Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`MOBILEIRON, INC.,
`
`Petitioner,
`
`
`
`
`
`v.
`
`BLACKBERRY, LTD.,
`
`Patent Owner.
`
`__________________________________________________________
`
`IPR2020-01741
`U.S. Patent No. 7,372,961
`Issue Date: May 13, 2008
`Title: METHOD OF PUBLIC KEY GENERATION
`
`
`
`DECLARATION OF MICHAEL T. GOODRICH, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,372,961
`
`
`
`
`
`
`MOBILEIRON, INC. - EXHIBIT 1002
`Page 001
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 1 
`  MATERIALS CONSIDERED ........................................................................ 8 
`  LEGAL STANDARDS ................................................................................. 12 
`Prior Art ............................................................................................... 12 
` 
`Claim Construction ............................................................................. 12 
`Anticipation ......................................................................................... 15 
` 
`  Obviousness ......................................................................................... 16 
`  PERSON OF ORDINARY SKILL IN THE ART ........................................ 23 
`SUMMARY OF OPINIONS ......................................................................... 24 
`  TECHNOLOGICAL BACKGROUND ........................................................ 24 
`  Applied Cryptography and Cryptographic Keys ................................ 25 
`Digital Signatures ................................................................................ 29 
` 
`Numbers, Strings, and Duality ............................................................ 31 
` 
`  Modular Arithmetic ............................................................................. 32 
`Prime Numbers, Groups, and their Orders .......................................... 35 
` 
`Hash Functions .................................................................................... 39 
`Random Number Generators (RNGs) ................................................. 41 
`Rejection Sampling ............................................................................. 44 
` 
`  PRIOR ART REFERENCES ........................................................................ 50 
`  U.S. Patent 6,697,946 (“Miyaji”) (Ex. 1005) ...................................... 51 
`Bellare (Ex. 1006) ............................................................................... 54 
` 
`LEDA (Es. 1007) ................................................................................. 56 
`Facebook’s Prior Art ........................................................................... 59 
` 
`  THE ’961 PATENT ....................................................................................... 62 
`Summary of the ’961 Patent ................................................................ 62 
` 
`The File History for the ’961 Patent ................................................... 69 
`The Challenged Claims ....................................................................... 74 
`
` 
`
` 
`
`
`
`
`
` 
`
` 
`
` 
`
` 
`
` 
`
` 
`
`i
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`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`iv. 
`
`v. 
`
`vi. 
`
`vii. 
`
`Proposed Claim Constructions for the ’961 Patent ............................. 75 
` 
`  ANTICIPATION ........................................................................................... 80 
`  Miyaji .................................................................................................. 80 
`i. 
`Claims 1[a], 15[a], and 23[a] .................................................... 81 
`ii. 
`[23][b]: “an arithmetic processor for” ...................................... 91 
`iii. 
`1[b], 15[b], 23[c]: “generating a seed value SV from a random
`number generator;” ................................................................... 92 
`1[c], 15[c]. 23[d]:“performing a hash function H( ) on said seed
`value SV to provide an output H(SV);” .................................... 93 
`1[d], 15[d], 23[e]: “determining whether said output H(SV) is
`less than said order q prior to reducing mod q;” ....................... 95 
`1[e], 15[f], 23[f]: “accepting said output H(SV) for use as said
`key k if the value of said output is less than said order q;” ...... 97 
`1[f], 15[f], 23[g]: “rejecting said output H(SV) as said key if
`said value is not less than said order q;” ................................... 98 
`viii.  1[g], 15[g], 23[h]: “if said output H(SV) is rejected, repeating
`said method; and” ...................................................................... 99 
`1[h], 15[h], 23[i]: “if said output H(SV) is accepted, providing
`said key k for use in performing said cryptographic function,
`wherein said key k is equal to said output H(SV).” ................100 
`Claims 2, 16, and 24 ...............................................................102 
`x. 
`Claims 3, 17, and 25 ...............................................................104 
`xi. 
`xii.  Claims 4, 18, and 26 ...............................................................104 
`OBVIOUSNESS ............................................................................... 106 
`i. 
`Miyaji in View of Ordinary Skill in the Art ...........................106 
`ii. 
`Claims 1, 15, and 23 ...............................................................107 
`iii.  Claims 2, 16, and 24 ...............................................................109 
`iv. 
`Claims 3, 17, and 25 ...............................................................112 
`v. 
`Claims 4, 18, and 26 ...............................................................113 
`vi. 
`Claims 5, 19, and 27 ...............................................................118 
`
`ix. 
`
` 
`
`
`
`
`
`ii
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`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`vii.  Claims 6, 20, and 28 ...............................................................121 
`  Motivation to Combine ..................................................................... 122 
`  Obviousness by Bellare in View of LEDA ....................................... 124 
`i. 
`Claims 1, 15, and 23 ...............................................................125 
`ii. 
`Claims 2, 16, and 24 ...............................................................147 
`iii.  Claims 3, 17, and 25 ...............................................................148 
`iv. 
`Claims 4, 18, and 26 ...............................................................148 
`v. 
`Claim 5, 19, and 27 .................................................................151 
`vi. 
`Claims 6, 20, and 28 ...............................................................152 
`  Motivation to combine ...................................................................... 153 
`Alleged Secondary Considerations of Non-Obviousness ................. 159 
` 
`i. 
`Alleged commercial success ...................................................160 
`ii. 
`Alleged long felt but unresolved need ....................................162 
`iii.  Alleged failure of others .........................................................163 
`iv.  Alleged copying of the invention by others ............................166 
`
`
`
`
`
`iii
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`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`
`
`I, Michael T. Goodrich, Ph.D., declare and state as follows:
`QUALIFICATIONS
`1.
`I make this Declaration based upon my own personal knowledge,
`
`information, and belief, and I would and could competently testify to the matters set
`
`forth in this Declaration if called upon to do so.
`
`2.
`
`Attached hereto as Appendix A is a true and correct copy of my
`
`Curriculum Vitae (CV). I received a Bachelor of Arts (“BA”) degree in Mathematics
`
`and Computer Science from Calvin University in 1983 and a Ph.D. in Computer
`
`Science from Purdue University in 1987.
`
`3.
`
`I am a Distinguished Professor in the Department of Computer Science
`
`at the University of California, Irvine, where I have been a faculty member since
`
`2001. The Distinguished Professor title at University of California, Irvine is a
`
`campus-level distinction reserved for above-scale faculty who have achieved the
`
`highest levels of scholarship over the course of their careers and have earned national
`
`and international distinctions and honors of the highest level. Prior to working at
`
`the University of California, Irvine, I was a professor in the Department of Computer
`
`Science at the Johns Hopkins University from 1987-2001.
`
`4.
`
`I have authored and coauthored over 300 publications, including
`
`several widely adopted books, such as Introduction to Computer Security and
`
`
`
`
`
`1
`
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`Algorithm Design and Applications. My research includes contributions to data
`
`structures and algorithms, information security and privacy, networking, graph
`
`algorithms, computational geometry, distributed and parallel algorithms, and cloud
`
`security. For example, I have published research articles on topics in applied
`
`cryptography, network security, authentication and authorization, certificate
`
`revocation, forensics, location security, and certified email. Using the indexing
`
`scheme of my CV, examples of such publications include the publications
`
`corresponding to B-10, Ch-9, J-63, J-64, J-66, J-71, J-78, C-83, C-85, C-87, C-89,
`
`C-90, C-91, C-94, C-98, C-100, C-101, C-103, C-104, C-108, C-112, C-113, C-115,
`
`C-117, C-118, C-122, C-125, C-131, C-133, C-139, C-145, C-148, C-150, C-151,
`
`C-155, C-165, C-166, C-167, C-168, C-181, C-191, C-192, C-193, C-199, C-202,
`
`C-207, C-210, and C-216.
`
`5.
`
`In addition, I have consulting experience in matters involving
`
`algorithms, cryptography, machine learning, digital rights management, computer
`
`security, networking, software, and storage technologies. I have consulted as a
`
`technical expert and expert witness on matters related to technologies relevant to the
`
`’961 Patent. For example, I was a technical expert and deponent and testified at trial
`
`regarding digital rights management and applied cryptography, including digital
`
`signatures, hash functions, and encryption/decryption in ContentGuard Holdings v.
`
`
`
`
`
`2
`
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`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`Amazon, Apple, HTC, Samsung, Huawei, BlackBerry, and Motorola (Google). I
`
`have also consulted as a technical expert and deponent in IPRs and district court
`
`cases regarding network security, intrusion detection, and encryption/decryption in
`
`Finjan Inc. v. Blue Coat, Juniper Networks, Palo Alto Networks, Cisco Systems,
`
`Qualys, Rapid7, and SonicWall. In addition, I was a technical expert and deponent
`
`regarding encryption/decryption, public-key cryptography, key exchange, and key
`
`establishment in Philips v. Acer, ASUS, HTC, Southern Telecom, Visual Land,
`
`Zowee Marketing, Shenzen, YiFang, EFun, and Microsoft.
`
`6.
`
`I received a number of awards and recognitions for my research,
`
`teaching, and service to the community. I am a Fellow of the American Association
`
`for the Advancement of Science (AAAS), a Fulbright Scholar, a Fellow of the
`
`institute of Electrical and Electronics Engineers (IEEE), and a Fellow of the
`
`Association for Computing Machinery (ACM). I am a foreign member of the Royal
`
`Danish Academy of Science and Letters. I am also a recipient of the IEEE Computer
`
`Society Technical Achievement Award, “for outstanding contributions to the design
`
`of parallel and distributed algorithms for fundamental combinatorial and geometric
`
`problems.” I was named an ACM Distinguished Scientist in 2006. In terms of my
`
`teaching recognitions, I am a recipient of the Pond Award for Excellence in
`
`Undergraduate Teaching, as well as several Oraculum Awards for Excellence in
`
`
`
`
`
`3
`
`MOBILEIRON, INC. - EXHIBIT 1002
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`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`Teaching, from the Johns Hopkins University. I have also received a Chancellor’s
`
`Award for Excellence in Fostering Undergraduate Research at the University of
`
`California, Irvine. In terms of my service recognitions, I received an ACM
`
`Recognition of Service Award in 1996 for my work on the committee establishing a
`
`Federated Computer Research Conference, which every 3-to-4 years brings together
`
`researchers across multiple subfields in Computer Science, including theory,
`
`software, and hardware, to share their latest breakthroughs.
`
`7.
`
`I am familiar with applied cryptography, cryptographic theory,
`
`computer security, malware techniques, intrusion detection, virus detection, and
`
`anti-virus software systems and algorithms that were developed before and existed
`
`as of December 27, 2000, at the time the inventors of U.S. Patent No. 7,372,961
`
`(“the ’961 patent”) (Ex. 1001) filed their underlying Canadian Patent Application.
`
`For example, I am particularly familiar with the applications, techniques, systems
`
`and algorithms related to applied cryptography, including encryption/decryption,
`
`hash functions, modular arithmetic, digital signatures, and random number
`
`generation.
`
`8. My study of computer security topics began in the 1980s as an
`
`undergraduate student and continued in graduate school, where my Ph.D. research
`
`involved the study of computer system components operating in parallel. My study
`
`
`
`
`
`4
`
`MOBILEIRON, INC. - EXHIBIT 1002
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`and interest in computer security continued after I received my Ph.D., as detailed
`
`above and in my CV. In addition, I have reviewed and evaluated research papers on
`
`computer security, including applied cryptography, beginning with work as an
`
`associate editor for Journal of Computer & System Sciences, as well as my service
`
`on program committees of peer reviewed Computer Science conferences, including
`
`the Conference on Electronic Publishing and the Information Superhighway and the
`
`ACM Symposium on Theory of Computing, the latter for which I chaired and edited
`
`the conference proceedings in 1994.
`
`9. My research has been supported by the Defense Advanced Research
`
`Projects Agency (DARPA), the National Science Foundation (NSF), the Office of
`
`Naval Research (ONR), the Army Research Office (ARO), and the National Security
`
`Agency (NSA). For example, I received several grants from the NSA to study
`
`computer security and applied cryptography topics, starting in 1998, as well as a
`
`$1.5 million grant from DARPA in 2000 to study scalable computer security and
`
`applied cryptography topics related to the dynamic coalitions that occur in military
`
`and humanitarian missions where trustworthy parties must interact with semi-trusted
`
`or untrusted partners.
`
`10.
`
`I am a co-inventor on several U.S. patents, including U.S. Patent No.
`
`7,257,711, “Efficient Authenticated Dictionaries with Skip Lists and Commutative
`
`
`
`
`
`5
`
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`Page 009
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`Hashing,” which discloses secure distributed data authentication schemes based on
`
`cryptographic hash functions and digital signatures; U.S. Patent No. 7,299,219,
`
`“High Refresh-Rate Retrieval of Freshly Published Content using Distributed
`
`Crawling,” which discloses a technology for quickly retrieving website data that can
`
`change frequently, so as to be stored in a search engine; U.S. No. Patent 8,681,145,
`
`“Attribute Transfer Between Computer Models Including Identifying Isomorphic
`
`Regions in Polygonal Meshes,” which teaches how to map one mesh-based
`
`computer model to another; and U.S. Patent No. 9,152,716, “Techniques for
`
`Verifying Search Results Over a Distributed Collection,” which discloses a system
`
`for searching the Internet so as to produce cryptographically verifiable search results
`
`that can be produced by a search engine.
`
`11.
`
`I have taught courses at the Johns Hopkins University, Brown
`
`University, and the University of California, Irvine, at both the undergraduate and
`
`graduate levels. Topics of my courses have included computer security, algorithms,
`
`data structures, networking, algorithm engineering, computational geometry, and
`
`parallel processing. In addition, I have mentored 22 Ph.D. students over the years,
`
`who have written their Ph.D. theses on topics in algorithms, data structures,
`
`networking, parallel processing, applied cryptography, and computer security and
`
`privacy.
`
`
`
`
`
`6
`
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`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`12.
`
`I have served as an editor on several technical journals, including
`
`Computational Geometry: Theory and Applications, the Journal of Computer &
`
`System Sciences, the Journal of Graph Algorithms and Applications, the
`
`International Journal of Computational Geometry & Applications, and Information
`
`Processing Letters. I have also served on many program committees (PCs) for top
`
`conferences and workshops in Computer Science, including serving as PC chair in
`
`several instances. Examples include ACM Symposium on Computational Geometry
`
`(SoCG), ACM
`
`Symposium
`
`on
`
`Theory
`
`of Computing
`
`(STOC),
`
`Workshop/Symposium on Algorithms and Data Structures (WADS), Algorithm
`
`Engineering and Experimentation (ALENEX, which I co-founded with Dr.
`
`Catherine McGeoch in 1999), IEEE Symposium on Foundations of Computer
`
`Science (FOCS), ACM-SIAM Symposium on Discrete Algorithms (SODA),
`
`International Symposium on Graph Drawing (GD), International Colloquium on
`
`Automata, Languages, and Programming (ICALP), ACM Conference on Computer
`
`and Communications Security (CCS), European Symposium on Algorithms (ESA),
`
`IEEE International Parallel and Distributed Processing Symposium (IPDPS), ACM
`
`Symposium on Parallel Algorithms and Architectures (SPAA), ACM Symposium
`
`on Advances in Geographic Information Systems (GIS), IEEE Symposium on
`
`Security and Privacy (S&P), IEEE International Conference on Big Data, IEEE
`
`
`
`
`
`7
`
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`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`International Conference on Data Engineering (ICDE), and International
`
`Symposium on Algorithms and Computation (ISAAC).
`
` MATERIALS CONSIDERED
`13. The analysis that I provide in this Declaration is based on my education
`
`and experience in the field of computer security and encryption, as well as the
`
`documents I have considered. These documents include the ’961 patent [Ex. 1001]
`
`and its prosecution history [Ex. 1003]. The ’961 patent states on its face that it issued
`
`from an application filed on December 26, 2001, and claims priority to Canadian
`
`Patent Application No. 2329590, filed on December 27, 2000. For the purposes of
`
`this Declaration, I have assumed December 27, 2000 as the priority date for the ’961
`
`patent. I reserve the right, however, to show that the prior art anticipates and/or
`
`renders obvious various claims of the ’961 patent based on an earlier or later priority
`
`date, if the facts warrant as much.
`
`14.
`
`I have considered and/or cited to the following documents in my
`
`analysis, with cross-references to Exhibits used with the Petition for Inter Partes
`
`Review:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 7,372,961 B2 to Scott A. Vanstone et al. (filed
`December 26, 2001, issued May 13, 2008)
`
`
`Intentionally left blank
`
`
`
`
`
`8
`
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`Exhibit
`No.
`
`Description of Document
`
`1003
`
`Prosecution History for U.S. Patent Application No. 10/025,924,
`which issued as U.S. Patent No. 7,372,961
`
`1004
`
`1005
`
`Federal Information Processing (FIPS) Publication 186, Digital
`Signature Standard (DSS) (May 19, 1994)
`U.S. Patent 6,697,946 to Miyaji (PCT Application filed
`January 28, 1997, PCT Application published July 30, 1998,
`U.S. Patent issued February 24, 2004)
`“‘Pseudo-random’ Number Generation Within Cryptographic
`Algorithms: The DDS case,” by Mihir Bellare, et al. (published in
`Proceedings of the Annual International Cryptology Conference
`(CRYPTO), pp. 277-291, Springer, 1997, as a part of the Lecture
`Notes in Computer Science (LNCS) book series, volume 129).
`Excerpts from LEDA: a Platform for Combinatorial and Geometric
`Computing, by Kurt Mehlhorn & Stefan Näher, Cambridge University
`Press, 1999
`1008 Original Complaint filed April 27, 2020 in MobileIron. Inc. v.
`Blackberry Corp., et al., Case No. 3:20-cv-02877 (N.D. Cal.)
`
`1006
`
`1007
`
`1009
`
`1010
`
`First Amended Complaint filed June 29, 2020, in MobileIron. Inc.
`v. Blackberry Corp., et al., Case No. 3:20-cv-02877 (N.D. Cal.)
`First Amended Complaint filed in BlackBerry Ltd. v. Facebook, Inc. et
`al., Case No. 2:18-cv-01844-GW-KS (C.D. Cal.), Facebook’s Exhibit
`1033 from Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-00923
`(PTAB)
`1011 Excerpts from Menezes et al., Handbook of Applied Cryptography
`(1997)
`Dkt. Entry 157, Corrected Final Ruling on Claim
`Construction/Markman Hearing, filed April 5, 2019, entered April
`11, 2019, in BlackBerry Ltd. v. Facebook, Inc. et al., Case No.
`2:18-cv-01844-GW-KS (C.D. Cal.)
`Dkt. Entry 652, Civil Minutes entered February 13, 2020, in
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-
`GW-KS (C.D. Cal.)
`
`1012
`
`1013
`
`
`
`
`
`9
`
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`Exhibit
`No.
`
`Description of Document
`Dkt. Entry 655, Sealed Minutes of Motion Hearing held February 27,
`2020, before Judge George H. Wu, in BlackBerry Ltd. v. Facebook,
`Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D. Cal.)
`Dkt. Entry 656, Joint Request To Vacate Pretrial Conference and
`Trial Date, filed March 19, 2020, in BlackBerry Ltd. v.
`Facebook, Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D.
`Cal.)
`Dkt. Entry 657, Order dated March 24, 2020 Vacating Pretrial
`Conference and Trial Date, in BlackBerry Ltd. v. Facebook,
`Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D. Cal.)
`Dkt. Entry 673, In Chambers – Order dated July 23, 2020, in
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-
`GW-KS (C.D. Cal.)
`Petition for Inter Partes Review, filed by Facebook, Inc., et al. in
`Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`
`Paper No. 14, Decision entered November 5, 2019, in Facebook, Inc.,
`et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB Nov. 5, 2019)
`Excerpts from Schneier, Applied Cryptography (2d ed. 1996),
`Exhibit 1008 from Facebook, Inc., et al. v. BlackBerry Ltd.,
`IPR2019-00923 (PTAB)
`Rose, Re: “Card-shuffling” algorithms, USENET, sci.crypt,
`sciath h 10, 1993), Facebook’s Exhibit 1006 from Facebook, Inc.,
`et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`Excerpts from Rao, Error Coding for Arithmetic Processors
`(1974), Facebook’s Exhibit 1018 from Facebook, Inc., et al. v.
`BlackBerry Ltd., IPR2019-00923 (PTAB)
`Excerpts from Floyd, Essentials of Data Processing (1987), Facebook’s
`Exhibit 1033 from Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-
`00923 (PTAB)
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024 Declaration of Daniele Micchiancio
`
`1025 Affidavit of Elizabeth Rosenberg
`
`
`
`
`
`10
`
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`Exhibit
`Description of Document
`No.
`1026 Declaration of Sylvia Hall-Ellis, Ph.D, in Support of Petitioner’s
`Petition for Inter Partes Review
`Excerpts from Blackberry’s Supplemental Responses and Objections to
`Facebook’s Interrogatories, Facebook’s Exhibit 1033 from Facebook,
`Inc., et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`1028 Declaration of Dr. Jonathan Katz, Facebook’s Exhibit 1002 from
`Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`
`1027
`
`1029
`
`Patent Owner’s Preliminary Response filed in Facebook, Inc., et al. v.
`BlackBerry Ltd., IPR2019-00923 (PTAB)
`1030 Declaration of Markus Jakobsson, Exhibit 2001 filed by Patent Owner
`in Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`
`1031 Excerpts from Microsoft Computer Dictionary, Fourth Edition, 1999
`
`1033
`
`1034
`
`1032 Federal Information Processing (FIPS) Publication 186-1, Digital
`Signature Standard (DSS) (December 15, 1998)
`Federal Information Processing (FIPS) Publication 186-2, Digital
`Signature Standard (DSS) (January 27, 2000)
`
`John von Neumann, Various Techniques Used in Connection with
`Random Digits, Summary by G.E. Forsythe, National Bureau of
`Standards Applied Math Series, 12 (1951), pp 36-38, reprinted in von
`Neumann's Collected Works, 5 (1963), Pergamon Press pp 768-770,
`Facebook’s Exhibit 1017 from Facebook, Inc., et al. v. BlackBerry Ltd.,
`IPR2019-00923 (PTAB)
`1035 Excerpts from M.T. Goodrich and R. Tamassia, Algorithm Design
`and Analysis, Wiley, 2015
`Federal Information Processing (FIPS) Publication 186-3, Digital
`Signature Standard (DSS) (June 2009), Patent Owner’s Exhibit 2003
`from Facebook, Inc., et al. v. BlackBerry Ltd., IPR2019-00923 (PTAB)
`
`
`1036
`
`
`
`
`
`11
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`
`15.
`
`In addition to these materials, I may consider additional documents and
`
`information in forming any supplemental opinions.
`
` LEGAL STANDARDS
`16.
`I am not an attorney. For purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my analysis and
`
`opinions, as set forth below.
`
`
`17.
`
`Prior Art
`I understand that the prior art to the ʼ961 patent includes patents and
`
`printed publications in the relevant art that predate the ʼ961 patent’s presumed
`
`December 27, 2000 priority date. As I explained previously, I have been instructed
`
`to assume for purposes of my analysis that December 27, 2000 is the earliest
`
`relevant date for determining what is “prior art.” In other words, I should consider
`
`as “prior art” anything publicly available prior to December 27, 2000. I further
`
`understand that, for purposes of this proceeding in the United States Patent Trial
`
`and Appeal Board, only patents and documents that have the legal status of a
`
`“printed publication” may be relied on as prior art.
`
` Claim Construction
`18.
`I understand that under legal principles, claim terms are generally given
`
`their ordinary and customary meaning, which is the meaning that the term would
`
`
`
`
`
`12
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`have to a person of ordinary skill in the art (POSA) in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application. I further
`
`understand that the POSA is deemed to read the claim term not only in the context
`
`of the particular claim in which a claim term appears, but in the context of the entire
`
`patent, including the specification.
`
`19.
`
`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of
`
`those terms.
`
`20.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the claim terms are normally used
`
`consistently throughout the patent, the usage of a term in one claim can often
`
`illuminate the meaning of the same term in other claims. Differences among claims
`
`can also be a useful guide in understanding the meaning of particular claim terms.
`
`21.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`
`
`
`
`13
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
`
`be consulted in construing the claim terms, such as my expert testimony.
`
`22.
`
`I have been informed by counsel that, in IPR proceedings, a claim of a
`
`patent shall be construed using the same claim construction standard that would be
`
`used to construe the claim in a civil action filed in a U.S. district court (which I
`
`understand is called the “Phillips” claim construction standard), including
`
`construing the claim in accordance with the ordinary and customary meaning of
`
`such claim as understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent.
`
`23.
`
`I have been instructed by counsel to apply the Phillips claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the Phillips standard
`
`as provided to me by counsel.
`
`24.
`
`I understand that some claims are independent, and that these claims
`
`are complete by themselves. Other claims refer to these independent claims and are
`
`“dependent” from those independent claims. The dependent claims include all of
`
`the limitations of the claims on which they depend.
`
`
`
`
`
`14
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`

`

`Declaration of Professor Michael Goodrich, Ph.D.,
`In Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,372,961
`
`
` Anticipation
`25.
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
`
`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly, implicitly, or inherently, to a POSA. There
`
`must be no difference between the claimed invention and the disclosure of the
`
`alleged prior art reference as viewed from the perspective of ta POSA. Also, I
`
`understand that in order for a reference to be an anticipating reference, it must
`
`describe the claimed subject matter with sufficient clarity to establish that the
`
`subject matter existed and that its existence was recognized by persons of ordinary
`
`skill in the field of the invention. In addition, I understand that in order to establish
`
`that an element of a claim is “inherent” in the disclosure of an asserted prior art
`
`reference, extrinsic evidence (or the evidence outside the four corners of the asserted
`
`prior art reference) must make clear that the missing element is necessarily found
`
`in the prior art, and that it would be recognized as necessarily present by p