Ex. 1003
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`
`v.
`
`PROXENSE, LLC
`Patent Owner
`––––––––––––––
`
`IPR2021-01438
`Patent 9,049,188 B1
`––––––––––––––
`
`DECLARATION OF ANDREW WOLFE IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,049,188
`
`
`
`

`

`
`TABLE OF CONTENTS
`
`Ex. 1003
`
`Page
`
`declaration of andrew wolfe in support of petition for inter partes
`review of u.s. patent no. 9,049,188 .......................................... 1
`INTRODUCTION ...................................................................... 1
`I.
`Education and work experience ................................................. 1
`II.
`cOMPENSATION ...................................................................... 7
`III.
`IV. LEGAL PRINCIPLES ................................................................ 7
`V.
`LEVEL OF SKILL IN THE ART .............................................. 9
`VI. OVERVIEW OF the ’188 patent ................................................ 9
`VII. PROSECUTION OF THE ’188 PATENT ............................... 10
`VIII. CLAIM CONSTRUCTION ..................................................... 11
`IX. CITED ART ............................................................................. 11
`A. Giobbi ’157 .................................................................... 11
`B.
`Giobbi ’139 .................................................................... 13
`C.
`Broadcom ....................................................................... 15
`D. Dua ................................................................................. 16
`ground 1: GiOBBI ’157, giobbi ’139 and dua RENDER
`OBVIOUS CLAIMS 1-20 ........................................................ 19
`A.
`Claim 1 ........................................................................... 19
`B.
`Claim 2 The hybrid device of claim 1, wherein at least
`one of the one or more of the application, the function,
`and the service are enabled at least in part on the hybrid
`device. ............................................................................ 39
`Claim 3 The hybrid device of claim 1, wherein at least
`one of the one or more of the application, the function,
`
`X.
`
`C.
`
`
`
`i
`
`

`

`Ex. 1003
`
`
`and the service are enabled at least in part on a device
`external to the hybrid device and communicatively
`coupled to the external RDC. ......................................... 39
`Claim 4 The hybrid device of claim 1, wherein the local,
`secured biometric information for authenticating a user is
`based on one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a photograph, a signature, a
`voice sample, DNA and RNA. ....................................... 40
`Claim 5 The hybrid device of claim 1, wherein the
`integrated PDK stores local, secured financial
`information. .................................................................... 40
`Claim 6 The hybrid device of claim 1, wherein the
`integrated PDK stores local, secured financial
`information and at least one of the one or more of the
`application, the function, and the service enabled
`completes a financial transaction based on the financial
`information. .................................................................... 41
`Claim 7. The hybrid device of claim 1, wherein the
`hybrid device is a cell phone. ......................................... 41
`Claim 8. The hybrid device of claim 1, wherein the
`external PDK is included in jewelry. ............................. 41
`Claim 9. The hybrid device of claim 1, comprising a
`storage for inheritance information. ............................... 41
`Claim 10 ......................................................................... 42
`Claim 11 The method of claim 10 further comprising:
`sending the enablement signal to the hybrid device,
`wherein at least one of the one or more of the application,
`the function, and the service are enabled at least in part
`on the hybrid device. ...................................................... 43
`Claim 12 The method of claim 10 further comprising:
`sending the enablement signal to the hybrid device,
`wherein at least one of the one or more of the application,
`the function, and the service are enabled at least in part
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`K.
`
`L.
`
`
`
`ii
`
`

`

`Ex. 1003
`
`N.
`
`O.
`
`P.
`
`Q.
`R.
`
`
`on a device external to the hybrid device and
`communicatively coupled to the external RDC. ............ 44
`M. Claim 13 The method of claim 10, wherein the local,
`secured biometric information for authenticating a user is
`based on one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a photograph, a signature, a
`voice sample, DNA and RNA. ....................................... 44
`Claim 14 The method of claim 10, wherein the integrated
`PDK stores local, secured financial information. .......... 44
`Claim 15 The method of claim 10, wherein the hybrid
`device is a cell phone. .................................................... 45
`Claim 16 The method of claim 10, wherein the external
`PDK is included in jewelry. ........................................... 45
`Claim 17 ......................................................................... 45
`Claim 18 The method of claim 10, wherein the first
`signal includes inheritance information. ........................ 47
`Claim 19 The method of claim 10, wherein the external
`PDK is included in a watch. ........................................... 47
`Claim 20 The hybrid device of claim 1, wherein the
`external PDK is included in a watch. ............................. 47
`ground 2: Broadcom RENDERs OBVIOUS CLAIMS 1-7, 9-15
`and 17-18 .................................................................................. 47
`A.
`Claim 1 ........................................................................... 47
`B.
`Claim 2 The hybrid device of claim 1, wherein at least
`one of the one or more of the application, the function,
`and the service are enabled at least in part on the hybrid
`device. ............................................................................ 58
`Claim 3 The hybrid device of claim 1, wherein at least
`one of the one or more of the application, the function,
`and the service are enabled at least in part on a device
`
`XI.
`
`S.
`
`T.
`
`C.
`
`
`
`iii
`
`

`

`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`J.
`
`K.
`
`Ex. 1003
`
`
`external to the hybrid device and communicatively
`coupled to the external RDC. ......................................... 58
`Claim 4 The hybrid device of claim 1, wherein the local,
`secured biometric information for authenticating a user is
`based on one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a photograph, a signature, a
`voice sample, DNA and RNA. ....................................... 58
`Claim 5 The hybrid device of claim 1, wherein the
`integrated PDK stores local, secured financial
`information. .................................................................... 59
`Claim 6 The hybrid device of claim 1, wherein the
`integrated PDK stores local, secured financial
`information and at least one of the one or more of the
`application, the function, and the service enabled
`completes a financial transaction based on the financial
`information. .................................................................... 59
`Claim 7. The hybrid device of claim 1, wherein the
`hybrid device is a cell phone. ......................................... 60
`Claim 9. The hybrid device of claim 1, comprising a
`storage for inheritance information. ............................... 60
`Claim 10 ......................................................................... 60
`Claim 11 The method of claim 10 further comprising:
`sending the enablement signal to the hybrid device,
`wherein at least one of the one or more of the application,
`the function, and the service are enabled at least in part
`on the hybrid device. ...................................................... 61
`Claim 12 The method of claim 10 further comprising:
`sending the enablement signal to the hybrid device,
`wherein at least one of the one or more of the application,
`the function, and the service are enabled at least in part
`on a device external to the hybrid device and
`communicatively coupled to the external RDC. ............ 62
`
`
`
`iv
`
`

`

`Ex. 1003
`
`L.
`
`N.
`
`O.
`P.
`
`
`Claim 13 The method of claim 10, wherein the local,
`secured biometric information for authenticating a user is
`based on one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a photograph, a signature, a
`voice sample, DNA and RNA. ....................................... 62
`M. Claim 14 The method of claim 10, wherein the integrated
`PDK stores local, secured financial information. .......... 62
`Claim 15 The method of claim 10, wherein the hybrid
`device is a cell phone. .................................................... 62
`Claim 17 ......................................................................... 63
`Claim 18 The method of claim 10, wherein the first
`signal includes inheritance information. ........................ 63
`XII. Ground 3: Broadcom and Giobbi ’157 Render Obvious Claims
`8, 16 and 19-20 ......................................................................... 64
`A.
`Claim 8. The hybrid device of claim 1, wherein the
`external PDK is included in jewelry. ............................. 64
`Claim 16 The method of claim 10, wherein the external
`PDK is included in jewelry. ........................................... 65
`Claim 19 The method of claim 10, wherein the external
`PDK is included in a watch. ........................................... 65
`Claim 20 The hybrid device of claim 1, wherein the
`external PDK is included in a watch. ............................. 65
`XIII. SECONDARY CONSIDERATIONS ...................................... 65
`XIV. Conclusion ................................................................................ 66
`
`
`B.
`
`C.
`
`D.
`
`
`
`v
`
`

`

`Ex. 1003
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 9,049,188 (“’188 patent”)
`File History for U.S. Patent No. 9,049,188
`Declaration of Andrew Wolfe
`U.S. Patent Pub. No. 2007/0245157 A1 (“Giobbi ’157”)
`U.S. Patent Pub. No. 2004/0255139 A1 (“Giobbi ’139”)
`U.S. Patent No. 9,042,819 (“Dua”)
`European Patent No. 1536306 A1 (“Broadcom”)
`
`
`LIST OF APPENDICES
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`
`
`Appendix A
`
`Curriculum Vitae of Andrew Wolfe, Ph.D.
`
`
`
`vi
`
`
`
`
`
`
`
`
`
`
`
`

`

`Ex. 1003
`
`LIST OF CHALLENGED CLAIMS
`
`Claim
`1pre
`
`U.S. Patent No. 9,049,188
`A hybrid device comprising:
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`2
`
`3
`
`4
`
`5
`
`6
`
`an integrated personal digital key (PDK) for storing local, secured
`biometric information for authenticating a user and capable of
`communicating wirelessly with an external receiver-decoder circuit
`(RDC); and
`an integrated RDC for communicating wirelessly with at least one
`external PDK within a proximity zone,
`the integrated RDC coupled to the integrated PDK by a first signal
`line for communication,
`the integrated RDC coupled to at least one other component of the
`hybrid device by a second signal line,
`one or more of the integrated RDC and integrated PDK enabling
`one or more of an application, a function, and a service.
`The hybrid device of claim 1, wherein at least one of the one or
`more of the application, the function, and the service are enabled at
`least in part on the hybrid device.
`The hybrid device of claim 1, wherein at least one of the one or
`more of the application, the function, and the service are enabled at
`least in part on a device external to the hybrid device and
`communicatively coupled to the external RDC.
`The hybrid device of claim 1, wherein the local, secured biometric
`information for authenticating a user is based on one or more of a
`fingerprint, palm print, a retinal scan, an iris scan, a photograph, a
`signature, a voice sample, DNA and RNA.
`The hybrid device of claim 1, wherein the integrated PDK stores
`local, secured financial information.
`The hybrid device of claim 1, wherein the integrated PDK stores
`local, secured financial information and at least one of the one or
`more of the application, the function, and the service enabled
`completes a financial transaction based on the financial information.
`
`vii
`
`
`
`
`
`
`

`

`Ex. 1003
`
`7.
`
`8.
`
`9.
`
`10B
`
`10C
`
`10D
`
`10E
`
`11
`
`12
`
`The hybrid device of claim 1, wherein the hybrid device is a cell
`phone.
`The hybrid device of claim 1, wherein the external PDK is included
`in jewelry.
`The hybrid device of claim 1, comprising a storage for inheritance
`information.
`10pre A method comprising:
`10A
`creating a first wireless link between an integrated receiver-decoder
`circuit (RDC) of a hybrid device and an external personal digital
`key (PDK),
`the hybrid device including an integrated PDK and the integrated
`RDC,
`wherein the integrated PDK stores local, secured biometric
`information for authenticating a user,
`receiving a first signal at the integrated RDC via the first wireless
`link from the external PDK;
`generating an enablement signal enabling one or more of an
`application, a function and a service.
`The method of claim 10 further comprising: sending the enablement
`signal to the hybrid device, wherein at least one of the one or more
`of the application, the function, and the service are enabled at least
`in part on the hybrid device.
`The method of claim 10 further comprising: sending the enablement
`signal to the hybrid device, wherein at least one of the one or more
`of the application, the function, and the service are enabled at least
`in part on a device external to the hybrid device and
`communicatively coupled to the external RDC.
`The method of claim 10, wherein the local, secured biometric
`information for authenticating a user is based on one or more of a
`fingerprint, palm print, a retinal scan, an iris scan, a photograph, a
`signature, a voice sample, DNA and RNA.
`The method of claim 10, wherein the integrated PDK stores local,
`secured financial information.
`
`13
`
`14
`
`viii
`
`
`
`
`
`
`

`

`
`
`
`15
`16
`
`17A
`
`17B
`
`17C
`
`18
`
`19
`
`20
`
`
`
`
`
`Ex. 1003
`
`The method of claim 10, wherein the hybrid device is a cell phone.
`The method of claim 10, wherein the external PDK is included in
`jewelry.
`
`The method of claim 10, wherein the integrated PDK is electrically
`coupled to the integrated RDC, and the method further comprises:
`
`creating a second wireless link between the integrated PDK and an
`external RDC; and
`sending the enablement signal from the integrated PDK to the
`external RDC using the second wireless link,
`the enablement signal based on financial information stored locally
`and securely on the integrated PDK and used to complete a financial
`transaction.
`The method of claim 10, wherein the first signal includes
`inheritance information.
`The method of claim 10, wherein the external PDK is included in a
`watch.
`The hybrid device of claim 1, wherein the external PDK is included
`in a watch.
`
`
`
`
`
`ix
`
`

`

`Ex. 1003
`
`GROUNDS FOR CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`No. Ground for Challenge
`1
`Giobbi ’157, Giobbi ’139 and Dua render obvious claims 1-20
`2
`Broadcom renders obvious claims 1-7, 9-15 and 17-18
`3
`Broadcom and Giobbi ’157 Render Obvious Claims 8, 16 and 19-20
`
`x
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`Ex. 1003
`
`INTRODUCTION
`1.
`I have been retained by Petitioner Samsung Electronics, Co., Ltd.
`
`and Samsung Electronics America, Inc. (collectively, “Samsung”) to provide
`
`an opinion on the validity of U.S. Patent No. 9,049,188 B1, owned by Patent
`
`Owner Proxense, LLC (“Proxense” or “Patent Owner”). My opinions are
`
`based on information currently available to me. To the extent that additional
`
`information becomes available, I reserve the right to continue my
`
`investigation and study, which may include a review of documents and
`
`information that recently have been or may be produced, as well as testimony
`
`from depositions that may yet be taken in this case. I may thus expand or
`
`modify my opinions as my investigation and study continues. I may also
`
`supplement my opinions in response to any additional information that
`
`becomes available to me or that Patent Owner makes available, any matters
`
`raised by Patent Owner and/or opinions provided by Patent Owner’s experts,
`
`or in light of any relevant orders from the Patent Trial and Appeal Board.
`
`II. EDUCATION AND WORK EXPERIENCE
`2.
`Attached to this declaration is a copy of my curriculum vitae that
`
`fully sets forth my qualifications. Below is a summary of my education, work
`
`experience, and other qualifications.
`
`
`
`1
`
`

`

`
`
`
`3.
`
`In 1985, I earned a Bachelor’s degree in Electrical Engineering
`
`Ex. 1003
`
`and Computer Science from The Johns Hopkins University. In 1987, I
`
`received an Master’s degree in Electrical and Computer Engineering from
`
`Carnegie Mellon University. In 1992, I received a Ph.D. in Computer
`
`Engineering from Carnegie Mellon University. My doctoral dissertation
`
`proposed a new approach for the architecture of a computer processor.
`
`4.
`
`I have more than 35 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator,
`
`and executive in the electronics industry.
`
`5.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a
`
`senior design engineer for Touch Technology, Inc. During the course of my
`
`design projects with Touch Technology, I designed I/O cards for PC-
`
`compatible computer systems, including the IBM PC-AT, to interface with
`
`interactive touch-based computer terminals that I designed for use in public
`
`information systems. I continued designing and developing related
`
`technology as a consultant to the Carroll Touch division of AMP, Inc., where
`
`in 1986 I designed one of the first custom touch-screen integrated circuits. I
`
`designed the touch/pen input system for the Linus WriteTop, which many
`
`believe to be the first commercial tablet computer.
`
`
`
`2
`
`

`

`
`
`
`6.
`
`From 1986 through 1987, I designed and built a high-
`
`Ex. 1003
`
`performance computer system as a student at Carnegie Mellon University.
`
`From 1986 through early 1988, I also developed the curriculum and
`
`supervised the teaching laboratory for processor design courses.
`
`7.
`
`In the latter part of 1989, I worked as a senior design engineer
`
`for ESL-TRW Advanced Technology Division. While at ESL-TRW, I
`
`designed and built a bus interface and memory controller for a workstation-
`
`based computer system, and also worked on the design of a multiprocessor
`
`system.
`
`8.
`
`At the end of 1989, I (along with some partners) reacquired the
`
`rights to the technology I had developed at Touch Technology and at AMP
`
`and founded The Graphics Technology Company. Over the next seven years,
`
`as an officer and a consultant for The Graphics Technology Company, I
`
`managed the company's engineering development activities and personally
`
`developed dozens of touch screen sensors, controllers, and interactive touch-
`
`based computer systems.
`
`9.
`
`I have consulted, formally and informally, for a number of
`
`fabless semiconductor companies. In particular, I have served on the technical
`
`advisory boards for two processor design companies: BOPS, Inc., where I
`
`chaired the board; and Siroyan Ltd., where I served in a similar role for three
`
`
`
`3
`
`

`

`
`
`networking chip companies—Intellon, Inc., Comsilica, Inc., and Entridia,
`
`Ex. 1003
`
`Inc.—and one 3D game accelerator company, Ageia, Inc.
`
`10.
`
`I have also served as a technology advisor to Motorola and to
`
`several venture capital funds in the U.S. and Europe. Currently, I am a
`
`director of Turtle Beach Corporation, providing guidance in its development
`
`of premium audio peripheral devices for a variety of commercial electronic
`
`products.
`
`11. From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton,
`
`I taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems
`
`and related topics. I was also a principal investigator for DOD research in
`
`video technology and a principal investigator for the New Jersey Center for
`
`Multimedia Research. From 1999 through 2002, while a Consulting Professor,
`
`I taught a Computer Architecture course to both undergraduate and graduate
`
`students at Stanford University. At Princeton, I received several teaching
`
`awards, both from students and from the School of Engineering. I have also
`
`taught advanced microprocessor architecture to industry professionals in
`
`seminars sponsored by the Institute of Electrical and Electronics Engineers
`
`
`
`4
`
`

`

`
`
`(“IEEE”) and the Association for Computing Machinery (“ACM”). I am
`
`Ex. 1003
`
`currently a lecturer at Santa Clara University teaching courses on
`
`Microprocessor Systems, Real-Time Computing, and Mechatronics.
`
`12. From 1997 through 2002, I held a variety of executive positions
`
`at a publicly-held fabless semiconductor company originally called S3, Inc.
`
`and later called SonicBlue Inc. I held the positions of Chief Technology
`
`Officer, Vice President of Systems Integration Products, Senior Vice
`
`President of Business Development, and Director of Technology, among
`
`others. At the time I joined S3, the company supplied graphics accelerators
`
`for more than 50% of the PCs sold in the United States. At S3 I supervised
`
`the design of several PC graphics accelerators. During my time at SonicBlue
`
`we launched more than 30 new consumer electronics products including
`
`devices to support copy-protected video and many of the first commercial
`
`products to support copy-protected internet audio content. These included
`
`some of the first consumer products to support playback of encrypted content
`
`using digital rights management (DRM) based security. I also worked with
`
`Universal Music Group and Sony Entertainment on the development of
`
`systems for distribution and management of secure, encrypted content.
`
`13.
`
`I have published more than fifty peer-reviewed papers in
`
`computer architecture and computer systems and IC design. I also have
`
`
`
`5
`
`

`

`
`
`chaired IEEE and ACM conferences in microarchitecture and integrated
`
`Ex. 1003
`
`circuit design and served as an associate editor for IEEE and ACM journals.
`
`I served on the IEEE Computer Society Awards committee. I am a Senior
`
`Member of IEEE and a Member of ACM. I am a named inventor on at least
`
`fifty-seven U.S. patents and thirty-seven foreign patents, which are listed in
`
`my curriculum vitae. Some of these patents relate to encryption systems.
`
`14.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International
`
`Conference on Multimedia. From 1990 through 2005, I have also been an
`
`invited speaker on various aspects of technology and the PC industry at
`
`numerous industry events including the Intel Developer’s Forum, Microsoft
`
`Windows Hardware Engineering Conference, Microprocessor Forum,
`
`Embedded Systems Conference, Comdex, and Consumer Electronics Show,
`
`as well as at the Harvard Business School and the University of Illinois Law
`
`School. I have been interviewed on subjects related to computer graphics and
`
`video technology and the electronics industry by publications such as the Wall
`
`Street Journal, New York Times, Los Angeles Times, Time, Newsweek,
`
`Forbes, and Fortune as well as on CNN, NPR, and the BBC. I have also
`
`spoken at dozens of universities including MIT, Stanford, University of Texas,
`
`
`
`6
`
`

`

`
`
`Carnegie Mellon University, UCLA, University of Michigan, Rice University,
`
`Ex. 1003
`
`and Duke University.
`
`III. COMPENSATION
`15.
`I am being compensated at my usual and customary hourly rate
`
`of $600 for my expert services in connection with this proceeding. My
`
`compensation does not depend in any way upon the outcome of this
`
`proceeding, the opinions I express, or the content of my testimony.
`
`IV. LEGAL PRINCIPLES
`16.
`I am informed that “prior art” includes patents and printed
`
`publications that existed before the earliest applicable filing date of the ’188
`
`patent.
`
`17.
`
`I am informed that in order for a claim to be anticipated, each
`
`and every requirement of the claim must be found, expressly or inherently, in
`
`a single prior art reference as recited in the claim.
`
`18.
`
`I am informed that a claimed invention is not patentable if the
`
`claimed invention would have been obvious to a person of ordinary skill in
`
`the field of the invention at the time the invention was made.
`
`19.
`
`I am informed that in order to show obviousness based on a
`
`combination of references, a particular motivation to combine the teachings
`
`in the references must be shown.
`
`
`
`7
`
`

`

`
`
`
`20.
`
`I am informed that claim terms are generally given their ordinary
`
`Ex. 1003
`
`and customary meaning, which is the meaning that the term would have to a
`
`person of ordinary skill in the art at the time of the invention. I further
`
`understand that a person of ordinary skill in the art must read the claim term
`
`not only in the context of the particular claim in which the term appears but
`
`in the context of the entire patent, including the specification.
`
`21.
`
`I am informed that the obviousness inquiry should not be done
`
`in hindsight, and depends on the scope and content of the prior art, the
`
`differences between the prior art and the claims at issue, the knowledge of a
`
`person of ordinary skill in the pertinent art at the time of invention, and any
`
`other objective factors indicating obviousness or non-obviousness.
`
`22.
`
`I am informed that in order to rely on a reference for obviousness,
`
`the reference must be analogous art. I also understand that to be analogous
`
`art, the reference must be either (1) from the same field of endeavor as the
`
`claimed subject matter, regardless of the problem addressed, or (2) if not in
`
`the same field of endeavor, reasonably pertinent to the particular problem with
`
`which the inventor is involved. I am also familiar with the premise that for a
`
`reference to be reasonably pertinent, it must have logically commended itself
`
`to an inventor’s attention at the time of invention.
`
`
`
`8
`
`

`

`
`
`V. LEVEL OF SKILL IN THE ART
`23.
`In my opinion a Person of Ordinary Skill in the Art would have
`
`Ex. 1003
`
`had a bachelor’s degree in computer or electrical engineering (or an equivalent
`
`degree) with at least three years of experience in the field of encryption and
`
`security (or equivalent experience). This level of skill is approximate, and
`
`more experience in one area would compensate for less experience in another
`
`area and vice versa.
`
`VI. OVERVIEW OF THE ’188 PATENT
`24. The ’188 patent is directed towards a “hybrid device” that
`
`includes an integrated personal digital key (PDK) and an integrated receiver-
`
`decoder circuit (RDC) that are coupled in communication with each other. Ex.
`
`1001 at 1:66-2:3. The integrated PDK communicates wirelessly with an
`
`external RDC and the integrated RDC communicates wirelessly with at least
`
`one external PDK within its proximity zone. Ex. 1001 at 21:50-56. The
`
`specification discloses that the integrated PDK is capable of storing local,
`
`secured financial
`
`information or secured biometric
`
`information for
`
`authenticating a user. Ex. 1001 at 22:25-27, 22:48-49. Similarly, the external
`
`PDK is also capable of storing information. Ex 1001 at 16:34-36.
`
`25. For example, in one embodiment, the integrated PDK carries
`
`credentials such as credit card or account information that are used to enable
`
`
`
`9
`
`

`

`
`
`services associated with the external RDC. Ex 1001 at 16:23-25. A user can
`
`Ex. 1003
`
`make a purchase with the hybrid device provided that they are in possession
`
`of the external PDK and in proximity to the hybrid device. If so, the external
`
`PDK wirelessly connects to the integrated RDC and authorizes the integrated
`
`PDK to enable a transaction by sharing credit card or account information
`
`with the external RDC.
`
`VII. PROSECUTION OF THE ’188 PATENT
`26. On September 22, 2014, the Examiner issued a Non-Final
`
`rejection based on non-statutory double-patenting and obviousness based on
`
`patents Finn and Hochstein. Ex. 1002 at 104. On December 22, 2014, the
`
`applicant withdrew pending claim 1 to avoid the non-statutory double-
`
`patenting rejection as well as the 103 rejection, proposing new independent
`
`claims which added more details regarding the components of the hybrid
`
`device. Id. at 423-24. In response, the Examiner issued a Notice of Allowance
`
`with an Examiner’s Amendment, amending the independent claims to require
`
`that the information stored on the PDK be “biometric” information “for
`
`authenticating a user.” Ex. 1002, at 443-444. These claims issued as amended
`
`by the Examiner.
`
`
`
`10
`
`

`

`
`
`VIII. CLAIM CONSTRUCTION
`27.
`It is my understanding that petitioner submits that express
`
`Ex. 1003
`
`interpretations of the challenged claims are not required to resolve this petition.
`
`Because no constructions are necessary to resolve this petition, Petitioner
`
`proposes that the claim terms should be given their plain and ordinary
`
`meaning. I currently see no reason to disagree with this position, however, I
`
`reserve the right to modify my opinions in light of to any claim constructions
`
`established by the Board or any Court in the future.
`
`IX. CITED ART
`A. Giobbi ’157
`28. U.S. Patent Pub. No. 2007/0245157 A1 to Giobbi et al.
`
`(“Giobbi ’157”) is directed at a system and method to “provide efficient,
`
`secure and highly reliable authentication for transaction processing and/or
`
`access control applications.” Ex. 1004 at Abstract.
`
`29. Giobbi ’157 discloses a Personal Digital Key (PDK) that “stores
`
`one or more profiles (e.g., a biometric profile) in a tamperproof memory that
`
`is acquired in a secure and trusted process.” Id. Giobbi ’157 further teaches
`
`that the PDK may be integrated into a hybrid device, such as a cell phone. Ex.
`
`1004 at ¶ 35 (“a portable electronic device such as a cell phone”), ¶ 12.
`
`
`
`11
`
`

`

`
`
`
`30. Giobbi ’157 teaches that its integrated PDK is capable of
`
`Ex. 1003
`
`communicating wirelessly with an external receiver-decoder circuit (RDC).
`
`In particular, Giobbi ’157 teaches that information stored on a PDK, such as
`
`fingerprint information, is transmitted to an external RDC located on a
`
`“Reader 108.” Id. at ¶ 49. Giobbi ’157’s hybrid device is shown in the
`
`annotated version of Figure 3 below I prepared:
`
`
`
`Ex. 1004 at Fig. 3 (annotated). Giobbi ’157 teaches that its external RDC is
`
`communicatively coupled to an external database which is used for enabling
`
`an application/function/service:
`
`For example, in one type of authentication, information is
`received from the PDK 102 at the RDC 304, processed by the
`processor 306, and transmitted to an external database 112-116
`through the network interface 308.
`
`
`
`12
`
`

`

`
`
`
`Ex. 1004 at ¶ 53. This is shown, for example, in annotated Figure 3:
`
`Ex. 1003
`
`
`
`Ex. 1004 at Fig. 3.
`
`31. Giobbi ’157 teaches that its hybrid device, which contains the
`
`PDK, enables an application/function/service to take place. For example,
`
`Giobbi ’157 teaches that its hybrid device’s PDK is used to enable a financial
`
`transaction, such as an ATM withdraw:
`
`Additionally, the PDK can store other information such as
`credit/debit card information, bank information, or personal
`information in a memory for use in authorizing or completing a
`transaction.
`Ex. 1004 at ¶¶ 11, 65.
`
`B. Giobbi ’139
`32. U.S. Patent Pub. No. 2004/0255139 A1 to Giobbi (“Giobbi ’139”)
`
`is directed towards a “Personal Digital Key Digital Content Security System”
`
`which is aimed at protecting “unauthorized use and protect[ing] the digital
`
`
`
`13
`
`

`

`
`
`content stored on computers from being wrongfully accessed, copied, and/or
`
`Ex. 1003
`
`distributed.” Ex. 1005 at Abstract. Like the Giobbi ’157 publication,
`
`Giobbi ’139 further teaches communicating with a receiver decoder circuit
`
`(RDC) and discloses that a RDC can be incorporated into a cell phone: “This
`
`embodiment involves integrating RDCs into…PDAs