UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`FINTIV, INC.,
`
`Patent Owner
`____________
`
`Case No.: IPR2020-00019
`U.S. Patent No. 8,843,125
`
`Title: SYSTEM AND METHOD FOR MANAGING MOBILE
`WALLET AND ITS RELATED CREDENTIALS
`_________________________________
`
`DECLARATION OF MICHAEL I. SHAMOS, PH.D.
`
`IPR2020-00019
`Fintiv EX2007 Page 1
`
`

`

`In signing this Declaration, I understand that the Declaration will be filed
`
`as evidence in a contested case before the Patent Trial and Appeal Board of the
`
`United States Patent and Trademark Office. I acknowledge that I may be subject
`
`to cross examination in the case and that cross examination will take place within
`
`the United States. If cross examination is required of me, I will appear for cross
`
`examination within the United States during the time allotted for cross
`
`examination.
`
`Dated: February 14, 2020
`
`
`
`__________________________
`Michael I. Shamos, Ph.D.
`
`IPR2020-00019
`Fintiv EX2007 Page 2
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. QUALIFICATIONS ....................................................................................... 2
`III. COMPENSATION ......................................................................................... 4
`IV. MATERIALS CONSIDERED ....................................................................... 5
`V.
`SUMMARY OF MY OPINIONS .................................................................. 6
`VI. LEGAL PRINCIPLES .................................................................................... 6
`VII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`VIII. SUMMARY OF THE ’125 PATENT .......................................................... 12
`IX. THE ’125 PROSECUTION HISTORY ....................................................... 18
`X.
`CLAIM CONSTRUCTION ......................................................................... 19
`A.
`“mobile device information” .............................................................. 19
`B.
`“mobile wallet application” ................................................................ 20
`C.
`“over-the-air (OTA) proxy”, “OTA proxy” ....................................... 23
`D.
`“provision[ing]” .................................................................................. 27
`E.
`“SE information” ................................................................................ 27
`F.
`“wallet management applet” .............................................................. 28
`G.
`“widget” .............................................................................................. 31
`XI. SUMMARY OF THE ASSERTED REFERENCES ................................... 37
`A. Aiglstorfer U.S. 2010/0138518, Ex. 1004 (“Aiglstorfer”) ................. 37
`B.
`Buhot U.S. 2010/0190437, Ex. 1005 (“Buhot”) ................................ 40
`C. Wang CN 101459902A Ex. 1009 (“Wang”)...................................... 43
`XII. GROUND 1: CLAIMS 11, 13-14, 16-17, AND 23-25 WOULD NOT
`HAVE BEEN OBVIOUS OVER THE COMBINATION OF
`AIGLSTORFER, BUHOT, AND WANG ................................................... 46
`A.
`Claim 11 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 47
`
`-i-
`
`IPR2020-00019
`Fintiv EX2007 Page 3
`
`

`

`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 11 Preamble: “A method for provisioning a
`contactless card applet in a mobile device comprising a
`mobile wallet application, the method comprising:” ............... 47
`Limitation 11a: “activating the mobile wallet
`application” .............................................................................. 48
`Limitation 11b: “connecting to a Trusted Service
`Manager (TSM) system” .......................................................... 49
`Limitation 11c: “synchronizing the mobile wallet
`application with the TSM system” ........................................... 49
`Limitation 11d: “displaying a contactless card applet
`based on attributes of the mobile device” ................................ 50
`Limitation 11e: “receiving a selection of a contactless
`card applet” .............................................................................. 55
`Limitation 11f: “retrieving a widget and a wallet
`management applet (WMA) corresponding to the
`contactless card applet”; Limitation 11g: “provisioning
`the selected contactless card applet, the widget, and the
`WMA.” ..................................................................................... 55
`Claim 13 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 58
`1.
`Claim 13: The method of claim 11, wherein
`synchronizing the mobile wallet application with the
`TSM system comprises: checking for a change made to a
`configuration of the mobile wallet application; and
`transmitting the change to the TSM system.” .......................... 58
`Claim 14 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 60
`1.
`Claim 14: The method of claim 11, wherein displaying a
`contactless card applet based on attributes of the mobile
`device comprises: retrieving mobile device information
`comprising SE information; transmitting the mobile
`device information”.................................................................. 60
`“receiving filtered contactless card applet for
`provisioning, wherein the contactless card applet is
`filtered based on the mobile device information” .................... 60
`
`B.
`
`C.
`
`2.
`
`-ii-
`
`IPR2020-00019
`Fintiv EX2007 Page 4
`
`

`

`D.
`
`E.
`
`F.
`
`2.
`
`Claim 16 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 62
`1.
`Claim 16: The method of claim 11, wherein provisioning
`the selected contactless card applet, WMA and widget
`comprises: transmitting a request for installation of the
`contactless applet and the corresponding widget and
`WMA to be installed, wherein the WMA is a software
`application configured to store account specific
`information and the widget is an application configured
`to interface with a user of the mobile device” ......................... 62
`“receiving the contactless applet, the WMA, and the
`widget information through OTA proxy” ................................ 63
`Claim 17 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 65
`1.
`Claim 17: The method of claim 16, wherein account
`specific information comprises at least one of a payment
`card number, a security code, an expiration date, and a
`personal identification number (PIN).” ................................... 65
`Claim 23 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 65
`1.
`Claim 23 Preamble: “A mobile device, comprising:” ............. 65
`2.
`Limitation 23a: “a secure element” ........................................ 65
`3.
`Limitation 23b: “a mobile wallet application configured
`to store a widget corresponding to a contactless card
`applet, wherein the contactless card applet is stored in the
`SE” ........................................................................................... 66
`Limitation 23c: “a wallet management applet (WMA)
`corresponding to the contactless card applet, wherein the
`WMA is stored in the SE” ....................................................... 66
`Limitation 23d: “an over-the-air (OTA) proxy
`configured to provision the contactless card applet, a
`widget corresponding to the contactless card applet, and
`the WMA” ................................................................................ 66
`
`4.
`
`5.
`
`-iii-
`
`IPR2020-00019
`Fintiv EX2007 Page 5
`
`

`

`6.
`
`H.
`
`G.
`
`Limitation 23e: “wherein said OTA proxy is configured
`to capture mobile device information comprising SE
`information”; Limitation 23f: “wherein said OTA proxy
`is configured to transmit the mobile device information
`for registering the mobile wallet application.” ........................ 66
`Claim 24 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 67
`1.
`Claim 24: “The mobile device of claim 23, wherein
`WMA is configured to store account information
`associated with the contactless card applet, and the
`widget is configured to include a user interface.” ................... 67
`Claim 25 Would Not Have Been Obvious in View of
`Aiglstorfer, Buhot and Wang ............................................................. 67
`1.
`Claim 25: “The mobile device of claim 24, wherein the
`account information comprises at least one of a card
`number to access financial information, a security code, a
`personal identification number (PIN), and an expiration
`date.” ........................................................................................ 67
`XIII. A POSITA WOULD NOT HAVE BEEN MOTIVATED TO
`COMBINE AIGLSTORFER AND BUHOT, AIGLSTORFER AND
`WANG, OR AIGLSTORFER, BUHOT AND WANG ............................... 68
`XIV. GROUND 2: CLAIMS 18, AND 20-22 WOULD NOT HAVE BEEN
`OBVIOUS OVER THE COMBINATION OF AIGLSTORFER AND
`WANG .......................................................................................................... 77
`A.
`Claim 18 Would Not Have Been Obvious in View of
`Aiglstorfer and Wang ......................................................................... 77
`1.
`Claim 18 Preamble: “A wallet management system
`(WMS) in a non-transitory storage medium to store and
`manage mobile wallet account information, comprising:” ...... 77
`Limitation 18a: “a wallet client management component
`configured to store and to manage a mobile wallet
`application” .............................................................................. 77
`Limitation 18b: “a widget management component
`configured to store and to manage widgets” ............................ 78
`
`2.
`
`3.
`
`-iv-
`
`IPR2020-00019
`Fintiv EX2007 Page 6
`
`

`

`4.
`
`5.
`
`6.
`
`7.
`
`Limitation 18c: “a device profile management
`component configured to store mobile device
`information” ............................................................................. 79
`Limitation 18d: “a rule engine configured to filter a
`widget based on the mobile device information” .................... 80
`Limitation 18e: “wherein said wallet management system
`is configured to receive the mobile device information
`from a mobile device and store the mobile device
`information in the device profile management
`component” .............................................................................. 81
`Limitation 18f: “wherein said wallet management system
`is configured to register the mobile device and the mobile
`wallet application in a Trusted Service Manager (TSM)
`system” ..................................................................................... 81
`Claim 20 Would Not Have Been Obvious in View of
`Aiglstorfer and Wang ......................................................................... 82
`1.
`Claim 20: The WMS of claim 18, wherein the mobile
`device information comprises at least one of a mobile
`device type, a supporting Operating System (OS), a
`mobile service provider, a mobile device manufacturer,
`and a secure element (SE) type.” ............................................. 82
`Claim 21 Would Not Have Been Obvious in View of
`Aiglstorfer and Wang ......................................................................... 83
`1.
`Claim 21: The WMS of claim 18, further comprising a
`user profile management component to capture and
`manage user identifying information” ..................................... 83
`Claim 22 Would Not Have Been Obvious in View of
`Aiglstorfer and Wang ......................................................................... 84
`1.
`Claim 22: The WMS of claim 18, wherein the WMS is
`hosted on the TSM system.” .................................................... 84
`A POSITA Would Not Have Been Motivated to Combine
`Aiglstorfer and Wang ......................................................................... 85
`XV. SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS .............. 85
`
`D.
`
`B.
`
`C.
`
`E.
`
`-v-
`
`IPR2020-00019
`Fintiv EX2007 Page 7
`
`

`

`A.
`
`The invention diverged from the technical direction followed by
`those skilled in the art and filled a long-felt but unsatisfied
`need. .................................................................................................... 85
`Skepticism .......................................................................................... 85
`B.
`XVI. CONCLUSIONS .......................................................................................... 86
`
`-vi-
`
`IPR2020-00019
`Fintiv EX2007 Page 8
`
`

`

`I.
`
`INTRODUCTION
`1.
`My name is Michael Shamos. I have been retained as an expert
`
`witness by Patent Owner Fintiv, Inc. (“Fintiv” or “Patent Owner”) for this Inter
`
`Partes Review IPR2020-0019 of U.S. Patent No. 8,843,125 (the “’125 Patent”)
`
`filed by Apple Inc. (“Apple” or “Petitioner”).
`
`2.
`
`In the Petition, I understand that Petitioner is challenging the validity
`
`of Claims 11, 13-14, 16-18, and 20-25 (the “Challenged Claims”) of the ’125
`
`Patent (Ex. 1001).
`
`3.
`
`In the Petition, I understand that Petitioner has petitioned for inter
`
`partes review on the following Grounds:
`
`• Ground 1: Claims 11, 13-14, 16-17, and 23-25 as obvious under 35 U.S.C. §
`
`103(a) over the combination of Aiglstorfer, Buhot, and Wang.
`
`• Ground 2: Claims 18 and 20-22 as obvious under 35 U.S.C. § 103(a) over
`
`the combination of Aiglstorfer and Wang.
`
`4.
`
`I have been asked to consider whether the Challenged Claims of the
`
`’125 Patent would have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) as of the date of the invention. I was also asked to review and
`
`comment on several technical statements made by Petitioner in the Petition and by
`
`its expert, Dr. Clifford Neuman, in the “Declaration of Dr. Clifford Neuman,”
`
`dated October 28, 2019 (“Neuman Declaration,” Ex. 1003).
`
`IPR2020-00019
`Fintiv EX2007 Page 9
`
`

`

`5.
`
`This Declaration contains statements of my opinions formed in this
`
`case to date and the bases and reasons for those opinions. I may offer additional
`
`opinions based on further review of materials in this case, including opinions
`
`and/or testimony of other expert witnesses.
`
`II. QUALIFICATIONS
`
`6.
`
`This section summarizes my educational background, career history,
`
`publications, and other relevant qualifications. My curriculum vitae is attached as
`
`Patent Owner’s Exhibit 2022, which includes my detailed employment
`
`background, professional experience, and list of publications.
`
`7.
`
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American University
`
`in Technology of Management, an M.S. degree from Yale University in Computer
`
`Science, an M. Phil. from Yale University in Computer Science, a Ph.D. from Yale
`
`University in Computer Science, and a J.D. degree from Duquesne University.
`
`8.
`
`I currently hold the title of Distinguished Career Professor in the
`
`School of Computer Science at Carnegie Mellon University in Pittsburgh,
`
`Pennsylvania. I am a member of two departments in that School, the Institute for
`
`Software Research and the Language Technologies Institute. I was a founder and
`
`Co-Director of the Institute for eCommerce at Carnegie Mellon from 1998-2004
`
`and from 2004-2018 have been Director of the eBusiness Technology graduate
`
`2
`
`IPR2020-00019
`Fintiv EX2007 Page 10
`
`

`

`program in the Carnegie Mellon University School of Computer Science. Since
`
`2018, I have been Director of the M.S. in Artificial Intelligence and Innovation
`
`degree program at Carnegie Mellon.
`
`9.
`
`I have taught graduate courses at Carnegie Mellon in Electronic
`
`Commerce, including eCommerce Technology, Electronic Payment Systems,
`
`Electronic Voting, Internet of Things, Ubiquitous Computing, Electronic Payment
`
`Systems and eCommerce Law and Regulation, as well as Analysis of Algorithms.
`
`Since 2007, I have taught an annual course in Law of Computer Technology. I
`
`currently also teach Artificial Intelligence and Future Markets.
`
`10.
`
`I am the author and lecturer in a 24-hour video course on Internet
`
`protocols and have taught computer networking, wireless communication and
`
`Internet architecture since 1999.
`
`11.
`
`Since 2001, I have been a Visiting Professor at the University of Hong
`
`Kong, where I teach an annual course in Electronic Payment Systems. This is one
`
`of only a handful of graduate courses taught on this subject in the world.
`
`12.
`
`I was the Director of Carnegie Mellon’s graduate degree program in
`
`eBusiness Technology from 1999-2018 and am now a faculty member in the
`
`Privacy Engineering degree program at Carnegie Mellon. My course on Law of
`
`Computer Technology is required for all students in that program. My principal
`
`3
`
`IPR2020-00019
`Fintiv EX2007 Page 11
`
`

`

`role currently is as Director of the graduate program in Artificial Intelligence and
`
`Innovation.
`
`13.
`
`From 1979-1987 I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`14.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have
`
`been asked to render opinions in this declaration as a technical expert. I have not
`
`been asked to offer any opinions on patent law in this proceeding.
`
`15.
`
`I have previously served as an expert in over 280 cases concerning
`
`computer technology. In particular, I have been involved in at least 25 cases
`
`involving electronic payment systems.
`
`III. COMPENSATION
`16.
`I am being compensated for my work in this case at the rate of $550
`
`per hour. I am also reimbursed for all reasonable expenses that I incur during the
`
`course of this case. My compensation does not depend upon the results of my
`
`analysis or the substance of my testimony, nor does my compensation depend on
`
`the outcome of this or any related proceeding. I have no personal interest in the
`
`outcome of this matter. I have no financial interest in Patent Owner or affiliation
`
`with any of the real parties in interest, the Patent Owner or the named inventor of
`
`4
`
`IPR2020-00019
`Fintiv EX2007 Page 12
`
`

`

`the ’125 Patent. It is conceivable that I may own mutual funds whose portfolios
`
`include stock in Petitioner. If this is the case, the value of such holding would not
`
`constitute a material part of my net worth.
`
`17.
`
`The statements made and opinions provided in this Declaration are
`
`based on my own personal knowledge and, if called as a witness, I could and
`
`would testify in a manner consistent with this Declaration.
`
`IV. MATERIALS CONSIDERED
`18.
`I have reviewed the following documents in forming the opinions
`
`expressed in this Declaration:
`
`•
`
`•
`
`•
`
`•
`
`U.S. Patent No. 8,843,125;
`
`Exhibits 1002-1023, 1024, and 1026-1032 in this proceeding;
`
`Apple Inc.’s Petition for Inter Partes Review of U.S. Patent No.
`
`8,843,125, and references cited therein (“Petition”);
`
`Apple Inc.’s Supplemental Filing Regarding the District Court’s
`
`Construction of “OTA Proxy” (“Supplemental Filing”);
`
`19.
`
`I have also relied on my education, skill, training, and experience in
`
`the relevant fields of technology in forming my opinions. I have further
`
`considered the viewpoint of a person of ordinary skill in the art (“POSITA”) as of
`
`the time of the inventions of the ’125 Patent. I provide my opinion as to the proper
`
`level of skill of a POSITA in Section VII of this Declaration.
`
`5
`
`IPR2020-00019
`Fintiv EX2007 Page 13
`
`

`

`20.
`
`I reserve the right to supplement my opinions as expressed in this
`
`Declaration to address any new information obtained in the course of this
`
`proceeding, or based on any new positions taken by Petitioner.
`
`V.
`
`SUMMARY OF MY OPINIONS
`21.
`It is my understanding that the following table summarizes the
`
`grounds of challenge to the Challenged Claims raised in the Petition:
`Ground Invalidity
`Challenge
`1
`§ 103
`
`References
`Aiglstorfer in view of Buhot and Wang
`
`Challenged
`Claims
`11, 13-14, 16-
`17, 23-25
`18, 20-22
`
`2
`
`§ 103
`
`Aiglstorfer in view of Wang
`
`22. After a review of the alleged prior art asserted by Petitioner and the
`
`Neuman Declaration, it is my opinion that Petitioner has not shown that the
`
`Challenged Claims would have been obvious in light of the asserted prior art at the
`
`time of the invention. My opinions, and the bases therefore, are detailed
`
`throughout this Declaration.
`
`VI. LEGAL PRINCIPLES
`23. Counsel for Patent Owner has informed me of the legal principles that
`
`apply in this proceeding.
`
`24.
`
`I have been informed that Petitioner has the burden to prove that the
`
`claims challenged in the Petition are not patentable by a preponderance of the
`
`6
`
`IPR2020-00019
`Fintiv EX2007 Page 14
`
`

`

`evidence, which I understand to be just enough evidence to make it more likely
`
`than not that Petitioner’s argument is correct.
`
`25. A claim is invalid as obvious under 35 U.S.C. § 103 if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter of the claim as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the invention
`
`pertains. I have been informed that the following factors are used to determine
`
`whether or not the claimed subject matter would have been obvious: (i) the scope
`
`and content of the prior art; (ii) the differences, if any, between the prior art and the
`
`claimed invention; (iii) the level of ordinary skill in the field of the invention; and
`
`(iv) any relevant objective considerations of non-obviousness.
`
`26. A party asserting obviousness based on a combination of prior art
`
`references must demonstrate that one of ordinary skill in the art would have been
`
`motivated to combine the teachings of those references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so. It is my understanding that it is not enough to show that one
`
`skilled in the art could combine elements of multiple references, but instead there
`
`must be some reason that would have prompted a person of ordinary skill in the art
`
`to combine the elements in the way the claimed invention does. I understand that
`
`7
`
`IPR2020-00019
`Fintiv EX2007 Page 15
`
`

`

`there must be some reasoned explanation as to why one of ordinary skill in the art
`
`would combine the references.
`
`27.
`
`I understand that obviousness may be shown by considering more
`
`than one item of prior art and by considering the knowledge of a person of ordinary
`
`skill in the art, and that obviousness may be based on various rationales including:
`
`(i) combining prior art elements according to known methods to yield predictable
`
`results; (ii) simple substitution of one known element for another to obtain
`
`predictable results; (iii) use of known techniques to improve similar devices in the
`
`same way; (iv) applying a known technique to a known device ready for
`
`improvement to yield predictable results; (v) “obvious to try” – choosing from a
`
`finite number of identified, predictable solutions, with a reasonable expectation of
`
`success; (vi) known work in one field of endeavor 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 are predictable to one of ordinary skill in the art; and
`
`(vii) some teaching, suggestion, or motivation in the prior that would have led one
`
`of ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`28. A combination of references would not have been obvious if the
`
`alleged modification(s) to be made to the reference(s) would have been
`
`inconsistent with the reference’s stated goals or method of operation or would have
`
`8
`
`IPR2020-00019
`Fintiv EX2007 Page 16
`
`

`

`rendered the combination inoperable for its intended purpose. I further understand
`
`that for something to have been obvious, the party asserting obviousness must
`
`explain why a POSITA would have selected components for combination in the
`
`manner claimed.
`
`29.
`
`I further understand that a claim is not obvious over a combination of
`
`prior art references if such references “teach away” from the claimed combination,
`
`if there is no motivation to combine such references, or if the combination would
`
`lead to waste and inefficiencies not present in one or more of the references in
`
`isolation.
`
`30.
`
`It is my further understanding that obviousness cannot be based on a
`
`hindsight combination of components selected from prior art references. For
`
`example, the challenged patent itself cannot be used as a basis for combining prior
`
`art references absent such a teaching in the patent. I also understand that an
`
`invention would not have been obvious simply because all of the elements of the
`
`invention may have been known separately in the prior art.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`31.
`I understand that the hypothetical POSITA is considered to have the
`
`normal skills and knowledge of a person in a certain technical field, as of the time
`
`of the invention at issue. I understand that factors that may be considered in
`
`determining the level of ordinary skill in the art include: (1) the types of problems
`
`9
`
`IPR2020-00019
`Fintiv EX2007 Page 17
`
`

`

`encountered in the art; (2) the prior art solutions to those problems; (3) rapidity
`
`with which innovations are made; (4) the sophistication of the technology; and (5)
`
`the education level of active workers in the field. I also understand that “the
`
`person of ordinary skill” is a hypothetical person who is presumed to be aware of
`
`the universe of available prior art. Therefore, no such person actually exists.
`
`32.
`
`I understand that Petitioner has proposed that a POSITA for the ’125
`
`Patent would have had a degree in computer engineering, computer science,
`
`information systems, or a similar discipline and have 3-4 years of experience with
`
`the design and/or implementation of mobile applications in a client/server
`
`environment. (Ex. 1003 at ¶ 37.)
`
`33.
`
`I do not agree that this is the proper level of ordinary skill necessary
`
`for a POSITA to understand the specification of the ’125 Patent and to make and
`
`use the claimed inventions without undue experimentation. The claims of the ’125
`
`Patent are drawn to mobile wallet applications, secure elements and
`
`communications with a Trusted Service Manager. Dr. Neuman’s characterization
`
`omits familiarity with mobile wallets, payment systems, and secure elements.
`
`34.
`
`The ’125 Patent describes its field as “management of virtual cards
`
`stored on mobile devices.” (Ex. 1001 at 1:25-26.) The “cards” referred to are
`
`payment cards such as credit cards. The specification addresses security and
`
`secure elements in the context of a “mobile financial management system” (Id. at
`
`10
`
`IPR2020-00019
`Fintiv EX2007 Page 18
`
`

`

`1:35-36) at a level sufficient to protect sensitive payment information in mobile
`
`wallets. Mere experience with “mobile applications,” even for 3-4 years, would
`
`not provide sufficient background to make and use secure mobile wallets for use in
`
`a financial management system. Familiarity with payment networks and the
`
`security requirements imposed by credit card issuers would be needed.
`
`35.
`
`Therefore, it is my opinion that a POSITA would have had at least a
`
`bachelor’s degree in computer engineering, computer science, information
`
`systems, or a similar discipline, or equivalent work experience and, in addition
`
`have at least two years of experience with design and/or implementation of mobile
`
`financial applications in a client/server environment, including over-the-air
`
`provisioning of secure elements.
`
`36. All the opinions I express herein are from the viewpoint of the
`
`foregoing definition of such a POSITA during the time period 2010-2011. While
`
`Dr. Neuman was instructed to use December 30, 2010 as the effective filing date of
`
`the Patent (Ex. 1003 at ¶ 42), I have been asked to use the actual filing date of
`
`December 2, 2011. None of my opinions expressed herein would change if the
`
`December 30, 2010 date were used.
`
`11
`
`IPR2020-00019
`Fintiv EX2007 Page 19
`
`

`

`VIII. SUMMARY OF THE ’125 PATENT
`37.
`The ’125 Patent relates to management of virtual cards stored on
`
`mobile devices and discloses provisioning contactless virtual payment cards in a
`
`mobile wallet application installed in a mobile device.
`
`38.
`
`The ’125 Patent acknowledges that wallet functionality had previously
`
`been integrated into mobile devices. (Ex. 1001 at 1:63-67.) The ’125 patent,
`
`however, identifies a number of shortcomings in mobile wallet functionality. (Id.)
`
`Although the prior art allowed users to select contactless payment virtual cards
`
`from among contactless payment applets stored in the mobile device for use with
`
`point-of-sale (“POS”) devices, management of the payment applets was less than
`
`ideal. For example, a user could only view contactless payment applets stored in
`
`the user’s mobile device when interacting with a POS device and the user was
`
`unable to view details of those applets even when making a payment with the POS
`
`device. (Id. at 2:6-18.) The ’125 Patent explains that industry standard “Payment
`
`Procedure Secure Elements” (“PPSEs”) provided only a very limited generic
`
`description to the user that included an application identification (ID) and label (Id.
`
`at 2:19-29) such that the user was unable to view any account-specific information
`
`stored within the SE or manage the applications with or without the use of POS
`
`equipment. (Id.)
`
`12
`
`IPR2020-00019
`Fintiv EX2007 Page 20
`
`

`

`39. Additionally, the ’125 Patent explains that mobile commerce services
`
`were offered to users without regard to mobile device capabilities or the particular
`
`mobile service providers actually utilized by the user. Inability to view such
`
`details such as bank membership, mobile service provider, mobile device
`
`manufacturer, type of secure element installed, OS, etc., caused the user to be
`
`“bombarded with various applications that may be inapplicable to the user,”
`
`making management of the mobile wallet difficult. (Id. at 2:30-44.)
`
`40. Because service providers operated independently, individual
`
`applications were also typically updated separately, which dissuaded users from
`
`obtaining critical updates to particular applications. (Id. at 2:45-51.) The ’125
`
`Patent also discloses a Trusted Service Manager (TSM) system which is positioned
`
`to consolidate information from various service providers and to act as an
`
`integration point for all of the external parties with which the mobile device
`
`interacts to provide more seamless and efficient operation of mobile services. (Id.
`
`at 5:36-46; Ex. 1027, “District Court CC Order” at 2.) Thus, the ’125 patent does
`
`not claim the idea of a mobile wallet or using a mobile wallet with NFC
`
`technology, but instead addresses numerous shortcomings of the technology as it
`
`existed at that time.
`
`41.
`
`Figure 2 of the Patent shows an embodiment of a method of installing
`
`a mobile wallet application on a mobile device.
`
`13
`
`IPR2020-00019
`Fintiv EX2007 Page 21
`
`

`

`42.
`
`In step 201, the mobile device (201) requests a new mobile wallet
`
`application from the TSM (120). (Ex. 1001 at 5:55-56.) When installation is
`
`performed, a widget representing a virtual card (e.g., a virtual credit card) is
`
`provisioned to reside within the mobile wallet application 24. (Id. at 5:55-60 and
`
`5:66-6:4.) The user initiates the actual installation process by sending a request to
`
`the TSM in step 205 and the TSM transmits the requested mobile wallet
`
`application 24 for installation along with an accompanying over-the-air proxy
`
`program to allow OTA provisioning in step 206. (Id. at 6:31-41.) The mobile
`
`wallet application can then be l