throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`1
`2
`
`3 4 5
`
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`VISA - EXHIBIT 1023
`Visa Inc. et al. v. Universal Secure Registry LLC
`IPR2018-01350
`
`

`

`Page 2
`
` 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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`1 2 3 4 5 6 7 8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`

`

`Page 3
`
`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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`1
`
`2 3
`
`4
`5
`6
`7
`
`8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`

`

` I N D E X
`
`Page 4
`
`WITNESS EXAMINATION
`BJORN MARKUS JAKOBSSON, Ph.D.
`
` BY MR. ARGENTI 6
`
`1
`
`2 3
`
`4
`
`5 6
`
`7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

` E X H I B I T S
`
`Page 5
`
`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
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

` REDWOOD SHORES, CALIFORNIA;
` TUESDAY, OCTOBER 1, 2019; 9:00 A.M.
`
`Page 6
`
` 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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`1
`2
`
`3 4
`
`5
`6
`
`7 8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`

`

`Page 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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?
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 11
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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?
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 13
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`'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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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.
`/ / /
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 18
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 20
`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?
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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.
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 24
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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?
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 26
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 27
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 28
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 29
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 30
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 31
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 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,
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 32
`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
`
`TSG Reporting - Worldwide 877-702-9580
`
`

`

`Page 33
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`right?
` A. What paragraph do you read fro

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket