Case 6:22-cv-00697-ADA Document 41-1 Filed 08/21/23 Page 1 of 98
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`RFCyber CORP.,
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`Plaintiff,
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`v.
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`VISA U.S.A. Inc.,
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`Defendant.
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`CASE NO.: 6:22-cv-00697-ADA
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`JURY TRIAL DEMANDED
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`DECLARATION OF MICHAEL SHAMOS, PH.D., IN SUPPORT OF
`DEFENDANT’S OPENING CLAIM CONSTRUCTION BRIEF
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`I, Michael Ian Shamos, Ph.D., do hereby declare as follows under penalty of perjury under
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`the laws of Texas and the United States:
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`I.
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`INTRODUCTION
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`1.
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`My name is Michael Shamos. I have been retained as an expert witness by
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`Defendant Visa U.S.A. Inc. (“Visa” or “Defendant”) in this matter.
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`2.
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`I have been asked to opine on the meaning of certain terms used in the asserted
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`claims of U.S. Patents 8,118,218 (the “’218 Patent”); 8,448,855 (the “’855 Patent”); 9,189,787
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`(the “’787 Patent”); and 9,240,009 (the “’009 Patent”) (collectively, the “Patents”).
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`3.
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`This Declaration contains statements of my opinions formed in this case to date and
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`the bases and reasons for those opinions. I may offer additional opinions based on further review
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`of materials in this case, including opinions and/or testimony of other expert witnesses.
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`II.
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`QUALIFICATIONS
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`4.
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`This section summarizes my educational background, career history, publications,
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`and other relevant qualifications. My curriculum vitae is attached as Appendix A, which includes
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`my detailed employment background, professional experience, and list of publications.
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`5.
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`I have an A.B. degree from Princeton University in Physics, an M.A. degree from
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`Vassar College in Physics, an M.S. degree from American University in Technology of
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`Management, an M.S. degree from Yale University in Computer Science, an M. Phil. from Yale
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`University in Computer Science, a Ph.D. from Yale University in Computer Science, and a J.D.
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`degree from Duquesne University.
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`6.
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`I currently hold the title of Distinguished Career Professor in the School of
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`Computer Science at Carnegie Mellon University in Pittsburgh, Pennsylvania. I am a member of
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`two departments in that School, the Software and Societal Systems Department and the Language
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`Technologies Institute. I was a founder and Co-Director of the Institute for eCommerce at
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`Carnegie Mellon from 1998-2004 and from 2004-2018 have been Director of the eBusiness
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`Technology graduate program in the Carnegie Mellon University School of Computer Science.
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`Since 2018, I have been Director of the M.S. in Artificial Intelligence and Innovation degree
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`program at Carnegie Mellon.
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`7.
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`I have taught graduate courses at Carnegie Mellon in Electronic Commerce,
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`including eCommerce Technology, Electronic Payment Systems, Electronic Voting, Internet of
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`Things, Ubiquitous Computing, Electronic Payment Systems and eCommerce Law and
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`Regulation, as well as Analysis of Algorithms. Since 2007, I have taught an annual course in Law
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`of Computer Technology. I currently also teach Artificial Intelligence and Future Markets.
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`8.
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`I am the author and lecturer in a 24-hour video course on Internet protocols and
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`have taught computer networking, wireless communication, and Internet architecture since 1999.
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`9.
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`From 2001-2021, I was a Visiting Professor at the University of Hong Kong, where
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`I taught an annual course in Electronic Payment Systems. This is one of only a handful of graduate
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`courses taught on this subject in the world.
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`10.
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`I was the Director of Carnegie Mellon’s graduate degree program in eBusiness
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`Technology from 1999-2018 and am now a faculty member in the Privacy Engineering degree
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`program at Carnegie Mellon. My course on Law of Computer Technology is required for all
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`students in that program.
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`11.
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`I am a named inventor on the following six issued patents relating to electronic
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`commerce: U.S. Patent Nos. 7,330,839; 7,421,278; 7,747,465; 8,195,197; 8,280,773; and
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`9,465,299.
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`12.
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`From 1979-1987 I was the founder and president of two computer software
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`development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and Lexeme Corporation.
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`13.
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`I am an attorney admitted to practice in Pennsylvania and have been admitted to
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`the Bar of the U.S. Patent and Trademark Office since 1981. I have been asked to render opinions
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`in this Declaration as a technical expert. I have not been asked to offer any opinions on patent law
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`in this proceeding.
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`14.
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`I have previously served as an expert in over 360 cases concerning computer
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`technology. In particular, I have been involved in at least 35 cases involving electronic payment
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`systems.
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`III. COMPENSATION
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`15.
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`I am being compensated for my work in this case at the rate of $600 per hour. I am
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`also reimbursed for all reasonable expenses that I incur during the course of this case. My
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`compensation does not depend upon the results of my analysis or the substance of my testimony,
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`nor does my compensation depend on the outcome of this or any related proceeding. I have no
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`personal interest in the outcome of this matter. I have no financial interest in RFCyber Corp.
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`(“Patent Owner”) or affiliation with any of parties in interest, the Patent Owner or the inventors of
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`the Patents. It is conceivable that I may own mutual funds whose portfolios include stock in
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`Defendant’s affiliate Visa, Inc. If this is the case, the value of such holding would not constitute
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`a material part of my net worth.
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`16.
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`The statements made and opinions provided in this Declaration are based on my
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`own personal knowledge and experience.
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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. RELEVANT LEGAL PRINCIPLES
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`18.
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`I have been informed by counsel for Visa that the following principles of law are
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`applicable to claim construction, and I have applied these principles in my analysis.
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`19.
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`The claims of a patent define the limits of the patentee’s exclusive rights. In order
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`to determine the scope of the claimed invention, courts may construe (or define) claim terms when
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`the meanings are disputed by the parties.
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`20.
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`Claim terms should generally be given their ordinary and customary meaning as
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`understood by one of ordinary skill in the art at the time of the invention after reading the patent
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`and its prosecution history.
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`21.
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`Claims must be construed, however, in light of, and consistent with, the patent’s
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`intrinsic evidence. Intrinsic evidence includes the claims themselves, the written disclosure in the
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`patent’s specification, and the patent’s prosecution history, including the prior art that was
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`considered by the United States Patent and Trademark Office (“PTO”).
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`22.
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`The language of the claims helps guide the construction of claim terms. The context
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`in which a term is used in the claims can be highly instructive.
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`23.
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`The specification of the patent is the best guide to the meaning of a disputed claim
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`term, beyond the wording of the claims themselves. Embodiments disclosed in the specification
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`help teach and enable those of skill in the art to make and use the invention, and are helpful to
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`understanding the meaning of claim terms. Nevertheless, in many cases, the limitations of
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`preferred embodiments and examples appearing in the specification should not be read into the
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`claims.
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`24.
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`In the specification, a patentee may also define his own terms, give a claim term a
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`different meaning than it would otherwise possess, or disclaim or disavow claim scope. A court
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`may generally presume that a claim term possesses its ordinary meaning. This presumption,
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`however, does not arise when the patentee acts as his own lexicographer by explicitly defining or
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`re-defining a claim term. This presumption of ordinary meaning can also be overcome by
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`statements, in the specification or prosecution history of the patent, of clear disclaimer or
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`disavowal of a particular claim scope.
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`25.
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`The specification may also resolve any ambiguity if the ordinary and customary
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`meaning of a claim term lacks sufficient clarity to permit the scope of the claim to be ascertained
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`from the words of the claim alone.
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`26.
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`The prosecution history can be another important source of evidence in the claim
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`construction analysis. The prosecution history is the record of the proceedings before the PTO,
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`including communications between the patentee and the PTO. The prosecution history can inform
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`the meaning of the claim language by demonstrating how the patentee and the PTO understood
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`the invention and whether the patentee limited the invention in the course of prosecution, making
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`the claim scope narrower than it would otherwise be. A patentee may also define a term during
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`the prosecution of the patent. The patentee is precluded from recapturing through claim
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`construction specific meanings or claim scope clearly and unambiguously disclaimed or
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`disavowed during prosecution.
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`27.
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`Courts can also consider extrinsic evidence when construing claims. Extrinsic
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`evidence is any evidence that is extrinsic to the patent itself and its prosecution history. Examples
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`of extrinsic evidence include technical dictionaries, treatises, and expert testimony. I understand
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`that extrinsic evidence is less significant than the intrinsic record in determining the meaning of
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`claim language, and that a court should discount extrinsic evidence that is at odds with the intrinsic
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`record.
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`28.
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`I understand that the patent claims can be invalidated for indefiniteness when they
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`simultaneously claimed a product and a method of using it.
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`29.
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`I further understand that if the patent claims, read in light of the specification and
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`the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention, they are invalid for indefiniteness. I understand that “reasonable certainty”
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`does not require absolute precision in the language of the claims. Rather, the claims must be
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`precise enough to give clear notice of what is claimed and what is still available in the public
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`domain. I also understand that when analyzing definiteness, the claims must be interpreted from
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`the perspective of a person of ordinary skill in the art at the time the invention was made in light
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`of the specification and prosecution history.
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`30.
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`It is my understanding that my analysis of the interpretation of a claim term must
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`be undertaken from the perspective of what would have been known or understood by a person
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`having ordinary skill in the art (“POSITA”) at the time of the invention. In determining the
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`appropriate level of ordinary skill in the art in this case, I have been instructed that various factors
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`may be considered, including the type of problems encountered in the art, prior art solutions to
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`those problems, the rapidity with which innovations are made, the sophistication of the technology,
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`and the educational level of active workers in the field. I have considered these factors in my
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`analysis.
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`31.
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`It is my opinion that a POSITA would have a bachelor’s degree in computer
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`science, computer engineering, or equivalent, with one year of experience relating to mobile
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`technology or electronic payment technology. A person of ordinary skill in the art could have less
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`formal education if that person had additional years of relevant professional experience.
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`32.
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`I understand that the Patents claim priority to U.S. Patent Application No.
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`11/534,653, filed on September 24, 2006, although any given claim of those Patents may not be
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`entitled to the that date. I also understand that Visa contends that the ’009 Patent is not entitled to
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`a priority date any earlier than January 16, 2012.
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`33.
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`I also understand that RFCyber contends that each of the Patents has a priority date
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`at least as early as July 1, 2004.
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`34.
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`At all times, I have understood and interpreted the claims of the Patents from the
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`point of view of a POSITA as of the 2006 timeframe with respect to the ’218, ’855, and ’787
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`Patents, and as of the 2012 timeframe with respect to the ’009 Patent. However, the opinions set
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`forth in this Declaration would not change if the Court were to determine that one or more of the
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`Patents were entitled to a priority date as early as 2004.
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`VI.
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`TECHNOLOGICAL BACKGROUND
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`U.S. Patent Nos. 8,118,218, 8,448,855 and 9,189,787
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`35.
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`The ’218, ’855, and ’787 Patents share a common specification and describe an e-
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`purse on a smart card mobile phone or other portable device, which allows the device to conduct
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`secure payment transactions with a payment server. ’218 Patent at 1:6-22, 1:34-38, Fig. 2.1. The
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`Patents refer to an e-purse as a “single functional card” having “stored values,” i.e., electronic
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`money, for performing “micro payment transactions.” Id. at 1:14-17, 1:23-27, 3:51-55, 3:61-63,
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`4:2-7, 4:62-64. The Patents acknowledge that “[s]ingle functional cards have been successfully
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`used in enclosed environments such as transportation systems” and highlight the MIFARE card as
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`having been a widely used e-purse. Id. at 1:13-22. They assert, however, that “such enclosed
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`systems are difficult to be expanded into other areas such as e-commerce and m-commerce because
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`stored values and transaction information are stored” in a way that is “protected by a set of keys,”
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`and “the keys need to be delivered to the card for authentication before data can be accessed during
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`a transaction.” Id. at 1:23-29. The Patents assert that there is “a need for a mechanism in devices,
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`especially portable devices, functioning as an electronic purse (e-purse) to be able to conduct
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`transactions over an open network with a payment server without compromising security.” Id. at
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`1:34-38.
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`36.
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`The Patents’ purported solution is to provide “a mechanism to be embedded” in the
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`portable device to function as an e-purse and provide the necessary security. Id. at 2:42-46. That
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`“mechanism” is a smart card. Id. at 2:10-41. A “smart card” is one having a computer processor,
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`The smart card comes with a preloaded operating system, such as Java Card Open Platform
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`(“JCOP”), which provides “a general security framework,” such as the GlobalPlatform standard,
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`for “card personalization.” Id. at 4:8-22, 4:41-46, 4:50-56. The operating system’s security
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`1 Because the Asserted Patents share a specification, references to the ’218 patent
`specification and figures encompass the corresponding portions of the other two as well unless
`otherwise specified.
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`“control[s] the access to the smart card (e.g., an installation of external applications into the smart
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`card).” Id. at 4:47-50.
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`37.
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`The Patents explain that “multiple application smart cards” – including the well-
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`known SmartMX smart card by Philips – can also come “pre-loaded with an emulator,” such as a
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`MIFARE emulator, allowing the multi-application smart card to mimic (or “emulate”) single
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`functional cards such as a MIFARE transit card for use with MIFARE readers. Id. at 2:14, 2:27-
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`28, 3:51-60, 4:62-64, Fig. 2.
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`38.
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`The ’218, ’855, and ’787 Patents teach that a smart card, including an e-purse applet
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`or emulator in the smart card, can be personalized using a GlobalPlatform card manager to enable
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`a secure channel to be established between the e-purse and a server. Id. at 4:11-22, 5:50-54.
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`Personalization involves loading a specific user’s data into the e-purse, e.g., the user’s account
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`information, “operation keys (e.g., a load key and a purchase key), default PINs, administration
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`keys (e.g., an unblock PIN key and a reload PIN key), and passwords (e.g., from Mifare).” Id. at
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`5:54-59. Smart cards that comply with the GlobalPlatform standard have at least one security
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`domain that “includes three 3DES keys,” which are encryption keys that are “used to generate
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`session keys for a secured session between two entities,” i.e., a security channel. Id. at 6:29-47,
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`Fig. 3C. The security domain and encryption keys are “installed by a card issuer.” Id. at 6:48-54.
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`Another set of keys can also be generated and distributed to the e-purse applet to secure subsequent
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`operations. Id. at 6:55-7:9, Fig. 3C.
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`39.
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`The ’218, ’855, and ’787 Patents also describe a process for funding the e-purse,
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`which is a necessary step in using it to conduct transactions. Id. at 7:10-13, 8:7-12, Figs. 4A-4C.
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`After a valid PIN entry, a midlet initiates an over-the-air (“OTA”) “top off request,” sending a
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`request to the e-purse applet. Id. at 7:22-28, Fig. 4A. The e-purse applet composes a response to
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`the request, which is sent via the midlet to “a payment network and server over a wireless network.”
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`Id. at 7:29-32, Fig. 4A. The response is verified and a bank account at a financial institution is
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`then verified. Id. at 7:35-44, Fig. 4A. A response is then sent back to the midlet, after which
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`commands are extracted from the response and sent to the e-purse. Id. at 7:45-48, Fig. 4B. The
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`e-purse verifies the commands and then updates the emulator and transaction logs to reflect the
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`updated stored value. Id. at 7:48-51, Fig. 4B.
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`U.S. Patent No. 9,240,009
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`40.
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`The ’009 Patent is a continuation-in-part of the ’218 Patent and describes mobile
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`devices with “secure elements” that can securely host “an application such as an electronic purse”
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`for conducting secured transactions over a network. ’009 Patent, at 1:18-24. The ’009 Patent
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`includes the disclosures found in the shared specification of the ’218, ’855, and ’787 Patents, as
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`well as additional disclosures and figures.
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`41.
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`The ’009 Patent states: “[T]here is a need to provide techniques to personalize a
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`secure element in a contactless smart card or an NFC-enabled mobile device so that such a device
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`is so secured and personalized when it comes to financial applications or secure transactions. With
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`a personalized secure element in an NFC-enabled mobile device, various applications or services,
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`such as electronic purse or payments, can be realized.” Id. at 2:10-17.
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`42.
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`The ’009 Patent teaches that, when a mobile device is obtained, the secure element
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`(“SE”) “is installed with a set of default keys (e.g., an Issuer Security Domain (ISD) key set by the
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`SE manufacturer).” Id. at 6:55-58, 8:46-48. “[A] standard-compliant secure element comes with
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`one issuer security domain (ISD) and an option for one or more supplemental security domains
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`(SSD). Each of these domains includes a set of keys.” Id. at 7:1-4.
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`43.
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`The ’009 Patent explains that the “SE 102 needs to go through a personalization
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`process before it can be used.” Id. at 7:13-14. “The personalization process can be done either
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`physically in a service center or remotely via a web portal by a TSM server.” Id. at 7:49-51. A
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`“TSM, standing for Trusted Service Management, is a collection of services” that can “help service
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`providers securely distribute and manage contactless services for their customers using the
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`networks of mobile operators.” Id. at 7:35-39. The default “device information (e.g., ISD) of the
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`SE” can be used to derive personalized keys to personalize the SE. Id. at 8:57-9:23. “After the
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`personalization, the SE can only be accessed using the personalized ISD key of the SE issuer.
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`Depending on the security requirement of each service provider, the TSM can create additional
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`SSDs for the various providers to personalize their respective applications (e.g., the modules 104
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`or 106 of FIG. 1A).” Id. at 9:24-29.
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`44.
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`The ’009 Patent describes “an e-token enabled device,” such as “a single functional
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`card or a portable device enabled with an e-purse,” that “may represent e-money, e-coupons, e-
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`ticket, e-voucher or any other forms of payment tokens in a device.” Id. at 20:44-50. Transactions
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`using the e-token device may occur in “real time” and “offline (i.e., without the portable device
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`connecting to a backend POS transaction server.” Id. at 20:51-58; see also id. at Figs. 6A-6D.
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`Figure 6D depicts “a flowchart illustrating an exemplary process [] of conducting m-commerce
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`using a portable device.” Id. at 22:48-56, Fig. 6D. The ’009 Patent explains that transactions using
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`the e-purse may be evaluated against the value stored on the e-purse to determine whether to
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`approve or deny the transaction or to allow the user to “top-up” and attempt re-processing. Id. at
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`22:57-23:20, Figs. 6C and 6D.
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`VII. TERMS IN DISPUTE
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`45.
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`I have been asked to provide my opinions on the term addressed below as well as
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`to respond to RFCyber’s proposed constructions.
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`A.
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`“fund” / “fund stored in the emulator”
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`46.
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`I understand that RFCyber’s proposed construction of these terms is “plain and
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`ordinary meaning except for ‘emulator.’”
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`47.
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`However, I also understand that RFCyber has alleged, for example, that
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`“consumable keys or tokens” can comprise “a fund stored in an emulator.” A person of ordinary
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`skill in the art at the time of the alleged invention would not understand funds to include
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`“consumable keys or tokens,” including as the term is used in the shared specification of the
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`Patents, as discussed further below. The term “funds” refers to money. A key or token is not
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`money. In the electronic payment context, a token is a substitute for a sensitive data element
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`(which is a data element, such as a credit card number, that should be kept private or secret). A
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`token is not funds, which a person of ordinary skill in the art would understand comprise money
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`or a balance of money, as discussed further below. A token does also not represent funds.
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`Therefore, in my opinion, RFCyber’s position as to the meaning of “fund” terms is not the plain
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`and ordinary meaning of those terms.
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`48.
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`One of ordinary skill in the art at the time of the alleged invention of the Patents
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`would have understood the term “fund” (as a noun) to mean a money balance and to “fund” (as a
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`verb) to mean to add to a money balance. This is summarized with respect to the “fund” terms
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`below:
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`Term and Claims
`“fund” / “fund stored in the emulator”
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`Meaning
`“money balance” / “money balance stored in
`the emulator”
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`’855 Patent, Claim 9
`’787 Patent, Claims 1 and 11
`“fund” / “funded” / “funding”
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`’218 Patent, Claims 10, 18
`’855 Patent, Claim 1, 4, 13
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`“add / added / adding money balance to”
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`49.
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`The terms appear in the following claim language:
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`Claim Number
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`Claim Language
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`’218 Patent, Claims 10 and 18
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`“the e-purse is funded through a financial institution that
`maintains an account for a user”
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`’855 Patent, Claims 1 and 9
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`“A method for funding an e-purse”
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`“a fund transfer request is initiated by the server to the
`financial institution” / “initiating a fund transfer request by a
`server with a financial institution”
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`“responding to the fund transfer request”
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`’855 Patent, Claims 4 and 13
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`“to regulate or control data exchange between the server and
`the portable device for funding the e-purse therein”
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`’787 Patent, Claims 1 and 11
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`“to perform electronic commerce with the e-purse applet
`against a fund stored in the emulator”
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`“to perform mobile commerce with a payment server via an
`application against the fund stored in the emulator” /
`“performing mobile commerce via a second interface with a
`payment server via an application against the fund stored in
`the emulator”
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`50.
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`The shared specification of the ’218,’855, and ’787 Patents uses the word “fund”
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`three times, and each time it is in the context of adding money to the balance of the e-purse—not
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`in making a purchase. The first use of the term is to begin the description of funding the e-purse
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`from a bank account in connection with a flowchart in FIG. 4: “The user desires to fund the e-
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`purse from an account associated with a bank.” ’218 Patent at 7:20-22.
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`51.
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`The shared specification refers to the process of funding the e-purse as “an OTA
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`top off request.” This helps to shape my understanding that “fund” means a money balance or
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`adding to a money balance.
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`52. More specifically, the shared specification continues on to say that “[a]t 402, the
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`user enters a set of personal identification numbers (PIN). Assuming the PIN is valid, a purse
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`manger in the device is activated and initiates a request (also referred to an OTA top off request)
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`Case 6:22-cv-00697-ADA Document 41-1 Filed 08/21/23 Page 14 of 98
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`at 404. The midlet in the device sends a request to the e-purse applet at 406, which is illustrated
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`in FIG. 4C where the e-purse manager midlet 434 communicates with the e-purse applet 436.”
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`’218 Patent at 7:20-28. A “top off” is the act of refilling the money balance on the card, which is
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`consistent with my understanding of the term “fund.” Like “topping off” a gas tank, it means to
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`actually add money to the card; it does not refer to any and every activity that could relate to a card
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`being used in a transaction.
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`53.
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`The next use of the term “fund” is also in the context of adding money to the balance
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`of the e-purse from the bank account. The shared specification states that “[i]f the account does
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`exist, a fund transfer request is initiated. At 414, the bank receives the request and responds to
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`the request by returning a response. In general, the messages exchanged between the payment
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`network and server and the bank are compliant with a network protocol (e.g., HTTP for the
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`Internet).” ’218 Patent at 7:29-44. Here again, “fund” means adding a money balance to the
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`device. The “messages exchanged” between “the payment network and server and the bank” make
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`clear that the bank can transfer funds to the device. This is also consistent with my understanding
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`that a fund transfer request is not the same as a request to complete a purchase made using the e-
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`purse, which is further consistent with the discussion of “fund” below.
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`54.
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`Finally, the shared specification concludes the description of the flowchart in FIG.
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`4, stating: “Although the process 400 is described as funding the e-purse. [sic]Those skilled in
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`the art can appreciate that the process of making purchasing over a network with the e-purse is
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`substantially similar to the process 400, accordingly, no separate discussion on the process of
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`making purchasing is provided.” The specification could not be clearer: “funding” is separate and
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`distinct from making a purchase.
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`Case 6:22-cv-00697-ADA Document 41-1 Filed 08/21/23 Page 15 of 98
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`55.
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`In light of the claim language and the specification discussed above, a person of
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`ordinary skill in the art would understand “fund” to mean adding or storing a money balance.
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`B.
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`56.
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`Each Asserted System Claim Is Indefinite for Covering Both an Apparatus
`and a Method of Using the Apparatus
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`1.
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`Indefiniteness of ’218 Patent Claims 11-18
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`It is my opinion that a person of ordinary skill in the art would not understand the
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`scope and meaning of claim 11 of the ’218 Patent because it claims both a “portable device” and
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`a method of using the “portable device.” Because claims 12-18 depend from claim 11, it is my
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`opinion that a person of ordinary skill in the art would also not understand the scope and meaning
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`of those claims.
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`57.
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`Independent claim 11 of the ’218 Patent reads as follows:
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`11. A system for providing an e-purse, the system comprising:
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`a portable device including or communicating with a smart card
`pre-loaded with an emulator configured to execute a request from
`and provide a response an e-purse applet is configured to expect,
`the portable device including a memory space loaded with a midlet
`that is configured to facilitate wireless communication between the
`e-purse applet in the smart card and a payment server over a
`wireless network, the portable device further including a
`contactless interface that facilitates communication between the e-
`purse applet in the smart card and the payment server over a wired
`network, wherein the e-purse applet is downloaded from the
`payment server when the smart card is in communication with
`the payment server, and operations of personalizing the e-purse
`applet comprises:
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`establishing an initial security channel between the smart card and
`the e-purse security authentication module (SAM) to install and
`personalize the e-purse applet in the smart card, and
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`creating a security channel on top of the initial security channel to
`protect subsequent operations of the smart card with the e-purse
`SAM, wherein any subsequent operation of the emulator is
`conducted over the security channel via the e-purse applet;
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`the payment server associated with an issuer authorizing the e-
`purse applet; and
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`the e-purse SAM configured to enable the e-purse applet, wherein
`an SAM is behind the payment server and in communication with
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`Case 6:22-cv-00697-ADA Document 41-1 Filed 08/21/23 Page 16 of 98
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`the e-purse applet when the e-purse applet is caused to
`communicate with the payment server via the midlet.
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`58.
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`Although the claim is to a “system comprising: a portable device,” the claim also
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`includes a method step in which the “e-purse applet is downloaded.”
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`59.
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`It is my opinion that a person of ordinary skill in the art at the time of the invention
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`would not know whether infringement occurs when the portable device is manufactured (and
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`perhaps capable at that point of downloading an e-purse applet from the payment server), or if
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`infringement occurs only if, or after, the e-purse applet is actually downloaded. The manufacture
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`and sale of a portable device, such as one claimed in claim 11 of the ’218 Patent, often if not always
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`occurs prior to the “downloading” of software onto the device at the time of the alleged invention.
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`Software could and would be loaded onto such devices prior to sale through methods other than
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`downloads from a network. It would be unclear from the claim to a person of ordinary skill in the
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`art whether devices as they were typically manufactured and sold would infringe.
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`60.
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`The limitation that the downloading occurs “when the smart card is in
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`communication with the payment server” further confirms that this is a method step that could
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`(and usually would) occur separately from the manufacture or sale of the device. The specification
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`describes communication with the payment server occurring “over an open network.” ’218 Patent
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`at 1:36-37. A person of ordinary skill in the art would have known that communications over an
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`open network must occur after manufacture and sale of a portable device, and not as part of the
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`manufacturing process.
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`61.
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`The prosecution history also confirms that the downloading is a process step that
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`makes unclear whether the portable device infringes when made or only infringes after the
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`downloaded recited process is performed. During prosecution, the applicant pointed to a specific
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`paragraph of its application as support for adding this limitation. See App. 11/534,653 9/7/2011
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`-16-
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`Case 6:22-cv-00697-ADA Document 41-1 Filed 08/21/23 Page 17 of 98
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`Amendment at 8-9, 12. That corresponding paragraph describes the process when “a user desires
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`to personalize an e-purse embedded in a device (e.g., a cellphone).” ’218 Patent at 5:60-61. This
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`indicates that the down