0090], [0109], [0111], [0124], [0128], [0148],
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`[0150], [0164], [0166]. Thus, I believe a POSITA would understand that Maritzen
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`teaches away from prepending/appending and sending the claimed “first
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`authentication information derived from the first biometric information.” As such,
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`in my opinion, independent substitute claims 36 and 45 are novel and non-obvious
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`over the prior art.
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`Claim 42
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`USR Exhibit 2015, Page 15
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`44.
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`Even if it were assumed that Jakobsson’s authentication code was
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`generated without using biometric data (i.e., did not include user data (P)) and
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`Maritzen’s keys supplied information derived from a biometric, I believe a
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`POSITA would still not prepend or append Maritzen’s keys to Jakobsson’s code
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`and Schutzer’s digital signature for Petitioner’s stated purpose of “more securely
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`authenticat[ing] the user.” Jakobsson never discloses an embodiment where an
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`authentication code is generated without use of—at least at some stage—a one-way
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`function, such as a hash function. Even in the embodiment where Jakobsson
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`describes a PIN (P) being appended to authentication code A(K, T, E), the latter
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`value is the result of a one-way function. Id.; See Ex. 1104, Jakobsson at [0073]. In
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`fact, use of a one-way function is critical to Jakobsson’s system because otherwise
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`the system would not be secure. Therefore, in light of the teachings of Jakobsson, I
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`believe a POSITA would not, for example, prepend or append various values
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`without applying a one-way function because certain types of information
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`described in Jakobsson, such as the secret key K or biometric value P, would be
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`put at risk of interception.
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`45. Also, if Maritzen’s biometric key were biometric information, which
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`it is not, then it is well understood that it would suffer from errors, such as
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`translation and rotation errors. These errors would make it practically impossible
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`for the verifier to verify a received authentication code, as it would not know what
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`USR Exhibit 2015, Page 16
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`input to provide to Jakobsson’s one-way combination function for the generation
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`of the verifier-generated authentication code, as the errors are not knowable to the
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`verifier.
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`E.
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`46.
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`Jakobsson and Burnett Fail to Disclose Limitations 56[c], 56[e]
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`I understand that Petitioner relies on the combination of Maritzen,
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`Jakobsson, Niwa, Schutzer, and Burnett in attempting to show that claim 56 is
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`obvious. I believe Petitioner fails to make a prima facie showing of obviousness.
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`47.
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`Petitioner first contends that Maritzen in view of Jakobsson discloses
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`claim limitations 56[c] and 56[e]. Op. at 15 (citing: Ex. 1019, Shoup Decl. at ¶ 55-
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`56; Op. at Section II.D.1.a(2); Ex. 1005, Jakobsson at ¶¶ 6, 7, 21, 58; Ex. 1004,
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`Maritzen at ¶¶ 45-46). However, in my opinion the cited portions of Maritzen and
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`Jakobsson do not disclose that a first key used to encrypt at least a portion of first
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`authentication information is itself encrypted by a second key, which is then
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`decrypted at a second device using the second key.
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`48.
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`For example, Maritzen describes how a “transaction key” may be
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`encrypted using “standard encrypting methods, such as, for example, public key
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`infrastructure (PKI) encryption.” Ex. 1004, Maritzen at ¶ 45. However, I believe
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`Maritzen’s “transaction key” is merely an authentication value and is not an
`
`encryption key that encrypts or decrypts data. See, e.g., id. at ¶ 44-50. Instead,
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`Maritzen simply validates the transaction key by comparing the transaction key to
`
`USR Exhibit 2015, Page 17
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`other keys stored at the clearing house 130 to determine if there is a match. See id.
`
`at ¶ 48. By contrast, the current claims require that “at least a portion of the first
`
`authentication information [is] encrypted by a first key” and the first key is used to
`
`“decrypt[], at the second device, the portion of the first authentication information
`
`encrypted by the first key using the first key.” Motion at B6 (56[c], 56[e]).
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`Maritzen’s transaction key performs no encryption or decryption. Also, I believe
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`the cited portions of Jakobsson fail to disclose the above claim limitations.
`
`49.
`
`Petitioner argues that “[t]o the extent that Maritzen and Jakobsson do
`
`not explicitly discuss encrypting data with a first key and encrypting the first key
`
`with a second key, Burnett discloses this limitation.” Op. at 15. Specifically,
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`Petitioner states that “Burnett discloses that a ‘session key’ ([first key]) used to
`
`encrypt information can be encrypted using a key encryption key (‘KEK’)
`
`([second key]), and that the same KEK can be used to decrypt the first key.” Op. at
`
`15 (citing Ex. 1021, Burnett at 54-55, FIG. 3-1). Petitioner also claims that it
`
`would have been obvious to “modify the authentication information of Jakobsson
`
`by encrypting it with a session key, encrypting the session key with a KEK, and
`
`transmitting the KEK-encrypted session key…to the second device for
`
`decryption as taught by Burnett.” Op. at 17. A close review of Burnett reveals
`
`that Petitioner misunderstands and misapplies Burnett.
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`USR Exhibit 2015, Page 18
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`
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`IPR2018-00810
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`50. Among other things, Chapter 3 of Burnett discusses password-based
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`encryption (PBE). In particular, it describes how a “session key,” which is used to
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`encrypt and decrypt bulk data, may itself be encrypted using another key that is
`
`known as a key encryption key (KEK). Ex. 1021, Burnett at 54. Burnett further
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`discusses how, advantageously, the KEK is not stored and is instead generated
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`as needed at the device to encrypt or decrypt the session key to recover the
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`encrypted data. Id. (“When he needs a KEK to encrypt, [he] will generate it, use
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`it, and then throw it away. When he needs to decrypt the data, he generates the
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`KEK again, uses it, and throws it away.”). In particular, the process uses PBE
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`where a “mixing algorithm” blends a “salt” (i.e., a random value) and a user-
`
`selected password together to generate a KEK. Id. at 55. After the KEK is used to
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`encrypt the session key, it is thrown away and the salt used to generate the KEK is
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`stored alongside the encrypted session key at the device. Id. To decrypt the stored,
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`encrypted session key, the salt is retrieved and input into the same mixing
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`algorithm along with the same password in order to regenerate the same KEK. Id.
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`51.
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`Subsequent pages of Burnett explain that the KEK is personal to each
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`user/device and is not shared with other users/devices. In particular, Burnett
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`discloses:
`
`There are a couple of reasons to use a session key and a KEK.
`First, suppose you need to share the data with other people and
`you want to keep it stored encrypted. In that case, you generate
`USR Exhibit 2015, Page 19
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`
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`IPR2018-00810
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`one session key, and everyone gets a copy of it. Then everyone
`protects his or her copy of the session key using PBE. So rather
`than share a password (something everyone would need for
`decrypting if you had used PBE to encrypt the bulk data), you
`share the key.
`
`Ex. 1021, Burnett at 58 (emphasis added). Thus, if a first device and a second
`
`device were to share a session key used to encrypt and decrypt bulk data, each
`
`would generate its own KEK using its own password and salt to encrypt and store
`
`the shared session key instead of sharing the same password and KEK.
`
`Consequently, the KEK used to encrypt the session key at a first device is not
`
`used to decrypt the encrypted session key at a second device. FIG. 3-4 of
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`Burnett also supports this interpretation because the figure shows how a session
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`key shared by two users, Pao-Chi and Gwen, is encrypted with a KEK unique to
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`each user.
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`52. By contrast, substitute claim 56 requires that the same “second key”
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`used to encrypt the first key at the first handheld device is also used at the second
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`device to decrypt the encrypted first key to retrieve the first key at the second
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`device. Burnett’s KEK is not shared between users and instead each user generates
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`their own KEK to encrypt and store a shared session key using passwords and salts
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`unique to them. Consequently, in my opinion Petitioner fails to establish that
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`Burnett discloses limitations 56[c] and 56[e].
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`USR Exhibit 2015, Page 20
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`
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`53.
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`Similarly, Petitioner’s assertions as to why a POSITA would be
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`motivated to combine Maritzen, Jakobsson, Niwa, Schutzer, and Barnett are also
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`defective. See Op. at 15-16. Barnett never teaches transmitting a KEK-encrypted
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`session key from one user to another since each user generates its own KEK based
`
`on its own password and salt. See Ex. 1021, Barnett at 58-59. In my opinion a
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`POSITA would not be motivated to make Petitioner’s proposed combination that
`
`envisions transmitting KEK-encrypted session keys between users since doing so
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`would require one user to also share its password and salt with the other user so the
`
`latter could decrypt the encrypted session key. See id. at 58 (“So rather than share a
`
`password…”). Consequently, I believe Petitioner fails to establish that the
`
`proposed combination renders claim 56 obvious.
`
`F.
`
`54.
`
`Substitute Claims are Patent Eligible under § 101
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`I understand that Petitioner argues that the substitute claims are
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`unpatentable under § 101 because they purportedly claim patent-ineligible abstract
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`ideas. Op. at 18-24. However, I have been informed that on September 19, 2018,
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`United States Magistrate Judge Sherry R. Fallon for the District Court of Delaware
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`issued a Report and Recommendation (R&R) rejecting similar arguments made by
`
`Petitioner, and recommending that the District Court deny Petitioner’s motion to
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`dismiss under § 101 since the claims of the ’826 patent are “not directed to an
`
`abstract idea because ‘the plain focus of the claims is on an improvement to
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`USR Exhibit 2015, Page 21
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`
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`computer functionality itself, not on economic or other tasks for which a computer
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`is used in its ordinary capacity.’” Ex. 2016, Universal Secure Registry, LLC v.
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`Apple, Inc., 1:17-cv-00585-JFB-SRF, Dkt. 137 at 19 (D. Del. Sep. 18, 2018)
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`(emphasis added). Specifically, I understand that Judge Fallon stated that:
`
`The ’826 patent is directed to an improvement in computer
`functionality, as it requires biometric information to locally
`authe
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