UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TCL Industries Holdings Co., Ltd.,
`Petitioner
`
`v.
`
`Koninklijke Philips N.V.,
`Patent Owner
`
`PTAB Case Nos. IPR2021-00495, IPR2021-00496 and IPR2021-00497
`Patent Nos. 9,590,977 B2 and 10,298,564 B2
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 AND 10,298,564 B2
`
`149268403.1
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`IV.
`
`V.
`
`Page
`Introduction ..................................................................................................... 1
`I.
`Summary of Opinions ..................................................................................... 2
`II.
`III. Qualifications and Experience ........................................................................ 3
`A.
`Education and Experience .................................................................... 3
`B.
`Compensation ....................................................................................... 9
`C.
`Documents and Other Materials Relied Upon ..................................... 9
`Statement of Legal Principles ....................................................................... 10
`A.
`Obviousness ........................................................................................ 10
`Overview of the ‘977 and ‘564 Patents ........................................................ 11
`A.
`Summary of the ’977 and ‘564 Patents .............................................. 11
`B.
`The Challenged Claims of the ’977 and ’564 Patents ........................ 13
`C.
`State of the Art Prior to the ’977 and ’564 Patents ............................ 13
`1.
`A Very Brief Overview of Cryptographic
`Communications ...................................................................... 13
`The Basics: Symmetric and Asymmetric Encryption .............. 15
`2.
`Authentication Protocols and Key Exchange .......................... 18
`3.
`Challenge Response ................................................................. 20
`4.
`Certificates ............................................................................... 22
`5.
`Time Based Locality to Determine Proximity of Devices....... 27
`6.
`The Level of Ordinary Skill in the Art ............................................... 35
`D.
`Summary of Opinions, IDENTIFICATION OF THE PRIOR ART,
`AND A POSITA’S REASONS TO COMBINE THE PRIOR ART ........... 36
`A.
`Summary of Maillard ......................................................................... 37
`B.
`Summary of Davis .............................................................................. 40
`C.
`Summary of Lundkvist ....................................................................... 44
`D.
`Summary of Chaum ........................................................................... 48
`
`VI.
`
`- i -
`
`TCL Exhibit 1003
`
`

`

`
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`
`Page
`
`E.
`
`B.
`
`C.
`
`D.
`
`A POSITA’s Reasons To Combine Maillard, Davis and
`Lundkvist or Maillard, Davis, Lundkvist, and Chaum ...................... 50
`VII. Unpatentability of the Challenged Claims of the ’977 Patent ...................... 57
`A.
`Claim 1 ............................................................................................... 57
`1.
`Element 1[Preamble]: “A receiving device comprising:” ....... 57
`2.
`Element 1[a]: “means for providing a certificate
`identifying said receiving device” ........................................... 60
`Element 1[b]: means for receiving a first signal from a
`first device after the first device determines, based on
`information obtained from the certificate, that the
`receiving device is compliant with a set of compliance
`rules .......................................................................................... 61
`Element 1[c] means for generating a second signal after
`receiving the first signal, wherein said second signal is
`derived using a secret known by the first device ..................... 71
`Element 1[d]: means for transmitting said second signal; ....... 76
`Element 1[e]: means for generating a secure
`authenticated channel using the secret ..................................... 78
`Element 1[f]: means for receiving over the secure
`authenticated channel a protected content after the first
`device determines that the second signal is derived using
`the secret and a time between a transmission of the first
`signal and receipt of the second signal by the first device
`is less than a predetermined time ............................................. 79
`Claim 2: The receiving device of claim 1, wherein said
`providing said certificate is responsive to a request .......................... 82
`Claim 3: The receiving device of claim 1, further comprising
`means for receiving said secret .......................................................... 84
`Claim 8: The receiving device of claim 1, further comprising
`means for displaying said received protected content ....................... 84
`
`3.
`
`4.
`
`5.
`6.
`
`7.
`
`- ii -
`
`TCL Exhibit 1003
`
`

`

`
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`
`Page
`
`E.
`
`F.
`
`G.
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`Claim 9: The receiving device of claim 1, wherein the secret
`comprises a random number .............................................................. 84
`Claim 10: The receiving device of claim 1, wherein the
`predetermined time is based on a communication system
`associated with the first device ........................................................... 85
`Claim 11 ............................................................................................. 86
`Claim 12: The second device of claim 11, wherein the secret
`comprises a random number .............................................................. 92
`Claim 14: The second device of claim 11, wherein the
`microprocessor circuit is further arranged to receive the secret
`from the first device ........................................................................... 93
`Claim 15: The second device of claim 11, wherein the
`certificate comprise an identity of the second device ........................ 93
`Claim 16: The second device of claim 11, wherein the
`predetermined time is based on a communication system
`associated with the first device ........................................................... 93
`Claim 17: The second device of claim 11, wherein the
`microprocessor circuit is further arranged to: use the secret to
`generate a secure authenticated channel between the first device
`and the second device; and use the secure authenticated
`channel to receive the protected content ............................................ 94
`M. Claim 18: The second device of claim 11, wherein the
`modification is a XOR operation using the first signal ...................... 94
`Claim 19: The second device of claim 11, wherein said secret is
`transmitted using a transfer protocol, said transfer protocol
`selected the group consisting of a key transport protocol, a key
`management protocol and a key exchange agreement ....................... 95
`Claim 20: The second device of claim 11, wherein the
`microprocessor circuit is further arranged to receive the secret
`by using a key transfer protocol ......................................................... 95
`
`N.
`
`O.
`
`- iii -
`
`TCL Exhibit 1003
`
`

`

`
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`
`Page
`
`C.
`
`D.
`
`VIII. Unpatentability of the Challenged Claims of the ’564 Patent For
`Ground 1 (THE COMBINATION OF MAILLARD, DAVIS AND
`LUNDKVIST) .............................................................................................. 96
`A.
`Claim 1 ............................................................................................... 96
`B.
`Claim 2: The second device of claim 1, wherein the secret is
`securely provided to the second device by the first device .............. 106
`Claim 28: The second device of claim 1, the secret is known by the
`first device ........................................................................................ 106
`Claim 5: The second device of claim 2, wherein the
`predetermined time is based on a communication system
`associated with the first device ......................................................... 107
`Claim 17: The second device of claim 1 , wherein the predetermined
`time is based on a communication system associated with the
`first device ........................................................................................ 107
`Claim 6: The second device of claim 2, further comprising
`instructions arranged to receive the secret from the first device .... 108
`Claim 18: The second device of claim 1, further comprising
`instructions arranged to receive the secret from the first device .... 108
`Claim 7: The second device of claim 2, wherein the second
`signal comprises the first signal modified by the secret ................. 108
`Claim 19: The second device of claim 1, wherein the second signal
`comprises the first signal modified by the secret ............................. 108
`Claim 8: The second device of claim 2, wherein the secret
`comprises a random number ............................................................ 109
`Claim 20: The second device of claim 1, wherein the secret comprises
`a random number .............................................................................. 109
`Claim 9: The second device of claim 2, wherein the secret is
`encrypted with a public key ............................................................. 109
`Claim 21: The second device of claim 1, wherein the secret is
`encrypted with a public key ............................................................. 109
`
`E.
`
`F.
`
`G.
`
`- iv -
`
`TCL Exhibit 1003
`
`

`

`
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`
`I.
`
`H.
`
`Page
`Claim 10: The second device of claim 2, wherein the first signal
`comprises a random number ............................................................ 110
`Claim 22: The second device of claim 21, wherein the first signal
`comprises a random number ............................................................ 110
`Claim 14: The second device of claim 2, wherein the secret is
`used for generating a secure channel between the first device
`and the second device ....................................................................... 110
`Claim 25: The second device of claim 1, wherein the secret is used for
`generating a secure channel between the first device and the
`second device ................................................................................... 110
`IX. Unpatentability of the Challenged Claims of the ’564 Patent for
`Ground 2 (MAILLARD, DAVIS, CHAUM AND LUNDKVIST) ........... 111
`A.
`Claim 1 ............................................................................................. 112
`B.
`Claim 3: The second device of claim 2, wherein determining
`that the second signal is derived from the secret comprises:
`modifying the first signal, wherein the modifying requires the
`secret; and determining that the modified first signal is identical
`to the second signal .......................................................................... 118
`Claim 4: The second device of claim 2, wherein determining that the
`second signal is derived from the secret comprises: modifying
`the first signal; and determining that the modified first signal is
`identical to the second signal ........................................................... 118
`Claim 15: The second device of claim 1, wherein determining that the
`second signal is derived from the secret comprises: modifying
`the first signal, wherein the modifying requires the secret; and
`determining that the modified first signal is identical to the
`second signal .................................................................................... 118
`Claim 16: The second device of claim 1, wherein determining that the
`second signal is derived from the secret comprises: modifying
`the first signal; and determining that the modified first signal is
`identical to the second signal ........................................................... 118
`
`- v -
`
`TCL Exhibit 1003
`
`

`

`
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`TABLE OF CONTENTS
`
`
`Page
`
`C.
`
`Claim 7: The second device of claim 2, wherein the second
`signal comprises the first signal modified by the secret ................. 119
`Claim 19: The second device of claim 1, wherein the second signal
`comprises the first signal modified by the secret ............................ 119
`X. UNPATENTABILITY OF THE CHALLENGED CLAIMS OF THE
`’564 PATENT FOR GROUND 2 (MAILLARD, DAVIS,
`LUNDKVIST AND SCHNEIER) .............................................................. 120
`A.
`Claim 11: The second device of claim 2, wherein [creating] the
`second signal comprises an XOR operation of the first signal
`with the secret ................................................................................... 120
`Claim 23: The second device of claim 1, wherein [creating] the
`second signal comprises an XOR operation of the first signal
`with the secret ................................................................................... 120
`XI. DECLARATION ........................................................................................ 122
`
`
`
`
`- vi -
`
`TCL Exhibit 1003
`
`

`

`I.
`
`INTRODUCTION
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`1. My name is Seth James Nielson. I am the founder and chief scientist
`
`at Crimson Vista, Inc., a cybersecurity research and engineering firm. In addition
`
`to conducting research for government, legal, and industry clients, I hold an
`
`appointment as an Adjunct Professor at the University of Texas at Austin where I
`
`teach courses on cybersecurity and privacy.
`
`2.
`
`I have been engaged by TCL Industries Holdings Co., Ltd. (“TCL” or
`
`“Petitioner”) as a consultant in connection with TCL’s Petitions for Inter Partes
`
`Review (IPR) of U.S. Patent Nos. 9,590,977 B2 (the “’977 Patent”) and
`
`10,298,564 B2 (the “’564 Patent”).
`
`3.
`
`I understand that the ’977 and ’564 Patents are assigned to
`
`Koninklijke Philips N.V. (“Philips”). Philips is also referred to as the “Patent
`
`Owner” in this declaration.
`
`4.
`
`The ’977 and ’564 Patents have the same detailed description, figures
`
`and similar but not identical claim limitations. In this declaration I will provide my
`
`analysis for both the ’977 and ’564 Patents together, and will provide separate
`
`explanations as may be needed to account for the differences in the ’977 and ’564
`
`Patent claims.
`
`5.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`- 1 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`continue my investigation and study, which may include a review of documents
`
`and information that may be produced, as well as testimony from depositions that
`
`not yet been taken.
`
`II.
`
`SUMMARY OF OPINIONS
`
`6.
`
`After analyzing the evidence, it is my opinion that that with respect to
`
`the ‘564 patent:
`
`• claims 1-2, 5-10, 14, 17-22, 25, and 28 are rendered obvious by Maillard,
`
`Davis, and Lundkvist.
`
`• claims 1-4, 7, 15-16, 19, and 28 are rendered obvious by Maillard, Davis,
`
`Lundkvist, and Chaum.
`
`• claims 11 and 23 are rendered obvious by Maillard, Davis, Lundkvist and
`
`Schneier
`
`7.
`
`It is also my opinion that with respect to the ‘977 patent:
`
`• claims 1-3, 8-10 are rendered obvious by Maillard, Davis, and Lundkvist.
`
`• claims 1-3, 8-10 are also rendered obvious by Maillard, Davis,
`
`Lundkvist, and Schneier.
`
`• claims 11-12, 14-17 are rendered obvious by Maillard, Davis, and
`
`Lundkvist.
`
`• claims 19, 20 are rendered obvious by Maillard, Davis, Lundkvist and
`
`HAC.
`
`- 2 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`• claim 18 is rendered obvious by Maillard, Davis, Lundkvist, and
`
`Schneier.
`
`8.
`
`The following sections will first provide my qualifications and
`
`experience and then describe the details of my analysis and observations.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A. Education and Experience
`
`9.
`
`I am a subject matter expert in cybersecurity, including the sub-fields
`
`of applied cryptography and network security. I have twenty years of experience
`
`in both academic and industry circles. This experience includes providing research
`
`to US government agencies, assisting corporations ranging from start-up’s to
`
`fortune 100, and teaching graduate and undergraduate courses in universities.
`
`10.
`
`In the years 2000 and 2004 respectively, I earned a B.S. and M.S. in
`
`Computer Science from Brigham Young University (BYU) in Provo, UT. In 2009,
`
`I completed my Ph.D. in Computer Science from Rice University in Houston, TX.
`
`11. During both my bachelor’s degree and my master’s degree, I
`
`published peer-reviewed research related to topics of computer networks and
`
`software engineering.
`
`12. At Rice University, I studied topics of network security, cryptography,
`
`and other areas of cyber-security. I published papers related to vulnerabilities in
`
`search engines, including Google’s search engine, and also in peer-to-peer
`
`- 3 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`communications protocols (predecessors to blockchain). Rice University awarded
`
`me with the Brown Fellowship and the John and Eileen Tietze fellowship in
`
`recognition of my teaching and research contributions.
`
`13.
`
`I have been teaching courses at the university level since 2014 when I
`
`was appointed as a Lecturer at Johns Hopkins University. I was subsequently
`
`promoted to Adjunct Associate Research Scientist in 2015 and appointed the
`
`Director of Advanced Research Projects for the Information Security Institute in
`
`2016. I also held an appointment at the Johns Hopkins Applied Research Lab for
`
`collaborative research projects.
`
`14.
`
`In 2019, I left Johns Hopkins University and received an appointment
`
`as an Adjunct Professor at the University of Texas at Austin. I currently teach the
`
`undergraduate Network Security and Privacy class as well as an Introduction to
`
`Cybersecurity Technology course in the law school. I am a Cybersecurity Fellow
`
`in the Robert Strauss Center for International Security and Law.
`
`15.
`
`I develop the various curricula used in all of my courses. Course
`
`topics and lab work include standard elements such as cryptographic protocols
`
`such as Transport Layer Security (“TLS”), a protocol widely used for secure
`
`communications over the internet. Other assignments include the proper use and
`
`management of digital certificates, especially in browsers and web servers, as well
`
`as techniques used by malicious parties to circumvent these defenses. Students are
`
`- 4 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`expected to become familiar with vulnerabilities in computer code, defensive
`
`systems such as firewalls, and the implications for privacy in data handling.
`
`16. During my development of curriculum at Johns Hopkins, I created a
`
`novel approach to teaching some of these concepts. I subsequently published a
`
`paper about this curriculum entitled, “PLAYGROUND: Preparing Students for the
`
`Cyber Battleground” in the Journal of Computer Science Education.
`
`17. During my time at Hopkins, I also mentored master’s students in their
`
`capstone research and have published peer reviewed papers on the topics of
`
`Internet-of-Things (“IoT”) forensics and vulnerabilities of chemical manufacturing
`
`systems.
`
`18.
`
`In 2018, a research group and I produced a technical report from their
`
`capstone entitled, “Securing ADS-B Based Airborne Collision Avoidance
`
`Systems.” This project added a cryptographic protocol on top of an otherwise
`
`unsecured communications system to protect the data transfer and prevent an
`
`attacker from faking the safety messages. Our work has been submitted to an
`
`industry partner that is promoting our design and submitting it for consideration
`
`with the FAA.
`
`19. While at Johns Hopkins University, I co-founded a research project
`
`called “Crypto Done Right.” This project was funded, in part, by Cisco. The goal
`
`of the project is to develop educational, training, and outreach resources for
`
`- 5 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`improving the use of cryptography in industry. Although I have left Johns
`
`Hopkins, I continue to collaborate with the project (https://cryptodoneright.org).
`
`The project is currently transitioning into an independent non-profit.
`
`20.
`
`In addition to my many qualifications from academia, I also have a
`
`deep background in industry. From 2000 to 2003, I worked as a software engineer
`
`at multiple companies, developing various applications and network components.
`
`21.
`
`In 2005, and in connection with the research on vulnerabilities in
`
`Google’s search engine, I worked as a summer intern at Google in their computer
`
`security group.
`
`22. Overlapping with my Ph.D. program, I began work for Independent
`
`Security Evaluators in 2005. I developed cryptographic libraries that implemented
`
`various encryption algorithms, key transport algorithms, and related operations. I
`
`also helped prepare these libraries for tests and certifications.
`
`23. After completing my Ph.D., I took on additional responsibilities at
`
`Independent Security Evaluators. I developed hardware accelerated cryptography
`
`systems, built an encrypted file-system, and analyzed cryptographic protocols for
`
`vulnerabilities. I also led the development of a secure communications product
`
`from prototyping and design to implementation and test. This product improved
`
`on the security of TLS by dividing trust between multiple Certificate Authorities.
`
`My work on the secure communications technology project led to the issuance of
`
`- 6 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`multiple patents including U.S. 8,745,372 entitled “Systems and Methods for
`
`Securing Data in Motion.”
`
`24.
`
`In 2011, I began work as a Research Scientist at Harbor Labs and was
`
`eventually promoted to Principal. I served a wide range of clients providing them
`
`with specialized consulting in cyber security. These projects included an analysis
`
`of the privacy controls used by an anti-piracy vendor selected by the Motion
`
`Pictures Association of America (“MPAA”) and the Radio Industry Association of
`
`America (“RIAA”). A redacted executive summary of our findings is publicly
`
`available. I also led our investigation into the vulnerabilities of devices produced
`
`by a major medical manufacturer, including their digital-certificate based
`
`authentication management.
`
`25.
`
`In 2016, I founded Crimson Vista, a computer-security focused
`
`research and consulting company. I advise companies on the correct use of
`
`cryptography and proper cyber-security customs and practices. I actively develop
`
`new technologies and applications related to cryptography. I am a named inventor
`
`on three patents related to cryptography and have applications currently pending.
`
`In 2018, I was invited to speak at a workshop on cyber-deception and presented,
`
`“Can Software Know What’s Real” and served on the Program Committee of the
`
`International Cryptographic Module Conference (ICMC). I subsequently served
`
`on the Program Committee of ICMC in 2019 and 2020.
`
`- 7 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`In December 2018, Crimson Vista was awarded a research contract
`
`26.
`
`from the U.S. Army to develop new recovery technology for computers
`
`compromised by ransomware, a malicious technology used by hackers that locks
`
`up a victim’s computer and is only released in exchange for money. I am the
`
`Primary Investigator and lead the research team. The technology we are
`
`developing includes analyzing cryptographic keys used by attackers in locking up
`
`victim’s data and resources.
`
`27.
`
`I am the co-author of the book, “Practical Cryptography in Python,”
`
`which was published 2019. That same year, I was also invited to a panel at the
`
`Defense Strategies Institute’s 7th Annual DoD Unmanned Systems Summit where
`
`I contributed to a discussion of “Hardening US Unmanned Systems Against
`
`Enemy Counter Measures.”
`
`28.
`
`In both 2020, and now in 2021, I have been assisting multiple clients
`
`with analyzing cyber incidents, including one for a Fortune 100 company. In these
`
`efforts, I am looked to bridge the gap between what went wrong technically
`
`(verifying and correcting previous analyses) with what it “means” in terms of
`
`impact. I have provided analyses about the potential impact to customers of the
`
`companies, including PII loss and so forth.
`
`29.
`
`I have testified for legislative bodies on matters related to cyber-
`
`security and I have also testified as an expert witness in multiple district courts and
`
`- 8 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`the Patent Trial and Appeal Board. Based on my extensive experience, and my
`
`recognition in the fields of computer security and cryptography, I am qualified to
`
`provide opinions in this matter.
`
`B. Compensation
`
`30.
`
`I am being compensated by TCL for my work in connection with this
`
`declaration. The compensation is not contingent upon my performance, the
`
`outcome of the IPR or any other proceeding, or any issues involved in or related to
`
`the IPR.
`
`C. Documents and Other Materials Relied Upon
`
`31. My opinions expressed in this declaration are based on documents and
`
`materials identified in this declaration, including the ’977 and ’564 Patents, the
`
`prior art references and background materials discussed in this declaration, and any
`
`other references specifically identified in this declaration. I have considered these
`
`materials in their entirety, even if only portions are discussed here.
`
`32.
`
`I have considered a number of prior art references including the ones
`
`listed in the references listed in the Exhibit list of the TCL IPR Petitions.
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`33.
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`I have also relied on my own experience and expertise in computer
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`engineering and information security systems and protocols. In doing so, I have
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`kept in mind that the priority date of the ’977 and ’564 Patents is June 27, 2003.
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`All of the prior art references used to challenge the claims at issue pre-date this
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`- 9 -
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`TCL Exhibit 1003
`
`

`

`priority date by more than one year.
`
`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`
`34. All Exhibit numbers used in this declaration refer to Exhibits to
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`TCL’s IPR Petitions.
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`IV. STATEMENT OF LEGAL PRINCIPLES
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`A. Obviousness
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`35. TCL’s counsel has also advised me that obviousness under pre-AIA
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`35 U.S.C. § 103 effective before March 16, 2013, is a basis for invalidity of a
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`patent. Specifically, I understand that where a prior art reference discloses less
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`than all of the limitations of a given patent claim, that patent claim is invalid if the
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`differences between the claimed subject matter and the prior art reference are such
`
`that the claimed subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the relevant art.
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`Obviousness can be based on a single prior art reference or a combination of
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`references.
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`36.
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`I understand that obviousness is not driven by a rigid formula but is
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`instead a flexible inquiry that reflects the fact that a person of ordinary skill in the
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`art exercising ordinary creativity may find a variety of reasons to combine the
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`teachings of different references. I understand that a non-exclusive list of possible
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`factors that may give a person of ordinary skill in the art a reason to combine
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`references includes any one or more of the following:
`
`- 10 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`• The scope and content of the prior art;
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`• The difference or differences between the subject matter of the claim
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`and the prior art (whereby in assessing the possibility of obviousness
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`one should consider the manner in which a patentee and/or a Court
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`has construed the scope of a claim
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`• The level of ordinary skill in the art at the time of the alleged
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`invention of the subject matter of the claim;
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`• Whether simple substitution of known elements obtains predictable
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`results; and
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`• Some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to combine prior art reference teachings
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`to arrive at the claimed invention.
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`V. OVERVIEW OF THE ‘977 AND ‘564 PATENTS
`
`A.
`
`Summary of the ’977 and ‘564 Patents
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`37. The shared specification of the ’977 and ’564 patents states that, “[i]t
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`is an object of the invention to obtain a solution to the problem of performing a
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`secure transfer of content within a limited distance.” ‘977 at 2:39-41.
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`38. The ‘977 Patent discloses and claims an authentication procedure that
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`includes three main operations:
`
`- 11 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`1) first device authenticates the second device - this is shown in Figure 2 of
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`the ‘977 Patent as step 205;
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`2) the first device shares a common secret securely with the second device -
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`step 207 in Figure 2; and
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`3) the first device determines if the second device is within a certain distance
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`by measuring round trip time of signals that are sent in a challenge-response
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`procedure that uses the common secret - this is shown in step 209 in Figure
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`2.
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`39. Once the first three steps are completed, the last step 211 in FIG. 2 is
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`to communicate the data between devices 201 and 203.
`
`
`
`- 12 -
`
`TCL Exhibit 1003
`
`

`

`DECLARATION OF SETH JAMES NIELSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 9,590,977 B2 and 10,298,564 B2
`40. The ‘564 Patent, which shares the same specification as the ‘977
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`Patent, is directed toward the same technologies with minor differences in claim
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`language.
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`B.
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`The Challenged Claims of the ’977 and ’564 Patents
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`41. The challenged claims of the ‘977 Patent are: claims 1-3, 8-12 and 14-
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`20. The challenged claims in the ‘564 Patent are: claims 1-11, 14-23, 25 and 28.
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`C.
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`State of the Art Prior to the ’977 and ’564 Patents
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`42. Considering the prior art I have reviewed and my own personal
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`experiences, it is my opinion that the Philips’ patents do not claim anything
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`inventive related to secure cryptographic communications. All of the technology
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`described and claimed in the Philips’ patents was already well known at the time of
`
`the alleged invention. Below I have provided an overv