UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`____________________
`
`Case No. IPR2024-00233
`U.S. Patent No. 8,886,954
`
`____________________
`
`DECLARATION OF STEPHEN GRAY IN SUPPORT OF PETITIONER’S
`REPLY TO PATENT OWNER’S RESPONSE
`
`Page 1 of 8
`
`GOOGLE EXHIBIT 1026
`GOOGLE v. PROXENSE
`IPR2024-00233
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`____________________
`
`Case No. IPR2024-00233
`U.S. Patent No. 8,886,954
`
`____________________
`
`DECLARATION OF STEPHEN GRAY IN SUPPORT OF PETITIONER’S
`REPLY TO PATENT OWNER’S RESPONSE
`
`Page 1 of 8
`
`GOOGLE EXHIBIT 1026
`GOOGLE v. PROXENSE
`IPR2024-00233
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 2
`II. MATERIALS CONSIDERED ........................................................................ 3
`III. LEGAL STANDARDS ................................................................................... 3
`IV. REPLY TO PATENT OWNER’S INTERPRETATION OF THIRD
`PARTY TRUSTED AUTHORITY ................................................................. 3
`CONCLUSION ................................................................................................ 6
`
`V.
`
`
`i
`
`Page 2 of 8
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`INTRODUCTION
`I have been retained by Google LLC (“Petitioner”) as an independent
`1.
`
`IPR2024-00233
`U.S. Patent No. 8,886,954
`
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`I.
`
`expert consultant in this proceeding before the United States Patent and Trademark
`
`Office.
`
`2.
`
`I previously submitted a declaration in support of Google’s petition
`
`for Inter Partes Review (IPR) of U.S. Patent No. 8,886,954 (the “’954 Patent”),
`
`which I understand was designated Exhibit 1003. In particular, for that declaration,
`
`I was asked to provide my opinions in connection with this IPR, including my
`
`opinions concerning the patentability of claims 1-7, 10, 12-19, and 22-27 (the
`
`“Challenged Claims”) of the ’954 Patent. I will refer to that as my “Opening
`
`Declaration.”
`
`3.
`
`For this Declaration, I was asked to provide my opinions regarding
`
`certain arguments raised by Proxense and its expert, Troy Carrothers, in Proxense’s
`
`Patent Owner’s Response (“POR”).
`
`4.
`
`As before, I am being compensated at my normal hourly rate. My
`
`compensation is based solely on the amount of time that I devote to activity related
`
`to this case and is in no way contingent on the nature of my findings, the
`
`presentation of my findings in testimony, or the outcome of this or any other
`
`proceeding. I have no other financial interest in this proceeding.
`
`
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`Page 3 of 8
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`5. My Background and Qualifications were set forth in my Opening
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`IPR2024-00233
`U.S. Patent No. 8,886,954
`
`
`Declaration.
`
`II. MATERIALS CONSIDERED
`In forming my opinions set forth herein, I considered the following
`6.
`
`Materials in addition to those considered in my Opening declaration, as well as my
`
`own experiences:
`
`Description
`Exhibit
`Paper 6
`Patent Owner’s Preliminary Response
`Paper 10 Decision on Institution
`Paper 14
`Patent Owner’s Response
`Ex. 2018 Declaration of Troy Carrothers
`
`
`III.
`
` LEGAL STANDARDS
`7. My Opening Declaration summarizes my understanding of the legal
`
`standards relevant to my analysis of the Challenged Claims.
`
`IV. REPLY TO PATENT OWNER’S INTERPRETATION OF THIRD
`PARTY TRUSTED AUTHORITY
`I understand that Patent Owner “agrees” with the Board’s construction
`8.
`
`of the term “third-party trusted authority” as “a trusted authority that is an entity
`
`separate from the parties to a transaction.” POR at 6 (also noting that this
`
`construction is “consistent with its plain and ordinary meaning.”).
`
`
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`Page 4 of 8
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`
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`This construction is consistent with what a POSITA would have
`
`IPR2024-00233
`U.S. Patent No. 8,886,954
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`9.
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`understood the term to mean, and is disclosed by Ludtke, as explained in my
`
`opening declaration, as explained in my opening declaration. Ex. 1003, ¶¶105-106.
`
`10.
`
`I also understand that Patent Owner separately “challenges [the
`
`construction’s] application in the Petition, in particular the finding that the ‘parties
`
`to a transaction’ of the Patent (relative to the claimed third party trusted authority)
`
`can be a user and a vendor or merchant.” POR at 6; see also POR at 7 (“the
`
`specification and claim language at issue requires that at least one of the parties to
`
`the claimed transaction must be the application.”). Specifically, I understand that
`
`Patent Owner argues that “at least one of the parties to the claimed transaction
`
`must be the application.” POR at 7.
`
`11.
`
`It is my opinion that the ’954 Patent contemplates that an application
`
`may be a party to the transaction but does not require as much because the ’954
`
`Patent describes embodiments in which the application is not a party to the
`
`transaction.
`
`12. As the ’954 Patent explains1, “[a]pplication 330 is a resource that can
`
`be accessed by a verified and authenticated user.” Ex, 1001, 6:18-19. The
`
`application “can be, for example, a casino machine, a keyless lock, a garage door
`
`
`1 I understand that Patent Owner is acting as its own lexicographer with respect to
`this term.
`
`
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`Page 5 of 8
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`
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`opener, an ATM machine, a hard drive, computer software, a web site, a file, and
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`IPR2024-00233
`U.S. Patent No. 8,886,954
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`the like.” Ex. 1001, 6:19-24. The ’954 Patent further explains “[a]pplication 330
`
`can be, for example, a casino machine, a keyless lock, a garage door opener, an
`
`ATM machine, a hard drive, computer software, a web site, a file, a financial
`
`account (e.g. a savings account, checking account, brokerage account, credit card
`
`account, credit line, etc.) and the like” and further describes embodiments in which
`
`“a file includes medical information such as a medical record, insurance
`
`information or other healthcare information.” Ex. 1001, 6:19-26.
`
`13.
`
` A POSITA would have understood that the ATM machine, as
`
`described in the ’954 Patent is not a party to a transaction even though it is an
`
`application (resource to be accessed by the verified and authenticated user) as set
`
`forth in the ‘954 Patent. This is because the ATM is merely the instrumentality
`
`through which the user (a first party) conducts financial transactions, e.g., deposits
`
`and withdrawals, with the bank (the other party). Similarly, a “file” (another type
`
`of application (resource to be accessed by the verified and authenticated user)
`
`exemplified in the ’954 Patent is not a party to a transaction—rather the user and
`
`the provider of the file (e.g., a vendor) are the parties.
`
`14. This is consistent the term’s use in ’954 Patent, which indicates that
`
`an “application” includes a “financial account” such as a “savings account” and a
`
`“file” such as a “medical record, insurance information or other healthcare
`
`
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`Page 6 of 8
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`
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`information.” Ex. 1001, 6:18-26. None of these files would have been interpreted
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`IPR2024-00233
`U.S. Patent No. 8,886,954
`
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`by a POSITA to be a party to a transaction because the transaction—that is the
`
`exchange to be sought—is between a user requesting access to the file, and the
`
`grantor providing access to the file. Thus, although the application (resource to be
`
`accessed) may be a party to the transaction, it is not required by the claims as
`
`Patent Owner argues.
`
`V. CONCLUSION
`15. For the reasons set forth in Section XI of my Opening Declaration and
`
`statements made herein, it is my opinion that one skilled in the art would have
`
`found the Challenged Claims of the ’954 Patent to be obvious.
`
`16.
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`In signing this declaration, I understand that the declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I declare that all statements made
`
`herein of my knowledge are true, and that all statements made on information and
`
`belief are believed to be true, and that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
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`
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`Page 7 of 8
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`IPR2024-00233
`U.S. Patent No. 8,886,954
`
`
`Date: January 6, 2025
`
`Respectfully submitted,
`
`
`
`
`
`
`
`Stephen Gray
`
`
`
`
`
`Page 8 of 8
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