UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`———————
`
`IPR2023-00398
`U.S. Patent No. 10,438,196
`_____________________
`
`
`
`
`DECLARATION OF DR. HENRY HOUH,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`Apple v. Fintiv
`
`i
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`VII.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 4
`I.
`II. Qualifications and Professional Experience .................................................... 5
`III. Level of Ordinary Skill in the Art .................................................................13
`IV. Relevant Legal Standards ..............................................................................14
`V. Overview of the ’196 Patent ..........................................................................15
`A. Summary of the Patent ...........................................................................15
`B. Prosecution History of the ’196 Patent ..................................................18
`VI. Claim Construction ........................................................................................20
`A. “debit the mobile wallet by the specified amount of funds” ..................21
`Identification of How the Claims are Unpatentable ......................................22
`A. Summary of Dill (APPL-1005) ..............................................................23
`B. Summary of Vadhri (APPL-1006) .........................................................25
`C. Summary of Akashika (APPL-1007) .....................................................27
`D. Motivation to Combine Dill, Vadhri, and Akashika .............................28
`E. Claim 1 ...................................................................................................33
`F. Claim 2 .................................................................................................113
`G. Claim 3 .................................................................................................117
`H. Claim 4 .................................................................................................119
`I. Claim 5 .................................................................................................121
`J. Claim 6 .................................................................................................123
`K. Claim 7 .................................................................................................125
`L. Claim 8 .................................................................................................126
`
`Apple v. Fintiv
`
`2
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`M. Claim 9 .................................................................................................137
`N. Claim 10 ...............................................................................................137
`O. Claim 11 ...............................................................................................138
`P. Claim 12 ...............................................................................................138
`Q. Claim 13 ...............................................................................................138
`R. Claim 14 ...............................................................................................138
`S. Claim 15 ...............................................................................................140
`T. Claim 16 ...............................................................................................141
`U. Claim 17 ...............................................................................................147
`V. Claim 18 ...............................................................................................147
`W. Claim 19 ...............................................................................................147
`X. Claim 20 ...............................................................................................148
`Y. Claim 21 ...............................................................................................148
`Z. Claim 22 ...............................................................................................158
`VIII. CONCLUSION ............................................................................................163
`
`
`
`
`Apple v. Fintiv
`
`3
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`I, Henry Houh, do hereby declare as follows:
`INTRODUCTION
`I.
`
`1.
`
`I am making this declaration at the request of Apple Inc. in support of
`
`an IPR challenge of U.S. Patent No. 10,438,196 (“the ’196 Patent”).
`
`2.
`
`I am being compensated for my work in this matter at my customary
`
`rate of $620/hour. I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony. My compensation is not
`
`contingent on the outcome of this matter or the specifics of my testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`22 (“the Challenged Claims”) of the ’196 patent are unpatentable because they
`
`would have been obvious to a person having ordinary skill in the art (“POSITA”)
`
`at the time of the alleged invention, in light of the prior art. After a careful analysis,
`
`it is my opinion that the Challenged Claims would have been obvious.
`
`4.
`
`In the preparation of this declaration, I have reviewed:
`
`• The ’196 Patent, APPL-1001;
`
`• The prosecution history of the ’196 Patent, APPL-1002;
`
`• U.S. Patent Publication No. 2009/0265272 to Dill et al. (“Dill”),
`
`APPL-1005;
`
`• U.S. Patent Publication No. 2010/0133334 to Vadhri (“Vadhri”),
`
`APPL-1006;
`
`Apple v. Fintiv
`
`4
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`• U.S. Patent Publication No. 2009/0217047 to Akashika et al.
`
`(“Akashika”), APPL-1007;
`
`• “Designing System for Internet Commerce” by G. Winfield Treese
`
`et al. (2003), APPL-1008;
`
`• U.S. Patent Publication No. 2013/0332352 to Imrey et al.
`
`(“Imrey”), APPL-1009;
`
`• U.S. Patent Publication No. 2014/0032758 to Barton et al.
`
`(“Barton”), APPL-1010;
`
`• U.S. Patent Publication No. 2008/0167988 to Sun et al. (“Sun”),
`
`APPL-1011; and
`
`• U.S. Patent No. 7,865,141 to Liao et al (“Liao”), APPL-1012.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a)
`
`The documents listed above;
`
`b) My own knowledge and experience based upon my work in the
`
`field of financial transfer systems, as described below; and
`
`c) The level of skill of a POSITA at the time of the alleged
`
`invention of the ’196 patent.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`6. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in APPL-1004. The
`
`Apple v. Fintiv
`
`5
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`7.
`
`I received a Ph.D. in Electrical Engineering and Computer Science
`
`from the Massachusetts Institute of Technology (“MIT”) in 1998. I also received a
`
`Master of Science degree in Electrical Engineering and Computer Science in 1991,
`
`a Bachelor of Science degree in Electrical Engineering and Computer Science in
`
`1989, and a Bachelor of Science degree in Physics in 1990, all from MIT.
`
`8.
`
`I am currently self-employed as an independent technical consultant. I
`
`am also president of a company, Einstein’s Workshop, that provides supplemental
`
`science, technology, engineering, and mathematics (“STEM”) education to
`
`children of all ages.
`
`9.
`
`I first entered telecommunications in 1987 when I worked as a
`
`summer intern at AT&T Bell Laboratories as part of a five-year dual degree
`
`program at MIT. I continued to work at AT&T Bell Laboratories as part of this
`
`MIT program. While at MIT, I was a teaching assistant (“TA”) in the Electrical
`
`Engineering and Computer Science Department’s core Computer Architectures
`
`course. I first was a TA as a senior for a role typically reserved for graduate
`
`students. I later became head TA. The course covered various topics in computer
`
`architectures, as well as programming. As a TA, I helped write homework
`
`Apple v. Fintiv
`
`6
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`assignments, lab assignments (including those that involved programming), and
`
`exams. I also taught in the recitation sections.
`
`10. Later, as part of my doctoral research at MIT from 1991-1998, I was a
`
`research assistant in the Telemedia Network Systems (“TNS”) group at the
`
`Laboratory for Computer Science. The TNS group built a high-speed gigabit
`
`network and created applications that ran over the network. Example applications
`
`included ones for remote video capture, processing, and display of video on
`
`computer terminals. In addition to working on the design of core network
`
`components (which was based on FPGAs), designing and building the high-speed
`
`links (which included programmable logic devices), and designing and writing the
`
`device drivers for the interface cards (which included programmable logic
`
`devices), I also set up the group’s web server. Also, I helped to maintain, install,
`
`and upgrade the networking devices used within the group, along with other
`
`graduate students.
`
`11.
`
`I also helped to build the web pages that initiated the above-
`
`mentioned video sessions via a web interface. Vice President Al Gore visited our
`
`group in 1996 and received a demonstration of—and remotely drove—a radio-
`
`controlled toy car with a wireless video camera mounted on it that was built by our
`
`group. This toy car device received commands transmitted over a network from a
`
`remote computer, and video data from the toy car was transmitted wirelessly then
`
`Apple v. Fintiv
`
`7
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`over a computer network back to the user controller. On occasion, we allowed
`
`users visiting our web site to drive the toy car from their remote computer while
`
`they watched the video on their computer. The video stream was encoded by TNS-
`
`designed hardware, streamed over the TNS-designed network, and displayed using
`
`TNS-designed software.
`
`12.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
`
`analyzed local area and wide area flows to show a more efficient method for
`
`routing packets in a network, based on traffic patterns at the time. The traffic flow
`
`data included Ethernet, IP, TCP or UDP, and RTP header information, which I
`
`analyzed to come to the conclusions in my thesis.
`
`13. From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems for streaming
`
`packetized audio over data networks instead of using traditional telephone lines.
`
`NBX was later acquired by 3Com Corporation.
`
`14. As part of my work at NBX, I designed the core audio reconstruction
`
`software algorithms for the telephones, as well as the packet transmission
`
`algorithms. I also designed and validated the core packet transport protocol used by
`
`the phone system. The protocol was used for all signaling in the phone system,
`
`including for the setup of conference calls. The NBX system also featured a
`
`Apple v. Fintiv
`
`8
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`computer interface for initiating phone calls, which could also initiate conference
`
`calls. The NBX system also supported the Telephony Application Programming
`
`Interface (“TAPI”) that allowed other computer programs to integrate with our
`
`system telephony features. We obtained U.S. Patent No. 6,697,963, entitled
`
`“Telecommunication method for ensuring on-time delivery of packets containing
`
`time-sensitive data,” as part of this work. I also programmed the first prototype of
`
`our phone which communicated using IP, and I demonstrated our IP phones
`
`working over the Internet when we attended a trade show in California. The phone
`
`connected over the Internet to our headquarters in Andover, MA. I also
`
`programmed a data capture and analysis system that provided data on the operation
`
`of the system.
`
`15. From 1999-2004, I was employed by Empirix or its predecessor
`
`company, Teradyne. Empirix was a leader in test tools for telecommunications
`
`protocols and systems, providing functional testing tools as well as load testing
`
`tools. From 2000-2001, I conceived and built a test platform for testing Voice-
`
`over-IP (VoIP). The first application on this new test platform was a cloud
`
`emulator for simulating the effects of transmitting VoIP over a busy network. The
`
`test platform was based on a network processor chip, which could be programmed
`
`to cut-through packets while processing packet data such as various protocol later
`
`headers including addresses included therein and even packet data contents. I also
`
`Apple v. Fintiv
`
`9
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`designed a protocol analyzer built on the same platform. The application captured
`
`and performed protocol decoding at various layers in the protocol stacks of
`
`captured packets, including detailed Ethernet header decoding, IP header decoding,
`
`TCP header decoding, UDP header decoding, RTP header decoding, and many
`
`other specified protocols. The application was also designed to reconstruct entire
`
`conversations that spanned multiple packets.
`
`16. At Empirix, I also rearchitected the design of the Web Test division’s
`
`core product, e-Test Suite. E-Test Suite was a software program designed to
`
`perform functional and load testing of web applications. I was technical lead on
`
`the project, and also worked on programming a Javascript interpreter for the
`
`product. Javascript is the flexible programming layer that allows users to interact
`
`with web pages through actions such as clicking and dragging that allows web
`
`page programmers to extend the functionality of a web page beyond clicking on
`
`links.
`
`17.
`
`In 2006, as part of my role at BBN Technologies, I helped found
`
`PodZinger Inc., now known as RAMP Inc. PodZinger utilized BBN’s speech
`
`recognition algorithms to search through the spoken words in audio and video
`
`segments. While I was Vice President of Operations and Technology, PodZinger
`
`followed its initial prototype with a full streaming audio and video search solution.
`
`I also created a social networking web site, which BBN sold to a venture-funded
`
`Apple v. Fintiv
`
`10
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`startup company. In the process of creating the web site, I designed and specified
`
`the authentication and authorization protocols.
`
`18.
`
`I also worked with setting up accounting systems and integrating on-
`
`line payment systems on numerous occasions. In 1994, I started a company, Agora
`
`Technology Group, that set up web sites for targeted advertising, and later
`
`provided consulting services to companies and organizations to set up their web
`
`sites. I managed all the finances and bookkeeping for the company, including
`
`keeping all the books and ledgers. Starting in the early 2000’s, I integrated web
`
`payment systems with various web sites.
`
`19. At my educational company, Einstein’s Workshop, I created the initial
`
`web site and integrated it with online payment solutions. I also evaluated, sourced,
`
`and configured the point-of-sale system for the company, which also involved
`
`integration with and setup of mobile shopping terminals. Furthermore, I set up the
`
`accounting system, built the web site, integrated various web payment mechanisms
`
`with the web site, set up mobile payment systems, and also set up a mobile point of
`
`sale system. At Einstein’s Workshop, we teach programming to children of all
`
`ages, starting with Scratch programming for young elementary students and
`
`advancing through programming in Python and for game development for high
`
`school students. I conceived many of the programming classes and have taught
`
`programming to novice and more advanced students. We also created an
`
`Apple v. Fintiv
`
`11
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`educational computer-aided design tool, called BlocksCAD. We received a grant,
`
`on which I was the principal investigator, to further develop BlocksCAD and
`
`successfully met our grant objectives. BlocksCAD was spun-off from Einstein’s
`
`Workshop and has been part of various incubator/accelerator programs in
`
`education as well as at the MIT Media Lab. Today, BlocksCAD is used worldwide
`
`in makerspaces as well as in schools throughout the U.S.
`
`20.
`
`I have been awarded several United States patents, including the
`
`following examples:
`
`• U.S. Patent No. 7,975,296, “Automated security threat testing of
`
`web pages”;
`
`• U.S. Patent No. 7,877,736, “Computer language interpretation and
`
`optimization for server testing”;
`
`• U.S. Patent No. 7,801,910, “Method and apparatus for timed tagging
`
`of media content”;
`
`• U.S. Patent 7,590,542, “Method of Generating Test Scripts Using a
`
`Voice-Capable Markup Language”; and
`
`• U.S. Patent No. 6,967,963, “Telecommunication method for
`
`ensuring on-time delivery of packets containing time-sensitive
`
`data.”
`
`Apple v. Fintiv
`
`12
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`III.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`21.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`22.
`
`I am familiar with financial payment systems (including those
`
`utilizing mobile wallets). I am also aware of the state of the art at the time the
`
`application resulting in the ’196 patent was filed. I have been informed by Apple’s
`
`counsel that the earliest priority date for the ’196 patent is November 21, 2011.
`
`Based on the technologies disclosed in the ’196 patent, I believe that a POSITA
`
`would have had a working knowledge of mobile payment systems and techniques
`
`pertinent to the ’196 Patent. A POSITA would include someone who had a
`
`bachelor’s degree in electrical engineering, computer science, or equivalent
`
`training, and approximately two years of work experience in software development
`
`with a basic knowledge of accounting. Lack of work experience can be remedied
`
`by additional education, and vice versa.
`
`23. For purposes of this declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`Apple v. Fintiv
`
`13
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`consulted herein), reflect the knowledge that existed in the field as of the priority
`
`date of the ’196 Patent (i.e., November 21, 2011 (“priority date”)). Unless
`
`otherwise stated, when I provide my understanding and analysis below, it is
`
`consistent with the level of a POSITA prior to the priority date of the ’196 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`24.
`
`I understand from Apple’s counsel that prior art to the ’196 patent
`
`includes patents and printed publications in the relevant art that predate the priority
`
`date of the alleged invention recited in the ’196 patent. For purposes of this
`
`Declaration, I am applying November 21, 2011 as the priority date.
`
`25.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’196 patent, I am relying on certain basic
`
`legal principles that Apple’s counsel has explained to me. These principles are
`
`reviewed below.
`
`26.
`
`I have been informed by Apple’s counsel that a claimed invention is
`
`unpatentable as obvious under post-AIA 35 U.S.C. § 103 if the differences
`
`between the invention and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a POSITA to
`
`which the subject matter pertains. I have also been informed by Apple’s counsel
`
`that the obviousness analysis takes into account factual inquiries including the
`
`Apple v. Fintiv
`
`14
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`level of ordinary skill in the art, the scope and content of the prior art, and the
`
`differences between the prior art and the claimed subject matter.
`
`27.
`
`I have been informed by Apple’s counsel that several rationales are
`
`recognized for combining references or modifying a reference to show obviousness
`
`of claimed subject matter. Some of these rationales include the following: (a)
`
`combining prior art elements according to known methods to yield predictable
`
`results; (b) simple substitution of one known element for another to obtain
`
`predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art 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.
`
`V. OVERVIEW OF THE ’196 PATENT
`Summary of the Patent
`A.
`
`28. The ’196 Patent is directed to “performing a transaction using a third
`
`party mobile wallet, performing a transaction using a third party point of sale
`
`(POS) system and to making a purchase from a third party mobile wallet provided
`
`Apple v. Fintiv
`
`15
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`by a third party mobile wallet provider.” APPL-1001, Abstract. The ’196 Patent
`
`further provides for “a cloud-based transaction platform ... which receives
`
`communication from an agent terminal over a communication channel connected
`
`to the cloud.” APPL-1001, 1:58-60. After receiving an indication that a customer
`
`desires to perform a mobile wallet transaction, the cloud-based transaction
`
`platform “receives communication from a third party mobile wallet platform
`
`confirming processing of the transaction, and sends communication to the agent
`
`terminal over a communication channel ... indicat[ing] confirmation of the
`
`processing of the transaction.” APPL-1001, 1:64-2:3.
`
`29. An example of the transaction platform of the ’196 patent is depicted
`
`below in Fig. 2:
`
`Apple v. Fintiv
`
`16
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`
`
`APPL-1001, Fig. 2.
`
`30.
`
`In the ’196 patent, all of the embodiments include “one or more
`
`processors,” “system memory,” “an integration tier configured to manage mobile
`
`wallet sessions with a mobile device,” “a notification services engine,” “service
`
`connectors that are each configured to connect the computing system to different
`
`third party system,” “a payment handler that exposes a common API for interacting
`
`with different payment processors,” “a security services engine that performs
`
`subscriber authentication utilizing a database-based Access Control List (ACL),”
`
`and “a rules engine configured to enforce constraints on financial transactions
`
`performed with the mobile wallet application.” APPL-1001, claims 1, 8, 16, 21,
`
`and 22.
`
`Apple v. Fintiv
`
`17
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`B.
`
`31.
`
`Prosecution History of the ’196 Patent
`
`I understand that the ’196 patent issued on October 8, 2019 from U.S.
`
`Patent Application No. 14/928,521 (“the ’521 application”) filed on October 30,
`
`2015. See APPL-1001. The ’196 patent is a continuation of U.S. Patent
`
`Application No. 13/680,824 (“the ’824 application”) filed on November 19, 2012,
`
`that issued as U.S. Patent No. 9,208,488 (“the ’488 patent”) on December 8, 2015,
`
`which claims the benefit of Provisional Application No. 61/562,301 (“the ’301
`
`application”) filed on November 21, 2011. See APPL-1001, 1:8-17.
`
`32.
`
`I understand the ’196 application was originally filed with 20 claims
`
`with claims 1, 8, and 16 being in independent form. APPL-1002, pp.57-65. A
`
`preliminary amendment was filed in the ’521 application on June 27, 2018, adding
`
`new independent claims 21 and 22. APPL-1002, pp.101-113.
`
`33. On February 5, 2016, the Applicant filed an Information Disclosure
`
`Statement (IDS) listing U.S. Patent Publication No. 2009/0265272 to Dill et al.
`
`(APPL-1005). APPL-1002, pp.148. There is no indication, however, that the
`
`Examiner considered any of the references listed in the IDS, including the Dill
`
`reference, because the IDS was not signed by the Examiner. Id., p.158. This is
`
`further evidenced by the Examiner not applying Dill (or any other prior art
`
`reference) against any of the claims during prosecution.
`
`Apple v. Fintiv
`
`18
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`34.
`
`In a first Office Action issued on April 2, 2018, the Examiner
`
`provisionally rejected claims 1-22 under nonstatutory double patenting as being
`
`unpatentable over claims 1-2, 5-12, 21-23, 25-32, and 36 of the ’488 patent. Id.,
`
`pp.1441-1446. A terminal disclaimer was also filed on August 27, 2018. Id.,
`
`pp.1484-1499.
`
`35. A second non-final Office Action was issued on October 5, 2018, in
`
`which the Examiner rejected claims 1-22 under 35 U.S.C. § 101 as being directed
`
`to a judicial exception (conventional computer functions executed by a generic
`
`computer) and again rejecting claims 1-22 under nonstatutory double patenting as
`
`being unpatentable over claims 1-2, 5-12, 21-23, 25-32, and 36 of the ’488 patent.
`
`Id., pp.1484-1499. A response to the second Office Action was filed on April 5,
`
`2019 with amendments to independent claims 1, 8, 16, 21, and 22 and
`
`accompanying arguments to over the rejections under 35 U.S.C. § 101. Id.,
`
`pp.1484-1499.
`
`36. A Notice of Allowance was issued on May 23, 2019 stating that the
`
`Applicant’s amendments and arguments, as well as the terminal disclaimer
`
`overcame the rejections. Id., pp.1585-1593. According to the Examiner, none of
`
`the considered prior art disclosed all of the limitations in the claims. Id., p.1593.
`
`Apple v. Fintiv
`
`19
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`37. The prior art presented in this IPR was not cited or relied on by the
`
`Examiner during prosecution. APPL-1002, p.158, 1590-1640. In fact, the
`
`Examiner did not issue any rejections based on prior art.
`
`38. As I explain below, the concept of performing a transaction using a
`
`cloud-based transaction platform for mobile devices was well known by the
`
`earliest possible priority date of the ’196 patent. APPL-1005, Figs. 1, 9, [0005],
`
`[0049], [0100]. For example, Dill (APPL-1005) teaches similar financial
`
`transaction systems configured to conduct transactions with a mobile wallet.
`
`APPL-1005, Figs. 1, 9, [0049], [0100]. Moreover, the prior art shows that it was
`
`well known for such a transaction platform to receive indications of a customer’s
`
`desire for a mobile wallet transaction, to receive communication from a third party
`
`mobile wallet platform confirming processing of the transaction, and to send
`
`communication to the agent terminal over a communication channel indicating
`
`confirmation of the processing of the transaction. APPL-1005, Figs. 1, 9, [0049],
`
`[0100]. Therefore, all claims of the ’196 patent should be found unpatentable.
`
`VI. CLAIM CONSTRUCTION
`
`39.
`
`In order to properly evaluate the ’196 Patent, the terms of the claims
`
`must first be construed. It is my understanding from Apple’s counsel that for the
`
`purposes of this inter partes review, the claims are to be construed under the so-
`
`called Phillips standard, under which claim terms are given their ordinary and
`
`Apple v. Fintiv
`
`20
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`light of the specification and prosecution history, unless the inventor has set forth a
`
`special meaning for a term.
`
`40. As discussed below, the definitions offered below are how a POSITA
`
`would understand these terms in light of the specification of the ’196 patent, as
`
`well as the prior art.
`
`A.
`
`41.
`
`“debit the mobile wallet by the specified amount of funds”
`
`It is my opinion that, in the context of the ’196 patent, a POSITA
`
`would have understood the phrase “debit the mobile wallet by the specified amount
`
`of funds” to mean “transfer the specified amount of funds from the stored value on
`
`a mobile device.”
`
`42. The specification of the ’196 patent supports the proposed
`
`construction. First, a POSITA would have understood that there are various types
`
`of mobile wallet transactions: (1) where a mobile device holds value (such as on a
`
`secure chip) and (2) where the value is stored in an external account. See e.g.,
`
`APPL-1001, 9:26-36; APPL-1011, [0009], [0022]. The ’196 patent refers to the first
`
`type of mobile wallet. APPL-1001, 9:26-30. For example, the specification states
`
`that the “term ‘mobile wallet’ or ‘mobile wallet account’ refers to a stored value
`
`account or prepaid access account (PPA) that allows the owner (or “subscriber”) to
`
`Apple v. Fintiv
`
`21
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`pay for goods and services on the mFS platform from his or her mobile wallet
`
`account.” APPL-1001, 9:26-30.
`
`43. Although not defined with more detail, the term “stored value” in
`
`mobile wallets is well-known and refers to a value stored on a mobile device (such as
`
`in a secure memory). See, e.g., APPL-1011, [0009], [0022] (“Mobile communication
`
`devices used in the architecture described herein are characterized by secure memory
`
`usable for storing value and a controller which manages the secure memory,” “stored
`
`value represented by data on the mobile communication device”). The ’196 patent
`
`does not provide technical details of how its mobile wallet is debited other than to
`
`say that “[t]he cloud-based transaction platform then debits the customer’s third
`
`party mobile wallet by the specified amount of funds to complete the purchase.”
`
`APPL-1001, 2:40-42.
`
`44. Based on this limited disclosure, a POSITA would have understood
`
`“debit the mobile wallet by the specified amount of funds” to include “transferring
`
`the specified amount of funds from the stored value on a mobile device.”
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`45.
`
`It is my opinion that claims 1-22 of the ’196 patent would have been
`
`obvious over U.S. Publication No. 2009/0265272 to Dill et al. (APPL-1005,
`
`“Dill”), in view of U.S. Publication No. 2010/0133333 to Vadhri (APPL-1006,
`
`Apple v. Fintiv
`
`22
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`“Vadhri”), and further in view of U.S. Publication No. 2009/0217047 to Akashika
`
`(APPL-1007, “Akashika”).
`
`A.
`
`Summary of Dill (APPL-1005)
`
`46. Similar to the ’196 patent, Dill teaches a financial transfer system for
`
`supporting “flexible payment options” for a financial transaction. APPL-1005,
`
`Abstract, [0002], [0010]. Dill’s system facilitates transactions between mobile
`
`devices and includes “a mobile communications network and a mobile device
`
`communicatively coupled with the mobile communications network” where the
`
`“mobile device can execute a mobile wallet application.” APPL-1005, [0010],
`
`[0005].
`
`47. One embodiment of Dill’s system particularly relevant to the claims
`
`of the ’196 patent is depicted in Fig. 9:
`
`Apple v. Fintiv
`
`23
`
`APPL-1003
`
`

`

`Houh Declaration
`
`Inter Partes Review of U.S. 10,438,196
`
`
`
`APPL-1005, Fig. 9.
`
`48.
`
`In Fig. 9, the financial transfer system 100 includes a money transfer
`
`facilitator system 140 that is configured