UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Samsung Electronics America, Inc. and
`Samsung Electronics Co., Ltd.
`Petitioner,
`
`v.
`
`RFCyber Corp.,
`Patent Owner.
`
`
`
`
`Patent No. 9,240,009 to Koh et al.
`
`IPR Case No.: IPR2021-00981
`
`
`DECLARATION OF GERALD W. SMITH
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Samsung Ex. 1003, Page 1 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`
`I. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`Educational Background ...................................................................... 1 
`A. 
`Professional Experience ....................................................................... 2 
`B. 
`II.  METHODOLOGY; MATERIALS CONSIDERED ...................................... 6 
`III.  OVERVIEW AND LEGAL STANDARDS .................................................. 8 
`Person of Ordinary Skill in the Art ...................................................... 8 
`A. 
`Anticipation .......................................................................................... 9 
`B. 
`Obviousness ........................................................................................ 10 
`C. 
`Claim Construction ............................................................................ 13 
`D. 
`PRIORITY DATE (DATE OF INVENTION)............................................. 13 
`IV. 
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 13 
`V. 
`VI.  OVERVIEW OF THE ’009 PATENT ......................................................... 15 
`VII.  THE PROSECUTION HISTORY OF THE ’009 PATENT ........................ 18 
`VIII.  GLOBALPLATFORM CARD SPECIFICATION VERSION 2.1.1 –
`AUTHENTICATION THEREOF AND OVERVIEW ................................ 20 
`Overview of GlobalPlatform .............................................................. 22 
`A. 
`Overview of GlobalPlatform Security Domains ................................ 24 
`B. 
`Overview of GlobalPlatform Secure Communication Channels ....... 27 
`C. 
`IX.  CLAIM CONSTRUCTION FOR THE ’009 PATENT ............................... 32 
`PRIOR ART REVIEW ................................................................................. 32 
`X. 
`Background relating to electronic purses ........................................... 32 
`A. 
`Background relating to smart cards .................................................... 35 
`B. 
`Dua (Ex-1004) .................................................................................... 39 
`C. 
`Smart Card Handbook (Ex-1008) ...................................................... 43 
`D. 
`The Smart Card Life Cycle ...................................................... 45 
` 
`Thibadeau (Ex-1041) .......................................................................... 49 
`
`E. 
`
`
`
`ii
`
`Samsung Ex. 1003, Page 2 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`XI.  ANALYSIS ................................................................................................... 50 
`GROUND 1: Dua in view of GlobalPlatform discloses every
`A. 
`limitation of claims 1-6 and 13-17 ..................................................... 50 
`The scope and content of the prior art ..................................... 50 
` 
`  Motivation/Rationale for Combining the Prior Art ................. 50 
`Challenged Claims ................................................................... 55 
` 
`A.  GROUND 2: Dua in view of GlobalPlatform and Smart Card
`Handbook discloses all limitations of claims 7-10 .......................... 112 
`1. 
`The scope and content of the prior art ................................... 112 
`2.  Motivation/Rationale for Combining the Prior Art ............... 113 
`3. 
`Application of Prior Art to Claims 7-10 ................................ 117 
`GROUND 3: Dua in view of GlobalPlatform, Smart Card
`Handbook, and Thibadeau discloses all limitations claims 11
`and 12 ............................................................................................... 128 
`1. 
`The scope and content of the prior art ................................... 128 
`2.  Motivation/Rationale for Combining the Prior Art ............... 128 
`XII.  DECLARATION IN LIEU OF OATH ...................................................... 134 
`
`
`
`B. 
`
`
`
`iii
`
`Samsung Ex. 1003, Page 3 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`
`
`CLAIM 1:
`
`CLAIM LISTING
`
`[1.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[1a] a network interface;
`
`[1b] an interface to receive a secure element;
`
`[1c] a memory space for storing at least a module and an application
`
`downloaded from the network;
`
`[1d] a processor coupled to the memory space and configured to execute the
`
`module to perform operations including:
`
`[1di] sending to a server via the network interface an identifier
`
`identifying the application together with device information of a
`
`secure element,
`
`[1dii] wherein the application is downloaded from the network in the
`
`mobile device;
`
`[1diii] establishing a secured channel between the secure element and
`
`the server using a key set installed on the secure element, [1div]
`
`wherein the server is configured to prepare data necessary for the
`
`application to function as designed on the mobile device; and
`
`
`
`iv
`
`Samsung Ex. 1003, Page 4 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`[1dv] receiving the data from the server to associate the application
`
`with the secure element, [1dvi] wherein the application subsequently
`
`functions in conjunction with the secure element.
`
`CLAIM 2:
`
`The mobile device as recited in claim 1, wherein the data received in the mobile
`
`device includes an application key set for the application, and a user interface
`
`specifically designed for the mobile device.
`
`CLAIM 3:
`
`The mobile device as recited in claim 2, wherein the mobile device is a near field
`
`communication (NFC) enabled mobile phone, and the application is an electronic
`
`purse (e-purse), the mobile device is used to exchange secured data with another
`
`device within a near distance to conduct a transaction.
`
`CLAIM 4:
`
`The mobile device as recited in claim 3, wherein the secured data is being
`
`exchanged over a secured channel between the mobile device and the another
`
`device established by the application key set.
`
`CLAIM 5:
`
`The mobile device as recited in claim 4, wherein the transaction is conducted
`
`without the mobile device communicating with a transaction server.
`
`
`
`v
`
`Samsung Ex. 1003, Page 5 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`CLAIM 6:
`
`[6.PREAMBLE] The mobile device as recited in claim 1, [6a] wherein said
`
`sending to a server via the network interface an identifier identifying the
`
`application together with device information of a secure element comprises:
`
`[6bi] determining whether the secure element has been personalized with a
`
`Trusted Service Management (TSM) system, [6bii] wherein the TSM system
`
`is a collection of services configured to distribute and manage contactless
`
`services for customers signed up with the TSM, and provide data exchanges
`
`among different parties to make electronic commerce possible over a
`
`wireless network; and
`
`[6ci] performing a personalization process for the secure element when the
`
`secure element has not been personalized with the Trusted Service
`
`Management (TSM) system, [6cii] wherein the secure element when
`
`personalized establishes a security platform for the application to run on the
`
`mobile device.
`
`CLAIM 7:
`
`[7.PREAMBLE] The mobile device as recited in claim 6, wherein the
`
`personalization process comprises:
`
`
`
`vi
`
`Samsung Ex. 1003, Page 6 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`[7a] causing the mobile device to initiate data communication with a server
`
`in the TSM system;
`
`[7bi] retrieving device information of the secure element in responding to a
`
`request from the TSM server after the TSM server determines that the secure
`
`element is registered therewith, [7bii] wherein the device information is a
`
`sequence of characters uniquely identifying the secure element;
`
`[7ci] receiving at least a set of keys from the TSM server, [7cii] wherein the
`
`keys are generated in the TSM server in accordance with the device
`
`information of the secure element; and
`
`[7d] storing the set of keys in the secure element to facilitate a subsequent
`
`transaction with the secure element in the computing device.
`
`CLAIM 8:
`
`The mobile device as recited in claim 7, wherein the device information includes
`
`an identifier of the secure element, manufacturer information and a batch number.
`
`CLAIM 9:
`
`The method as recited in claim 8, wherein part of the data is used to facilitate the
`
`server to remotely manage the application.
`
`
`
`vii
`
`Samsung Ex. 1003, Page 7 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`CLAIM 10:
`
`The mobile device as recited in claim 7, wherein the secure element is embedded
`
`in the mobile device and integrated with the mobile device via the interface.
`
`CLAIM 11:
`
`The mobile device as recited in claim 7, wherein the secure element is a software
`
`module installed in a secure memory space only accessible by a distributor of the
`
`secure element.
`
`CLAIM 12:
`
`The mobile device as recited in claim 11, wherein some components are updated
`
`when the secure element is upgraded by the distributor.
`
`CLAIM 13:
`
`[13.PREAMBLE] The mobile device as recited in claim 1, wherein the operations
`
`further comprises:
`
`[13a] receiving a message from a distributor of the application, the message
`
`including an identifier identifying the application;
`
`[13b] verifying that the message is indeed from the distributor;
`
`[13c] disassociating the application with the secure element in responding to
`
`a confirmation from the distributor after the message has been verified and
`
`was indeed from the distributor; and
`
`
`
`viii
`
`Samsung Ex. 1003, Page 8 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`[13d] notifying the distributor that the application installed in the mobile
`
`device is no longer active.
`
`CLAIM 14:
`
`[14.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[14a] a network interface;
`
`[14b] a secure element;
`
`[14c] a memory space for storing various modules downloaded from the network,
`
`each of the modules configured to provide an application or a service to a user of
`
`the mobile device;
`
`[14d] a processor coupled to the memory space and configured to execute an
`
`embedded module to perform operations including:
`
`[14di] provisioning each of the modules, wherein said provisioning each of
`
`the modules with a distributor comprises:
`
`[14dii] sending to a server via the network interface an identifier
`
`identifying the each of the modules together with device information
`
`of the secure element, [14diii] wherein the each of the modules is
`
`downloaded from the network in the mobile device;
`
`
`
`ix
`
`Samsung Ex. 1003, Page 9 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`[14div] establishing a secured channel between the secure element
`
`and the server using a key set installed on the secure element, wherein
`
`the server is configured to prepare data necessary for the each of the
`
`modules to function as designed on the mobile device; and
`
`[14dv] receiving the data from the server to associate the each of the
`
`modules with the secure element, wherein the data includes a set of
`
`keys generated for the each of the modules, wherein the each of the
`
`modules subsequently functions in conjunction with the secure
`
`element.
`
`CLAIM 15:
`
`[15.PREAMBLE] The mobile device as recited claim 14, wherein the operations
`
`further comprise:
`
`[15a] receiving a message from a distributor of one of the modules, the
`
`message including an identifier identifying the one of the modules;
`
`[15b] verifying that the message is authenticated;
`
`[15c] disassociating the one of the modules with the secure element in
`
`responding to a confirmation from the distributor after the message has been
`
`verified and was indeed from the distributor; and
`
`
`
`x
`
`Samsung Ex. 1003, Page 10 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`[15d] notifying the distributor that the one of the modules installed in the
`
`mobile device is no longer active.
`
`CLAIM 16:
`
`The mobile device as recited claim 14, wherein the mobile device includes a
`
`display configured to display a user interface showing some of the modules that are
`
`still provisioned and active, each of the modules is configured to show another user
`
`interface particularly designed for the display of the mobile device when the each
`
`of the modules is activated by a user.
`
`CLAIM 17:
`
`The mobile device as recited claim 16, wherein the secure element must be
`
`personalized before each of the modules is provisioned, each of the provisioned
`
`modules is associated with the personalized secure element and a key set generated
`
`in accordance with a key set of the secure element.
`
`
`
`xi
`
`
`
`Samsung Ex. 1003, Page 11 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`I, GERALD SMITH, DECLARE AS FOLLOWS
`
`I.
`1.
`
`INTRODUCTION AND QUALIFICATIONS
`I am over the age of 21 and am competent to make this declaration. I am a
`
`resident of the Commonwealth of Virginia and reside at 10485 Whirlaway Lane,
`
`Ruther Glen, VA 22546.
`
`2.
`
`I have been retained on behalf of Samsung Electronics America, Inc. and
`
`Samsung Electronics Co., Ltd. to provide my opinions regarding the validity of
`
`certain claims of U.S. Patent No. 9,240,009 (“the ’009 patent”). I submit this
`
`declaration based on my personal knowledge and experience, as well as the materials
`
`I reviewed and considered in formulating my opinions.
`
`3.
`
`I am a Subject Matter Expert (SME) specializing in biometrics and smart card
`
`technology and solutions at Identification Technology Partners, Inc. (IDTP). I am
`
`also the founder of Generic Smart Cards LLC. Appendix A to this Declaration is a
`
`true and correct copy of my Curriculum Vitae, which provides further details about
`
`my background and experience.
`
`A.
`Educational Background
`I obtained a Bachelor of Science in Electrical Engineering (cum laude) from
`
`4.
`
`the Rose-Hulman Institute of Technology (Terre Haute, IN) in 1978. I furthered my
`
`education by attending courses for a Masters of Science in Electrical Engineering
`
`from Rutgers University (New Brunswick, NJ) from 1979 to 1983.
`
`1
`
`Samsung Ex. 1003, Page 12 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`B.
`Professional Experience
`I have worked extensively with smart cards, terminals, and transaction
`
`5.
`
`solutions since 1983. I have worked in a wide range of technologies relating to smart
`
`cards, including, but not limited to, silicon, operating systems, card applications,
`
`packaging, printing technologies, edge interfaces, terminals, and host system
`
`applications.
`
`6.
`
`For the past 20 years, I have focused on security and identity attributes of
`
`smart cards and smart card enabled solutions. I have served as an International
`
`Standards Organization (ISO) project editor and as a contributor to a number of
`
`major smart card standards, including, and not limited to, ISO/IEC 7816, ISO/IEC
`
`14443, ISO/IEC 24727, FIPS 201, and FIPS 140. I have actively participated in the
`
`Java Card Forum, PC/SC implementations, MULTOS smart card O/S application
`
`development, and Microsoft Windows Smart Card O/S evaluations. In addition, I
`
`have in-depth knowledge and experience with proprietary O/S smart card
`
`implementations, including but not limited to ORGA Micardo, Siemens CardOS,
`
`Schlumberger MultiFlex, Gemplus MPCOS, and G&D StarCOS.
`
`7.
`
`From 1978 to 1983, I was an Officer in the United States Army Signal Corps
`
`attached to the Communications Electronics Command at Fort Monmouth, New
`
`Jersey. The Signal Corps is a division of the U.S. Army that develops, tests, provides,
`
`
`
`2
`
`Samsung Ex. 1003, Page 13 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`and manages communications and information systems support for the command
`
`and control of combined armed forces. In the Signal Corps, I actively participated in
`
`the research and development of software intensive terminals and peripherals
`
`encompassing device mechanisms, microprocessor technologies (HW/SW) and
`
`system integration. I was part of a high level research team exploring distributed
`
`processing configurations. I achieved the rank of Captain prior to leaving the U.S.
`
`Army for private industry.
`
`8.
`
`In 1983, I began work as a technologist at Mars Electronics International, a
`
`company directed to unattended payment systems. I was promoted to product line
`
`manager for all of the company’s North American coin mechanisms, the core
`
`product for the business at that time.
`
`9.
`
`From 1989-1990, I was employed at Zenith Data Systems where I assisted in
`
`the development of the initial release of the Microsoft PC/SC interface for smart
`
`card reader technology, which is still used to this day.
`
`10. From 1990-1993, I was employed at VeriFone where I served as the Director
`
`of Engineering in a unit that developed food service and vending industry
`
`applications implemented through computer software and hardware. During this
`
`time at VeriFone, I worked on development of the Valu-CardTM Stored Value card
`
`system to complement the company’s Point of Sales (POS) business.
`
`
`
`3
`
`Samsung Ex. 1003, Page 14 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`11. From 1993-1996, I was employed at Schlumberger where I competed for,
`
`obtained, and developed technology business relating to smart card pilot projects for
`
`VISA and smart card applications for MasterCard.
`
`12. From 1996-1999, I served as Director of New Business Development for
`
`ORGA Card Systems Inc., where I was responsible for managing the company’s
`
`Americas region and coordinating with international business units in Germany,
`
`Latin America, and the Far East. In this position, I worked as Project Leader on the
`
`MasterCard Smart Card Access project using the MULTOS platform for secure card
`
`transactions.
`
`13.
`
`In 1999, I joined American Express as a Development Leader for the “Blue
`
`from American Express” Smart Card product development initiative. In that
`
`position, I served as Advanced Card Technology leader on IP Management, chip
`
`card specifications, security models using smart cards, and external standards. I was
`
`promoted to Vice President in 2001. Among other duties at American Express, I
`
`served as Product Manager, Business and Technical Architect of the “Summer
`
`Concerts in Blue” product launch (summer of 2000), served as a Board Member of
`
`the GlobalPlatform governance body from 2000-2002, was a contributing member
`
`to GlobalPlatform Card and Card Management System specifications, was a
`
`JavaCard Forum representative, and a technical representative to ISO/IEC JTC1
`
`
`
`4
`
`Samsung Ex. 1003, Page 15 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`SC17 International Standard body including contact card, contactless card, and test
`
`methods.
`
`14. From 2003-2007, I worked at SHARP Microelectronics of the Americas, a
`
`world leader in LCD, Integrated Circuits, RF, Imaging, and Optoelectronics
`
`technology, where I served as the Senior Smart Card Business Development
`
`Manager / Senior Field Technical Manager. Among other duties, I served as a subject
`
`matter expert in the area of Smart Card technologies working as a development
`
`leader for integration of smart card technology into identity, payment, and
`
`telecommunication solutions.
`
`15. Since 2007, I have been employed with ID Technology Partners as a subject
`
`matter expert for a diverse range of engagements related to smart cards, biometrics
`
`and other high assurance identification verification initiatives and technologies. My
`
`projects have included government and non-government credentialing programs as
`
`well as one-off enterprise solutions.
`
`16.
`
`In 2012, I founded Generic Smart Cards LLC to develop one-off credentialing
`
`solutions for clients with a focus on diagnostic and analysis tools for smart card
`
`issuers, smart card relying parties and cardholders.
`
`17.
`
`I am being compensated at my standard hourly rate and am being reimbursed
`
`for my reasonable expenses. I have not received and do not expect to receive
`
`
`
`5
`
`Samsung Ex. 1003, Page 16 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`additional compensation beyond my hourly rate for my work on this proceeding, and
`
`my compensation does not depend on the contents of this declaration, any other
`
`testimony I may provide, or the outcome of this proceeding.
`
`II. METHODOLOGY; MATERIALS CONSIDERED
`18.
`I have relied upon my education, knowledge and experience with smart cards,
`
`secure smart card transactions and payment systems more generally, as well as the
`
`other materials as discussed in this declaration in forming my opinions.
`
`19. For this work, I have been asked to review the ’009 patent including the
`
`specification and claims, and the ’009 patent’s prosecution history (file history). In
`
`developing my opinions relating to the ’009 patent, I have considered the materials
`
`cited herein, including those itemized in the Exhibit Table below.
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1004
`
`1006
`
`1007
`
`1008
`
`U.S. Patent No. 9,240,009 (“’009 patent”)
`
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`
`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
`
`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
`
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`
`
`
`6
`
`Samsung Ex. 1003, Page 17 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1017
`
`1018
`
`1019
`
`1021
`
`1022
`
`1023
`
`1024
`
`1039
`
`
`
`Common Electronic Purse Specifications, Technical Specification
`Version 2.3 (March 2001)
`
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October 2004)
`
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
`
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote APDU
`structure for UICC based applications (Release 6)”
`
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
`
`Excerpt from Cambridge Business English Dictionary
`
`U.S. Patent No. 6,983,882
`
`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
`
`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
`
`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
`
`“Here Comes The Wallet Phone,” IEEE Spectrum, November 2005
`
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`
`U.S. Patent Application Publication No. 2006/0196931
`7
`
`Samsung Ex. 1003, Page 18 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`
`1041
`
`1042
`
`1043
`
`U.S. Patent Application Publication No. 2006/0174352
`(“Thibadeau”)
`
`File history of U.S. Patent No. 9,240,009 (“’009 FH”)
`
`U.S. Patent No. 9,189,787
`
`
`III. OVERVIEW AND LEGAL STANDARDS
`20.
`In formulating my opinions, I have been instructed to apply certain legal
`
`standards. I am not a lawyer. I do not expect to offer any testimony regarding what
`
`the law is. Instead, the following sections summarize the law as I have been
`
`instructed to apply it in formulating and rendering my opinions found later in this
`
`declaration. I understand that, in an inter partes review proceeding, patent claims
`
`may be deemed unpatentable if it is shown that they were anticipated or rendered
`
`obvious in view of the prior art. I understand that prior art in an inter partes review
`
`is limited to patents or printed publications that predate the priority date of the patent
`
`at issue. I understand that questions of claim clarity (definiteness) and enablement
`
`cannot be considered as a ground for considering the patentability of a claim in these
`
`proceedings.
`
`A.
`Person of Ordinary Skill in the Art
`I understand that the ’009 patent, the record of proceedings at the Patent Office
`
`21.
`
`(which I understand is called the “File History” or “Prosecution History”), and the
`
`teachings of the prior art are evaluated from the perspective of a person of ordinary
`
`
`
`8
`
`Samsung Ex. 1003, Page 19 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`skill in the art (“POSITA”). I understand that the factors considered in determining
`
`the ordinary level of skill in the art include: (i) the levels of education and experience
`
`of persons working in the field; (ii) the types of problems encountered in the field;
`
`and (iii) the sophistication of the technology. I may also consider, if available, the
`
`education level of the inventor, prior art solutions to the problems encountered in the
`
`art, the rapidity with which innovations are made in the relevant art.
`
`22.
`
`I understand that a person of ordinary skill in the art is not a specific real
`
`individual, but rather a hypothetical individual having the qualities reflected by the
`
`factors above. This hypothetical person has knowledge of all prior art in the relevant
`
`field as if it were arranged on a workshop wall and takes from each reference what
`
`it would teach to a person having the skills of a POSITA.
`
`B. Anticipation
`23.
`It is my understanding that, under § 102, a patent claim is invalid as
`
`“anticipated” if each and every feature of the claim is found, expressly or inherently,
`
`in a single item of prior art, such as in a single prior art patent or printed publication.
`
`In determining whether the single item of prior art anticipates the claim, one
`
`considers not only what is expressly/implicitly disclosed in the particular item of
`
`prior art, but also what is inherently present or disclosed in that prior art or what
`
`inherently results from its practice.
`
`
`
`9
`
`Samsung Ex. 1003, Page 20 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`C. Obviousness
`I understand that a claim may be invalid under § 103(a) if the subject matter
`
`24.
`
`described by the claim as a whole would have been “obvious” to a hypothetical
`
`POSITA in view of a single prior art reference or in view of a combination of
`
`references at the time the claimed invention was made. Therefore, I understand that
`
`obviousness is determined from the perspective of a hypothetical POSITA. I further
`
`understand that a hypothetical POSITA is assumed to know and to have all relevant
`
`prior art in the field of endeavor covered by the patent in suit and all analogous prior
`
`art. I understand that obviousness in an inter partes review proceeding is evaluated
`
`using a preponderance of the evidence standard, which means that the claims must
`
`be more likely obvious than nonobvious.
`
`25.
`
`I also understand that an analysis of whether a claimed invention would have
`
`been obvious should be considered in light of the scope and content of the prior art,
`
`the differences (if any) between the prior art and the claimed invention, and the level
`
`of ordinary skill in the pertinent art involved. I understand as well that a prior art
`
`reference should be viewed as a whole. I understand that in considering whether an
`
`invention for a claimed combination would have been obvious, I may assess whether
`
`there are apparent reasons to combine known elements in the prior art in the manner
`
`claimed in view of interrelated teachings of multiple prior art references, the effects
`
`
`
`10
`
`Samsung Ex. 1003, Page 21 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`of demands known to the design community or present in the marketplace, and/or
`
`the background knowledge possessed by a POSITA. I also understand that other
`
`principles may be relied on in evaluating whether a claimed invention would have
`
`been obvious, and that these principles include the following:
`
` A combination of familiar elements according to known methods is likely
`
`to be obvious when it does no more than yield predictable results;
`
` When a device or technology is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of it, either in the
`
`same field or in a different one, so that if a POSITA can implement a
`
`predictable variation, the variation is likely obvious;
`
` If a technique has been used to improve one device, and a POSITA would
`
`have recognized that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or
`
`her skill;
`
` An explicit or implicit teaching, suggestion, or motivation to combine two
`
`prior art references to form the claimed combination may demonstrate
`
`obviousness, but proof of obviousness does not depend on or require
`
`showing a teaching, suggestion, or motivation to combine;
`
` Market demand, rather than scientific literature, can drive design trends and
`
`
`
`11
`
`Samsung Ex. 1003, Page 22 of 152
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
`
`

`

`Declaration of Gerald W. Smith
`IPR2021-00981
`U.S. Patent No. 9,240,009
`may show obviousness;
`
` In determining whether the subject matter of a patent claim would have been
`
`obvious, neither the particular motivation nor the avowed purpose of the
`
`named inventor controls;
`
` One of the ways in which a patent’s subject can be proved obvious is by
`
`noting that there existed at the time of invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims;
`
` Any need or problem known in the field of endeavor at the time of invention
`
`and addressed by the patent can provide a reason for combining the elements
`
`in the manner claimed;
`
` “Common sense” teaches that familiar items may have obvious uses beyond
`
`their primary purposes, and in many cases a POSITA will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle;
`
` A POSITA is also a person of ordinary creativity, and is not an a