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
`––––––––––––––
`
`IPR2021-01439
`Patent 9,235,700
` –––––––––––––
`–
`DECLARATION OF ANDREW WOLFE IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,235,700
`
`

`

`
`TABLE OF CONTENTS
`
`Ex. 1003
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`Page
`
`INTRODUCTION ...................................................................... 1
`I.
`EDUCATION AND WORK EXPERIENCE ............................ 1
`II.
`III. COMPENSATION ..................................................................... 7
`IV. LEGAL PRINCIPLES ................................................................ 7
`V.
`LEVEL OF SKILL IN THE ART .............................................. 9
`VI. OVERVIEW OF the ’700 patent ................................................ 9
`VII. PROSECUTION OF THE ’700 PATENT ............................... 10
`VIII. CLAIM CONSTRUCTION ..................................................... 10
`IX. CITED ART ............................................................................. 11
`A. Giobbi ’157 .................................................................... 11
`B.
`Giobbi ’139 .................................................................... 13
`C.
`Broadcom ....................................................................... 14
`D. Dua ................................................................................. 16
`X. 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. ............................................................................ 38
`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
`external to the hybrid device and communicatively
`coupled to the external RDC. ......................................... 38
`
`C.
`
`
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`i
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`D.
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`Ex. 1003
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`
`Claim 4 The hybrid device of claim 1, wherein the
`integrated PDK includes local, secured biometric
`information for authenticating a user, the biometric
`information based on one or more of a fingerprint,
`palmprint, a retinal scan, an iris scan, a photograph, a
`signature, a voice sample, DNA and RNA. ................... 39
`Claim 5 The hybrid device of claim 1, wherein the
`external PDK stores local, secured financial
`information. .................................................................... 39
`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. .................................................................... 40
`Claim 7. The hybrid device of claim 1, wherein the
`hybrid device is a cell phone. ......................................... 40
`Claim 8. The hybrid device of claim 1, wherein the
`external PDK is included in jewelry. ............................. 40
`Claim 9. The hybrid device of claim 1, comprising a
`storage for inheritance information. ............................... 41
`Claim 10 The hybrid device of claim 1, wherein the
`external PDK is included in a watch .............................. 41
`Claim 11 ......................................................................... 41
`Claim 12 The method of claim 11 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
`M. Claim 13 The method of claim 11 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
`
`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
`L.
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`ii
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`Ex. 1003
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`N.
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`O.
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`P.
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`on a device external to the hybrid device and
`communicatively coupled to the external RDC. ............ 43
`Claim 14 The method of claim 11, wherein the integrated
`PDK includes local, secured biometric information for
`authenticating a user, the biometric information based on
`one or more of a fingerprint, palmprint, a retinal scan, an
`iris Scan, a photograph, a signature, a Voice sample,
`DNA and RNA. .............................................................. 43
`Claim 15 The method of claim 11, wherein the external
`PDK stores local, secured financial information. .......... 44
`Claim 16 The method of claim 11, wherein the hybrid
`device is a cell phone. .................................................... 44
`Claim 17 The method of claim 11, wherein the external
`PDK is included in jewelry. ........................................... 44
`Claim 18 ......................................................................... 44
`Claim 19 The method of claim 11, wherein the first
`signal includes inheritance information. ........................ 46
`Claim 20 The method of claim 11, wherein the external
`PDK is included in a watch. ........................................... 46
`XI. GROUND 2: BROADCOM RENDERS OBVIOUS CLAIMS
`1-7, 9, 11-16 AND 18-19 ......................................................... 46
`A.
`Claim 1 ........................................................................... 46
`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. ............................................................................ 57
`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
`external to the hybrid device and communicatively
`coupled to the external RDC. ......................................... 57
`
`Q.
`
`R.
`B.
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`C.
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`C.
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`iii
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`

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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
`J.
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`K.
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`L.
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`Ex. 1003
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`Claim 4 The hybrid device of claim 1, wherein the
`integrated PDK includes local, secured biometric
`information for authenticating a user, the biometric
`information based on one or more of a fingerprint,
`palmprint, a retinal scan, an iris scan, a photograph, a
`signature, a voice sample, DNA and RNA. ................... 57
`Claim 5 The hybrid device of claim 1, wherein the
`external PDK stores local, secured financial
`information. .................................................................... 58
`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. .................................................................... 58
`Claim 7. The hybrid device of claim 1, wherein the
`hybrid device is a cell phone. ......................................... 59
`Claim 9. The hybrid device of claim 1, comprising a
`storage for inheritance information. ............................... 59
`Claim 11 ......................................................................... 59
`Claim 12 The method of claim 11 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 13 The method of claim 11 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. ............ 61
`Claim 14 The method of claim 11, wherein the integrated
`PDK includes local, secured biometric information for
`authenticating a user, the biometric information based on
`
`
`
`iv
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`

`

`Ex. 1003
`
`N.
`
`O.
`D.
`
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`one or more of a fingerprint, palmprint, a retinal scan, an
`iris scan, a photograph, a signature, a voice sample, DNA
`and RNA. ........................................................................ 61
`M. Claim 15 The method of claim 11, wherein the external
`PDK stores local, secured financial information. .......... 61
`Claim 16 The method of claim 11, wherein the hybrid
`device is a cell phone. .................................................... 62
`Claim 18 ......................................................................... 62
`Claim 19 The method of claim 11, wherein the first
`signal includes inheritance information. ........................ 62
`XII. GROUND 3: BROADCOM AND GIOBBI ’157 RENDER
`OBVIOUS CLAIMS 8, 10, 17 AND 20 .................................. 63
`A.
`Claim 8. The hybrid device of claim 1, wherein the
`external PDK is included in jewelry. ............................. 63
`Claim 10 The hybrid device of claim 1, wherein the
`external PDK is included in a watch .............................. 64
`Claim 17 The method of claim 11, wherein the external
`PDK is included in jewelry. ........................................... 64
`Claim 20 The method of claim 11, wherein the external
`PDK is included in a watch. ........................................... 64
`XIII. SECONDARY CONSIDERATIONS ...................................... 64
`XIV. Conclusion ................................................................................ 65
`
`
`B.
`
`C.
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`D.
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`
`
`v
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`

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`Ex. 1003
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 9,235,700 (“’700 patent”)
`File History for U.S. Patent No. 9,235,700
`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
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`

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`Ex. 1003
`
`Claim
`1pre
`
`U.S. Patent No. 9,235,700
`A hybrid device comprising:
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`2
`
`3
`
`4
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`5
`
`6
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`an integrated personal digital key (PDK) for storing local,
`secured financial information 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 integrated PDK
`includes local, secured biometric information for
`authenticating a user, the biometric information 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 external 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
`
`vii
`
`
`
`
`
`
`

`

`Ex. 1003
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`7.
`
`8.
`
`9.
`
`10
`
`11B
`
`11C
`
`11D
`
`11E
`
`service enabled completes a financial transaction based on the
`financial information.
`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.
`The hybrid device of claim 1, wherein the external PDK is
`included in a watch
`11pre A method comprising:
`11A
`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 financial
`information,
`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 11 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 11 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.
`
`12
`
`13
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`viii
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`

`

`
`
`
`14
`
`15
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`16
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`17
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`18A
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`18B
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`18C
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`19
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`20
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`
`
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`
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`Ex. 1003
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`The method of claim 11, wherein the integrated PDK includes
`local, secured biometric information for authenticating a user,
`the biometric information 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 11, wherein the external PDK stores
`local, secured financial information
`The method of claim 11, wherein the hybrid device is a cell
`phone.
`The method of claim 11, wherein the external PDK is included
`in jewelry.
`
`The method of claim 11, 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 11, wherein the first signal includes
`inheritance information.
`The method of claim 11, wherein the external PDK is included
`in a watch.
`
`ix
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`

`

`Ex. 1003
`
`GROUNDS OF CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`No. Ground for Challenge
`1
`Claims 1-20 are rendered obvious by Giobbi ’157 in view of
`Giobbi ’139 and Dua
`Claims 1-7, 9, 11-16 and 18-19 are rendered obvious by Broadcom
`Claims 8, 10, 17 and 20 are rendered obvious by Broadcom in view
`of Giobbi ’157
`
`2
`3
`
`x
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`

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`
`
`I.
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`Ex. 1003
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`INTRODUCTION
`1.
`I have been retained by Petitioner Samsung Electronics, Co., Ltd.
`
`and Samsung Electronics America, Inc. (collectively, “Samsung”) to provide
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`an opinion on the validity of U.S. Patent No. 9,235,700, owned by Patent
`
`Owner Proxense, LLC (“Proxense” or “Patent Owner”). My opinions are
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`based on information currently available to me. To the extent that additional
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`information becomes available, I reserve the right to continue my
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`investigation and study, which may include a review of documents and
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`information that recently have been or may be produced, as well as testimony
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`from depositions that may yet be taken in this case. I may thus expand or
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`modify my opinions as my investigation and study continues. I may also
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`supplement my opinions in response to any additional information that
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`becomes available to me or that Patent Owner makes available, any matters
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`raised by Patent Owner and/or opinions provided by Patent Owner’s experts,
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`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
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`experience, and other qualifications.
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`
`
`1
`
`

`

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

`

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

`

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

`

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

`

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

`

`
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`Carnegie Mellon University, UCLA, University of Michigan, Rice University,
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`Ex. 1003
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`and Duke University.
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`III. COMPENSATION
`15.
`I am being compensated at my usual and customary hourly rate
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`of $600 for my expert services in connection with this proceeding. My
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`compensation does not depend in any way upon the outcome of this
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`proceeding, the opinions I express, or the content of my testimony.
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`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 ’700
`
`patent.
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`17.
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`I am informed that in order for a claim to be anticipated, each
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`and every requirement of the claim must be found, expressly or inherently, in
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`a single prior art reference as recited in the claim.
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`18.
`
`I am informed that a claimed invention is not patentable if the
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`claimed invention would have been obvious to a person of ordinary skill in
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`the field of the invention at the time the invention was made.
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`19.
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`I am informed that in order to show obviousness based on a
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`combination of references, a particular motivation to combine the teachings
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`in the references must be shown.
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`
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`7
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`

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`
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`20.
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`I am informed that claim terms are generally given their ordinary
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`Ex. 1003
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`and customary meaning, which is the meaning that the term would have to a
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`person of ordinary skill in the art at the time of the invention. I further
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`understand that a person of ordinary skill in the art must read the claim term
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`not only in the context of the particular claim in which the term appears but
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`in the context of the entire patent, including the specification.
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`21.
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`I am informed that the obviousness inquiry should not be done
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`in hindsight, and depends on the scope and content of the prior art, the
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`differences between the prior art and the claims at issue, the knowledge of a
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`person of ordinary skill in the pertinent art at the time of invention, and any
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`other objective factors indicating obviousness or non-obviousness.
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`22.
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`I am informed that in order to rely on a reference for obviousness,
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`the reference must be analogous art. I also understand that to be analogous
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`art, the reference must be either (1) from the same field of endeavor as the
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`claimed subject matter, regardless of the problem addressed, or (2) if not in
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`the same field of endeavor, reasonably pertinent to the particular problem with
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`which the inventor is involved. I am also familiar with the premise that for a
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`reference to be reasonably pertinent, it must have logically commended itself
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`to an inventor’s attention at the time of invention.
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`V. LEVEL OF SKILL IN THE ART
`23.
`In my opinion a Person of Ordinary Skill in the Art would have
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`Ex. 1003
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`had a bachelor’s degree in computer or electrical engineering (or an equivalent
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`degree) with at least three years of experience in the field of encryption and
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`security (or equivalent experience). This level of skill is approximate, and
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`more experience in one area would compensate for less experience in another
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`area and vice versa.
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`VI. OVERVIEW OF THE ’700 PATENT
`24. The ’700 patent relates to a “hybrid device” comprised of an
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`integrated personal digital key (PDK) and an integrated receiver-decoder
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`circuit (RDC) that are coupled in communication with each other. Ex. 1001
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`at 2:18-22. The integrated PDK communicates wirelessly with an external
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`RDC and the integrated RDC communicates wirelessly with at least one
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`external PDK within its proximity zone. Ex. 1001 at 22:6-12. The integrated
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`PDK is capable of storing local, secured financial information and secured
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`biometric information for authenticating a user. Ex. 1001 at 22:48-50, 22:65-
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`67. The external PDK is also capable of storing information. Ex. 1001 at
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`22:30-31. In one embodiment, the integrated PDK carries credentials such as
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`credit card or account information that are used to enable services associated
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`with the external RDC. Ex. 1001 at 16:48-50. A user can make a purchase
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`with the hybrid device provided that they are in possession of the external
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`Ex. 1003
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`PDK and in proximity to the hybrid device. If so, the external PDK wirelessly
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`connects to the integrated RDC and authorizes the integrated PDK to enable
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`a transaction by sharing credit card or account information with the external
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`RDC.
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`VII. PROSECUTION OF THE ’700 PATENT
`25. The ’700 patent was subject to only a single rejection based on
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`double-patenting. Ex. 1002 at 91. No substantive rejections were made and
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`the patent issued within eight months. Id. at 153.
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`VIII. CLAIM CONSTRUCTION
`26.
`It is my understanding that petitioner submits that express
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`interpretations of the challenged claims are not required to resolve this petition.
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`Because no constructions are necessary to resolve this petition, Petitioner
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`proposes that the claim terms should be given their plain and ordinary
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`meaning. I currently see no reason to disagree with this position, however, I
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`reserve the right to modify my opinions in light of to any claim constructions
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`established by the Board or any Court in the future.
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`IX. CITED ART
`A. Giobbi ’157
`27. U.S. Patent Pub. No. 2007/0245157 A1 to Giobbi et al.
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`Ex. 1003
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`(“Giobbi ’157”) is directed at a system and method to “provide efficient,
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`secure and highly reliable authentication for transaction processing and/or
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`access control applications.” Ex. 1004 at Abstract.
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`28. Giobbi ’157 discloses a Personal Digital Key (PDK) that “stores
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`one or more profiles (e.g., a biometric profile) in a tamperproof memory that
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`is acquired in a secure and trusted process.” Id. Giobbi ’157 further teaches
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`that the PDK may be integrated into a hybrid device, such as a cell phone. Ex.
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`1004 at ¶ 35 (“a portable electronic device such as a cell phone”), ¶ 12.
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`29. Giobbi ’157 teaches that its integrated PDK is capable of
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`communicating wirelessly with an external receiver-decoder circuit (RDC).
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`In particular, Giobbi ’157 teaches that information stored on a PDK, such as
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`fingerprint information, is transmitted to an external RDC located on a
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`“Reader 108.” Id. at ¶ 49. Giobbi ’157’s hybrid device is shown in the
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`annotated version of Figure 3 below I prepared:
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`1
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`Ex. 1003
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`
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`Ex. 1004 at Fig. 3. Giobbi ’157 teaches that its external RDC is
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`communicatively coupled to an external database which is used for enabling
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`an application/function/service:
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`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.
`Ex. 1004 at ¶ 53. This is shown, for example, in annotated Figure 3:
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`1 All figures annotated and all emphasis added to quotations unless
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`otherwise noted.
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`Ex. 1003
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`
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`Ex. 1004 at Fig. 3.
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`30. Giobbi ’157 teaches that its hybrid device, which contains the
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`PDK, enables an application/function/service to take place. For example,
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`Giobbi ’157 teaches that its hybrid device’s PDK is used to enable a financial
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`transaction, such as an ATM withdraw:
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`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.
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`B. Giobbi ’139
`31. U.S. Patent Pub. No. 2004/0255139 A1 to Giobbi (“Giobbi ’139”)
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`is directed towards a “Personal Digital Key Digital Content Security System”
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`which is aimed at protecting “unauthorized use and protect[ing] the digital
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`content stored on computers from being wrongfully accessed, copied, and/or
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`distributed.” Ex. 1005 at Abstract. Like the Giobbi ’157 publication,
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`Ex. 1003
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`Giobbi ’139 further teaches communicating with a receiver decoder circuit
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`(RDC) and discloses that an RDC can be incorporated into a cell phone: “This
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`embodiment involves integrating RDCs into…PDAs, cell phones [etc.]”). Ex.
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`1005 at ¶ 88, compare with Ex. 1004 at ¶ 35 (“The PDK 102 can be standalone
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`as a portable, physical device or can be integrated into commonly carried
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`items. . . such as a cell phone [or] Personal Digital Assistant (PDA)[.]”).
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`32. Giobbi ’139 expressly teaches coupling an integrated RDC and
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`an integrated PDK by a signal line for communication. In particular,
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`Giobbi ’139 teaches:
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`In other alternative embodiments, the communication between
`the user's physical electronic k