DOCKET NO.: 1033300-00304US2
`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 IPR2018-00812
`
`U.S. Patent No. 8,856,539
`_________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`Apple 1102
`
`
`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 IPR2018-00812
`
`U.S. Patent No. 8,856,539
`_________________________________________
`
`DECLARATION OF DR. VICTOR SHOUP IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`Apple 1102
`
`
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`TABLE OF CONTENTS
`
`Page
`
`D.
`
`TABLE OF CONTENTS .......................................................................................... ii
`I.
`BACKGROUND ................................................................................... 1
`II.
`LEGAL PRINCIPLES .......................................................................... 3
`A.
`Claim Construction ..................................................................... 3
`B.
`Obviousness ................................................................................ 4
`III. DESCRIPTION OF THE RELEVANT FIELD AND THE
`RELEVANT TIMEFRAME ................................................................. 6
`IV. THE ’539 PATENT............................................................................... 6
`A.
`Specification and Claims ............................................................ 6
`B.
`Brief Description of the ’539 Patent Disclosure ......................... 7
`C.
`Prosecution History ................................................................... 10
`LEVEL OF ORDINARY SKILL ........................................................ 26
`V.
`VI. CLAIM CONSTRUCTIONS .............................................................. 27
`A.
`Provider (All Challenged Claims) ............................................ 28
`B.
`Entity (All Challenged Claims) ................................................ 29
`C.
`Time-Varying Multicharacter Code (All Challenged
`Claims) ...................................................................................... 31
`Indication of the Provider (Challenged Claims 1-3, 5-8,
`16-24, and 26-30) ...................................................................... 32
`Account Identifying Information (All Challenged
`Claims) ...................................................................................... 33
`Secure Registry (All Challenged Claims) ................................. 35
`
`E.
`
`F.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`B.
`
`
`VII. CLAIMS 1-3, 5-8, 16-24, 26-30, and 37-38 OF THE ’539
`PATENT ARE UNPATENTABLE UNDER 35 U.S.C. § 103 .......... 36
`A. Overview of Primary Prior Art References .............................. 36
`1.
`Reber ............................................................................... 36
`2.
`Franklin ........................................................................... 37
`Claims 1-3, 5-8, 16-24, 26-30, and 37-38 Are Obvious in
`View of Reber and Franklin ...................................................... 38
`1.
`Independent Claim 1 ....................................................... 38
`2.
`Reasons to Combine Reber and Franklin ....................... 43
`3.
`Dependent Claim 2 ......................................................... 63
`4.
`Dependent Claim 3 ......................................................... 64
`5.
`Dependent Claim 5 ......................................................... 65
`6.
`Dependent Claim 6 ......................................................... 68
`7.
`Dependent Claim 7 ......................................................... 69
`8.
`Dependent Claim 8 ......................................................... 71
`9.
`Dependent Claim 16 ....................................................... 71
`10. Dependent Claim 17 ....................................................... 73
`11. Dependent Claim 18 ....................................................... 73
`12. Dependent Claim 19 ....................................................... 76
`13. Dependent Claim 20 ....................................................... 77
`14. Dependent Claim 21 ....................................................... 79
`15.
`Independent Claim 22 ..................................................... 81
`16. Dependent Claim 23 ....................................................... 83
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`17. Dependent Claim 24 ....................................................... 84
`18. Dependent Claim 26 ....................................................... 84
`19. Dependent Claim 27 ....................................................... 85
`20. Dependent Claim 28 ....................................................... 87
`21. Dependent Claim 29 ....................................................... 87
`22. Dependent Claim 30 ....................................................... 87
`23.
`Independent Claim 37 ..................................................... 88
`24.
`Independent Claim 38 ..................................................... 93
`VIII. CONCLUSION ................................................................................... 95
`IX. AVAILABILITY FOR CROSS-EXAMINATION ............................ 96
`X.
`RIGHT TO SUPPLEMENT ................................................................ 96
`JURAT ........................................................................................................... 97
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`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. 8,856,539 (“’539 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
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`Research Zurich from 1997 to 2002. My work there 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,
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`New York, where I collaborate with the Cryptography Research Group, which
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`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
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`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
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`cryptography, I have made substantial contributions in the sub-areas of digital
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`signatures, public key encryption, hash functions, distributed computation, session
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`key exchange, and secure anonymous transactions.
`
`6.
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`I was also an editor of the ISO18033-2 standard for public-key
`
`encryption, which was published in 2006.
`
`7.
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`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
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`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
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`cryptographic protocol design. In 2005, I published a textbook on the
`
`mathematical underpinnings of cryptography titled A Computational Introduction
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`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 ’539 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. 8,856,539
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`I have been informed that the claim terms in an IPR proceeding
`
`
`16.
`
`should be given their broadest reasonable construction in light of the specification
`
`as commonly understood by a person of ordinary skill in the art. 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 person of ordinary skill in the art 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 person of ordinary skill in the art at the time
`
`the application was filed.
`
`18.
`
`I have been informed and understand that a determination of whether
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`a claim would have been obvious should be based upon several factors, including,
`
`among others:
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` the level of ordinary skill in the art at the time the application was
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`filed;
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` the scope and content of the prior art; and
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` what differences, if any, existed between the claimed invention and
`
`the prior art.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`I have been informed and understand that the teachings of two or
`
`
`19.
`
`more references may be combined in the same way as disclosed in the claims, if
`
`such a combination would have been obvious to one having ordinary skill in the
`
`art. 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 person of ordinary skill in the art 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;
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` whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
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` whether there is some teaching or suggestion in the prior art to make
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`the modification or combination of elements claimed in the patent;
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`and
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`Declaration of Dr. Victor Shoup in Support of Petition for
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` whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
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`20.
`
`I have been informed and understand that one of ordinary skill in the
`
`art has ordinary creativity, and is not an automaton.
`
`21.
`
`I have been informed and understand that in considering obviousness,
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered.
`
`III. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`22.
`I have reviewed and understand the specification, claims, and file
`
`history of the ’539 patent. I have also reviewed the exhibits listed 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.
`
`23. The ’539 patent was filed on June 26, 2007 and issued on October 7,
`
`2014. On its face, it identifies a related patent through a continuation application
`
`that dates back to March 16, 2001.
`
`IV. THE ’539 PATENT
`A.
`Specification and Claims
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`24. Entitled “Universal Secure Registry,” the ’539 patent issued on
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`October 7, 2014 from an application filed on June 26, 2007. The ’539 patent is a
`
`continuation of U.S. Application No. 09/810,703, which was filed on March 16,
`
`2001 (now U.S. Patent No. 7,237,117, Ex-1104).
`
`B.
`Brief Description of the ’539 Patent Disclosure
`25. The ’539 patent describes a secure database called a “Universal
`
`Secure Registry,” which is “a universal identification system … used to selectively
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`provide personal, financial or other information about a person to authorized
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`users.” Ex-1101, ’539 patent at 3:5-9. The patent states that the USR database is
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`designed to “take the place of multiple conventional forms of identification” when
`
`conducting financial transactions to minimize the incidence of fraud. Id. at 3:22-
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`24. The patent states that various forms of information can be stored in the
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`database to verify a user’s identity and prevent fraud: (1) algorithmically generated
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`codes, such as a time-varying multicharacter code or an uncounterfeitable
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`“tokens,” (2) “secret user code” like a PIN or password, and/or (3) a user’s
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`“biometric identification,” such as fingerprints, voice prints, an iris or facial scan,
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`DNA analysis, or a photograph. See id. at 4:4-12, 8:17-47, Fig. 3. The patent does
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`not, however, describe any new technology for generating or combining such
`
`information.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`Instead, the patent emphasizes that the USR database can be
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`26.
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`implemented in “a general purpose computer system” using “a commercially
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`available microprocessor” running “any commercially available operating system.”
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`Id. at 5:63-6:17. The alleged invention is also “not limited to a particular computer
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`platform, particular processor, or particular high-level programming language.” Id.
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`at 6:51-53. The USR database itself “may be any kind of database” and
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`communication with the database may take place over “any [network] protocol.”
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`Id. at 6:18-20, 7:12-22, Fig. 1. This generic database is encrypted using known
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`methods, and may be accessed by providing information sufficient to verify the
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`user’s identity. Id. at 3:5-12.
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`27.
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`In its district court complaint against Apple, USR identified ’539
`
`patent claim 22 as “exemplary” of the other claims of the patent. Ex-1103, USR
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`Compl. ¶ 65. Claim 22, which is illustrated by, for example, Figure 8 (shown
`
`below), is a “method for providing information to a provider [merchant] to enable
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`transactions between the provider and entities [purchaser] that have secure data
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`stored in a [USR] in which each entity is identified by a time-varying
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`multicharacter code.” Id. at 20:4-8. The claimed method includes six steps, which
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`are also depicted in Figure 8: (1) the database receiving a request (e.g., from a
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`merchant) that includes the “time-varying multicharacter code” for the entity (e.g.,
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`a credit card customer) whose account data is stored in the USR (804); (2)
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`comparing and mapping the time-varying multicharacter code for that customer
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`with a time-varying multicharacter code stored in the database (806); (3)
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`determining whether the merchant is in compliance with any access restrictions on
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`that customer’s account (not explicitly shown); (4) accessing the relevant
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`information regarding the customer’s account if the merchant is in compliance
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`(808); (5) providing the customer’s account identifying information (e.g., credit
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`card account number) to a third party that will determine whether to authorize the
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`transaction (808); and (6) authorizing or declining the transaction without
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`providing the credit card account number to the merchant (810/812/814). Id. at
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`12:19-54.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`Prosecution History
`I have been informed that the ’539 patent was filed as U.S.
`
`
`C.
`28.
`
`Application No. 11/768,729 (“’539 application”) on June 26, 2007. The ’539
`
`application claims priority, as a continuation application, to U.S. Application No.
`
`09/810,703, now U.S. Patent No. 7,237,117 (“’117 patent”).
`
`29.
`
`I have been informed that the examiner issued a Non-Final Rejection
`
`on July 20, 2009. See Ex-1105, ’539 Patent File History, 07/20/2009 Non-Final
`
`Rejection. The examiner rejected application claims 1-3, 5-19, and 21-30 (issued
`
`claims 1-2, 4-11, 22-23, and 25-33) as anticipated by U.S. Patent No. 6,941,271
`
`(“Soong”). Id. at 2-3. The examiner also rejected application claims 4 and 20
`
`(issued claims 3 and 24) as obvious over Soong in view of U.S. Patent No.
`
`5,398,285 (“Borgelt”). Id. at 5-6.
`
`30.
`
`I have been informed that Patent Owner responded to the Non-Final
`
`Rejection on November 20, 2009. See Ex-1106, ’539 Patent File History,
`
`11/20/2009 Response to Office Action. Patent Owner canceled several claims and
`
`amended application claims 1, 3-5, 8, 9, 11, 13, 16, 21, and 28 (issued claims 1, 2-
`
`4, 5, 7, 9, 22, 25, and 31). Id. at 8. Claim 16 (which resulted in allowed claim 22),
`
`for example, was amended as follows:
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`31.
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`I have been informed that in refuting the examiner’s anticipation
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`objection in view of Soong, Patent Owner explained that Soong disclosed access to
`
`a site computer through the use of login IDs and passwords requiring that “the user
`
`seeking access to a patient’s records [have] knowledge of the information needed
`
`to login and gain access.” Id. at 9. Patent Owner emphasized the limitations of
`
`application claims 1 and 16, shown below.
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`32.
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`I have been informed that Patent Owner provided the same underlined
`
`emphasis in the claim limitations to refute the obviousness objection. Id. at 9-10.
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`Patent Owner also added application claims 31-40 (issued claims 12-15, 28,
`
`and 34-36). Id. at 6-7.
`
`33.
`
`I have been informed that the examiner issued a Final Rejection on
`
`February 3, 2010. See Ex-1107, ’539 Patent File History, 02/03/2010 Final
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`Rejection. The examiner rejected all claims under 35 U.S.C. § 112 for lack of
`
`written description. Id. at 3.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`I have been informed that Patent Owner filed a Response After a Final
`
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`34.
`
`Office Action on May 3, 2010. See Ex-1108, ’539 Patent File History, 05/03/2010
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`Response After Final Action. Patent Owner canceled application claims 8, 31, and
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`40 without prejudice or disclaimer. Id. at 9. Patent Owner amended application
`
`claims 1-5, 9-16, 18-21, 24-30, 32, 34, 36, and 39 (issued claims 1-4, 5-11, 13, 15,
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`22-25, 26-33, and 36). Claim 16 (which was allowed as claim 22) was amended as
`
`follows:
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`35.
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`I have been informed that Patent Owner argued against the examiner’s
`
`rejection under §112. Id. at 10.
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
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`I have been informed that Patent Owner filed a Request for Continued
`
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`36.
`
`Examination on May 24, 2010 and incorporated the previously filed Response
`
`After Final Office Action. See Ex-1109, ’539 Patent File History, 05/24/2010
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`Request for Continued Examination.
`
`37.
`
`I have been informed that the examiner issued a Non-Final Rejection
`
`on December 22, 2010. See Ex-1110, ’539 Patent File History, 12/22/2010 Non-
`
`Final Rejection. The examiner rejected application claims 1-5, 9-16, 18-21, 24-30,
`
`32-39, and 41-45 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No.
`
`7,571,139 (“Giordano”) in view of U.S. Patent App. Publication US 2006/0256961
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`(“Brainard”) (this reference corresponds with U.S. App. No. 11/265,510). Id. at 2.
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`The examiner explained that Giordano teaches the secure registry system, but
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`“does not explicitly teach a time-varying code.” Id. at 3. The examiner also
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`explained that Brainard taught a time-varying multicharacter code to secure data
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`and data access at [paragraphs 0019 and 0020] of the reference. Id.
`
`38.
`
`I have been informed that Patent Owner responded to the Non-Final
`
`Rejection on April 18, 2011. See Ex-1111, ’539 Patent File History, 04/18/2011
`
`Response to Office Action. Patent Owner argued in response that the references
`
`did not teach the limitations of “a processor . . . configured to map the time-
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`varying multicharacter code to secure data including information required to
`
`provide the services…” as in application claim 1, nor a method including
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`“mapping the time-varying multicharacter code to information required to
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`provide the services, …” Id. at 2 (emphasis in original).
`
`39.
`
`I have been informed that the examiner issued a Final Rejection on
`
`June 29, 2011. See Ex-1112, ’539 Patent File History, 06/29/2011 Final Rejection.
`
`The examiner reiterated that the combination of Giordano and Brainard taught the
`
`mapping of secure data based on the time-varying multicharacter code. Id. at 2-3.
`
`40.
`
`I have been informed that Patent Owner filed a Request for Continued
`
`Examination on November 29, 2011. See Ex-1113, ’539 Patent File History,
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`11/29/2011 Request for Continued Examination. Patent Owner also submitted
`
`amendments that accompanied the RCE. See Ex-1114, ’539 Patent File History,
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`11/29/2011 Response to Office Action. Patent Owner amended application claims
`
`1-5, 9-16, 18-21, 24-30, 32-39, and 41-45 (issued claims 1-4, 5-15, 16-20, and 22-
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`36). Id. at 9. Claim 16 (which was allowed as claim 22) was amended as follows:
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`Declaration of Dr. Victor Shoup in Support of Petition for
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`41.
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`I have been informed that Patent Owner further sought to distinguish
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`the application from Giordano by providing the following support:
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`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`
`
`
`Id. at 9-10. The examiner issued a Non-Final Rejection on March 6, 2012. See
`
`Ex-1115, ’539 Patent File History, 03/06/2012 Non-Final Rejection. The examiner
`
`rejected application claims 1, 3-5, 9-16, 19-21, 24-30, 32-39, and 41-46 under 35
`
`U.S.C. § 103(a) as unpatentable over Giordano in view of U.S. Patent No.
`
`5,971,272 (“Hsiao”). Id. at 2. The examiner reiterated that Giordano discloses a
`
`secure registry system but does not explicitly teach a time-varying code. Id. at 3.
`
`The examiner found it would have been obvious to combine Giordano with Hsiao
`
`for the missing element. Id.
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`- 17 -
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`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`I have been informed that Patent Owner conducted an examiner
`
`
`42.
`
`interview on August 30, 2012. See Ex-1116, ’539 Patent File History, 09/06/2012
`
`Response to Office Action at 10. Patent Owner argued that “Hsiao does not teach
`
`or suggest a ‘time-varying multicharacter code mapped to each entity . . .’” Id.
`
`The parties did not reach an agreement. Id.
`
`43.
`
`I have been informed that Patent Owner responded to the Non-Final
`
`Rejection on September 6, 2012. See Ex-1116, ’539 Patent File History,
`
`09/06/2012 Response to Office Action. Patent Owner added application claims 47
`
`and 48 (issued claims 37 and 38). Id. at 10. Patent Owner amended application
`
`claims 1, 9, 16, and 41-46 (issued claims 1, 5, 22, and 16-21). Id. Claim 16
`
`(which was allowed as claim 22) was amended as follows:
`
`
`
`- 18 -
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`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`I have been informed that Patent Owner first argued that “Hsiao does
`
`
`44.
`
`not cure the deficiencies of Giordano because, in Hsiao, the user necessarily also
`
`provides a static identification for an entity in the form of an account number:
`
`‘verifying that a user has entered a valid account identifier as a preliminary
`
`condition to the account access.” Id. at 11 (emphasis in original). Patent Owner
`
`also reiterated the argument that Hsiao did not teach the claimed mapping. Id. at
`
`12.
`
`45.
`
`I have been informed that the examiner issued a Final Rejection on
`
`December 18, 2012. See Ex-1117, ’539 Patent File History, 12/18/2012 Final
`
`Rejection. The examiner rejected application claims 1, 3-5, 9-16, 19-21, 24-30,
`
`32-39, and 41-48 (issued claims 1-4, 5-15, 16-20, and 22-38) as obvious over
`
`Giordano in view of U.S. Patent No. 5,657,388 (“Weiss ‘388”). Id. at 2. Similar
`
`to the previous rejections, the examiner indicated that Giordano teaches the secure
`
`registry system and Weiss ‘388 teaches the time-varying code. Id. at 3.
`
`46.
`
`I have been informed that following an interview on April 9, 2013,
`
`Patent Owner filed an amendment to application claim 1. See Ex-1118, ’539
`
`Patent File History, 04/12/2013 Response After Final Action at 10. Patent Owner
`
`amended application claims 1, 16, 44, 47, and 48 (issued claims 1, 22, 19, 37, and
`
`38). Claim 16 (allowed claim 22) was amended as follows:
`
`- 19 -
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`
`
`
`
`47.
`
`I have been informed that Patent Owner argued that the amendments
`
`to claim 1 distinguished the claim over Giordano. However, Patent Owner did not
`
`indicate where the specification offered support for this amendment. Id. at 11.
`
`Patent Owner provided a similar argument for the allowance of application claims
`
`16, 47, and 48 (issued claims 22, 37, and 38).
`
`48.
`
`I have been informed that Patent Owner’s Response After Final Office
`
`Action was noted by the examiner in an Advisory Action on May 1, 2013. See Ex-
`
`
`
`- 20 -
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`
`1119, ’539 Patent File History, 05/01/2013 Applicant Initiated Interview
`
`Summary.
`
`49.
`
`I have been informed that Patent Owner filed a Request for Continued
`
`Examination (RCE) on May 20, 2013. See Ex-1120, ’539 Patent File History,
`
`05/20/2013 Request for Continued Examination. Patent Owner included
`
`amendments and arguments with the RCE, which assumed the entry of the
`
`previous amendments submitted previously on April 12, 2013. See Ex-1120,’539
`
`Patent File History, 05/20/2013 Response to Office Action at 10. Patent Owner
`
`amended application claims 1, 16, 47, and 48 (issued claims 1, 22, 37, and 38).
`
`Claim 16 (allowed claim 22) was amended as follows:
`
`
`
`- 21 -
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`I have been informed that Patent Owner argued that neither Giordano
`
`
`50.
`
`nor Weiss ‘388 “teach or suggest ‘a restriction mechanism configured to determine
`
`compliance with any access restrictions for the first party to secure data for
`
`completing the transaction’” as indicated in amended application claim 1. Id. at
`
`11. Patent Owner made similar arguments with respect to application claims 16,
`
`47, and 48 (issued 22, 37, and 38). Id. at 12-13.
`
`51.
`
`I have been informed that a new examiner issued a Non-Final
`
`Rejection on October 2, 2013. See Ex-1121, ’539 Patent File History, 10/02/2013
`
`Non-Final Rejection. The examiner withdrew the previous objections, instead
`
`rejecting application claims 1, 3-5, 9-16, 19-21, 24-30, 32-39, and 41-48 under 35
`
`U.S.C. § 103(a) as unpatentable over Giordano in view of U.S. Patent No.
`
`7,742,967 (“Keresman”). Id. at 3. Similar to the previous rejections, the examiner
`
`rejected application claims 1, 47, and 48 (issued claims 1, 37, and 38), explaining
`
`that Giordano teaches the secure registry system and Keresman “explicitly
`
`disclos[es] the use of time-varying multi-character codes for identity verification
`
`and authentication” and additionally discloses “a restriction mechanism that can
`
`specify and enforce access restrictions for the first party to secure data for
`
`completing the transaction.” Id. at 5 (citing Keresman at column 6, lines 45-65).
`
`52.
`
`I have been informed that the examiner made similar observations as
`
`to application claims 16 and the dependent claims within the application. Id. The
`
`- 22 -
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`
`examiner also noted that “[a]pplicant is advised that should claim 1 be found
`
`allowable, claim 47 will be objected to . . . as being a substantial duplicate
`
`thereof.” Id. at 3.
`
`53.
`
`I have been informed that Patent Owner replied to the Non-Final
`
`Rejection on January 2, 2014. See Ex-1122, ’539 Patent File History, 01/02/2014
`
`Response to Office Action. Patent Owner amended application claims 1, 16, 44,
`
`and 47 (issued claims 1, 22, 19, and 37). Id. at 11. Claim 16 (allowed claim 22)
`
`was amended as follows:
`
`
`
`
`
`- 23 -
`
`
`
`Declaration of Dr. Victor Shoup in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,856,539
`
`I have been informed that in challenging the examiner’s rejection of
`
`
`54.
`
`claim 1 in view of Giordano, Patent Owner emphasized the current amendment to
`
`traverse the rejection. Id. at 12.
`
`55.
`
`I have been informed that Patent Owner similarly argued that the
`
`amendments to application claims 16, 47, and 48 render the claims non-obvious
`
`over Giordano in view of Keresman. Id. at 13-15.
`
`56.
`
`I have been informed that Patent Owner conducted an examiner
`
`interview on January 24, 2014. S
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