UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`INGENICO INC.,
`Petitioner,
`
`v.
`
`IOENGINE, LLC,
`Patent Owner.
`____________________
`
`IPR2019-00879
`
`Patent 9,059,969
`
`December 18, 2019
`
`
`DECLARATION OF KEVIN BUTLER, PH.D.
`
`Exhibit 2099
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction .......................................................................................................... 9
`
`Qualifications ....................................................................................................... 9
`
`III.
`
`Person of Ordinary Skill in the Art .................................................................... 14
`
`IV. Legal Framework ............................................................................................... 15
`
`A.
`
`B.
`
`C.
`
`Standard of Proof..................................................................................... 15
`
`Claim Construction.................................................................................. 15
`
`Anticipation ............................................................................................. 16
`
`D. Obviousness ............................................................................................. 17
`
`V.
`
`The ’969 Patent .................................................................................................. 19
`
`VI. ASSERTED GROUNDS AND REFERENCES RELIED ON IN
`PETITION ......................................................................................................... 22
`
`A.
`
`B.
`
`C.
`
`D.
`
`Iida ........................................................................................................... 23
`
`Fuji Guide ................................................................................................ 24
`
`Shaffer ..................................................................................................... 29
`
`Ford .......................................................................................................... 30
`
`VII. Claim Construction ............................................................................................ 30
`
`A.
`
`B.
`
`“an interactive user interface” ................................................................. 30
`
`“communicate through…” // “cause a communication to be sent
`through…” ............................................................................................... 46
`
`C.
`
`“graphic user interface” ........................................................................... 51
`
`VIII. Ground 1: Iida Does Not Anticipate Claims 1-8, 10-16, 19-21, 24, 25,
`and 27-29 ........................................................................................................... 52
`
`A.
`
`B.
`
`C.
`
`D.
`
`Iida does not teach “first program code” or “fourth program code” ....... 53
`
`Iida teaches individual static images, not an IUI .................................... 56
`
`Iida does not teach interaction interface elements .................................. 58
`
`Iida does not teach the terminal taking action responsively by
`responding to the user ............................................................................. 60
`
`E.
`
`Iida does not teach “communications…through” ................................... 63
`
`F.
`
`Iida does not teach “second program code” or “third program
`code” ........................................................................................................ 67
`Ingenico Inc. v. IOENGINE, LLC
`2
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`

`

`
`
`G. Dependent Challenged Claims Are Not Anticipated .............................. 69
`
`IX.
`
`IPR Ground 2: Iida and the Fuji Guide ............................................................. 87
`
`A. No Motivation to Combine ..................................................................... 87
`
`B.
`
`C.
`
`D.
`
`Combining Iida and the Fuji Guide Would Not Lead to the
`Claimed Invention ................................................................................... 93
`
`“third” and “fourth” program code ......................................................... 94
`
`’969 Patent claims 11-12 ......................................................................... 96
`
`X. Ground 3: Iida and Shaffer ................................................................................ 99
`
`XI. Ground 4: Iida, the Fuji Guide, and Shaffer .................................................... 103
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`3
`
`

`

`
`
`Exhibit
`No.
`2001
`2002
`2003
`2004
`
`2005-
`2017
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023-
`2028
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`Description
`
`EXHIBIT LIST
`
`Declaration of Noah M. Leibowitz
`Declaration of Gregory T. Chuebon
`Declaration of Kevin Butler, Ph.D.
`Dennis J. M. J. de Baar et al., Coupling application design and user
`interface design, In Proceedings of the SIGCHI Conference on Human
`Factors in Computing Systems (CHI ‘92), Penny Bauersfeld, John Bennett,
`and Gene Lynch (Eds.). ACM, New York, NY, USA, 259266. DOI:
`https://doi.org/10.1145/142750.142806
`Exhibit Numbers Not Used
`
`Ronald Rivest, Chaffing and Winnowing: Confidentiality without
`Encryption, (http://people.csail.mit.edu/rivest/chaffing-980701.txt)
`Complaint, IOENGINE, LLC v. GlassBridge Enterprises, Inc. (formerly
`Imation Corp.), No. 1:14-cv-01572-GMS, D.I. 1 (D. Del. Dec. 31, 2014)
`
`Complaint, IOENGINE, LLC v. Interactive Media Corp., No. 1:14-cv-
`01571-GMS, D.I. 1 (D. Del. Dec. 31, 2014)
`Verdict Form, IOENGINE, LLC v. GlassBridge Enterprises, Inc. (formerly
`Imation Corp.), No. 1:14-cv-01572-GMS, D.I. 202 (D. Del. Feb. 17, 2017)
`
`Verdict Form, IOENGINE, LLC v. Interactive Media Corp., No. 1:14-cv-
`01571-GMS, D.I. 160 (D. Del. Jan. 17, 2017)
`Exhibit Numbers Not Used
`
`Complaint, IOENGINE LLC v. PayPal Holdings, Inc., No. 1:18-cv-452-
`WCB, D.I. 1 (D. Del. Mar. 23, 2018)
`Answer and Counterclaim, Ingenico Inc. v. IOENGINE LLC, No. 1:18-cv-
`826-WCB, D.I. 12 (D. Del. Aug. 17, 2018)
`Scheduling Order, Ingenico, No. 18-826, D.I. 57, PayPal, No. 18-452, D.I.
`49 (Jan. 28, 2019)
`Motion to Dismiss and Supporting Brief, Ingenico, No. 18-826, D.I. 26-
`27 (Oct. 9, 2018)
`Order setting hearing on Motion to Dismiss, Ingenico, No. 18-826, D.I. 43
`(Nov. 29, 2018)
`Exhibit Number Not Used
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
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`
`4
`
`

`

`
`
`2035
`
`2036
`
`2037-
`2039
`2040
`
`2041-
`2044
`2045
`
`2046
`
`2047-
`2061
`2062
`
`2063-
`2068
`2069
`
`2070
`
`2071
`
`2072
`
`2073
`
`2074
`
`Ingenico Inc.’s and Ingenico Corp.’s Answer to Counterclaim,
`Ingenico, No. 18-826, D.I. 68 (Mar. 11, 2019)
`Excerpt of Ingenico, Inc.’s April 12, 2019 First Amended Initial
`Contentions Cover Documents in Ingenico, No. 18-826
`Contentions Cover Document in Ingenico, No. 18-826
`Exhibit Numbers Not Used
`
`Excerpts of PayPal Holding Inc.’s April 5, 2019 Initial Invalidity
`Contentions Cover Document in PayPal, No. 18-452.
`Exhibit Numbers Not Used
`
`Letter from U.S. Senators Thom Tillis and Christopher A. Coons to
`the Director of U.S. Patent and Trademark Office, Apr. 9, 2019
`Letter to Judge Bryson regarding withdrawal of Ingenico’s motion to
`dismiss, Ingenico, No. 18-826, D.I. 69 (Mar. 26, 2019)
`Exhibit Numbers Not Used
`
`Curriculum Vitae of Kevin Raymond Boyce Butler
`
`Exhibit Numbers Not Used
`
`2018-03-23 Letter from Noah Leibowitz to Pentland Walcott
`
`Joint Claim Construction Chart, IOENGINE LLC v. PayPal
`Holdings, Inc., No. 1:18-cv-452-WCB, D.I. 86 (D. Del. June 25,
`2019)
`Exhibit Number Not Used
`
`Excerpts of Petition for Inter Partes Review, Ingenico Inc. v.
`IOENGINE, LLC, IPR2019-00416.
`Excerpts of Petition for Inter Partes Review, Ingenico Inc. v.
`IOENGINE, LLC, IPR2019-00584.
`
`Highlighted copy of Petitioners Exhibit 1004, FujiFilm Software
`Quick Start Guide, Petition for Inter Partes Review, Ingenico Inc. v.
`IOENGINE, LLC IPR2019-00879.
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`5
`
`

`

`
`
`2075
`
`Highlighted copy of Petitioners Exhibit 1012, FujiFilm Software
`Quick Start Guide, Petition for Inter Partes Review, Ingenico Inc. v.
`IOENGINE, LLC IPR2019-00416.
`
`2076
`
`Excerpt of Decision Instituting Inter Partes Review, Paper 20,
`Ingenico Inc. v. IOENGINE, LLC IPR2019-00416.
`
`2077
`
`2078-
`2098
`2099
`
`2100
`
`U.S. Patent No. 6,763,399 to Margalit et al.
`
`Exhibit Numbers Not Used
`
`Declaration of Kevin Butler, Ph.D dated December 18, 2019
`
`Shaw, Mary, An Input-Output Model for Interactive Systems,
`Conference on Human Factors in Computing Systems (April 1986)
`
`2101
`
`Exhibit Number Not Used
`
`2102
`
`2103
`
`2104-
`2109
`2110
`
`Excerpt from Webster’s Ninth New Collegiate Dictionary (Merriam-
`Webster 1988)
`Excerpt from Harry Newton, NEWTON’S TELECOM
`DICTIONARY (18th ed. 2002)
`Exhibit Numbers Not Used
`
`Deposition transcript of James T. Geier, dated September 11, 2019,
`with errata and signature page, Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00416
`
`2111
`
`Exhibit Number Not Used
`
`2112
`
`SanDisk Acquires MDRM, Developer of Secure Content Distribution
`for Flash Cards, Business Wire, January 4, 2005, available at
`https://www.businesswire.com/news/home/20050104005195/en/San
`Disk-Acquires-MDRM-Developer-Secure-Content-Distribution.
`
`2113
`
`2114
`
`Our Partners, Kanguru Solutions, available at
`https://www.kanguru.com/info/our-partners.shtml
`Letter from MDRM dated August 2003
`
`Ingenico Inc. v. IOENGINE, LLC
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`
`6
`
`

`

`
`
`2115-
`2117
`2118
`
`2119
`
`2120
`
`2121
`
`2122
`
`Exhibit Numbers Not Used
`
`Transcript of conference call before the Patent Trial and Appeal
`Board, held on October 30, 2019 IPR2019-00879.
`Institute For The Advancement Of The American Legal System,
`Civil Case Processing in the Federal District Courts (2009), available
`at
`https://www.uscourts.gov/sites/default/files/iaals_civil_case_proces
`sing_in_the_federal_district_courts_0.pdf.
`
`Geier, Jim, Deploying Voice over Wireless LANS The definitive
`guide to planning, architecting, deploying, supporting and creating
`Voice over Wireless LAN solutions, Chapter 3, Cisco Press (2007)
`
`Certified copies of color drawings dated March 23, 2004 for US
`Appl. 10/807,731
`
`Deposition transcript of James T. Geier, taken December 4, 2019,
`Ingenico Inc. v. IOENGINE, LLC IPR2019-00879
`
`2123
`
`U.S. Patent No. 8,539,047
`
`2124
`
`Jim Geier, Wireless Networks first-step, Your first step into the world of
`wireless networks, Cisco Press (2005)
`2125 Merriam Webster’s Collegiate Dictionary 11th Edition, definitions of“live” and
`“affect”
`Deposition transcript of Paul Widener, dated November 6, 2019, Ingenico Inc.
`v. IOENGINE, LLC IPR2019-00879
`U.S. Patent Application Publication 2002/0147912A1
`
`2126
`
`2127
`
`2128
`
`Exhibit Number Not Used
`
`2129
`
`2130
`
`2131
`
`James T. Geier, Network Reengineering The New Technical Imperative,
`McGraw Hill (1996)
`
`Jan Axelson, USB Complete Everything You Need to Develop Custom USB
`Peripherals, Third Edition Lakeview Research LLC (2005)
`Jan Axelson, USB Mass Storage Designing and Programming Devices and
`Embedded Hosts, Lakeview Research LLC (2006)
`
`Ingenico Inc. v. IOENGINE, LLC
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`7
`
`

`

`
`
`2132 Matt Bishop, Computer Security Art and Science Addison-Wesley (2003)
`
`2133
`
`Ponniah, Paulraj, DATABASE DESIGN AND DEVELOPMENT An Essential
`Guide for IT Professionals IEEE Press (2003)
`
`2134
`
`Dennis Longley and Michael Shain Dictionary of Information Technology Third
`Edition Van Nostrand Reinhold (1989)
`
`2135
`
`Geier, Jim, Deploying Voice over Wireless LANS The definitive guide to
`planning, architecting, deploying, supporting and creating Voice over Wireless
`LAN solutions, Chapter 3, Cisco Press (2007)
`
`2136
`
`IETF RFC3550, retrieved from the Internet Engineering Task Force website at
`https://tools.ietf.org/pdf/rfc3550.pdf
`
`2137
`
`IEDT RFC768, retrieved from the Internet Engineering Task Force website at
`https://tools.ietf.org/pdf/rfc768.pdf
`
`2138
`
`Patterson et al., “Best Practices Memo, Evaluating Computer Scientists and
`Engineers For Promotion and Tenure,” Computing Research News (Sep. 1999).
`
`2139
`
`Exhibit Number Not Used
`
`
`
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`8
`
`

`

`
`
`1.
`
`I, Kevin Butler, make this declaration in connection with the proceedings
`
`identified above.
`
`I.
`
`INTRODUCTION
`
`2.
`
`I have been retained as an expert on behalf of IOENGINE, LLC
`
`(“IOENGINE”) in connection with its Response to the Petition for Inter Partes Review
`
`in Case IPR2019-00879 (the “’879 Petition”) filed by Ingenico Inc. (“Ingenico” or
`
`“Petitioner”) challenging claims 1-8, 10-16, 19-21, and 24-29 (the “Challenged
`
`Claims”) of U.S. Patent No. 9,059,969 to McNulty (“the ’969 Patent”) (Ex. 1001).
`
`3.
`
`The opinions in this Declaration are based on my professional training and
`
`experience and my review of the exhibits discussed herein.
`
`4.
`
`I am being compensated for my services in connection with the
`
`proceedings identified above at my regular rate of $350 per hour (plus reimbursement
`
`for expenses). My compensation is in no way contingent on the outcome of the
`
`proceedings identified above or on any of the opinions I provide below.
`
`II. QUALIFICATIONS
`
`5.
`
`I have summarized in this section my educational background, career
`
`history, publications, and other relevant qualifications. My curriculum vitae is
`
`submitted as Ex. 2062 in each proceeding.
`
`6.
`
`I received a B.Sc. degree in Electrical Engineering from Queen’s
`
`University in 1999, an M.S. degree in Electrical Engineering from Columbia
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
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`9
`
`

`

`
`
`University in 2003, and a Ph.D. in Computer Science and Engineering from the
`
`Pennsylvania State University in 2010.
`
`7.
`
`I am an Associate Professor with tenure in Computer and Information
`
`Science and Engineering and Associate Director of the Florida Institute for
`
`Cybersecurity Research at the University of Florida. I founded and directed the Oregon
`
`Systems Infrastructure and Information Security (OSIRIS) Lab at the University of
`
`Oregon, where I was an assistant professor of computer and information science for
`
`four years before moving to Florida under the Rising to National Preeminence
`
`initiative. I have authored 94 peer-reviewed publications including book chapters,
`
`journal articles, conference proceedings papers, and workshop papers. My research is
`
`in the area of computer systems security, including embedded systems and firmware,
`
`as well as network security, and with a particular focus on the security of peripheral
`
`devices that use the USB protocol and the hosts that these devices connect to. I received
`
`a National Science Foundation CAREER award in 2013, an International Educator of
`
`the Year award within the Herbert Wertheim College of Engineering at the University
`
`of Florida in 2017, a University of Florida Term Professorship for 2018-2021, and an
`
`Arnold and Lisa Goldberg Rising Star Endowed Professorship in Computer Science
`
`for 2018-2024. I also received an Outstanding Community Service Award from the
`
`IEEE Technical Committee on Security and Privacy in 2017. I am a Senior Member of
`
`the Institute of Electrical and Electronics Engineers (IEEE), and a Senior Member of
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`10
`
`

`

`
`
`the Association for Computing Machinery (ACM). I have been involved with
`
`international standards-setting bodies; in particular, I was co-chair and leader of the
`
`Security Workstream for the International Telecommunications Union (ITU)’s
`
`Technology, Innovation, and Competition Working group within the Focus Group on
`
`Digital Financial Service from 2015-2016, and from 2017-present, I serve as Co-Chair
`
`of the Security, Infrastructure, and Trust Working Group within the ITU’s Financial
`
`Inclusion Global Initiative. I currently serve on two journal editorial boards, have
`
`served on numerous funding panels for the National Science Foundation and reviewed
`
`grant proposals on behalf of science and engineering boards in Austria, Canada, and
`
`Israel. I have served on 95 technical program committees for selecting papers to appear
`
`at academic conferences on computer security, and I have served as program committee
`
`chair and general conference chair for multiple conferences. I have also given over 90
`
`presentations and invited talks, including invited lectures at the University of Oxford,
`
`ETH Zurich, the Chinese Academy of Sciences, Dartmouth College, Columbia
`
`University, and UCLA. My research has been featured in news outlets such as the Wall
`
`Street Journal, BBC News, and WIRED.
`
`8.
`
`I have experience designing and implementing communication protocols,
`
`including peripheral device communications. As a research assistant at Columbia
`
`University in 2001-2002, I incorporated authentication protocols into a Java-based
`
`software stack for the Session Initiation Protocol used for Internet telephony. At Flarion
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
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`11
`
`

`

`
`
`Technologies in 2003, I implemented packet diversion and IP header modification
`
`program in the FreeBSD operating system for mobile IP packet testing, to be deployed
`
`on WiFi devices. Since then I have led the development of mechanisms to constrain
`
`the functionality of USB devices by incorporating user expectations of device
`
`capabilities into the services that they can advertise. I also lead the development of
`
`protocols for allowing a rule-based approach to constraining malicious functionality in
`
`USB, Bluetooth, and near-field communication (NFC) devices.
`
`9.
`
`I have experience with the development and analysis of software and
`
`firmware. In 1998 at the Royal Bank of Canada, I developed client-server applications,
`
`including design of graphical user interfaces on the client side, to port business
`
`processes from mainframe environments. Further, in 2006 I compiled and modified
`
`OpenEmbedded
`
`firmware
`
`to support
`
`the SlugOS environment
`
`to allow
`
`experimentation with storage devices, in order to develop a disk prototype for
`
`preventing a type of malware called a rootkit from persisting on a system after reboot.
`
`Since then, I have led efforts to analyze firmware on embedded devices, particularly
`
`firmware from USB flash drives that uses the Intel 8051 microcontroller, and
`
`demonstrated how such binary firmware could be lifted to an intermediate
`
`representation to enable control flow graph recovery and symbolic analysis. I also led
`
`a project that demonstrated the extraction of data from smartphone firmware images
`
`and demonstrated that legacy command sets (i.e., “AT commands” developed for
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
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`
`12
`
`

`

`
`
`modems in the 1980s) were being used to provide undocumented features on these
`
`devices that could be accessed over a USB connection, as well as methods for enabling
`
`the transmissions of these commands.
`
`10.
`
`I have experience with peripherals and portable devices. In course projects
`
`as an undergraduate in 1997 and 1998, I developed code for communication with a
`
`Motorola HC11 microcontroller to interface with a host computer. Since then, I have
`
`developed storage devices as discussed above that provide security services. Further,
`
`in 2009, I developed a USB device capable of attesting the integrity of the host
`
`computer it was attached to while at Symantec Research. This work was later patented
`
`(U.S. Patent 8,856,918, Host validation mechanism for preserving integrity of portable
`
`storage data. Petros Efstathopulos, Bruce Montague, Dharmesh Shah, Kevin Butler.
`
`October 7, 2014.). Since then, I have overseen the development of USB devices that
`
`allow for tracking the provenance of data at the block level and the development of
`
`mobile device software that automates the collection of USB enumeration data.
`
`11.
`
`I have experience with encryption and cryptographic protocols. At
`
`Telcordia Technologies in 2000 and 2001, I provisioned and configured cable modems
`
`within a hybrid fibre-coax lab that involved secure telephony and the use of encryption
`
`over DOCSIS modems. I further led the design of developing cryptographic primitives
`
`to support the secure delivery of routing information within the Border Gateway
`
`Protocol and have been involved with numerous projects incorporating encryption,
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
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`13
`
`

`

`
`
`such as a mechanisms using additive homomorphic encryption to support accounting
`
`audits for preserving the confidentiality of wiretap records and cryptographic schemes
`
`for assuring the secure time release of data.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`12.
`
`I understand that for the purposes of institution, the Board decided that a
`
`Person of Ordinary Skill in the Art (“POSITA”) has the qualifications described in the
`
`Petition. Institution Decision 24. Specifically, the Board concluded that a POSITA
`
`would have had:
`
`a Bachelor of Science degree in Electrical Engineering, Computer
`
`Science, Computer Engineering or related discipline, and
`
`experience in programming software and firmware for computer
`
`peripheral devices and databases/servers and would have had a
`
`working understanding of computer hardware, operating systems,
`
`encryption, data storage, user interfaces, and peripheral and
`
`portable device communication protocols (e.g., parallel ports,
`
`serial ports, RS-232, USB, Bluetooth, WiFi and the like).
`
`Institution Decision 23.
`
`13. Although I previously opined that a different level of skill would be
`
`appropriate, see Ex. 2003 ¶¶11-13, the opinions expressed in this Declaration are based
`
`upon the level of skill adopted by the Board in its Institution Decision. There would be
`
`no change in the opinions expressed in this Declaration, however, even under the level
`
`of skill stated in my prior Declaration. The level of skill in the art stated in my prior
`
`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2099
`
`14
`
`

`

`
`
`Declaration was “a person with a Bachelor of Science degree in Computer Science, or
`
`related discipline, and two to three years of experience in developing, implementing,
`
`or deploying systems for the encryption of data on a portable device.” Id.
`
`IV. LEGAL FRAMEWORK
`
`14.
`
`I am not a legal expert and I offer no opinions on the law. However, I have
`
`been advised by counsel about some of the legal principles relevant to an analysis of
`
`patentability of claims in a United States patent, as summarized below. I have
`
`conducted my analysis in accordance with these principles.
`
`15.
`
`I understand that, for an invention claimed in a patent to be found
`
`patentable, or to be valid, it must be, among other things, new and not obvious in light
`
`of what came before it such as “prior art.”
`
`A.
`
`Standard of Proof
`
`16.
`
`I understand that, in these proceedings, the burden is on the party asserting
`
`unpatentability to prove it by a preponderance of the evidence. I understand that “a
`
`preponderance of the evidence” is evidence sufficient to show that something is more
`
`likely than not.
`
`B. Claim Construction
`
`17.
`
`I understand that patent claims should be accorded their ordinary and
`
`customary meaning as understood by a POSITA, in light of the intrinsic record. The
`
`intrinsic record includes the patent’s specification and claims, as well as its entire
`
`Ingenico Inc. v. IOENGINE, LLC
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`15
`
`

`

`
`
`prosecution history.
`
`18.
`
`I further understand that in construing claims, a POSITA is deemed to
`
`read the claim term not only in the context of the particular claim in which the disputed
`
`term appears, but in the context of the entire patent, including the specification and the
`
`prosecution history. I understand that the construction that stays true to the claim
`
`language and most naturally aligns with the patent’s description of the invention will
`
`generally be, in the end, the correct construction. Although the claims themselves
`
`provide substantial guidance as to the meaning of particular claim terms, the claims do
`
`not stand alone. Rather, the patent’s specification is always highly relevant to the claim
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`construction analysis and usually, it is dispositive; it is the single best guide to the
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`meaning of a disputed term.
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`19.
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`I further understand that the fact that a characteristic is repeatedly and
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`consistently used to characterize the invention strongly suggests that it should be read
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`as part of the claim. A patentee’s choice of preferred embodiments can also shed light
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`on the intended scope of the claims. When the scope of the invention is clearly stated
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`in the specification, and is described as the advantage and distinction of the invention,
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`it is not necessary to disavow explicitly a different scope for the claims to be so limited.
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`C. Anticipation
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`20.
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`I have been informed that a patent claim is invalid as anticipated only if
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`each and every element and limitation of that claim is publicly disclosed, either
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`explicitly or inherently, in a single prior art reference, already in practice in the industry
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`in a single process or method, already in a single marketed product, or otherwise
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`previously invented. I also understand that anticipation requires the presence in a single
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`prior art disclosure of all elements of the claim arranged as in the claim. For a step or
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`limitation to be inherent in a reference, I understand that the step or limitation must
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`necessarily and inevitably occur or be present when one follows the teachings of the
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`reference. I am informed that for a reference to be considered as anticipating, it must
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`disclose the relevant technology in a manner such that a person of ordinary skill in the
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`art would be able to carry out or utilize the technology that the reference describes
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`without having to undertake considerable experimentation.
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`D. Obviousness
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`21.
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`I have been informed that a patent claim is invalid as obvious only if it
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`would have been obvious to a person of ordinary skill in the art at the time the patent
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`was filed, in light of the prior art. A claim is invalid as obvious if the differences
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`between the claimed invention and the prior art are such that the claimed invention as
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`a whole would have been obvious to a POSITA. The prior art may include one or more
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`references that a POSITA trying to solve the problem that the inventor addressed would
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`likely have considered, as well as the body of knowledge that such a person would
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`possess.
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`22.
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`I have been informed that the obviousness inquiry is based on three
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`underlying factual inquiries: (1) the scope and content of the prior art; (2) the
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`differences between the prior art and the claims; and (3) the level of ordinary skill in
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`the art at the time of the invention.
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`23.
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`I have been informed that, although a challenger may rely on a
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`combination of separate prior art references to support an obviousness challenge, a
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`person of ordinary skill in the art at the time of filing must have had some motivation
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`to combine the references in such a way as to arrive at the claimed invention. That
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`motivation can come from the problem the invention purports to solve, from other
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`references, from the teachings of those references showing the invention is obvious,
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`from market incentives, or from the common sense knowledge of a person of ordinary
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`skill in the art. However, obviousness findings grounded in common sense must
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`contain explicit and clear reasoning providing some rational underpinning why
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`common sense compels a finding of obviousness. A motivation to combine requires
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`more than the mere fact that a POSITA could have made the combination. And design
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`trade-offs often concern what is feasible, not what is, on balance, desirable. Motivation
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`to combine requires the latter.
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`24.
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`I have been informed that assessing which prior art references to combine
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`and how they may be combined to match the asserted claim may not be based on
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`hindsight reconstruction or ex-post reasoning. That is, one must view the prior art
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`forward from the perspective of the person of ordinary skill in the art at the time of
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`invention, not backwards from the current time through the lens of hindsight. It is my
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`understanding that it is improper to use a patent claim as a template or road map to the
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`prior art, and to pick and choose prior art references to meet the elements of that claim
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`to show obviousness.
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`25.
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`I have been informed that a reference qualifies as prior art for determining
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`obviousness when it is analogous to the claimed invention. I understand that prior art
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`may be considered analogous if it is from the same field of endeavor, regardless of the
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`problem addressed, as the claimed invention. I also understand that prior art may be
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`considered analogous if it is “reasonably pertinent” to the particular problem with
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`which the inventor is involved. I have been informed that a reference is “reasonably
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`pertinent” if it is one which, because of the matter with which it deals, logically would
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`have commended itself to an inventor’s attention in considering the inventor’s problem.
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`V. THE ’969 PATENT
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`26. The ’969 Patent describes a tunneling client access point (“TCAP”), a
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`highly secure, portable storage and data processing device that a user controls via an
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`interactive user interface on an access terminal (e.g., a cellphone, or computer). The
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`TCAP communicates with the access terminal, and communicates with a remote
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`network device (e.g., a server) by “tunneling” data through the terminal’s network
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`interface. Ex. 1001, Title, Abstract. “[B]y providing the equivalent of a plug-n-play
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`virtual private network (VPN), the TCAP provides certain kinds of accessing of remote
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`data in an easy and secure manner that was unavailable in the prior art.” Id. 2:48-51,
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`Abstract, 1:11-14, 4:21-30.
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`27.
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`In order to allow the user to engage the TCAP, the TCAP uses a novel
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`approach where three things are provided by the terminal: 1) a terminal input
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`component that communicates to an IUI on the terminal, 2) a terminal output
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`component that has the ability to display the IUI, and 3) an IUI—e.g., an interactive
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`graphical user interface—that communicates both with the user and directly to the
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`terminal, and that causes processing activity on the TCAP. Id. at Abstract, 2:43-44. The
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`relevant claims of the ’969 Patent refer to program code which, when executed by the
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`terminal processor, is configured to present an interactive user interface on the terminal
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`output component. Ex. 1001, 30:64-66, 33:10-13, 31:4-7. The inventions of the ’969
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`Patent make use of the terminal’s IUI by executing program code on the TCAP in
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`response to a communication resulting from user interaction with the IUI on the
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`terminal. In this way, the user can control the portable device and cause
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`communications to be sent to the network, all from a “traditional large” IUI presented
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`on the terminal. Id., 2:35-39.
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`28. An objective of the ’969 Patent is “provide a means to securely access,
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`execute, and process data that is available in an extremely compact form.” Institution
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`Decision 3. The TCAP described in the patents is designed to be used with “any number
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`of access terminals,” even those unknown or untrusted. Ex. 1001, 3:44-47, 3:49-52. To
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`prevent unknown or untrusted terminals from accessing information tunneled between
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`the TCAP and server, the TCAP sends the data to the server securely such that “even
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`if data moving out of the TCAP and across the [terminal] were captured at the
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`[terminal], such data would not be readable.” Id., 12:66-13:4, 27:28-28:15, Fig. 10. The
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`TCAP thus “provid[es] the equivalent of a plug-and-play virtual private network
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`(VPN).” Id., 2:48-51; see also id., 7:9-11 (“[T]he TCAP may connect to a remote server
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`by employing a