throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:42342-0134IP1
`
`David L. Brown
`In re Patent of:
`8,646,042
`U.S. Patent No.:
`February 4, 2014
`Issue Date:
`Appl. Serial No.: 13/445,825
`Filing Date:
`April 12, 2012
`Title:
`HYBRID DEVICE HAVING A PERSONAL DIGITAL KEY AND
`RECEIVER-DECODER CIRCUIT AND METHODS OF USE
`
`DECLARATION OF DR. PATRICK TRAYNOR
`
`
`
`
`I, Patrick Gerard Traynor, of Gainesville, Florida, declare that:
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`1. My name is Patrick Gerard Traynor and I have been retained as an
`
`expert witness by Microsoft in the matter of Proxense, LLC vs. Microsoft
`
`Corporation. My qualifications for forming these conclusions are summarized below.
`
`2.
`
`I earned a B.S. in Computer Science from the University of Richmond
`
`in 2002 and an M.S. and Ph.D. in Computer Science and Engineering from the
`
`Pennsylvania State University in 2004 and 2008, respectively. My dissertation,
`
`entitled “Characterizing the Impact of Rigidity on the Security of Cellular
`
`Telecommunications Networks,” focused on security problems that arise in cellular
`
`infrastructure when gateways to the broader Internet were created.
`
`3.
`
`I am currently a Professor in the Department of Computer and
`
`Information Science and Engineering (CISE) at the University of Florida. I was hired
`
`under the “Rise to Preeminence” Hiring Campaign and serve as the Associate Chair
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`MICROSOFT 1003
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`for Research in my Department. I also hold the endowed position of the John and
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`Mary Lou Dasburg Preeminent Chair in Engineering.
`
`4.
`
`Prior to joining the University of Florida, I was an Associate Professor
`
`from March to August 2014 and an Assistant Professor of Computer Science from
`
`2008 to March 2014 at the Georgia Institute of Technology. I have supervised many
`
`Ph.D., M.S., and undergraduate students during the course of my career.
`
`5. My area of expertise is security, especially as it applies to mobile
`
`systems and networks, including cellular networks. As such, I regularly teach
`
`students taking my courses and participating in my research group to program and
`
`evaluate software and architectures for mobile and cellular systems. I have taught
`
`courses on the topics of network and systems security, cellular networks, and mobile
`
`systems at both Georgia Tech and the University of Florida. I also advised and
`
`instructed the Information Assurance Officer Training Program for the United States
`
`Army Signal Corps in the Spring of 2010.
`
`6.
`
`I have received numerous awards for research and teaching, including
`
`being named a Kavli Fellow (2017), a Fellow of the Center for Financial Inclusion
`
`(2016), and a Research Fellow of the Alfred P. Sloan Foundation (2014). I also won
`
`the Lockheed Inspirational Young Faculty Award (2012), was awarded a National
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`Science Foundation (NSF) CAREER Award (2010), and received the Center for
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`Enhancement of Teaching and Learning at Georgia Tech’s “Thanks for Being a
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`Great Teacher” Award (2009, 2012, 2013).
`
`7.
`
`I have published over 100 articles in top conferences and journals in the
`
`areas of information security, mobile systems, and networking. Many of my results
`
`are highly cited, and I have received multiple “Best Paper” Awards. I have also
`
`written a book entitled “Security for Telecommunications Networks”, which is used
`
`in wireless and cellular security courses at a number of top universities.
`
`8.
`
`I am a Senior Member of the Association for Computing Machinery
`
`(ACM) and the Institute of Electrical and Electronics Engineers (IEEE). I am also a
`
`member of the USENIX Advanced Computing Systems Association.
`
`9.
`
`I serve as an Associate Editor for IEEE Security and Privacy Magazine,
`
`have been the Program Chair for eight conferences and workshops, and have served
`
`as a member of the Program Committee for over 50 different conferences and
`
`workshops. I am also currently the Security Subcommittee Chair for the ACM US
`
`Technology Policy Committee (USACM).
`
`10.
`
`I was a co-Founder and Research Fellow for a private start-up, Pindrop
`
`Security, from 2012 to 2014. Pindrop provides anti-fraud and authentication
`
`solutions for Caller-ID spoofing attacks in enterprise call centers by creating and
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`matching acoustic fingerprints. Pindrop Security currently employs over 200 people,
`
`and their technology is based off of my research (US Patent 9,037,113 B2).
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`11.
`
`I was a co-Founder and Chief Executive of a private start-up,
`
`CryptoDrop. CryptoDrop developed a ransomware detection and recovery tool to
`
`provide state of the art protection to home, small business, and enterprise users. This
`
`technology was also based off of my research (US Patent 10,685,114 B2).
`
`12.
`
`I was also a co-Founder and Chief Executive of a private start-up, Skim
`
`Reaper. Skim Reaper developed tools to detect credit card skimming devices, and
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`worked with a range of banks, international law enforcement, regulators, and
`
`retailers. This technology was also based off of my research (US Patent 10,496,914
`
`B2).
`
`13.
`
`I am a named inventor on ten US patents. These patents detail methods
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`for determining the origin and path taken by phone calls as they traverse various
`
`networks, cryptographically authenticating phone calls, providing a secure means of
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`indoor localization using mobile/wireless devices, detecting credit card skimmers,
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`identifying cloned credit cards, and blocking ransomware from encrypting data.
`
`14. My curriculum vitae, included with this declaration as App. A, includes
`
`a list of publications on which I am a named author. It contains further details
`
`regarding my experience, education, publications, and other qualifications to render
`
`an expert opinion in connection with this proceeding.
`
`15.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in mobile systems and
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`networks; my experience in teaching those subjects; and my experience in working
`
`with others involved in those fields. In addition, I have analyzed the following
`
`publications and materials, in addition to other materials I cite in my declaration:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No 8,646,042 (MS-1001), and its accompanying prosecution
`
`history (MS-1002)
`
`U.S. Patent Publication No. 2007/0245157 A1 (“Giobbi-157”) (MS-1005)
`
`U.S. Patent Publication No. 2004/0255139 A1 (“Giobbi-139”) (MS-1006)
`
`U.S. Patent No. 9,042,819 (“Dua”) (MS-1007)
`
`European Patent No. EP 1 536 306 A1 (“Broadcom”) (MS-1008)
`
`Claim Construction Order, Proxense, LLC v Samsung Electronics Co., Ltd,
`
`6:21-CV-00210-ADA, W.D. Tex., filed January 18, 2022 (MS-1009)
`
`Provisional Application No. 60/798,843 (MS-1010)
`
`I.
`
`LEGAL PRINCIPLES
`Anticipation
`
`16.
`
`I have been informed that a patent claim is invalid as anticipated under
`
`35 U.S.C. § 102 if each and every element of a claim, as properly construed, is found
`
`either explicitly or inherently in a single prior art reference. Under the principles of
`
`inherency, if the prior art necessarily functions in accordance with, or includes the
`
`claimed limitations, it anticipates.
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`17.
`
`I have been informed that a claim is invalid under 35 U.S.C. § 102(a) if
`
`the claimed invention was known or used by others in the U.S., or was patented or
`
`published anywhere, before the applicant’s invention. I further have been informed
`
`that a claim is invalid under 35 U.S.C. § 102(b) if the invention was patented or
`
`published anywhere, or was in public use, on sale, or offered for sale in this country,
`
`more than one year prior to the filing date of the patent application (critical date).
`
`And a claim is invalid, as I have been informed, under 35 U.S.C. § 102(e), if an
`
`invention described by that claim was described in a U.S. patent granted on an
`
`application for a patent by another that was filed in the U.S. before the date of
`
`invention for such a claim.
`
`Obviousness
`
`18.
`
`I have been informed that a patent claim is invalid as “obvious” under
`
`35 U.S.C. § 103 in light of one or more prior art references if it would have been
`
`obvious to a POSITA, taking into account (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the claims, (3) the level of ordinary skill
`
`in the art, and (4) any so called “secondary considerations” of non-obviousness,
`
`which include: (i) “long felt need” for the claimed invention, (ii) commercial success
`
`attributable to the claimed invention, (iii) unexpected results of the claimed
`
`invention, and (iv) “copying” of the claimed invention by others. For purposes of
`
`my analysis above and because I know of no indication from the patent owner or
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`others to the contrary, I have applied a date of December 6, 2007, as the date of
`
`invention in my obviousness analyses, although in many cases the same analysis
`
`would hold true even at an earlier time than December 6, 2007.
`
`19.
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a single
`
`prior art reference or multiple prior art references, there must be a reason to modify
`
`the single prior art reference, or combine two or more references, in order to achieve
`
`the claimed invention. This reason may come from a teaching, suggestion, or
`
`motivation to combine, or may come from the reference or references themselves,
`
`the knowledge or “common sense” of one skilled in the art, or from the nature of the
`
`problem to be solved, and may be explicit or implicit from the prior art as a whole.
`
`I have been informed that the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand it is improper to rely on hindsight in making the obviousness
`
`determination.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`20. This expert Declaration explains the conclusions that I have formed
`
`based on my analysis. To summarize those conclusions:
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 1, 5-6, 8-11, and 13-
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`14 of the ’042 patent are obvious over Giobbi-157 in view of Giobbi-
`
`139.
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 1, 5-6, 8-11, and 13-
`
`14 of the ’042 patent are obvious over Giobbi-157 in view of Giobbi-
`
`139 and Dua.
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 10-11 and 13-14 the
`
`’042 patent are obvious over Broadcom.
`
`III. BACKGROUND KNOWLEDGE ONE OF SKILL IN THE ART
`WOULD HAVE HAD PRIOR TO THE PRIORITY DATE OF THE
`’042 PATENT
`21. Based on the foregoing and upon my experience in this area, a person
`
`of ordinary skill in the art (“POSITA”) relating to the subject matter of the ’042
`
`Patent as of December 6, 2007 would have had (1) at least a bachelor’s degree in
`
`computer science, electrical engineering, or a related field, and (2) at least two years
`
`of experience in the field of encryption and security. Additional graduate education
`
`could substitute for professional experience, and vice versa.
`
`22. Based on my experiences, I have a good understanding of the
`
`capabilities of a POSITA as I was such an individual at the time of the Critical Date.
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`Moreover, I have taught, participated in organizations, and worked closely with
`
`many such persons over the course of my career.
`
`IV.
`
`INTERPRETATIONS OF THE ’042 PATENT CLAIMS AT ISSUE
`23.
`I have been informed by Counsel and understand that the best indicator
`
`of claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should be
`
`given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims should
`
`be interpreted as they would have been interpreted by one of ordinary skill at the
`
`time of the invention was made (not today). I have been informed by Counsel that I
`
`should use December 6, 2007 as the point in time for claim interpretation purposes.
`
`24.
`
`I have been asked to provide my interpretation of the following terms
`
`of the ’042 patent set forth below. In providing the following interpretations, I have
`
`carefully considered and applied the claim construction standard referred to in ¶23
`
`above. Below, I offer my analysis of how a POSITA would have construed certain
`
`claim features of the ’042 patent. My analysis also considers the constructions
`
`adopted in previous proceedings where family members of the ’042 patent were
`
`asserted. MS-1009.
`
`A. Hybrid Device
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`25. For the purposes of the present proceeding this term (“hybrid device”)
`
`appears in claims 1, 5-6, and 8-11. The use of the term “hybrid device” is consistent
`
`with the use of the term in the specification of the ’042 patent. See, e.g., MS-1001,
`
`Abstract, 1:65-2:19. Previously in a related proceeding with a family member of
`
`the ’042 patent, the court construed “hybrid device” to be “a device comprising an
`
`integrated personal digital key (PDK) and an integrated receiver-decoder circuit.”
`
`MS-1009. Accordingly, because the ’042 patent recites the use of a “PDK” and
`
`“RDC” in the “hybrid device” claims and given the consistency with the ’042 patent
`
`specification, I believe the previous construction is consistent. MS-1001, Claim 1,
`
`10. For purposes of this proceeding, I adopt this construction of “hybrid device,”
`
`which, as noted above, was adopted in previous proceedings. MS-1009.
`
`B.
`Personal Digital Key (“PDK”)
`26. For the purposes of the present proceeding, I believe this term, which
`
`appears in claims 1, 5-6, 8, 10, and 13-14, should be construed to mean “an operably
`
`connected collection of elements including an antenna and a transceiver for
`
`communicating with a RDC and a controller and memory for storing information
`
`particular to a user.” This definition is consistent with the use of the term in the
`
`specification of the ’042 patent. See, e.g., MS-1001, 13:41-54. Accordingly, I adopt
`
`the construction of “personal digital key,” which, as noted above, was adopted in
`
`previous proceedings. MS-1009.
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`C. Receiver-decoder circuit (“RDC”)
`27. For the purposes of the present proceeding, I believe this term, which
`
`appears in claims 1, 5-6, 8, 10, and 13-14 should be construed to mean “a component
`
`or collection of components, capable of wirelessly receiving data in an encrypted
`
`format and decoding the encrypted data for processing.” This definition is consistent
`
`with the use of the term in the specification of the ’042 patent. See, e.g., MS-1001,
`
`7:10-22. Accordingly, I adopt the construction of “receiver-decoder circuit,” which,
`
`as noted above, was adopted in previous proceedings. MS-1009.
`
`V.
`
`THE ’042 PATENT
`
`A. Overview
`28. The ’042 Patent is directed to “a hybrid device” that includes a personal
`
`digital key (PDK) and a receiver-decoder circuit (RDC) coupled in communication
`
`with each other. MS-1001, Abstract, 1:20-26. The integrated PDK communicates
`
`wirelessly with an external RDC and the integrated RDC communicates wirelessly
`
`with at least one external PDK within its proximity zone. MS-1001, 3:62-4:20. The
`
`specification discloses that the integrated PDK is capable of storing local, secured
`
`financial information or secured biometric information for authenticating a user.
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`MS-1001, 3:20-32, 16: 20-38. Similarly, the external PDK is also capable of storing
`
`information. MS-1001, 3:62-4:20. For example, in one embodiment, the integrated
`
`PDK carries credentials such as credit card or account information that are used to
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`enable services associated with the external RDC. MS-1001, 4:63-5:24; 8:30-49. A
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`user can make a purchase with the hybrid device provided that they are in possession
`
`of the external PDK and in proximity to the hybrid device. If so, the external PDK
`
`wirelessly connects to the integrated RDC and authorizes the integrated PDK to
`
`enable a transaction by sharing credit card or account information with the external
`
`RDC. Id.
`
`29. The ’042 Patent claims priority to a number of provisional applications,
`
`the earliest of which was filed 12/6/2007. MS-1001, Cover.
`
`B.
`Prosecution History
`30. The ’042 Patent was allowed after a single office action that presented
`
`only a double-patenting rejection. MS-1002, 380-386. During prosecution, the
`
`Examiner did not consider any of Giobbi-157, Giobbi-139, Dua, or Broadcom. Id.
`
`VI. ANALYSIS OF GIOBBI-157, GIOBBI-157, AND DUA
`31. Below, I analyze a first ground based on Giobbi-157 and Giobbi-139
`
`(“the Giobbi references”) and a second ground that additionally incorporates the
`
`disclosure of Dua. In the first ground [1A], I rely on the disclosure of the Giobbi
`
`references and explains why their disclosure, when interpreted in view of the general
`
`knowledge of a POSITA, renders obvious claims 1, 5-6, 8-11, and 13-14. In the
`
`second ground [1B], I rely on the same disclosure of the Giobbi references and
`
`explanation of obviousness as presented in the first ground [1A], but also turn to
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`Dua’s disclosure to provide additional implementation examples. Because the use
`
`of the Giobbi references’ disclosure and corresponding obviousness arguments are
`
`similar for both grounds [1A/1B], I discuss these grounds together for ease of
`
`presentation.
`
`A. Overview of Giobbi-157
`32. Giobbi-157 is directed at a system and method to “provide efficient,
`
`secure and highly reliable authentication for transaction processing and/or access
`
`control applications.” MS-1005, Abstract, ¶¶[0011]-[0014]. The disclosure further
`
`explains that a “transaction includes enabling access to secure physical or digital
`
`assets (e.g., unlocking a door, opening a vault, providing access to a secured hard
`
`drive, etc.).” MS-1005, ¶[0063]. This process is accomplished using “secure and
`
`tamperproof memories” to store information for “identification and authentication.”
`
`MS-1005, ¶[0036], see also ¶¶[0026]-[0029], [0035]-[0048]. Giobbi-157 is a
`
`continuation in part of a prior application and claims priority to five provisional
`
`applications. MS-1005, Cover, ¶[0002].
`
`33. Giobbi-157 discloses a Personal Digital Key (PDK) that “stores one or
`
`more profiles (e.g., a biometric profile) in a tamperproof memory that is acquired in
`
`a secure and trusted process.” MS-1005, ¶[0063], see also ¶¶[0026]-[0029], [0035]-
`
`[0048]. Giobbi-157 further teaches that the PDK may be integrated into an
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`electronic device, such as a cellphone. MS-1005, ¶[0035] (“a portable electronic
`
`device such as a cell phone”), see also ¶[0080], claims 27, 33.
`
`34. Giobbi-157 teaches that its integrated PDK can communicate with a
`
`receiver-decoder circuit (RDC). MS-1005, ¶¶[0049]-[0058], [0064]. The RDC
`
`establishes a secure communication channel between the PDK and RDC, then sends
`
`“profile authentication requests to the PDK 102 requesting transmission of one or
`
`more stored profiles over the secure channel.” MS-1005, ¶[0064]. In some
`
`examples, Giobbi-157 teaches that information stored on a PDK, such as fingerprint
`
`information, is transmitted to an external RDC located on a “Reader 108.” MS-1005,
`
`¶[0049]. An example of Giobbi-157’s PDK and Reader configuration is shown in
`
`the annotated version of Figures 2 and 3 below.
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`MS-1005, FIG. 21.
`
`
`
`1 My annotations to the figures in my declaration are shown in color.
`
`
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`MS-1005, FIG. 3.
`
`
`
`35. Giobbi-157 teaches that its RDC can authenticate a PDK and then
`
`enable a “transaction,” the “transaction includ[ing] enabling access to secure
`
`physical or digital assets (e.g., unlocking a door, opening a vault, providing access
`
`to a secured hard drive, etc.).” MS-1005, ¶¶[0057]-[0058], [0063], FIG. 4.
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`MS-1005, FIG. 4.
`
`
`
`36. Giobbi-157 also discloses that “the PDK can store other information
`
`such as credit/debit card information, bank information, or personal information in
`
`a memory for use in authorizing or completing a transaction.” MS-1005, ¶¶[0011],
`
`[0063], [0065].
`
`37. The Giobbi-157 provisional applications disclose several use cases of
`
`the PDK and RDC systems and detail both the process and components necessary to
`
`setup and operate a PDK and RDC system. MS-1010, pp. 2-14. The details include
`
`exemplary form factors for the PDKs and RDCs and explanations as to how a user
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`could incorporate these devices into a user’s current devices to setup and operate a
`
`PDK and RDC system. Id.
`
`B. Overview of Giobbi-139
`38. Giobbi-139 shares the same goal of securing physical or digital access
`
`as Giobbi-157, disclosing a “Personal Digital Key Digital Content Security System”
`
`which prevents “unauthorized use and protect[s] the digital content stored on
`
`computers from being wrongfully accessed, copied, and/or distributed.” MS-1006,
`
`Abstract, ¶[0010]. Like the Giobbi-157 publication, Giobbi-139 discusses the use
`
`of RDCs to communicate with PDKs to enable access and functions on devices. MS-
`
`1006, ¶¶[0010], [0071]-[0078]. The disclosure of Giobbi-139 further teaches that
`
`an RDC can be incorporated into a cell phone and that the RDC “is an integrated
`
`circuit able to process PDK-Key information, as well as encrypt/decrypt PDK-
`
`compliant digital content.” MS-1006, ¶[0077], [0088] (“This embodiment involves
`
`integrating RDCs into…PDAs, cell phones [etc.]"); MS-1005, ¶[0035].
`
`39. Giobbi-139 teaches the PDK and RDC relationship as being flexible
`
`and capable of being integrated with existing equipment. MS-1006, ¶¶[0087]-
`
`[0099]. Giobbi-139 also teaches that an RDC can be acquired independently and
`
`integrated into a device. MS-1006, ¶¶[0088]-[0090]. The integrated RDC could
`
`then be used to secure the device and can even “enable/disable” the device based on
`
`communication with a PDK. MS-1006, ¶¶[0087]-[0090]. When using a PDK to
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`secure a device with an integrated RDC, “[t]his security mechanism protects any
`
`data stored on such devices in the event they are ever stolen, left unattended, or even
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`purposely ‘disabled’ to prevent access to sensitive content (i.e. preventing minors
`
`from accessing adult files, websites, etc.). MS-1006, ¶[0090]. When the associated
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`PDK-Key(s) is not present, these devices and their storage means are locked and
`
`disabled.” Id.
`
`40. Giobbi-139 also discloses the scalability of RDC and PDK architecture.
`
`MS-1006, ¶¶[0091]-[0096]. For example, Giobbi-139 teaches that a user can
`
`“assign (or remove)” additional PDKs to a device with an integrated RDC. MS-
`
`1006, ¶¶[0092] (“Giving users the option to purchase and associate a PDK-Key at a
`
`later time, or importantly, assign a PDK-Key they already utilize for another PDK-
`
`based device. This allows a user to utilize a single PDK-Key to provide access to
`
`all their PDK based devices”), [0095].
`
`41. Giobbi-139 further discloses a version of communication between a
`
`PDK and RDC that is not wireless. ¶¶[0041], [0071]-[0073]. Particularly, Giobbi-
`
`139 teaches alternative embodiments where an RDC and PDK are communicatively
`
`coupled to each other by a wired signal line:
`
`“In other alternative embodiments, the communication between the
`user's physical electronic key [i.e., PDK] and the playing device is not
`wireless. Rather, in one alternative embodiment, the user's physical
`electronic key [i.e., PDK] communicates the activation code to the
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`playing device [i.e., the RDC on the playing device] via a transmission
`line such as a serial cable that plugs into the key at one end and the
`playing device at the other end. In another alternative embodiment, the
`key is a smart card or magnetic card into which the activation code is
`encoded, and the key is configured to physically fit into a card reader
`slot on the playing device.”
`MS-1006, ¶¶[0041], [0071]-[0073].
`
`C. Overview of Dua
`42. Dua discloses a wireless media player or related system (e.g., a cell
`
`phone) which establishes wireless connections with other devices to enable functions
`
`and exchange data. MS-1007, 6:46-65, FIG. 6. Dua’s device is shown, for example,
`
`in annotated Fig. 6:
`
`
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`MS-1007, FIG. 6.
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`MS-1007, FIG. 4A.
`
`
`
`43. Dua employs an RFID system to secure data and applications on its
`
`device using an RFID “electronic key” (e.g., for point-of-sale transactions). MS-
`
`1007, 12:51-64. Dua uses an RFID Tag as an electronic “key” and an RFID Reader
`
`as the electronic “lock.” Id. Specifically, Dua discloses that its device uses RFID
`
`Tag-Reader Module (shown above in FIG. 4A), that includes both an RFID Reader
`
`Unit 304 and RFID Tag Unit 306. MS-1007, 13:22-48, FIGS. 4A, 6.
`
`44. Dua’s RFID Tag Unit 306 stores information necessary to gain access
`
`to an external device in an encrypted internal tag memory and transmits this
`
`information to an external Reader when establishing a connection. MS-1007, 13:9-
`
`18, 14:53-64, 15:42-56, 16:31-34. As shown in FIG. 4A above, Dua also discloses
`
`an integrated Reader Unit 304 for reading information transmitted by external Tag
`
`Units. MS-1007, 14:53-64, FIG. 4A.
`
`
`
`21
`
`

`

`D. The Giobbi-157-Giobbi-139 combination
`1. Giobbi-157 teaches integrating a PDK into a mobile device
`to enable a user to enjoy secure storage functionality via a
`commonly carried item
`45. Giobbi-157 expressly and repeatedly discloses the portability of a PDK,
`
`emphasizing that a PDK can be carried by a user on their person and expressly
`
`teaches integrating the PDK into cell phones, PDAs, and other commonly carried
`
`items. MS-1005, ¶¶[0012], [0027], [0030], [0035] (“integrated into commonly
`
`carried items … such as a cell phone, [or PDA]”); MS-1010, p. 3, 14 (“[c]ell phones
`
`& PDAs with integrated PDKs … [represent] an obvious advance in convenience
`
`and simplicity over currently available alternatives”). Based on these teachings, a
`
`POSITA would have readily recognized that integration of PDKs into mobile
`
`devices, such as cell phones, provides the benefits of simplicity and convenience by,
`
`for example, providing a secure and local storage location for the user’s biometric
`
`data. MS-1005, ¶¶[0012], [0027], [0030], [0035]. This integration enables a user
`
`who already carries a cell phone to enjoy the security benefits offered by Giobbi-
`
`157’s system without having to carry a separate PDK. Indeed, these benefits include
`
`enabling the user to execute transactions with, for example, external RDCs (e.g., to
`
`enable access to an external, secure, digital or physical asset) where the transactions
`
`are secured by biometric verification while providing an individual with “a simple
`
`and efficient enrollment process that does not put an individual’s highly personal
`
`22
`
`

`

`information at risk of identity theft or fraudulent use.” MS-1005, ¶¶[0010], [0063].
`
`The incorporated ’157 provisional application provides an illustration of a cell phone
`
`with integrated PDK.
`
`MS-1010, p. 28 (image cropped).
`
`
`
`2. Giobbi ’139 teaches integrating an RDC into a mobile
`device to provide enhanced security for the data stored on
`the mobile device.
`46. Giobbi-139 teaches integrating an RDC into the same type of device
`
`disclosed in Giobbi-157 (e.g., a mobile device, such as a cell phone). MS-1006,
`
`¶[0088]; MS-1005, ¶[0035]. Specifically, Giobbi-139 discloses the PDK and RDC
`
`architecture “to protect computers from unauthorized use and protect the digital
`
`content stored on computers from being wrongfully accessed, copied, and/or
`
`distributed.” MS-1006, Abstract. Like Giobbi-157, Giobbi-139 teaches that the
`
`23
`
`

`

`PDK stores the data that authenticates a user via an RDC. MS-1006, ¶¶[0022]-
`
`[0044].
`
`47. Giobbi-139 provides additional implementation details for its RDCs,
`
`noting that an RDC “is an integrated circuit able to process PDK-Key information,
`
`as well as encrypt/decrypt PDK-compliant digital content.” MS-1006, ¶[0072].
`
`Giobbi-139 also notes that its integrated RDC may communicate with a PDK
`
`wirelessly or through a physical connection. MS-1006, ¶¶[0022]-[0044]. Thus,
`
`Giobbi-139 teaches similar components as Giobbi ’157, where an RDC can
`
`communicate with at least one PDK to grant digital or physical access. MS-1006,
`
`Abstract, ¶¶[0036]-[0037], [0088]-[0090]. Notably, Giobbi-139 identifies such a
`
`configuration as an “enhancement.” MS-1006, ¶¶[0087]-[0088]. Giobbi-139 also
`
`discloses that it would have been desirable to include an RDC in a device holding
`
`data, such as a cell phone, to increase security by requiring a valid PDK to be used
`
`to permit access to the data. MS-1006, ¶[0088], FIG. 4. Given these teachings, a
`
`POSITA would have found it obvious and advantageous to integrate an RDC into
`
`Giobbi-157’s cell phone to thereby enhance the security of the data stored on the cell
`
`phone.
`
`48. Giobbi-139 additionally teaches a broader way to secure data on a cell
`
`phone and discloses that an RDC integrated into a cellphone can be used with a PDK
`
`to “effectively enable[]/disable[] the device itself.” MS-1006, ¶¶[0088]-[0089].
`
`24
`
`

`

`Giobbi-139 teaches that, “[t]his security mechanism protects any data stored on such
`
`devices in the event they are ever stolen, left unattended, or even purposely ‘disabled’
`
`to prevent access to sensitive content (i.e. preventing minors from accessing adult
`
`files, websites, etc.).” MS-1006, ¶[0090]. In this configuration, the cell phone with
`
`the integrated RDC can enable or disable the device through authentication with a
`
`PDK. Id.
`
`3.
`The combination of Giobbi-157 and Giobbi-139
`49. Given the teachings of Giobbi-157 and Giobbi-139, a POSITA would
`
`have been motivated to integrate a PDK and RDC into the same mobile device (thus,
`
`creating a “hybrid device”). MS-1005, ¶¶[0012], [0027], [0030], [0035]; MS-1006,
`
`¶¶[0022]-[0044]. As stated above, Giobbi-157 enumerates the advantages and
`
`motivations of incorporating a PDK into a mobile device. MS-1005, ¶¶[0035],
`
`[0080], claims 27, 33. For example, a user carrying the hybrid device would be able
`
`to be wirelessly authenticated with RDCs to securely complete transactions or gain
`
`access to physical or digital assets. Each RDC would be capable of communicating
`
`with the PDK’s “secure and tamperproof memories,” in which biometric
`
`authentication data is stored securely on the device in a format retrievable by an
`
`RDC. MS-1005, ¶¶[0036], [0064]. Additionally, Giobbi-139 teaches the benefits
`
`of integrating an RDC into this hybrid device. MS-1006, ¶¶[0087]-[0099]. For
`
`instance, a user can use an RDC integrated in the hybrid device to secure the data
`
`25
`
`

`

`within the hybrid device (cell phone) to thereby protect it from loss or theft. MS-
`
`1006, ¶[0091]. Further the RDC would allow other external PDKs to interact with
`
`the hybrid device. Accordingly, a POSITA would have recognized that a mobile
`
`device having an integrated RDC and PDK would provide increased security in
`
`accessing both assets internal to the mobile device and assets external to the mobile
`
`device. In this way, the mobile device would provide the same enhanced security as
`
`the disclosed PDK and RDC security architecture taught in both Giobbi-157 and
`
`Giobbi-139 for accessing internal and external assets.
`
`
`MS-1005, FIGS. 2-3 (modified to incorporate Giobbi-139’s teachings).
`
`
`
`4.
`
`A POSITA would have found it obvious to integrate a PDK
`and RDC in a mobile device to enable secure access to assets
`
`26
`
`

`

`internal to the mobile device and assets external to the
`mobile device
`50. A POSITA would have found it obvious to communicatively couple the
`
`integrated PDK and RDC within the mobile device with a physical connection based
`
`on Giobbi ’139’s teachings that a PDK can be connected to an RDC by a
`
`“transmission line such as a serial cable.” MS-1006, ¶[0041]. By coupling the
`
`integrated PDK and RDC in this manner, assets internal to the mobile device (e.g.,
`
`files, applications, etc.) can thereby be protected using the PDK-RDC techniques
`
`disclosed by Giobbi-157 and Giobbi-139. MS-1005, ¶¶[0012], [0027], [0030],
`
`[0035]; MS-1006

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