` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
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`VISA INC. and VISA U.S.A., INC.,
` Petitioners, No. IPR2018-01350
`vs. U.S. PATENT
`UNIVERSAL SECURE REGISTRY LLC, NO. 8,856,539
` Patent Owner.
`
` DEPOSITION OF BJORN MARKUS JAKOBSSON, Ph.D.
` REDWOOD SHORES, CALIFORNIA
` Tuesday, October 1, 2019
`
`Reported by:
`JANIS JENNINGS, CSR No. 3942, CLR, CCRR
`Job No. 169162
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`VISA - EXHIBIT 1023
`Visa Inc. et al. v. Universal Secure Registry LLC
`IPR2018-01350
`
`
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`Page 2
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` DEPOSITION OF BJORN MARKUS JAKOBSSON, Ph.D.,
`taken on behalf of the Petitioners, at 555 Twin Dolphin
`Drive, Redwood Shores, California, beginning at
`9:00 a.m. on Tuesday, October 1, 2019, before
`Janis Jennings, Certified Shorthand Reporter No. 3942,
`CLR, CCRR.
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`APPEARANCES:
`
` ON BEHALF OF PETITIONERS:
` WILSON SONSINI GOODRICH & ROSATI
` 650 Page Mill Road
` Palo Alto, California 94304
` BY: MATTHEW ARGENTI, ESQ.
`
` ON BEHALF OF PATENT OWNER:
` QUINN EMANUEL URQUHART & SULLIVAN
` 50 California Street
` San Francisco, California 94111
` BY: BRIAN MACK, ESQ.
`
` ALSO PRESENT:
` CHRISTINA HOLLANDER, ESQ., Visa Inc.
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` I N D E X
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`WITNESS EXAMINATION
`BJORN MARKUS JAKOBSSON, Ph.D.
`
` BY MR. ARGENTI 6
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` E X H I B I T S
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`EXHIBIT PAGE
`Exhibit 1001 United States Patent No. 8,856,539 30
`Exhibit 1005 PCT WO 00/14648 52
`Exhibit 1007 United States Patent No. 6,820,204 59
`Exhibit 2008 Patent Application No. 09/810,703 10
` and issued as Patent No. 7,237,117
`Exhibit 2010 Declaration of Markus Jakobsson in 15
` Support of Patent Owner's
` Conditional Motion to Amend
`Exhibit 2011 Declaration of Markus Jakobsson in 7
` Support of Patent Owner's Reply to
` Opposition of Conditional Motion
` to Amend
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` REDWOOD SHORES, CALIFORNIA;
` TUESDAY, OCTOBER 1, 2019; 9:00 A.M.
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`Page 6
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` BJORN MARKUS JAKOBSSON, Ph.D.,
` The witness herein, was sworn and
` testified as follows:
`
` EXAMINATION
`BY MR. ARGENTI:
` Q. Good morning.
` A. Good morning.
` Q. Could you please state your name for the
`record?
` A. Bjorn Markus Jakobsson.
` Q. And do you understand you are providing your
`testimony under oath and you are expected to tell
`the truth?
` A. Yes.
` Q. Is there any reason that you cannot provide
`complete and accurate testimony today?
` A. Not that I'm aware of.
` Q. Have you taken any medication that would
`prevent you from giving accurate answers?
` A. No.
` Thank you.
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` MR. ARGENTI: I just handed you what has
`been marked as Exhibit 2011 in IPR2018-01350.
` (Exhibit 2011 identified for the record.)
`BY MR. ARGENTI:
` Q. Do you recognize this document?
` A. Yes, I do.
` Q. What is it?
` A. It is my declaration.
` Q. This declaration was submitted in support of
`USR's reply regarding its Motion to Amend; correct?
` A. Yes.
` Q. If you turn to the last page of your
`declaration, please.
` Is that your signature?
` A. Yes.
` Q. Did you carefully review this declaration to
`ensure its accuracy before signing it?
` A. I did. If there's anything I see that is
`incorrect as we go through it, I'll point it out to
`you.
` Q. Okay. Sitting here today, do you believe
`the declaration is accurate?
` A. Yes.
` Q. Okay. Is there anything about your
`declaration at this point that you'd like to modify
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`or correct?
` A. Not that I can think of.
` Q. Did you do anything to prepare for this
`deposition?
` A. Yes.
` Q. What did you do?
` A. Last Friday I had a meeting on the phone
`with some of the counsel that I'm working with on
`this case.
` Q. Who specifically was on the call?
` A. Brian Mack, sitting next to me, was on
`the call, Razmig Messerian was on the call, and
`Dan Volkmuth was on the call.
` Q. And how long did that call last?
` A. Roughly one hour, 45 minutes.
` Q. Did you do anything else to prepare for the
`deposition?
` A. Yes.
` Q. What?
` A. Among other things, I read my declaration.
` Q. Okay. Did you review any other documents
`beyond your declaration in preparation for the
`deposition?
` A. Yes.
` Q. Which documents?
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` A. I reviewed portions of Brener, I reviewed
`portions of the '729 application, and I reviewed
`portions of one more document. I'm sorry, it's one
`of the prior art that I forget the name of right
`now.
` Q. Was it Desai?
` A. Yes.
` Q. Other than that phone call on Friday,
`did you have any other meetings or phone calls to
`prepare for the deposition?
` A. I had a very brief phone call with Razmig
`yesterday.
` Q. He was -- Raz was the only one on the line?
` A. Yes.
` Q. And about how long was that call?
` A. Roughly 20 minutes.
` Q. Okay. Could you turn to paragraph 29 of
`your declaration, please.
` And in this paragraph, starting a few lines
`down, you discuss the Figure 8 embodiment of the
`'729 application; correct?
` A. Yes.
` Q. And in that embodiment the user provides a
`secret code to a merchant; correct?
` A. May I please ask you for a copy of the '729
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`application.
` Q. Sure. Which is 2008, I want to say. Let me
`make sure.
` A. I think you're right, but I'm not sure.
` (Exhibit 2008 identified for the record.)
`BY MR. ARGENTI:
` Q. I'm not trying to trick you with that. I
`get confused between the two applications that were
`initially relied on. I believe 2008 is the right
`one.
` I guess we could always just check the quote
`here and make sure it matches up.
` A. I think it does.
` Q. Okay. Yes.
` So it looks like you're referring to a
`section of Exhibit 2008 that begins on page 17 down
`at line 27.
` Do you see that?
` A. What page did you say?
` Q. Page 17 at line 27.
` A. Right. Now, if you forgive me, let me
`review this paragraph before you ask the question --
` Q. Of course.
` A. -- just to refresh my recollection.
` Yes.
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` Q. Okay. So going back to my question. In the
`Figure 8 embodiment the user provides a secret code
`to a merchant; correct?
` A. Do you mean "the user" is a person?
` Q. Let me read from your declaration where you
`are quoting the '729 patent application where you
`say:
` "It describes an embodiment for
` facilitating purchase of goods or
` services in connection with Figure 8
` where the user initiates a purchase,
` enters a secret code in the electronic
` ID device and presents the resultant
` code to the merchant."
` Do you see that?
` A. Yes.
` Q. And that's quoting a portion of the
`'729 application at 17, lines 27 through 30; right?
` A. Yes.
` Q. Okay. So then my question again is: In
`this Figure 8 embodiment the user provides a secret
`code to a merchant; correct?
` A. It says, "presents the resultant code." It
`doesn't clarify that this is the secret code.
` Q. Okay. So the user provides a resultant code
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`to a merchant. Do you agree?
` A. That's what it says, yes.
` Q. Okay. Would it be accurate to say that
`the user communicates the resultant code to the
`merchant?
` MR. MACK: Objection. Form.
` THE WITNESS: The code is communicated to
`the merchant.
`BY MR. ARGENTI:
` Q. By the user; correct?
` A. Well, it doesn't say. It could be by the
`user or it could be by the user device.
` Q. So in the '729 application when it says the
`user "presents the resultant code to the merchant,"
`in your opinion that is not necessarily a
`communication from the user to the merchant?
` MR. MACK: Objection. Form.
` THE WITNESS: In this context a person of
`skill in the art would have understood that it could
`either be a human action or a device action that
`causes the communication of the resultant code.
`BY MR. ARGENTI:
` Q. And which one of those two options, if
`either, would be a communication from the user to
`the merchant?
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` A. That's not quite what I said. I tried to
`clarify by saying that the code is communicated to
`the merchant. A person of skill in the art reading
`this would understand that either the user person,
`that is, would convey the code, the resultant code,
`or the device would cause the conveyance of the
`resultant code.
` Q. And let's take each of those one at a time.
` In the example you gave that the user
`conveys the code to the merchant, would you consider
`that a communication from the user to the merchant?
` MR. MACK: Objection. Form.
` THE WITNESS: I would have to read the --
`this document clearly to see how they use the word
`"communicate." It's not something I've been asked
`to consider.
`BY MR. ARGENTI:
` Q. You understand you're offering opinions that
`the '729 application provides a written description
`for a claim limitation involving the term
`"communicate" --
` A. Yes.
` Q. -- correct?
` A. Yes.
` Q. And you have not considered the way that the
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`'729 application uses the term "communicate"?
` A. I have, but I haven't considered your
`question.
` Q. My question is very simple. You provided an
`example whereby the user conveys the resultant code
`to the merchant. Is that the user communicating the
`code to the merchant?
` MR. MACK: Objection. Form.
` THE WITNESS: Let me see if I can find
`something about that in my declaration.
` May I ask you to reformulate the question,
`please.
`BY MR. ARGENTI:
` Q. In the example that you gave where the user
`conveys the resultant code to the merchant, in your
`mind would that constitute the user communicating
`the resultant code to the merchant?
` A. I think I'd like to ask you for the Motion
`to Amend, please.
` Q. Unfortunately I don't have the Motion
`to Amend. I'm sure we can print copies of it
`if it would be helpful. I do have your initial
`declaration in support of the Motion to Amend.
`Would that --
` A. I'm not sure.
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` Q. -- be helpful?
` A. What I'm looking for would be the claims,
`the proposed amended claims, in order to recall my
`thinking around communicating.
` MR. ARGENTI: Let's go off the record for a
`minute.
` (Off the record.)
` MR. ARGENTI: We can go back on.
` (Exhibit 2010 identified for the record.)
`BY MR. ARGENTI:
` Q. So, Dr. Jakobsson, I will hand you
`Exhibit 2010, which is your declaration in support
`of the Motion to Amend, and I will direct you to the
`section beginning at page 8. I believe the listing
`of the amended claims begins at page 9.
` A. Thank you so much.
` Q. Is that the information you were looking for
`so we don't need to get a copy of the Motion to
`Amend at this point?
` A. I think this will help.
` Q. Okay.
` MR. MACK: Thanks.
` THE WITNESS: I don't remember a finding on
`that.
`/ / /
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`BY MR. ARGENTI:
` Q. So in that Exhibit 2010, your first
`declaration with respect to the Motion to Amend,
`we look at Claim 39, you see the second added
`limitation includes a clause "without the secure
`registry system communicating with the entity."
` Do you see that?
` A. Right.
` Q. And I'm asking you questions about your
`understanding of what "communicating with" means in
`the context of the '539 patent and its priority
`applications.
` Do you understand that?
` A. Yes.
` Q. And you're telling me that you don't have
`an opinion on what it means for the user/entity to
`communicate with something; is that right?
` A. No, that's not what I'm saying. Here in
`this limitation it says that the secure register
`systems communicates with the entity rather without
`it communicating with.
` You're asking me about the entry by a person
`of information, I believe. Is that correct?
` Q. I'm asking you about the "conveyance," I
`believe was your word, of the resultant code to
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`the merchant and whether that constitutes a
`communication from the user/entity.
` A. So I can -- I have not considered the case
`in which a user performs a manual action in order
`for this information to be conveyed. An example of
`a manual action would be to enter something on a
`keyboard associated with a merchant, for example.
` I have considered communicating in the
`context of the device associated with the user
`transmitting, for example, over a radio transmission
`information to the merchant. That would be
`communicating. I think you're asking about the
`former case.
` Q. A manual action, such as entering something
`on a keyboard. So if a user is sitting at a
`computer terminal and enters keystrokes that cause a
`resultant code to be sent to a merchant, would that
`be a communication from the user to the merchant, in
`your mind?
` A. So the keyboard that you're speaking of, is
`that associated with the user device or is that part
`of the terminal for the merchant?
` Q. Let's take them both one at a time.
` A. Okay. So if the keyboard is associated with
`the device of the user, then the transmission from
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`the device to the merchant would be communication.
` Q. And the device of the user, such as a
`personal computer at home, at the user's home?
` A. That would be one example. Now, I think
`you're asking me about the other case in which a
`user enters on -- not on his own device but on a
`merchant-associated device, information, and you're
`asking me if that is the user communicating. That
`is the case that I have not considered.
` Q. And just so I understand, when you say "a
`merchant-associated device," can you give me an
`example of what that might be?
` A. For example, a point of sale terminal.
` Q. Okay.
` A. So that is not a user device, but it's
`the -- what we might call a merchant device.
` Q. So if the user enters, for example, a PIN
`at a merchant point of sale terminal and then that
`generates a resultant device that the merchant
`receives, that is not a communication from the user,
`in your mind. Do I have that right?
` A. That's not what I'm saying.
` Q. Oh, okay.
` A. I'm saying that's the case I have not
`considered. I think that's what you're asking me
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`about.
` Q. Okay. What about if the device is a user's
`phone and the user enters a PIN into the phone, it
`generates a resultant code, and the user verbally
`tells the merchant the resultant code, would that be
`a communication from the user to the merchant?
` MR. MACK: Objection. Form.
` THE WITNESS: That's -- it feels like a
`reformulation of the one that you asked before. I
`haven't considered this.
` So I have considered communication in the
`context of device-to-device. I have not considered
`whether conveyance by a person constitutes
`communication.
` I should clarify. I can't recall having
`opined on that.
`BY MR. ARGENTI:
` Q. So let me go back because I didn't think it
`was a reformulation. When we talk about a point of
`sale device, that's the thing that generates a code
`and then the merchant receives the code by virtue
`of the point of sale device. There's no verbal
`communication.
` A. So I'm not sure I understand your situation
`here. Would you describe a situation in which you
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`enter a store and describe the different devices and
`describe what you do.
` Q. I think we've gone down that path enough.
`I want to get back to the '729 application. In the
`context of those we've talked about some examples
`that you think it could possibly be. I want to get
`back to the '729 application and get back to this
`sentence that you quote in your declaration where
`the user "presents the resultant code to the
`merchant."
` And I want to understand your opinion
`whether that is or is not a communication from the
`user to the merchant.
` A. I would have to consider that. That is not
`what I have opined on.
` Q. Okay. So you are unable to tell me whether
`that sentence from the '729 application provides an
`example of the user communicating the resultant code
`to the merchant; correct?
` A. That's not what I'm saying. I'm saying I
`don't have an opinion on it right now.
` Q. Okay.
` A. But I might be able to give you an opinion
`on it later on after I have considered it.
` Q. Later on during your deposition?
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` A. I don't know.
` Q. Okay. At this point you have no opinion
`whether the quoted sentence in your declaration
`describing the user presenting the resultant code
`to the merchant is an instance of the user
`communicating the resultant code to the merchant;
`right?
` A. I would have to consider it in order to have
`an opinion.
` Q. Okay. So then the user takes that resultant
`code, in the example in the '729 application, and
`adds additional information regarding a requested
`purchase and sends that transaction request to the
`secure registry; correct?
` A. No.
` I would like to ask you to tell me where you
`are reading from.
` Q. That's coming from paragraph 29 of your
`declaration where you are addressing and quoting
`sections of the '729 application.
` A. Okay.
` Q. Bottom of page 9 of your declaration.
` A. Okay. Would you say it again, please. I
`wasn't sure I got it.
` Q. Once the user -- sorry. Strike that.
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` Once the merchant receives the resultant
`code, the merchant adds additional information
`regarding a requested purchase and sends a
`transaction request to the secure registry; correct?
` A. Yes.
` Q. Okay. And it would be accurate to say that
`the resultant code is communicated to the secure
`registry as part of that transaction request;
`correct?
` A. So this is a communication by the merchant.
`You're talking about one or more packets, for
`example, that are communicated from the merchant to
`the USR.
` Q. Yes.
` A. Yes.
` Q. And it's your opinion that this example
`from Figure 8 does not involve a communication from
`the user to the secure registry; correct?
` A. Yes.
` Q. Why, in your view, is the transmission
`of the resulting code to the secure registry not
`communication from the user?
` A. Let me give you an example to explain how
`I understand "communication." So say that you are
`to send me an email. You would address it with my
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`email address and you would write the email and
`you would hit "Send." And the email would not go
`straight to me, it would be sent to some number of
`proxies. You actually did not intend specifically
`to send it to those proxies. You did not address
`the email to those proxies; therefore, you don't
`communicate with those proxies. Who you're
`communicating is the party you're addressing it
`to when the message is just being transmitted.
` Understanding "communicating with" in
`this sense, the proxies along the line were not
`communicated with because they are not the intended
`recipient here. In this sense a user is not
`communicating with the USR. The user actually
`doesn't need to know that the USR exists. The
`merchant needs to know that the USR exists, and the
`merchant will communicate with the USR. It will
`send, as it's described here, the code from the
`secure ID, the store number, and the amount of the
`purchase from Figure 8, Box 804.
` So this corresponds to the merchant
`communicating something to the USR, not to the user
`doing so.
` Q. Okay. That's helpful. Thank you.
` Still in paragraph 29, at the end of the
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`paragraph you discuss claims 39 and 48.
` Do you see that?
` A. Yes.
` Q. And you say that those claims "limit one-way
`communication from the secure registry with the
`entity."
` Do you see that?
` A. Would you say that again, please.
` Q. You say that Claims 39 and 48 "limit one-way
`communication from the secure registry with the
`entity."
` Do you see that?
` A. Right.
` Q. Okay. And that's because those claims,
`39 and 48, say the transaction request is received
`without the secure registry communicating with the
`entity. Correct?
` A. Yes.
` Q. So, in your view, claims 39 and 48 do not
`prohibit communication from the user to the secure
`registry. Is that right?
` A. That is correct.
` Q. Claims 39 and 48 only prohibit communication
`from the secure registry to the user, in your mind;
`is that right?
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` A. Yes.
` Q. Why doesn't the language "without the
`secure registry communicating with the entity" cover
`communications sent from the user to the secure
`registry?
` MR. MACK: Objection. Form.
` THE WITNESS: That would correspond to
`communication between the parties. "Communication
`between" would indicate two-way; whereas
`"communicating with" in the context of the -- I
`forgot the number -- the application of
`Exhibit No. 2008. '925?
`BY MR. ARGENTI:
` Q. '729.
` A. '729. '729. In the context of the '729,
`"communicating with" has a direction.
` Q. Would another way of saying that be that
`your understanding of the term "communicating
`with" in this context is that it refers only to
`transmission of information, not receipt of
`information?
` A. Then when that is meant, it's saying
`"communication between" to clarify that it is a
`two-way street.
` Q. So if it says "communicating with," it's
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`talking about transmitting information to somebody
`else; correct?
` A. In the context of the '729 patent, yes.
` Q. And if it was going to talk about two-way
`communication, transmission, and receipt, it would
`use the term "communicating between"?
` A. Yes.
` Q. Okay. And is that also true in your
`understanding in the context of the '539 patent
`itself?
` A. I'm not sure I understand your question.
` Q. Well, you were very careful, to your
`credit, to say that that understanding of the term
`"communicating with" applies in the context of the
`'729 patent. Right?
` A. I'm not sure I understand your question. Do
`you mean the '729 application?
` Q. Sorry. Yes, the '729 application.
` A. Okay.
` Q. My question is just simply: Does that
`understanding also apply to the '539 patent?
` A. Yes.
` Q. So if I were to say "the secure registry
`communicates with the entity," to you that means
`that the secure registry transmits information to
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`the entity; right?
` A. Yes.
` Q. In your view, saying "the secure registry
`communicates with the entity" does not mean that the
`entity transmits information to the secure registry;
`is that correct?
` A. So when the -- when they both communicate
`with each other, then the '729 application calls
`that "between," to say "communicating between." So
`the distinction that I made in the context of the
`'729 application is between "communicating between"
`and "communicating with" indicating whether it's
`two-way or just one-way.
` Q. Okay. And saying that "the secure registry
`communicates with the entity" also does not mean
`simply that the secure registry is able to send
`information to the entity, does it?
` MR. MACK: Objection. Form.
` THE WITNESS: I don't think I understand
`your question.
`BY MR. ARGENTI:
` Q. Does saying that "the secure registry
`communicates with the entity" require an actual
`transmission of information?
` A. I'd have to look at the context to
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`understand that. It's not something I've
`considered.
` Q. Okay. So sitting here today, you have
`not considered whether the term "the secure registry
`communicates with the entity" could refer to simply
`an open, available channel of communication.
` A. I've considered without the secure registry
`communicating with the entity, which seems more
`relevant to the claim language.
` Can you ask your question in the context of
`that phrase?
` Q. So if the -- if the term says that something
`happens without the secure registry communicating
`with the entity, would that be satisfied if the
`secure registry had an available channel for
`communication but was not actually transmitting
`information?
` MR. MACK: Objection. Form.
` THE WITNESS: I don't know. I haven't
`considered that. I would have to read the
`specifications carefully with that question in mind
`to be able to answer.
`BY MR. ARGENTI:
` Q. And would you have the same answer if the
`term were "without the entity communicating with the
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`secure registry"?
` A. Would you -- would you restate your
`question, please.
` Q. Sure. If the claim term says that something
`happens without the entity communicating with the
`secure registry, would that be satisfied if the
`entity had an available channel for communication
`with the secure registry but was not actually
`transmitting information?
` MR. MACK: Objection. Form.
` THE WITNESS: I haven't considered this.
`BY MR. ARGENTI:
` Q. Let's turn to paragraph 31 of your
`declaration.
` A. Give me a moment, please.
` Q. Sure.
` A. Yes.
` Q. Okay. And the last sentence of that
`paragraph reads:
` "While, the specification does describe
` how biometric information may be stored
` at the USR database," and you have a cite:
` "In my opinion a POSITA would understand
` based on the claims' plain language that
` the claims do not require such
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` information to be stored at the USR
` database."
` Do you see that?
` A. Yes.
` Q. Are you aware of anything in the
`'729 application describing storing biometric
`verification information somewhere other than the
`USR database?
` A. Let me take a look.
` May I bother you for the '539 patent? I
`don't remember the exact page I'm looking for in the
`'729.
` MR. ARGENTI: All right. I can hand you a
`copy of Exhibit 1001, the '539 patent.
` (Exhibit 1001 identified for the record.)
` THE WITNESS: So I know there are two
`locations that describe this. I can find one of
`them. So let me start with that one and we can look
`for the other one later.
`BY MR. ARGENTI:
` Q. Okay.
` A. In the '729 patent application on page 12,
`starting at line 20. I'm going to read you a
`portion here. It says:
` "Likewise, various types of biometric
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` information may be stored in the
` verification area of the database entry
` to enable the identity of the user
` possessing the identifying device to be
` verified at the point of use."
` So the verification area of the database
`entry corresponds to something associated with
`the USR. And the various type of biometric
`information may be stored there in order to verify
`the biometrics at the point of use. It doesn't have
`to, as I understand it. And a person of skill in
`the art reading this sentence would have known that
`this is one option.
` And another option that this person of
`skill in the art reading the application would have
`understood would be possible is that it's stored
`somewhere else.
` Q. Can you point me to anything in the '729
`patent describing storing it somewhere else?
` A. Let me look further because I know that
`there's another relevant place, I just can't
`remember exactly where.
` Do you have a searchable version of this?
` Q. I do not.
` A. Okay. So, on page 5, starting at line 11,
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`there are a few sentences that describe the devices
`that the user might possess. And then on line 16 in
`the context of these devices it says:
` "The identity of the user possessing the
` identifying device may be verified at
` the point of use via any combination of
` a memorized PIN number or code,
` biometric identification such as a
` fingerprint, voice print, signature,
` iris or facial scan, or DNA analysis, or
` any other method of verifying the person
` possessing the device."
` A person of skill in the art reading this
`would understand that this information used for the
`validation could be stored on the device.
` Q. Let's look at paragraph 33 of your
`declaration, please.
` A. Yes.
` Q. In this paragraph you discuss the timing
`of the biometric verification recited in the claims;
`correct?
` A. Yes.
` Q. And you say that the biometric verification
`process would take place before the transaction
`request is received at the secure registry. Is that
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`right?
` A. What paragraph do you read fro