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
`––––––––––––––
`
`IPR2021-01447
`Patent 9,928,905
`––––––––––––––
`
`DECLARATION OF ANDREW WOLFE IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`

`

`
`
`TABLE OF CONTENTS
`
`Ex. 1003
`
`Page
`
`DECLARATION OF ANDREW WOLFE IN SUPPORT OF .......................1
`
`PETITION FOR INTER PARTES REVIEW ...................................................1
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................1
`
`EDUCATION AND WORK EXPERIENCE .......................................1
`
`III. COMPENSATION ................................................................................7
`
`IV. LEGAL PRINCIPLES ...........................................................................7
`
`V.
`
`LEVEL OF SKILL IN THE ART .........................................................8
`
`VI. OVERVIEW OF THE ’905 PATENT ..................................................9
`
`VII. PROSECUTION OF THE ’905 PATENT ......................................... 10
`
`VIII. CLAIM CONSTRUCTION ............................................................... 10
`
`IX. CITED ART ....................................................................................... 11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`Scott (WO1999056429) ........................................................... 11
`
`Russell (US20040044627) ....................................................... 12
`
`Lapsley (US2001/0000535) ..................................................... 12
`
`Robinson (US2003/0177102) .................................................. 13
`
`Rhoads (US2004/0153649) ...................................................... 13
`
`Berardi (US7239226) ............................................................... 14
`
`Rosen (US6175921) ................................................................. 14
`
`Shreve (US2004/0153649) ....................................................... 15
`
`Kinoshita (US2003/0055792) .................................................. 15
`
`X. GROUND 1: CLAIMS 1, 3-10, AND 12 ARE RENDERED
`OBVIOUS BY SCOTT AND LAPSLEY. ......................................... 16
`
`A.
`
`Claim 1 ..................................................................................... 16
`
`1.
`
`2.
`
`[1pre]: A method comprising: ...................................... 16
`
`[1A]: persistently storing biometric data of a
`legitimate user and an ID code on an integrated
`device; ............................................................................ 17
`
`
`
`i
`
`

`

`3.
`
`4.
`
`5.
`
`6.
`
`
`
`Ex. 1003
`
`[1B]: responsive to receiving a request for a
`biometric verification of the user, receiving, from a
`biometric sensor, scan data from a biometric scan
`performed by the biometric sensor; ............................... 18
`
`[1C]: comparing the scan data to the biometric data
`to determine whether the scan data matches the
`biometric data; ............................................................... 19
`
`[1D]: responsive to a determination that the scan
`data matches the biometric data, wirelessly
`sending the ID code for comparison by a third-
`party trusted authority against one or more
`previously registered ID codes maintained by the
`third-party trusted athority, ............................................ 19
`
`(1) Motivation to Combine........................................ 22
`
`[1E]: responsive to receiving an access message
`from the third –party trusted authority indicating
`that the thir-party trusted authority authenticated
`the ID code, allowing the user complete a financial
`transaction. ..................................................................... 23
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Claim 3: “[t]he method of claim 1, wherein an indication
`that the biometric verification was successful is sent with
`the ID code.” ............................................................................ 24
`
`Claim 4: “[t]he method of claim 1, wherein the biometric
`data includes data from one or more of a fingerprint,
`palm print, a retinal scan, an iris scan, a hand geometry, a
`facial recognition, a signature recognition and a voice
`recognition” .............................................................................. 24
`
`Claim 5: “[t]he method of claim 1, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ............................................................... 24
`
`Claim 6: “[t]he method of claim 1, wherein completing
`the financial transaction includes accessing an
`application.” ............................................................................. 25
`
`Claim 7: “[t]he method of claim 1, wherein completing
`the financial transaction includes accessing one or more
`
`
`
`ii
`
`

`

`
`
`Ex. 1003
`
`of a casino machine, a keyless lock, an ATM machine, a
`web site, a file and a financial account.”.................................. 26
`
`G.
`
`Claim 8 ..................................................................................... 26
`
`1.
`
`2.
`
`[8A]: “The method of claim 1, further comprising:
`responsive to determining the action does not
`require biometric verification, receiving a request
`for the ID code without a request for biometric
`verification; and ............................................................. 26
`
`[8B]: and responsive to receiving the request for
`the ID code without a request for biometric
`verification, sending the ID code for authentication
`without requesting the scan data. ................................... 27
`
`H.
`
`Claim 9 ..................................................................................... 28
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`[9pre]: An integrated device comprising: ...................... 28
`
`[9A]: a persistent storage media that persistently
`stores biometric data of a user and an ID code; ............. 28
`
`[9B]:a validation module, coupled to communicate
`with the persistent storage media, that receives
`scan data from a biometric scan for comparison
`against the biometric data, ............................................. 28
`
`[9C]:a validation module… that sends the ID code
`for comparison by a third-party trusted authority
`against one or more previously registered ID codes
`maintained by the third-party trusted authority; and ..... 30
`
`[9D]:responsive to the agent authenticating the one
`or more codes and the other data values, ....................... 30
`
`[9E]:a radio frequency communication module that
`receives an access message from the third-party
`trusted authority indicating that the third-party
`trusted authority successfully authenticated the ID
`code sent to the third-party trusted authority based
`on the comparison of the ID code and allowing the
`user to—complete a financial transaction., ................... 30
`
`I.
`
`Claim 10: “The integrated device of claim 7, wherein the
`ID code is transmitted to the third-party trusted authority
`over a network.” ....................................................................... 31
`
`
`
`iii
`
`

`

`
`
`Ex. 1003
`
`J.
`
`Claim 12: “The integrated device of claim 7, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ............................................................... 31
`
`XI. GROUND 2: CLAIMS 2 AND 11 ARE RENDERED
`OBVIOUS BY SCOTT, LAPSLEY, AND ROBINSON. ................. 31
`
`A.
`
`B.
`
`Claim 2 ..................................................................................... 31
`
`Claim 10 ................................................................................... 33
`
`XII. GROUND 3: CLAIM 1 AND 3-7 ARE RENDERED
`OBVIOUS BY BERARDI, ROSEN, SHREVE, AND
`KINOSHITA. ..................................................................................... 33
`
`A.
`
`Claim 1 ..................................................................................... 33
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`[1pre]: A method comprising: ...................................... 33
`
`[1A]: persistently storing biometric data of a
`legitimate user and an ID code on an integrated
`device; ............................................................................ 34
`
`[1B]: responsive to receiving a request for a
`biometric verification of the user, receiving, from a
`biometric sensor, scan data from a biometric scan
`performed by the biometric sensor; ............................... 35
`
`[1D]: responsive to a determination that the scan
`data matches the biometric data, wirelessly
`sending the ID code for comparison by a third-
`party trusted authority against one or more
`previously registered ID codes maintained by the
`third-party trusted authority, .......................................... 36
`
`(2) Motivation to Combine........................................ 37
`
`[1E]: responsive to receiving an access message
`from the third –party trusted authority indicating
`that the third-party trusted authority authenticated
`the ID code, allowing the user complete a financial
`transaction. ..................................................................... 38
`
`(1) Motivation to Combine........................................ 39
`
`
`
`iv
`
`

`

`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`
`
`Ex. 1003
`
`Claim 3: “[t]he method of claim 1, wherein an indication
`that the biometric verification was successful is sent with
`the ID code.” ............................................................................ 40
`
`Claim 4: “[t]he method of claim 1, wherein the biometric
`data includes data from one or more of a fingerprint,
`palm print, a retinal scan, an iris scan, a hand geometry, a
`facial recognition, a signature recognition and a voice
`recognition” .............................................................................. 40
`
`Claim 5: “[t]he method of claim 1, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ............................................................... 41
`
`Claim 6: “[t]he method of claim 1, wherein completing
`the financial transaction includes accessing an
`application.” ............................................................................. 41
`
`Claim 7: “[t]he method of claim 1, wherein completing
`the financial transaction includes accessing one or more
`of a casino machine, a keyless lock, an ATM machine, a
`web site, a file and a financial account.”.................................. 42
`
`G.
`
`Claim 9: .................................................................................... 42
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`[9pre]: An integrated device comprising: ...................... 42
`
`[9A]: a persistent storage media that persistently
`stores biometric data of a user and an ID code; ............. 43
`
`[9B]:a validation module, coupled to communicate
`with the persistent storage media, that receives
`scan data from a biometric scan for comparison
`against the biometric data .............................................. 43
`
`[9C]:a validation module… that sends the ID code
`for comparison by a third-party trusted authority
`against one or more previously registered ID codes
`maintained by the third-party trusted authority; and ..... 43
`
`[9D]:responsive to the agent authenticating the one
`or more codes and the other data values, ....................... 44
`
`[9E]:a radio frequency communication module that
`receives an access message from the third-party
`trusted authority indicating that the third-party
`
`
`
`v
`
`

`

`
`
`Ex. 1003
`
`trusted authority successfully authenticated the ID
`code sent to the third-party trusted authority based
`on the comparison of the ID code and allowing the
`user to—complete a financial transaction., ................... 44
`
`H.
`
`I.
`
`Claim 10: “The integrated device of claim 7, wherein the
`ID code is transmitted to the third-party trusted authority
`over a network.” ....................................................................... 44
`
`Claim 12: “The integrated device of claim 7, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ............................................................... 45
`
`XIII. SECONDARY CONSIDERATIONS ................................................ 45
`
`XIV. CONCLUSION .................................................................................. 45
`
`
`
`
`vi
`
`

`

`Ex. 1003
`
`LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent No. 9,049,188
`
`File History for U.S. Patent No. 9,049,188
`
`Declaration of Andrew Wolfe, Ph.D.
`
`Curriculum vitae of Andrew Wolfe, Ph.D.
`
`International App. No. WO 1999056429 to Scott et al.
`
`Intentionally Left Blank
`
`U.S. Patent Pub. No. 2001/0000535 A1 to Lapsley et al.
`
`U.S. Patent Pub. No. 2003/0177102 A1 to Robinson
`
`Intentionally Left Blank
`
`U.S. Patent No. 7,239,226 B2 to Berardi et al.
`
`Intentionally Left Blank
`
`U.S. Patent Pub. No. 2002/0109580 A1 to Shreve et al.
`
`U.S. Patent Pub. No. 2003/0055792 A1 to Kinoshita et al.
`
`“Applied Cryptography—Protocols, Algorithms, and Source
`Code in C” (1996) by Schneier
`
`1015
`
`Intentionally Left Blank
`
`
`
`vii
`
`
`
`
`
`
`
`
`
`

`

`Ex. 1003
`
`LIST OF CHALLENGED CLAIMS
`
`Claim
`
`U.S. Patent No. 9,298,905
`
`1pre
`
`A method comprising:
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`2
`
`3
`
`4
`
`5
`
`persistently storing biometric data of a legitimate user and an ID code on
`an integrated device;
`
`responsive to receiving a request for a biometric verification of a user,
`receiving, from a biometric sensor, scan data from a biometric scan
`performed by the biometric sensor;
`
`comparing the scan data to the biometric data to determine whether the
`scan data matches the biometric data;
`
`responsive to a determination that the scan data matches the biometric
`data, wirelessly sending the ID code for comparison by a third-party
`trusted authority against one or more previously registered ID codes
`maintained by the third-party trusted authority; and
`
`responsive to receiving an access message from the third-party trusted
`authority-indicating that the third-party trusted authority successfully
`authenticated the ID code, allowing the user to complete a financial
`transaction.
`
`The method of claim 1, further comprising: registering an age
`verification for the user in association with the ID code.
`
`The method of claim 1, wherein an indication that the biometric
`verification was successful is sent with the ID code.
`
`The method of claim 1, wherein the biometric data includes data from
`one or more of a fingerprint, palm print, a retinal scan, an iris scan, a
`hand geometry, a facial recognition, a signature recognition and a voice
`recognition.
`
`The method of claim 1, wherein the integrated device comprises one or
`more of a mobile phone, tablet, laptop, mp3 player, mobile gaming
`device, watch and a key fob.
`
`viii
`
`
`
`
`
`
`

`

`Ex. 1003
`
`
`
`
`6
`
`7
`
`The method of claim 1, wherein completing the financial transaction
`includes accessing an application.
`
`he method of claim 1, wherein completing the financial transaction
`includes accessing one or more of a casino machine, a keyless lock, an
`ATM machine, a web site, a file and a financial account.
`
`8pre
`
`The method of claim 1, further comprising:
`
`8A
`
`8B
`
`responsive to determining the action does not require biometric
`verification, receiving a request for the ID code without a request for
`biometric verification; and
`
`wherein the biometric data is selected from a group consisting of a palm
`print, a retinal scan, an iris scan, a hand geometry, a facial recognition, a
`signature recognition and a voice recognition;
`
`9pre
`
`An integrated device comprising:
`
`9A
`
`9B
`
`9C
`
`10
`
`11
`
`12
`
`a persistent storage media that persistently stores biometric data of a user
`and an ID code;
`
`a validation module, coupled to communicate with the persistent storage
`media, that receives scan data from a biometric scan for comparison
`against the biometric data,
`a validation module . . .that sends the ID code for comparison by a third-
`party trusted authority against one or more previously registered ID
`codes maintained by the third-party trusted authority; and
`
`a radio frequency communication module that receives an access
`message from the third-party trusted authority indicating that the third-
`party trusted authority successfully authenticated the ID code sent to the
`third-party trusted authority based on the comparison of the ID code and
`allowing the user to—complete a financial transaction.
`
`The integrated device of claim 7, wherein the ID code is transmitted to
`the third-party trusted authority over a network.
`
`The integrated device of claim 7, wherein an age verification is
`registered in association with the ID code.
`
`The integrated device of claim 7, wherein the integrated device
`comprises one or more of a mobile phone, tablet, laptop, mp3 player,
`mobile gaming device, watch and a key fob.
`
`
`
`ix
`
`

`

`
`
`
`
`
`
`
`Ex. 1003
`Ex. 1003
`
`
`
`
`
`x
`
`

`

`Ex. 1003
`
`GROUNDS OF CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`No. Ground for Challenge
`
`1
`
`2
`
`3
`
`Scott and Lapsley render obvious Claims 1, 3-10, and 12
`
`Scott, Lapsley, and Robinson render obvious Claims 2 and 11
`
`Berardi, Shreve, and Kinoshita render obvious Claims 1, 3-7, 9-10,
`and 12
`
`xi
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Ex. 1003
`
`1.
`
`I have been retained by Petitioner Samsung Electronics America,
`
`Inc. to provide an opinion on the validity of U.S. Patent No. 9,298,905, owned
`
`by Patent Owner Proxense, LLC. 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.
`
`A copy of my curriculum vitae that fully sets forth my
`
`qualifications can be found at Ex. 1004. Below is a summary of my education,
`
`work experience, and other qualifications.
`
`3.
`
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from The Johns Hopkins University. In 1987, I received
`
`
`
`1
`
`

`

`
`
`an M.S. degree in Electrical and Computer Engineering from Carnegie Mellon
`
`Ex. 1003
`
`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.
`
`6.
`
`From 1986 through 1987, I designed and built a high-
`
`performance computer system as a student at Carnegie Mellon University.
`
`
`
`2
`
`

`

`
`
`From 1986 through early 1988, I also developed the curriculum and
`
`Ex. 1003
`
`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
`
`networking chip companies—Intellon, Inc., Comsilica, Inc., and Entridia,
`
`Inc.—and one 3D game accelerator company, Ageia, Inc.
`
`
`
`3
`
`

`

`Ex. 1003
`
`
`
`
`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
`
`(“IEEE”) and the Association for Computing Machinery (“ACM”). I am
`
`
`
`4
`
`

`

`
`
`currently a lecturer at Santa Clara University teaching courses on
`
`Ex. 1003
`
`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
`
`chaired IEEE and ACM conferences in microarchitecture and integrated
`
`
`
`5
`
`

`

`
`
`circuit design and served as an associate editor for IEEE and ACM journals.
`
`Ex. 1003
`
`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,
`
`Carnegie Mellon University, UCLA, University of Michigan, Rice University,
`
`and Duke University.
`
`
`
`6
`
`

`

`
`
`III. COMPENSATION
`
`Ex. 1003
`
`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 ’905
`
`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.
`
`20.
`
`I am informed that claim terms are generally given their ordinary
`
`and customary meaning, which is the meaning that the term would have to a
`
`
`
`7
`
`

`

`
`
`person of ordinary skill in the art at the time of the invention. I further
`
`Ex. 1003
`
`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.
`
`V. LEVEL OF SKILL IN THE ART
`
`23.
`
`In my opinion a Person of Ordinary Skill in the Art would have
`
`had a bachelor’s degree in computer or electrical engineering (or an equivalent
`
`
`
`8
`
`

`

`
`
`degree) with at least three years of experience in the field of encryption and
`
`Ex. 1003
`
`security (or equivalent experience). This level of skill is approximate, and
`
`more experience would compensate for less experience and vice versa.
`
`VI. OVERVIEW OF THE ’905 PATENT
`
`24. As explained herein, the ’905 patent relates to integrated wireless
`
`devices in a generic “computerized authentication” system that are used to
`
`gain access to devices, applications, or accounts through a biometric
`
`validation procedure. Ex. 1001 (’905 Patent) at 1:21-24, 1:56-58. The device
`
`validates a user’s biometric scan against biometric data stored on the device.
`
`Id. at 1:64-2:5. After validation, a code stored on the device is transmitted to
`
`indicate that the user’s identity has been verified. Id. The device transmits
`
`the code to a third-party trusted key authority that determines if the code is
`
`authentic by checking it against a list of legitimate integrated device codes.
`
`Id. at 2:6-14. If the code is authentic, the user is allowed access to the device,
`
`application, or account they seek access to. Id. The ’905 patent purports to
`
`solve for users the problem of having to “memorize or otherwise keep track
`
`of the[ir] credentials.” Id. at 1:33-35. The patents also purport to solve the
`
`problem of illegitimate users “us[ing] a stolen access object to enter a secured
`
`location because the user’s identity is never checked.” Id. at 1:46-48.
`
`
`
`9
`
`

`

`
`
`VII. PROSECUTION OF THE ’905 PATENT
`
`Ex. 1003
`
`25. The ’905 Patent was filed on October 23, 2014 and claimed the
`
`benefit of application no 60/637,538 filed on December, 2004. Ex. 1002 at
`
`482.
`
`26. On June 12, 2015, after lengthy exchange regarding various
`
`formalities, the U.S. Patent & Trademark Office (hereinafter “Patent Office”)
`
`issued the first non-final Office Action rejecting claims 2-18 under 35 U.S.C
`
`103 in light of Hsu et al. (US 6,041,410) in view of Saito et all (US
`
`20040129787) as well as non-statutory double patenting in light of US Patent
`
`No. 8,886,954. Ex. 1002 at 94--86.
`
`27. After amendment and an examiner-initiated interview to suggest
`
`terminal disclaimers the Patent Office issued a Notice of Allowance on
`
`December 16, 2015. Ex. 1002 at 37-47 and 76-80.
`
`VIII. CLAIM CONSTRUCTION
`
`28.
`
`It is my understanding that Petitioner submits that express
`
`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
`
`
`
`10
`
`

`

`
`
`reserve the right to modify my opinions in light of to any claim constructions
`
`Ex. 1003
`
`established by the Board or any Court in the future.
`
`IX. CITED ART
`
`A.
`
`Scott (WO1999056429)
`
`29. Scott discloses a method for verifying a user during
`
`authentication of an integrated device (e.g., personal identification device
`
`(“PID”) 6), in order to, for example, provide secure access to protected
`
`resources such as a hotel room or a point-of-sale transaction. Ex. 1005 at
`
`Abstract, 2:5-23, 4:22-5:9, 7:24-8:12.
`
`Ex. 1005 at Fig. 1.
`
`
`
`
`
`11
`
`

`

`
`
`
`B. Russell (US20040044627)
`
`Ex. 1003
`
`30. Russell discloses a single personal identifying device (PID) 100
`
`that can wireless transmit communications to securely conduct transactions.
`
`US 2004/0044627 at Abstract, ¶¶182, 189, 223. Russell discloses that an
`
`encryption scheme may be used to protect these communications, including
`
`the encryption techniques described in Bruce Schneier’s book titled “Applied
`
`Cryptography—Proto