UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`FINTIV, INC.,
`
`Patent Owner
`____________
`
`Case No.: IPR2022-00976
`U.S. Patent No. 9,892,386
`
`Title: MONETARY TRANSACTION SYSTEM
`_________________________________
`
`
`DECLARATION OF MICHAEL I. SHAMOS, PH.D.
`
`
`
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`TABLE OF CONTENTS
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`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`QUALIFICATIONS ....................................................................................... 2
`II.
`III. COMPENSATION ......................................................................................... 4
`IV. MATERIALS CONSIDERED ....................................................................... 5
`V.
`SUMMARY OF MY OPINIONS .................................................................. 6
`VI. LEGAL PRINCIPLES .................................................................................... 6
`VII. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`VIII. SUMMARY OF THE ’386 PATENT .......................................................... 11
`IX. THE ’386 PROSECUTION HISTORY ....................................................... 14
`X.
`CLAIM CONSTRUCTION ......................................................................... 14
`XI. SUMMARY OF THE ASSERTED REFERENCES ................................... 15
`A.
`Dill et al. U.S. 2009/0265272, Ex. APPL-1005 (“Dill”) ..................................... 15
`B.
`Vadhri U.S. 2010/0133334, Ex. APPL-1006 (“Vadhri”) .................................... 17
`C.
`Akashika et al. U.S. 2009/0217047, Ex. APPL-1007 (“Akashika”).................... 19
`D.
`Hansen U.S. 2004/0230527, Ex. APPL-1008 (“Hansen”)................................... 22
`E.
`Liao U.S. 7,865,141, Ex. APPL-1009 (“Liao”) ................................................... 24
`XII. GROUND 1: CLAIMS 1 AND 3 WOULD NOT HAVE BEEN
`OBVIOUS OVER THE COMBINATION OF DILL, VADHRI,
`AKASHIKA, AND HANSEN ..................................................................... 25
`A.
`Claim 1 Would Not Have Been Obvious in View of Dill, Vadhri,
`Akashika, and Hansen .......................................................................................... 26
`1.
`Limitation 1.1.1: “an integration tier operable to manage mobile
`wallet sessions” ........................................................................................ 26
`Limitation 1.1.2: “the integration tier also including a
`communication application programming interface (API) and other
`communication mechanisms to accept messages from channels” ........... 28
`Limitation 1.2: “notification services operable to send notifications
`through different notification channels including one or more of
`short message peer-to-peer, short-message services and simple
`mail transfer protocol emails” .................................................................. 28
`
`2.
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`3.
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`
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`
`
`-i-
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
`
`10.
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`11.
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`12.
`13.
`
`14.
`
`Limitation 1.4: “database services operable to store financial
`transaction details, store customer profiles, and manage money
`containers” ............................................................................................... 29
`Limitation 1.6: “a rules engine operable to gather financial
`transaction statistics and use the gathered financial transaction
`statistics to enforce constraints including transaction constraints”.......... 30
`Limitation 1.9.2: “the funds being deposited by a subscriber at the
`agent branch using a mobile device configured to run a monetary
`transaction system application” ............................................................... 32
`Limitation 1.10.5: “committing a pending transaction through the
`business process services” ....................................................................... 33
`Limitation 1.10.6: “wherein the integration tier communicates a
`transaction commitment request to the business process services” ......... 34
`Limitation 1.10.7: “receiving a confirmation from the business
`process services that the pending transaction has been committed” ........ 35
`Limitation 1.10.8: “sending, through the notification services, a
`receipt notification to the mobile device” ................................................ 35
`Limitation 1.10.9: “upon receiving a confirmation of commitment
`from the business process services, committing the pending
`transaction to the database services”........................................................ 36
`Limitation 1.11.4: “applying with the rules engine, velocity rules” ........ 37
`Limitation 1.11.5: “creating with the database services a new
`pending transaction history record” ......................................................... 39
`Limitation 1.11.8: “updating, using the database services, a
`pending transaction history record to reflect the funds” .......................... 40
`XIII. GROUNDS 1 AND 2: CLAIM 3 WOULD NOT HAVE BEEN
`OBVIOUS OVER DILL IN VIEW OF VADHRI, AKASHIKA, AND
`HANSEN (GROUND 1); CLAIM 2 WOULD NOT HAVE BEEN
`OBVIOUS OVER DILL IN VIEW OF VADHRI, AKASHIKA,
`HANSEN, AND LIAO (GROUND 2) ......................................................... 41
`A.
`Limitations in Claims 2 and 3 That are Identical or Similar to Claim 1 .............. 42
`B.
`Limitations Unique to Both Claims 2 and 3 ........................................................ 44
`C.
`Limitations Unique to Claim 3 (Ground 1).......................................................... 44
`1.
`Limitation [3.10.1]: “wherein the monetary transaction system is
`implemented to transfer funds using the mobile device configured
`to run a monetary transaction system application, including
`performing the following steps:” ............................................................. 44
`Limitations Unique to Claim 2 (Ground 2).......................................................... 45
`
`D.
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`
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`
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`-ii-
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`2.
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`1.
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`Limitation [2.6]: “a mobile device configured to run a monetary
`transaction system application” ............................................................... 45
`Limitation [2.12.1]: “wherein the monetary transaction system is
`implemented to withdraw funds at an agent branch using the
`mobile device configured to run a monetary transaction system
`application, including performing the following steps:” ......................... 45
`XIV. CONCLUSIONS .......................................................................................... 46
`
`
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`
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`-iii-
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`I.
`
`INTRODUCTION
`1. My name is Michael Shamos. I have been retained as an expert
`
`witness by Patent Owner Fintiv, Inc. (“Fintiv” or “Patent Owner”) for this Inter
`
`Partes Review IPR2022-00976 of U.S. Patent No. 9,982,386 (the “’386 Patent”)
`
`filed by Apple Inc. (“Apple” or “Petitioner”).
`
`2.
`
`In the Petition, I understand that Petitioner is challenging the validity
`
`of Claims 1-3 (the “Challenged Claims”) of the ’386 Patent (Ex. APPL-1001),
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`constituting all the claims of the ’386 Patent.
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`3.
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`I have been asked to consider whether the Challenged Claims of the
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`’386 Patent would have been obvious to a person of ordinary skill in the art
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`(“POSITA”) as of the date of the invention. I was also asked to review and
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`comment on several technical statements made by Petitioner in the Petition and by
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`its expert, Dr. Henry Houh, in the “Declaration of Dr. Henry Houh, Under 37
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`C.F.R. § 1.68 in Support of Petition for Inter Partes Review,” dated May 5, 2022
`
`(“Houh Declaration, Ex. APPL-1003).
`
`4.
`
`This Declaration contains statements of my opinions formed in this
`
`case to date and the bases and reasons for those opinions. I may offer additional
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`opinions based on further review of materials in this case, including opinions
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`and/or testimony of other expert witnesses.
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`
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`II. QUALIFICATIONS
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`5.
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`This section summarizes my educational background, career history,
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`publications, and other relevant qualifications. My curriculum vitae is attached as
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`Patent Owner’s Exhibit 2002, which includes my detailed employment
`
`background, professional experience, and list of publications.
`
`6.
`
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American University
`
`in Technology of Management, an M.S. degree from Yale University in Computer
`
`Science, an M. Phil. from Yale University in Computer Science, a Ph.D. from Yale
`
`University in Computer Science, and a J.D. degree from Duquesne University.
`
`7.
`
`I currently hold the title of Distinguished Career Professor in the
`
`School of Computer Science at Carnegie Mellon University in Pittsburgh,
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`Pennsylvania. I am a member of two departments in that School, the Institute for
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`Software Research and the Language Technologies Institute. I was a founder and
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`Co-Director of the Institute for eCommerce at Carnegie Mellon from 1998-2004
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`and from 2004-2018 have been Director of the eBusiness Technology graduate
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`program in the Carnegie Mellon University School of Computer Science. Since
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`2018, I have been Director of the M.S. in Artificial Intelligence and Innovation
`
`degree program at Carnegie Mellon.
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`2
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`8.
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`I have taught graduate courses at Carnegie Mellon in Electronic
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`Commerce, including eCommerce Technology, Electronic Payment Systems,
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`Electronic Voting, Internet of Things, Ubiquitous Computing, Electronic Payment
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`Systems and eCommerce Law and Regulation, as well as Analysis of Algorithms.
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`Since 2007, I have taught an annual course in Law of Computer Technology. I
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`currently also teach Artificial Intelligence and Future Markets.
`
`9.
`
`I am the author and lecturer in a 24-hour video course on Internet
`
`protocols and have taught computer networking, wireless communication and
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`Internet architecture since 1999.
`
`10. Since 2001, I have been a Visiting Professor at the University of Hong
`
`Kong, where I teach an annual course in Electronic Payment Systems. This is one
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`of only a handful of graduate courses taught on this subject in the world.
`
`11.
`
`I was the Director of Carnegie Mellon’s graduate degree program in
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`eBusiness Technology from 1999-2018 and am now a faculty member in the
`
`Privacy Engineering degree program at Carnegie Mellon. My course on Law of
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`Computer Technology is required for all students in that program. My principal
`
`role currently is as Director of the graduate program in Artificial Intelligence and
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`Innovation.
`
`3
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`12. From 1979-1987 I was the founder and president of two computer
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`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
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`Lexeme Corporation.
`
`13.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have
`
`been asked to render opinions in this declaration as a technical expert. I have not
`
`been asked to offer any opinions on patent law in this proceeding.
`
`14.
`
`I have previously served as an expert in over 325 cases concerning
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`computer technology. In particular, I have been involved in at least 35 cases
`
`involving electronic payment systems.
`
`III. COMPENSATION
`15.
`I am being compensated for my work in this case at the rate of $575
`
`per hour. I am also reimbursed for all reasonable expenses that I incur during the
`
`course of this case. My compensation does not depend upon the results of my
`
`analysis or the substance of my testimony, nor does my compensation depend on
`
`the outcome of this or any related proceeding. I have no personal interest in the
`
`outcome of this matter. I have no financial interest in Patent Owner or affiliation
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`with any of the real parties in interest, the Patent Owner or the named inventor of
`
`the ’386 Patent. It is conceivable that I may own mutual funds whose portfolios
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`4
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`include stock in Petitioner. If this is the case, the value of such holding would not
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`constitute a material part of my net worth.
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`16. The statements made and opinions provided in this Declaration are
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`based on my own personal knowledge and, if called as a witness, I could and
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`would testify in a manner consistent with this Declaration.
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`17.
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`In this Declaration, all emphasis in boldface has been added unless
`
`otherwise noted.
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`IV. MATERIALS CONSIDERED
`18.
`I have reviewed the following documents in forming the opinions
`
`expressed in this Declaration:
`
`
`
`
`
`
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`
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`
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`
`
`All materials filed in this IPR to date
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`U.S. patent application 13/484,199, now U.S. Patent 8,538,845, and
`
`its prosecution history
`
`U.S. patent application 13/964,707, and its prosecution history
`
`U.S. patent application 14/213,543, and its prosecution history
`
`U.S. provisional patent application 61/493,064
`
`U.S. provisional patent application 61/522,099
`
`19.
`
`I have also relied on my education, skill, training, and experience in
`
`the relevant fields of technology in forming my opinions. I have further
`
`considered the viewpoint of a person of ordinary skill in the art (“POSITA”) as of
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`5
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`the time of the inventions of the ’386 Patent. I provide my opinion as to the proper
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`level of skill of a POSITA in Section VII of this Declaration.
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`20.
`
`I reserve the right to supplement my opinions as expressed in this
`
`Declaration to address any new information obtained in the course of this
`
`proceeding, or based on any new positions taken by Petitioner.
`
`V.
`
`SUMMARY OF MY OPINIONS
`21.
`It is my understanding that the following table summarizes the
`
`grounds of challenge to the Challenged Claims raised in the Petition:
`Ground Invalidity
`Challenge
`1
`§ 103
`2
`§ 103
`
`Challenged
`Claims
`1, 3
`2
`
`References
`
`Dill, Vadhri, Akashika, and Hansen
`Dill, Vadhri, Akashika, Hansen and
`Liao
`
`
`22. After a review of the alleged prior art asserted by Petitioner and the
`
`Houh Declaration, it is my opinion that Petitioner has not shown that any
`
`Challenged Claim would have been obvious in light of the asserted prior art at the
`
`time of the invention. My opinions, and the bases therefore, are detailed
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`throughout this Declaration.
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`VI. LEGAL PRINCIPLES
`23. Counsel for Patent Owner has informed me of the legal principles that
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`apply in this proceeding.
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`6
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`24.
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`I have been informed that Petitioner has the burden to prove that the
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`claims challenged in the Petition are not patentable by a preponderance of the
`
`evidence, which I understand to be just enough evidence to make it more likely
`
`than not that Petitioner’s argument is correct.
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`25. A claim is invalid as obvious under 35 U.S.C. § 103 if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
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`subject matter of the claim as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the invention
`
`pertains. I have been informed that the following factors are used to determine
`
`whether or not the claimed subject matter would have been obvious: (i) the scope
`
`and content of the prior art; (ii) the differences, if any, between the prior art and the
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`claimed invention; (iii) the level of ordinary skill in the field of the invention; and
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`(iv) any relevant objective considerations of non-obviousness.
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`26. A party asserting obviousness based on a combination of prior art
`
`references must demonstrate that one of ordinary skill in the art would have been
`
`motivated to combine the teachings of those references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`success in doing so. It is my understanding that it is not enough to show that one
`
`skilled in the art could combine elements of multiple references, but instead there
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`must be some reason that would have prompted a person of ordinary skill in the art
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`7
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`to combine the elements in the way the claimed invention does. I understand that
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`there must be some reasoned explanation as to why one of ordinary skill in the art
`
`would combine the references.
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`27.
`
`I understand that obviousness may be shown by considering more
`
`than one item of prior art and by considering the knowledge of a person of ordinary
`
`skill in the art, and that obviousness may be based on various rationales including:
`
`(i) combining prior art elements according to known methods to yield predictable
`
`results; (ii) simple substitution of one known element for another to obtain
`
`predictable results; (iii) use of known techniques to improve similar devices in the
`
`same way; (iv) applying a known technique to a known device ready for
`
`improvement to yield predictable results; (v) “obvious to try” – choosing from a
`
`finite number of identified, predictable solutions, with a reasonable expectation of
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`success; (vi) known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to one of ordinary skill in the art; and
`
`(vii) some teaching, suggestion, or motivation in the prior that would have led one
`
`of ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`28. A combination of references would not have been obvious if the
`
`alleged modification(s) to be made to the reference(s) would have been
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`8
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`inconsistent with the reference’s stated goals or method of operation or would have
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`rendered the combination inoperable for its intended purpose. I further understand
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`that for something to have been obvious, the party asserting obviousness must
`
`explain why a POSITA would have selected components for combination in the
`
`manner claimed.
`
`29.
`
`I further understand that a claim is not obvious over a combination of
`
`prior art references if such references “teach away” from the claimed combination,
`
`if there is no motivation to combine such references, or if the combination would
`
`lead to waste and inefficiencies not present in one or more of the references in
`
`isolation.
`
`30.
`
`It is my further understanding that obviousness cannot be based on a
`
`hindsight combination of components selected from prior art references. For
`
`example, the challenged patent itself cannot be used as a basis for combining prior
`
`art references absent such a teaching in the patent. I also understand that an
`
`invention would not have been obvious simply because all of the elements of the
`
`invention may have been known separately in the prior art.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`31.
`I understand that the hypothetical POSITA is considered to have the
`
`normal skills and knowledge of a person in a certain technical field, as of the time
`
`of the invention at issue. I understand that factors that may be considered in
`
`9
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`determining the level of ordinary skill in the art include: (1) the types of problems
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`encountered in the art; (2) the prior art solutions to those problems; (3) rapidity
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`with which innovations are made; (4) the sophistication of the technology; and (5)
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`the education level of active workers in the field. I also understand that “the
`
`person of ordinary skill” is a hypothetical person who is presumed to be aware of
`
`the universe of available prior art. Therefore, no such person actually exists.
`
`32. Petitioner has proposed that a POSITA for the ’386 Patent would have
`
`had “a working knowledge of monetary transaction systems pertinent to the ’386
`
`patent, including software development in the field of mobile payment techniques.
`
`Such POSITA would have had a bachelor’s degree in electrical engineering,
`
`computer science, or equivalent training, and approximately two years of work
`
`experience in software development. Lack of work experience can be remedied by
`
`additional education, and vice versa.” (Pet. at 4; Ex. APPL-1003, “Houh
`
`Declaration” ¶¶ 20-21.)
`
`33.
`
`I do not agree that this is a proper characterization of the level of
`
`ordinary skill because the phrase “working knowledge of monetary transaction
`
`systems pertinent to the ’386 patent” causes the characterization to be circular,
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`essentially saying that the necessary level of skill is the necessary level of skill.
`
`34.
`
`I believe that the problem can be remedied by adopting this
`
`characterization: “A POSITA would have had a bachelor’s degree in electrical
`
`10
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`engineering, computer science, or equivalent training, and approximately two years
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`of work experience in software development involving monetary transaction
`
`systems. Lack of work experience can be remedied by additional education, and
`
`vice versa.” I believe that this characterization simply restates Petitioner’s
`
`proposed characterization in a cleaner form.
`
`35. The opinions I express herein are from the viewpoint of such a
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`POSITA as of June 3, 2011, the priority date assumed by Petitioner. Pet. at 4.
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`VIII. SUMMARY OF THE ’386 PATENT
`36. The ’386 Patent relates to a mobile financial services (mFS)
`
`transaction system comprising subscribers and agents. Agents register subscribers
`
`and deposit funds into, and withdraw funds from, the system under direction from
`
`subscribers. Ex. APPL-1001, 6:25-41. A subscriber has a mobile wallet
`
`application running on a mobile device, through which the subscriber interacts
`
`with the system. Ex. APPL-1001, 6:42-7:9. An agent has an account in a partner
`
`bank, which holds the agent’s funds. Ex. APPL-1001, 8:57-9:4.
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`37. The relationship among various parties to a transaction is illustrated in
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`Fig. 2 of the Patent, relied on by Petitioner and reproduced below:
`
`11
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`38. The above Fig. 2 does not depict an agent expressly. although the
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`Patent discloses that Entity 222 may be an agent. Ex. APPL-1001, 14:51-64. An
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`exemplary use of an agent to add money to a subscriber’s account is shown in Fig.
`
`
`
`3:
`
`39. A subscriber to the system of the Patent may be unbanked, that is,
`
`need not have a bank account to send or receive money. Ex. APPL-1001, 1:53-61;
`
`
`
`12
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`12:51-13:2. For example, in Fig. 3 an unbanked subscriber can bring cash to an
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`agent branch (301) and the agent branch can add funds to the eMoney Balance in
`
`the subscriber’s mobile wallet (303).
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`40. Monetary Transaction System 210 has multiple components, further
`
`illustrated in Fig. 1:
`
`41. The system permits subscriber-to-subscriber transfers, as shown in
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`
`
`Fig. 17B:
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`
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`13
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`42. Fig. 17B is explained at Ex. APPL-1001 at 26:4-27. Not shown in
`
`Fig. 17B is the involvement of transaction system 210, which verifies that
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`Subscriber A has sufficient funds to make a transfer, debits Subscriber A’s mobile
`
`wallet (mWallet) by $DC and adds $DC to Subscriber B’s wallet. To engage in
`
`transactions, the subscriber’s mobile device hosts a mobile wallet application that
`
`may reside on a SIM card or in the device’s memory. Ex. APPL-1001, 12:58-65.
`
`43. Claim 1 is drawn to a system allowing a subscriber to deposit funds
`
`into an account. Claim 2 is drawn to a system allowing a subscriber to withdraw
`
`funds from an account. Claim 3 is drawn to a system allowing a subscriber to
`
`transfer funds to a recipient.
`
`IX. THE ’386 PROSECUTION HISTORY
`44. The ’386 prosecution was uneventful and took only 20 months. The
`
`Examiner considered 541 separate references, including Petitioner’s primary
`
`reference, Dill, but did not issue a single prior art rejection. There were two
`
`rejections based on § 101, and these were overcome by minor amendments to the
`
`claims.
`
`X. CLAIM CONSTRUCTION
`45.
`I have been informed that neither Petitioner nor Patent Owner believes
`
`that any claim terms require construction in this proceeding.
`
`14
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`XI. SUMMARY OF THE ASSERTED REFERENCES
`A. Dill et al. U.S. 2009/0265272, Ex. APPL-1005 (“Dill”)
`46. Dill is entitled “Money Transfers Utilizing a Unique Receiver
`
`Identifier.” It discloses a transaction system whereby mobile device users can send
`
`and receive money.
`
`47. An exemplary Dill architecture is shown in its Fig. 9, relied on by
`
`Petitioner and reproduced below.
`
`
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`15
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`48.
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`It is immediately apparent from Fig. 9 that the mobile devices used by
`
`Sender 105 and Recipient 110 do not host mobile wallets. Their respective M-
`
`wallets 125 and 130 reside with the Mobile Network Operator (MNO) 120. In
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`fact, Dill discloses that parties access the transaction system not through a mobile
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`application running on their mobile devices, but instead by visiting a website of a
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`money transfer facilitator:
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`For example, a sender 105 can access the services of the money
`transfer facilitator 140 via a web site of the money transfer facilitator
`140 and initiate a money transfer from a source account 165 owned by
`the sender 105. Ex. APPL-1005, [0051]
`
`The money transfer transaction may be initiated from a retail agent
`location of a money transfer facilitator (such as Western Union), from
`a web site of the money transfer facilitator, from a telephone money
`transfer service of the money transfer facilitator, from a mobile money
`transfer send, a kiosk, an ATM or from other channels. Ex. APPL-
`1005, [0033]
`
`49. Dill does not disclose that any wallet at all resides on the user’s
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`mobile device.
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`50.
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`In Dill, possessors of M-wallets need associated bank accounts, e.g.,
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`in financial institutions 160 and 170. Dill discloses that it is possible for a sender
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`who has no bank account to send money to a subscriber by using cash at an agent.
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`Such a scenario is illustrated in Dill Fig. 4 and described at [0071]. However, in
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`such a scenario the sender does not have an M-Wallet.
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`51. Dill also discloses that a subscriber who has an M-Wallet can send
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`money to a recipient who does not have an M-Wallet by transferring money to an
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`agent and sending a message to the recipient to pick up cash at the agent. This is
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`illustrated in Dill Fig. 3 and described at [0066]. In such a scenario, the recipient
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`does not have an M-Wallet.
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`52. There is no possibility in Dill for an unbanked sender to send money
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`to an unbanked recipient because at least one of the parties must have an M-Wallet
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`and therefore must have an account at a financial institution. By contrast, in the
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`’386 Patent, neither sender nor recipient is required to have an account at a
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`financial institution.
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`B. Vadhri U.S. 2010/0133334, Ex. APPL-1006 (“Vadhri”)
`53. Vadhri is entitled “System and Method to Allow Access to a Value
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`Holding Account.”
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`54. An exemplary architecture of Vadhri is shown in its Fig. 5, relied on
`
`by Petitioner and reproduced below.
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`55. A key component in Vadhri is Account Access Card 513, as shown in
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`Fig. 5. Vadhri makes clear that, while Account Access Card 513 is not necessarily
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`a credit card, it is nevertheless a physical card:
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`
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`Various example embodiments include a credit card from which a
`temporary card number may be requested and displayed so that the
`temporary card number can be used to purchase goods and/or
`services. The credit card may include a traditional 16-digit credit card
`number and associated expiration date that can be used for account
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`identification and/or account verification. As used herein, a credit card
`is an example of an account access object. It may be noted that the
`present subject matter is not limited to a credit cards and credit card
`accounts, any type of value holding account may be associated with an
`account access object. Example account access objects may include
`financial instruments such as check cards, gift cards, credit cards,
`charge cards, debit cards or any other physical object. Ex. APPL-
`1006, [0013]
`
`56.
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` That is, the user must possess a physical card in order to access their
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`account. No such physical card is disclosed in Dill, and Petitioner does not explain
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`how Dill and Vadhri could be combined without a physical card, so any
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`combination of Dill and Vadhri would require a physical card. By contrast, there
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`is no physical card in the ’386 Patent.
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`57. Neither the Petition nor the Houh Declaration explains why a
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`POSITA, even if somehow motivated to combine Dill with Vadhri, would discard
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`the physical card and include only the hindsight features relied on by Petitioner,
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`namely application programming interfaces (APIs) and secure, perishable codes.
`
`Pet. at 7.
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`C. Akashika et al. U.S. 2009/0217047, Ex. APPL-1007 (“Akashika”)
`58. Akashika is entitled “Service Providing System, Service Providing
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`Server and Information Terminal Device.”
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`59. An exemplary architecture of Akashika is shown in its Fig. 1,
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`reproduced below.
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`
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`60. The Petition cites Akashika for the proposition that “it was known to
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`secure financial transactions by using an access control list.” Pet. at 7. However,
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`essential to security in Akashika is the “secure chip 500,” also referred to a s
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`“secure memory.” Akashika contains the following disclosure:
`
`A service providing system is provided, which includes a client device
`capable of accessing a tamper-resistant secure memory, an area
`management server managing memory area of the secure memory and
`a service providing server providing service that uses the secure
`memory to the client device, and which improves the security at the
`time of sending an access control list provided by the area
`management server and an instruction set provided by the service
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`providing server to the client device by using a digital signature and a
`certificate. Ex. APPL-1007, Abstract.
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`61. Further, Akashika discloses:
`
`The area management server may be provided with an access control
`list generation section generating an access control list (ACL) in
`which a memory area of the secure chip, access to which is permitted
`to the client device, is described, a signature generation section
`generating a first digital signature, by using the first encryption key,
`from the second decryption key obtained from the service providing
`server and the access control list and a certificate generation section
`generating a service providing server certificate that includes the
`second decryption key, the access control list and the first digital
`signature. Ex. APPL-1007, [0012]
`
`62.
`
`In order to achieve the security of Akashika, any combination of Dill
`
`and Akashika would require a secure chip and digital signatures, which are
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`completely absent from the ’386 Patent, which achieves security without either a
`
`secure chip or digital signatures.
`
`63. Neither the Petition nor the Houh Declaration explains why a
`
`POSITA, even if somehow motivated to combine Dill with Akashika, would
`
`discard the secure chip and digital signatures and borrow only the hindsight feature
`
`relied on by Petitioner, namely an access control list. Pet. at 7.
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`D. Hansen U.S. 2004/0230527, Ex. APPL-1008 (“Hansen”)
`64. Hansen is entitled “Authentication for Online Money Transfer.” It
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`discloses “a method for processing a transaction where the transaction is initiated
`
`by a payor online, but paid to a payee in-person.” Ex. APPL-1008, Abstract. It
`
`does not disclose mobile wallets and has bears no relation to either Dill or the ’386
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`Patent.