UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SQUARE, INC.
`
`Petitioner
`
`v.
`
`4361423 CANADA INC.
`
`Patent Owner
`
`____________
`
`Case IPR2019-01627
`
`U.S. Patent No. 8,281,998
`
`____________
`
`DECLARATION OF BRUCE McNAIR
`
`Square Exhibit 1003
`Square, Inc. v. 4361423 Canada Inc.
`IPR2019-01627
`Page 00001
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`

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`TABLE OF CONTENTS
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`II. 
`
`TABLE OF CONTENTS ......................................................................................... i 
`I. 
`INTRODUCTION ........................................................................................... 1 
`A. 
`Engagement .......................................................................................... 1 
`B. 
`Background and Qualifications ............................................................ 1 
`C. 
`Basis of My Opinion and Materials Considered .................................. 4 
`D. 
`Legal Standards for Patentability ......................................................... 5 
`DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME .................................................................................................. 9 
`III.  THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME ................................................................. 10 
`IV.  TECHNICAL BACKGROUND AND STATE OF THE ART ...................... 11 
`A. 
`Processor Functions, “Converting” .................................................... 12 
`B. 
`Telephone Jacks (RJ) and Headphone Jacks (TRS) ........................... 14 
`C. 
`Signals: Tones, Modulation ................................................................ 20 
`D.  Dual-Tone Multi-Frequency (DTMF) ................................................ 23 
`E. 
`Signals “Suitable” for Transmission to a Hands-Free Jack................ 25 
`F. 
`Signals for Transmission over a Communication Network ............... 28 
`G. 
`Cards (Magnetic Stripe Cards, Smart Cards) ..................................... 29 
`H. 
`Security and Encryption ..................................................................... 31 
`OVERVIEW OF THE ’998 PATENT ............................................................ 35 
`V. 
`VI.  CLAIM INTERPRETATION ........................................................................ 38 
`VII.  DISCUSSION OF RELEVANT PRIOR ART ............................................... 38 
`
`IPR2019-01627 Page 00002
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`

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`C. 
`
`B. 
`
`A.  Ground 1: Proctor (Ex. 1004) in view of Vrotsos (Ex. 1006) renders
`obvious claims 1-3 and 6 of the ’998 patent ...................................... 38 
`Ground 2: Proctor (Ex. 1004) in view of Hart (Ex. 1018) renders
`obvious claims 10, 12, 14-17, and 19 of the ’998 patent ................... 56 
`Ground 3: Eisner (Ex. 1008) in view of Proctor (Ex. 1004) renders
`obvious claims 1-3, 6, 10, 12, 14, 16-17, and 19 of the ’998 patent .. 81 
`D.  Ground 4: Eisner (Ex. 1008) in view of Proctor (Ex. 1004) and Hart
`(Ex. 1018) renders obvious claim 15 of the ’998 patent ................... 110 
`VIII.  SECONDARY CONSIDERATIONS .......................................................... 113 
`IX.  CONCLUSION ............................................................................................ 113 
`
`
`ii
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`IPR2019-01627 Page 00003
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`

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`I, Bruce McNair, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Bruce McNair. I am over the age of eighteen and am competent
`
`to make this Declaration.
`
`A. Engagement
`
`2.
`
`I submit this report on behalf of Square, Inc. in connection with their request
`
`for inter partes review of U.S. Patent No. 8,281,998 (“the ’998 patent”)—to review
`
`and to provide my opinion on the scope and content of “prior art” predating the
`
`application for the ’998 patent and regarding the subject matter recited in the claims
`
`of the ’998 patent. I understand that this Declaration relates to a petition for the
`
`above-captioned inter partes review (IPR) of the ’998 patent.
`
`3.
`
`For my efforts in connection with the preparation of this declaration, I have
`
`been compensated at my standard hourly consulting rate of $650. My compensation
`
`is in no way contingent on the results of these or any other proceedings relating to
`
`the above-captioned patent. I have no expectation or promise of additional business
`
`with the petitioner in exchange for the positions explained herein.
`
`4.
`
`I make this declaration based on personal knowledge.
`
`B.
`
`Background and Qualifications
`
`5.
`
`A detailed description of my professional qualifications, including a listing of
`
`my specialties/expertise and professional activities, is contained in my curriculum
`
`1
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`IPR2019-01627 Page 00004
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`vitae, a copy of which is attached as Appendix A. In what follows, I provide a short
`
`summary of my professional qualifications.
`
`6.
`
`I have over 55 years of experience in the areas of electronic circuits, starting
`
`as an amateur radio operator in 1963 and including seven years as a GS-0855
`
`Electronic Engineer working for the US Army Electronics Command, 24 years as a
`
`Member of Technical Staff at AT&T/Bell Laboratories and 15 years as a full-time
`
`faculty member of the Electrical and Computer Engineering Department at Stevens
`
`Institute of Technology.
`
`7. While I was working for the US Army Electronics Command at Fort
`
`Monmouth, NJ, I was responsible for support of TSEC/KG-27 bulk encryptor, a
`
`classified encryption device used by the Army for protecting multi-channel digital
`
`voice communication lines. Also, while I was at Fort Monmouth, my responsibilities
`
`included research and development for the data transmission, electronic counter-
`
`counter measures (ECCM), and cryptographic aspects of SINCGARS, the Single
`
`Channel Ground/Airborne Radio System. As part of this work, I extensively studied
`
`how FSK data transmission could be optimized. I also built microprocessor-based
`
`systems, digital hardware and analog circuits to accomplish my research.
`
`8.
`
`At Bell Labs, I worked on several projects involving public data networks,
`
`encryption, analog modems, network security and wireless systems. This included
`
`security for an X.25 pre-Internet public data network (Advanced Communications
`
`2
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`IPR2019-01627 Page 00005
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`

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`Service/Net-1000). I designed digital hardware and microprocessor-based systems
`
`to improve the operation of analog modems. I also initiated and led an IR&D
`
`(independent research and development) project to investigate and prototype a
`
`secure voice terminal based on newly evolving AT&T high-speed digital services.
`
`This involved analog and digital hardware design, microprocessor programming,
`
`and controlling systems through a signaling and control network. Part of this work
`
`involved interfacing with the analog telephone network, interfacing with audio input
`
`and output devices and digital speech and signal processing. I then led a group
`
`developing encryption add-ons for analog modems. Finally, I led the Bell Labs
`
`Security Architecture Group, setting security and encryption standards for all AT&T
`
`products and services. I hold several US patents in encryption and other security
`
`technologies, including challenge-response systems. I also was involved in
`
`telecommunications fraud control techniques, including means to authenticate users
`
`and allow signaling over the voice telephone network. Among others, this led to US
`
`patents “Authenticator Card and System” and “Secure Telecommunications” which
`
`are closely related to the patents in suit. While I was at Bell Labs, I performed
`
`research into future wireless systems, including modulation techniques and voice
`
`coding to maximize performance.
`
`9.
`
`At Stevens Institute of Technology, I have taught graduate courses (EE584 –
`
`Wireless System Security and CpE691 – Information Systems Security) which have
`
`3
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`IPR2019-01627 Page 00006
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`

`

`heavy emphasis on the application of cryptography, including challenge-response
`
`systems and public-key cryptography. I have also taught undergraduate courses,
`
`including Electronic Circuits (EE359) dealing with the types of analog circuits
`
`depicted in the patents in suit. I also have taught a graduate course, EE517, Digital
`
`and Computer Systems Architecture and undergraduate courses, CpE450,
`
`Architecture, Design and Implementation of Embedded Systems for Real-Time
`
`Applications and CpE-358, Switching Theory and Logical Design, involving
`
`microprocessor design and interfacing.
`
`10. As part of the amateur radio hobby I have practiced since 1963, I have
`
`designed, implemented and used electronic devices known as “phone patches” that
`
`are used
`
`to
`
`interconnect
`
`two-wire, balanced, bidirectional
`
`telephone
`
`communications lines and four-wire, unbalanced, unidirectional audio interfaces
`
`with amateur radio transmission equipment. As part of my hobby experience, I have
`
`also used Touch-Tone®, other forms of DTMF and other types of tone signaling to
`
`control and send signaling information to remote sites.
`
`C. Basis of My Opinion and Materials Considered
`
`11.
`
`I have reviewed the ’998 patent and the prior art and other documents and
`
`materials cited herein. For ease of reference, the full list of documents that I have
`
`considered is included in Appendix B. My opinions in this declaration are based on
`
`4
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`IPR2019-01627 Page 00007
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`my review of these documents, as well as upon my education, training, research,
`
`knowledge, and experience.
`
`12.
`
`I have reviewed, had input into, and endorse as set forth fully herein the
`
`discussions in the accompanying petition.
`
`D. Legal Standards for Patentability
`
`13.
`
`I am not an attorney and I offer no opinions on the law itself. My
`
`understanding of the relevant law principles this section is based on information
`
`provided to me by counsel.
`
`1.
`Priority
`I was informed and understand that for a patent to claim priority to the filing
`
`14.
`
`date of its provisional application, each application in the chain leading back to the
`
`earlier application must comply with the written description requirement of 35
`
`U.S.C. § 112. To satisfy the written description requirement, the specification of
`
`the provisional must contain a written description of the invention and the manner
`
`and process of making and using it, in such full, clear, concise, and exact terms to
`
`enable an ordinarily skilled artisan to practice the invention claimed in the non-
`
`provisional application. Moreover, the provisional application must describe the
`
`later claimed invention in sufficient detail that a POSITA can clearly conclude that
`
`the inventor invented the claimed invention as of the filing date sought.
`
`5
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`IPR2019-01627 Page 00008
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`2. Obviousness
`I have been informed and understand that subject matter claimed in a patent
`
`15.
`
`is obvious under 35 U.S.C. § 103 if a person of ordinary skill in the art at the time
`
`the alleged invention was made would have had reason to combine or modify the
`
`disclosures of one or more prior art references to arrive at the claimed subject matter.
`
`16.
`
`I have been informed and understand that, under the doctrine of obviousness,
`
`a claim is unpatentable if the differences between the invention and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. A person of ordinary skill in the art is presumed to have knowledge
`
`of the relevant prior art at the time of the invention.
`
`17.
`
`I have been informed and understand that obviousness is based on the scope
`
`and content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art and secondary indicia of obviousness and non-
`
`obviousness to the extent such indicia exist.
`
`18.
`
`I have been informed and understand the determination of whether the
`
`asserted claims would have been obvious to a person of ordinary skill in the art and,
`
`therefore, invalid, is not governed by any rigid test or formula. A determination that
`
`a claim is obvious is, instead, based on a common-sense determination that the
`
`claimed invention is merely a combination of known limitations to achieve
`
`6
`
`IPR2019-01627 Page 00009
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`

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`predictable results. Any of the following rationales are acceptable justifications to
`
`conclude that a claim would have been obvious: (1) the claimed invention is simply
`
`a combination of known prior art methods to yield predictable results; (2) the
`
`claimed invention is a simple substitution of one known element for another to
`
`obtain predictable results; (3) the claimed invention uses known techniques to
`
`improve similar devices (methods, or products) in the same way; (4) the claimed
`
`invention applies a known technique to a known device (method, or product) ready
`
`for improvement to yield predictable results; (5) the claimed invention was “obvious
`
`to try”—choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; (6) there is known work in one field of endeavor
`
`that may prompt variations of it for use in either the same field or a different one
`
`based on design incentives or other market forces if the variations would have been
`
`predictable to one of ordinary skill in the art; or, (7) there is some teaching,
`
`suggestion, or motivation in the prior art that would have led one of ordinary skill in
`
`the art to modify the prior art reference to combine prior art teachings to arrive at the
`
`claimed inventions.
`
`19.
`
`I have been informed and understand that a claim may be obvious in light of
`
`a single reference, without the need to combine references, if the elements of the
`
`claim that are not found in the reference can be supplied by the common sense or
`
`7
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`IPR2019-01627 Page 00010
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`

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`knowledge of one of ordinary skill in the art or taught in different areas of the single
`
`reference.
`
`20.
`
`I have been informed and understand that an analysis of whether a claimed
`
`invention is obvious must not rely on a hindsight combination of prior art. The
`
`analysis must proceed in the context of the time of the invention or claimed priority
`
`date and consider whether the invention as a whole would have been obvious to a
`
`person of ordinary skill in the art, taking into consideration any interrelated teachings
`
`of the prior art, the effects of demands known to the design community or present in
`
`the marketplace, and the background knowledge possessed by a person having
`
`ordinary skill in the art, all in order to determine whether there was an apparent
`
`reason to combine any known elements in the fashion claimed by the patent at issue.
`
`21.
`
`I understand that certain objective indicia can be important evidence regarding
`
`whether a patent is obvious or nonobvious. Such indicia include: commercial
`
`success of products covered by the patent claims; a long-felt need for the invention;
`
`failed attempts by others to make the invention; copying of the invention by others
`
`in the field; unexpected results achieved by the invention as compared to the closest
`
`prior art; praise of the invention by the infringer or others in the field; the taking of
`
`licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded contrary
`
`to the accepted wisdom of the prior art.
`
`8
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`IPR2019-01627 Page 00011
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`
`
`II. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`
`22.
`
`23.
`
`I have carefully reviewed the ’998 patent.
`
`I understand that the ’998 patent issued from U.S. Patent Application
`
`13/239,512 (filed 9/22/2011), claims to be a continuation of WIPO International
`
`Application PCT/IB2010/001367 (filed 2/10/2010), and claims the benefit of U.S.
`
`Provisional Patent Application 61/151,459 (filed 2/10/2009).
`
`24.
`
`I have been instructed by counsel to assume the relevant timeframe for my
`
`analysis in this declaration to be on or before 2/10/2009—taking, at face value, the
`
`’998 patent’s claim to the benefit of priority of provisional application 61/151,459
`
`(“Tang Provisional”, Ex. 1022). As I mention in Sections IV.A and B below, certain
`
`terms and functions are not described in the Tang Provisional from the perspective
`
`of one skilled in the art, so it is my understanding that the priority claim may be
`
`improper under the law. I have also provided a declaration accompanying a
`
`companion petition addressing the ’998 patent and taking its proper priority, using a
`
`relevant timeframe of 2/10/2010.
`
`25. Based on my review of this material, I believe that the relevant general fields
`
`for the purposes of the ’998 patent are analog modems; embedded systems;
`
`telephone networks; cellular networks; financial systems; transaction cards,
`
`9
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`IPR2019-01627 Page 00012
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`

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`including magnetic stripe and smart cards; and security, encryption and
`
`authentication technology.
`
`
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME
`
`26. My opinions are provided based on what a person of ordinary skill in the art
`
`in the technical field of the invention would have understood at the time of the
`
`invention of the challenged claims. As I explained above, the relevant timeframe
`
`in this Declaration is on or before 2/10/2009. I have been informed and understand
`
`that the content of a patent and prior art should be interpreted the way a person of
`
`ordinary skill in the art (“POSITA”) would have interpreted those references at the
`
`time of the invention of the patent using the ordinary and customary meanings of
`
`the claim terms. I understand that the POSITA is a hypothetical concept referring
`
`to one who thinks along the lines of conventional wisdom at the time.
`
`27.
`
`I was asked to provide an opinion as to the level of a POSITA pertinent to the
`
`subject matter set forth in the challenged claims of the ’998 patent at the time of the
`
`priority date. I have been informed that the level of one of ordinary skill in the art is
`
`evidenced by prior art references. In the relevant time period, it is my opinion that a
`
`POSITA in the field of the challenged claims would have been someone with a good
`
`working knowledge of device interfaces and the integration of devices involving
`
`digital and analog signals. A POSITA to whom the patent is addressed would have a
`
`10
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`IPR2019-01627 Page 00013
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`

`

`Bachelor of Science in Electrical Engineering or Computer Engineering, or the
`
`equivalent and have at least one to two years of relevant experience in the fields of
`
`embedded systems and mobile communication device interfaces, or otherwise
`
`equivalent industry experience in the relevant field. Less work experience may be
`
`compensated by a higher level of education, such as a Master’s Degree, and vice
`
`versa. The basis for my familiarity with the level of ordinary skill is my own
`
`technical experience and my own interaction with large numbers of students and my
`
`employees in the computing field who were at this level of skill. In reaching this
`
`opinion as to the hypothetical POSITA, I have considered the types of problems
`
`encountered in the art, the prior art solutions to those problems, the rapidity with
`
`which innovations are made, the sophistication of the technology, and the
`
`educational level and professional capabilities of workers in the field.
`
`
`
`IV. TECHNICAL BACKGROUND AND STATE OF THE ART
`
`28. The ‘998 patent describes an “apparatus for effecting commercial transactions
`
`with a server using a transaction card via a communication device….[and delivering
`
`an] audio signal to the server for processing the commercial transaction.” (Ex. 1001,
`
`Abstract.) All the features of the claimed invention are summarized in this sentence.
`
`While the listed inventors seem to believe they have described a novel technique of
`
`transmitting
`
`information from a
`
`transaction card
`
`to a remote processor,
`
`11
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`IPR2019-01627 Page 00014
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`

`

`communications via “audio” have been previously practiced, and in the same manner
`
`as claimed in the ‘998 patent. Below I provide some background information related
`
`to the ’998 patent.
`
`A.
`
`Processor Functions, “Converting”
`
`29. The claims of the ’998 patent recite the function of “converting” information
`
`into an “analog audio” format suitable for transmission to an analog hands-free jack
`
`of a mobile communication device. See, e.g., claim 1. I do not recognize the function
`
`of “converting” into an “analog audio” format as being supported in the Tang
`
`Provisional because the Tang Provisional fails to recite any converting at all.
`
`Additionally, while the Tang Provisional generically recites a “microprocessor,” this
`
`microprocessor is not described as performing any converting or signal processing,
`
`and a POSITA would not have recognized that this generic recitation of a
`
`microprocessor to necessarily have the capability to convert information into an
`
`analog audio signal for transmission to a hands-free jack.
`
`30. A typical processor is known by a POSITA to be a digital computing device
`
`and, by its nature, processes digital information. Unless otherwise disclosed, a
`
`POSITA would expect that some other hardware would be needed to convert digital
`
`signals, like those representing financial card numbers, to an analog audio format
`
`suitable for transmission to the analog input of a mobile communications device.
`
`12
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`

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`Such conversion is normally associated with a modem,1 a device that is not disclosed
`
`by the subject patent or its provisional application. There are constraints on the types
`
`of analog signals that may be successfully transmitted through a cellular telephone
`
`connection, so absent explanation by the patent, the POSITA would need to guess as
`
`to the necessary components, intended processes, and signal processing to practice
`
`this aspect of the disclosure.
`
`31. Processors that are typically described in patents like the ‘998 patent and the
`
`Tang Provisional are understood to be digital processors, such as microprocessors.
`
`Such devices, by themselves, perform calculations on binary representations of
`
`numbers. Analog signals, for example those generated while reading the transitions
`
`of a magnetic stripe or audio signals transmitted via analog telephone lines or via the
`
`analog input to a cellular telephone, are not binary or any other form of discrete
`
`numbers. While it is common to use a digital-to-analog (D/A) converter to transform
`
`the digital output of the microprocessor to a sampled analog waveform, this itself is
`
`not sufficient to generate the analog modem signals or DTMF tones that might be
`
`applied to an analog input. A POSITA would recognize that some modem or tone
`
`generation algorithms would be needed, which are not disclosed in the associated
`
`provisional application. As an alternative, a specific digital signal processor or mixed
`
`signal processor, designed for modem, tone generation and signal processing
`
`
`1 I further discuss modems in Section IV.C below.
`
`13
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`

`

`applications could be used, but there is nothing indicated to inform the POSITA what
`
`type of special purpose device might be sufficient. In contrast, Eisner (Ex. 1008)
`
`specifically identifies circuitry for generating DTMF tones—a Mitel #MT8888C/C-
`
`1
`
`transceiver
`
`integrated with a microcontroller.
`
`(Ex. 1008, 5:17-26.)
`
`Microprocessors specifically with analog-to-digital converter (ADC) and a digital-
`
`to-analog converter (DAC) capabilities, such as Texas Instrument’s MSP430,2 are
`
`mixed signal processors that a POSITA could have further configured to process and
`
`generate analog signals.
`
`B.
`
`Telephone Jacks (RJ) and Headphone Jacks (TRS)
`
`32. The claims of the ’998 patent recite the term “hands-free jack” to describe a
`
`jack of a mobile communication device for receiving analog signals. See, e.g., claim
`
`1. I do not recognize the term “hands-free jack” being supported in the Tang
`
`Provisional because it recites, at best, a “phone jack.” A POSITA would have
`
`recognized the Tang Provisional’s “phone jack” only as a registered jack (RJ)-type
`
`connector (known to be used as telephone jacks), not a TRS-type “hands-free jack”
`
`connector (known to be used as headphone jacks). As explained in the following
`
`paragraphs, a POSITA would have recognized that these are two different “jacks”
`
`because they are differently shaped connectors, their wiring and connection points
`
`
`2 Ex. 1031, Texas Instruments MSP430x1xx Family User’s Guide, Sections 1.1, 17-
`19.
`
`14
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`IPR2019-01627 Page 00017
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`

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`are different, and signals configured for a “phone jack” would not be readily
`
`transmissible
`
`to a “hands-free
`
`jack” without additional hardware and
`
`experimentation. Thus, although “phone jacks” and “hands-free jacks” are both
`
`connectors for electrical signals, there are physical and technical differences between
`
`them such that a POSITA would have understood that disclosure of one does not in
`
`any way imply disclosure of the other.
`
`33. The Tang Provisional describes and depicts a phone jack 10 and a phone jack
`
`cable 11. (Tang Provisional §200.) Figures 1, 3, 4, 5, and 6 illustrate a rectangular
`
`connector and Figure 5 further shows an oblique view of phone jack 10 with a small
`
`rectangular cut out above a larger rectangular hole. A person of ordinary skill in the
`
`art would recognize the term “phone jack” and its consistent illustration in the figures
`
`to describe a standard RJ-11 (Registered Jack 11) type telephone jack particularly
`
`since this style connector has a plastic retaining clip that is built into the connector
`
`and locked into the smaller rectangular hole. RJ-11 connectors have been the
`
`standard connectors used between telephone handsets and telephone base units as
`
`well as the connection between a telephone base unit and the telephone wall plug
`
`since the Federal Communications Commission issued an order in 1976 requiring
`
`standardized interfaces to telephone equipment. FCC Part 68 describes the RJ-11
`
`15
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`

`jack in 47 Part 68.3 A person of ordinary skill in the art would understand that such
`
`a jack provides a two-wire bidirectional interface on the center two conductors of
`
`the plug with power optionally provided on the outer two conductors. They would
`
`further understand that the analog telephone interface is a balanced4 twisted wire
`
`pair connection.
`
`34. The ‘998 patent uses the term “hands-free jack” to describe the means to
`
`interface between
`
`the claimed
`
`transaction device and a cellular phone
`
`(communication device). The term “hands-free jack” is not a standard term of art
`
`since there have been changing standards in the cellular telephone industry, but, as
`
`the name implies, it relates to jacks for connecting devices that allow cellular phone
`
`
`3 See FCC 47 CFR Part 68, Connection of Terminal Equipment to the Telephone
`Network, October 1, 1999 Edition (Ex. 1032) at Section 68.500, pp. 351-354,
`http://www.tscm.com/FCC47CFRpart68.pdf.
`4 A “balanced” connection is one with two conductors that have the same impedance
`to ground. Benefits of balanced connections include use of low-cost conductors
`and insulation and ease of installation. Examples of balanced connections include
`television “twin-lead,” telephone wires, and Ethernet wiring. A connection that is
`not “balanced” may be “unbalanced.” An “unbalanced” connection is one with
`conductors having different impedances to ground, generally with one conductor
`serving as ground reference. Benefits of unbalanced connections are better
`shielding of signal conductors from external noise and other interfering signals.
`Examples of balanced connections include television coaxial cables and audio
`coaxial cables. While a POSITA would have known how to design and configure
`systems using balanced signals and with systems using unbalanced signals, and
`while the differences between such systems would have been obvious to a
`POSITA, they are still different. And, as stated above in Section I.D.2,
`obviousness of a given feature has no bearing on written description.
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`users to perform functions without their hands, typically by voice. Initially, each
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`manufacturer developed their own cellular devices with a proprietary set of ancillary
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`devices with each manufacturer’s devices using different interfaces. Eventually, as
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`cellular manufacturers recognized a need to allow users to attach headphones to their
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`phones, companies adopted either 2.5 mm or 3.5 mm TRS (tip-ring-sleeve) or TRRS
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`(tip-ring-ring-sleeve) connectors—cylindrical coaxial connectors—for hands-free
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`operations. Simultaneously, as the need for hands-free operation of cellular phones
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`in automobiles was recognized, cellular phone manufacturers also added features to
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`their main phone charging connectors or implemented wireless communications
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`(e.g., Bluetooth) to work in conjunction with the audio systems in automobiles. Thus,
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`as the cellular industry has evolved, any standard for a “hands-free jack” or
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`connector has continually evolved in scope, although the TRS and TRRS connectors
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`have been the most widely used because of their standardization as headphone jacks
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`across consumer electronics, including cellular phones.
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`35. Although the ‘998 patent illustrates the same RJ-11 jack as the Tang
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`Provisional, whereas the Tang Provisional only uses the terms “phone jack” (10) (to
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`describe the jack of the card reader device) and “phone jack cable” (11) (to describe
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`the cable connecting the card reader device 100 to the mobile phone 13), the ’998
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`patent introduces a new term “hands-free jack” (34) and assigns it to the mobile
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`communication device’s jack that is connected to the same “phone jack” (33) and
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`“cable 30…mounted to the phone jack 33” from the Tang Provisional. (Ex. 1001,
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`7:24-26, 9:2-3.) However, an RJ-11 jack is not directly interchangeable with a hands-
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`free jack for a number of reasons. One, cellular phones were not known to use RJ-
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`11 connectors for “hands-free” operations or otherwise. Two, hands-free jacks are
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`associated with structural and operational details that are starkly different from RJ-
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`11 jacks. As explained above, hands-free jacks on cellular phones were usually for
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`TRS/TRRS connectors. While TRS/TRRS connectors may also be called “phone
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`jacks,” this appellation is derived from a different background5 – they are headphone
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`jacks, not telephone jacks. Originally used by Western Electric around the beginning
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`of the 20th century, these connectors were used as part of the internal telephone
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`network by switchboard operators to manually interconnect lines and were never a
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`standardized means of connecting customer telephone equipment. Further, signals
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`transmitted using TRS/TRRS connectors are unbalanced (whereas RJ-11 signals are
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`balanced, as explained above), and as such there will always be a ground connection,
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`connected to the cable shield. In addition, there may be one, two or three additional
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`signal connections. These connections, depending on the number of signal
`
`connections, respectively correspond to 1 – a monophonic audio output from the
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`device, 2 – right and left channel stereophonic outputs from the device, or 3 – right
`
`
`5 See The ARRL Handbook for Radio Communications – 83rd Edition, The American
`Radio Relay League, Newington, CT 06111, 2005 (Ex. 1033) at p. 19.6.
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`and left stereophonic outputs and a monophonic input to the device. The “barrel” or
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`“sleeve” of the connector provides the ground, while the tip and adjacent rings near
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`the tip of the connector provide the one to three signals. Common TRS/TRRS
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`connectors are 0.25 inches, 3.5 mm or 2.5 mm with the 3.5 mm connector being
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`most common on devices like cellular phones.
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`36.
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`In summary, whereas the Tang Provisional only describes an RJ-11 “phone
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`jack,” a POSITA would have recognized the ’875 patent’s “hands-free jack” as a
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`traditional TRS/TRRS connector. RJ-11 telephone jacks and TRS/TRRS headphone
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`jacks are not directly interchangeable without hardware reconfiguration, as there
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`exist significant differences between them. Exemplary differences incl