Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 1 of 31
`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 1 of 31
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`EXHIBIT B
`EXHIBIT B
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 2 of 31
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`Case No. 6:22-cv-00697-ADA
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`JURY TRIAL DEMANDED
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`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Plaintiff,
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`Defendant.
`
`
`RFCyber CORP.,
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`
`
`
`v.
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`
`VISA U.S.A. INC.,
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`
`DECLARATION OF MARK JONES IN SUPPORT OF
`PLAINTIFF RFCYBER CORP’S OPENING MARKMAN BRIEF
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`
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`
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`I, Mark Jones, do hereby declare as follows:
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`1.
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`INTRODUCTION
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`1.
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`I have been retained by Fabricant LLP., counsel for RFCyber Corporation
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`(“RFCyber”), as an expert in the lawsuit captioned above.
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`2.
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`I have reviewed U.S. Patent Nos. 8,118,218, 9,189,787 (the “Patents-at-Issue”), the
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`prosecution file histories for the Patents-at-Issue, and the parties’ proposed claim
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`construction of the terms of the Patents-at-Issue. I have also reviewed Visa U.S.A.
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`Inc. (“Visa”)’s Opening Claim Construction Brief and the Declaration of Michael
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`Shamos, Ph.D. in Support of Defendant’s Opening Claim Construction Brief.
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`2.
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`QUALIFICATIONS
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`3.
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`Until my recent retirement, I was a Professor of Electrical and Computer
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`Engineering at Virginia Tech in Blacksburg, Virginia. I graduated summa cum
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`laude from Clemson University in 1986 with a B.S. in Computer Science and a
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`minor in Computer Engineering, while holding a National Merit Scholarship and
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 3 of 31
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`the R. F. Poole Scholarship. I then graduated from Duke University in 1990 with a
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`PhD in Computer Science, while holding the Von Neumann Fellowship.
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`4.
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`Upon graduation, I joined the Department of Energy at its Argonne National
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`Laboratory facility. My responsibilities there included the design and use of
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`software for computers with hundreds of processing elements. This software was
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`designed for compatibility with new parallel computer architectures as they became
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`available, as well as with other large software components being written in the
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`Department of Energy. While with the Department of Energy, I received the IEEE
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`Gordon Bell Prize.
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`5.
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`In 1994, I joined the Computer Science faculty at the University of Tennessee. My
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`teaching responsibilities included computer architecture and computer networking.
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`My research interests included the design and use of software that used the
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`collective power of large groups of workstations. While at the University of
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`Tennessee, I received a CAREER Award from the National Science Foundation.
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`6.
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`In 1997, I joined the Electrical and Computer Engineering faculty at Virginia Tech.
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`My teaching responsibilities have included the design of embedded systems,
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`computer organization, computer architecture, a variety of programming courses,
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`and parallel computing. I have been cited multiple times on the College of
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`Engineering’s Dean’s List for teaching.
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`7.
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`In addition to the activities, education, and professional experience listed above, I
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`have been involved in research projects that contribute to my expertise relating to
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`this report. While at Virginia Tech, I have been a primary or co-investigator on
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`government and industrial research grants and contracts in excess of five million
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 4 of 31
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`dollars.
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`8.
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`The majority of the research contracts undertaken in the laboratory have involved
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`collaboration and coordination with other groups to build a larger system. My
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`responsibilities under the SLAAC project (a collaborative effort funded by the
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`Defense Advanced Research Projects Agency involving the University of Southern
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`California, Sandia National Laboratory, Los Alamos National Laboratory, Brigham
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`Young University, UCLA, Lockheed-Martin, and the United States Navy) included
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`the development of a software system for monitoring, configuring, and controlling
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`a networked collection of computers hosting specialized computer hardware. As
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`part of the DSN project (a collaborative effort funded by the Defense Advanced
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`Research Projects Agency involving UCLA and USC), I was responsible for
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`designing algorithms and software for controlling and monitoring a large network
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`of autonomous computer sensor nodes. This software was integrated with software
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`from several other teams around the country for a set of field demonstrations over
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`a three-year period.
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`9.
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`In the TEAMDEC project for the Air Force Research Laboratory, I led an effort to
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`design and construct a collaborative, Internet-based decision making system. This
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`Java-based system provided a geographically diverse team with Internet-based
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`tools to enable collaborative decision-making. On the server side, the system
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`architecture made extensive use of database technology. This work was awarded
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`first prize at the 2002 AOL/CIT Research Day.
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`10.
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`Other projects have involved the close coupling of computer hardware and
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`software, including the writing of device drivers and simple operating systems, the
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`design of hardware circuits, the design of new system architectures, architectures
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`for secure computing, the modification of complex operating systems, and software
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`for mediating between complex software packages.
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`11.
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`A detailed record of my professional qualifications is set forth in the attached
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`Exhibit 1, which is my curriculum vitae, including a list of publications, awards,
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`research grants, and professional activities. My curriculum vitae also lists the
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`depositions, hearings, and trial at which I have testified. I am being compensated
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`$700 per hour for my work in connection with this case. My compensation is in no
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`way related to the outcome of this litigation. If called as a witness, I would testify
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`as to the statements and opinions contained in this report.
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`3.
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`LEGAL UNDERSTANDING
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`12.
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`Below I include my understanding of several pertinent legal principles. I have
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`applied these principles in reaching my opinions discussed herein.
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`3.1. Claim Construction
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`13.
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`I understand that claim terms should be given their ordinary and customary
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`meaning within the context of the patent in which the terms are used, i.e., the
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`meaning that the term would have to a person of ordinary skill in the art in question
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`at the time of the invention in light of what the patent teaches, unless it appears that
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`the inventors were using them to mean something else. Additionally, the
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`specification and prosecution history must be consulted to confirm whether the
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`patentee has acted as his/her own lexicographer (i.e., provided special meaning to
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`any disputed terms), or intentionally disclaimed, disavowed, or surrendered any
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`claim scope).
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`14.
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`I understand that a person of ordinary skill in the art is deemed to read a claim term
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`not only in the context of the particular claim in which the disputed term appears,
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`but also in the context of the entire patent, including the specification and the
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`prosecution history. The prosecution file history provides evidence of how both
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`the Patent Office and the inventors understood the terms of the patent, particularly
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`in light of what was known in the prior art. Further, where the specification
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`describes a claim term broadly, arguments and amendments made during
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`prosecution may require a more narrow interpretation. For these reasons, the words
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`of the claim must be interpreted in view of, and be consistent with, the entire
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`specification. The specification is the primary basis for construing the claims and
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`provides a safeguard such that correct constructions closely align with the
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`specification. Ultimately, the interpretation to be given a term can only be
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`determined and confirmed with a full understanding of what the inventors actually
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`invented and intended to envelop with the claim as set forth in the patent itself.
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`15.
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`I understand that, to determine how a person of ordinary skill would understand a
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`claim term, one should look to those sources available that show what a person of
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`skill in the art would have understood disputed claim language to mean. Such
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`sources include the words of the claims themselves, the remainder of the patent’s
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`specification, the prosecution history of the patent (all considered “intrinsic”
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`evidence), and “extrinsic” evidence concerning relevant scientific principles, the
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`meaning of technical terms, and the state of the art. I understand that one looks
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`primarily to the intrinsic patent evidence, but extrinsic evidence may also be useful
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`in interpreting patent claims when the intrinsic evidence itself is insufficient.
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`16.
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`Additionally, the context in which a term is used in the Asserted Claims can be
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`highly instructive. Likewise, other claims of the patent in question, both asserted
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`and not asserted, can inform the meaning of a claim term. For example, because
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`claim terms are normally used consistently throughout the patent, the usage of a
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`term in one claim can often illuminate the meaning of the same term in other claims.
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`Differences among claims can also be a useful guide in understanding the meaning
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`of particular claim terms.
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`17.
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`I understand that, while intrinsic evidence is of primary importance, extrinsic
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`evidence, e.g., all evidence external to the patent and prosecution history, including
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`expert and inventor testimony, dictionaries, and learned treatises, can also be
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`considered. For example, technical dictionaries may help one better understand the
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`underlying technology and the way in which one of skill in the art might use the
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`claim terms. Extrinsic evidence should not be considered, however, divorced from
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`the context of the intrinsic evidence. Evidence beyond the patent specification,
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`prosecution history, and other claims in the patent should not be relied upon unless
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`the claim language is ambiguous in light of these intrinsic sources. Furthermore,
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`while extrinsic evidence can shed useful light on the relevant art, it is less
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`significant than the intrinsic record in determining the legally operative meaning of
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`3.2.
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`18.
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`claim language.
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`Indefiniteness
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`I understand that a patent term may be considered indefinite. I further understand
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`that a term is to be considered indefinite if a person of ordinary skill in the art
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`(POSITA) reading the term, in light of the specification and prosecution history of
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 8 of 31
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`the patent, is not informed about the scope of the invention with reasonable
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`certainty. Absolute precision, however, is not required—some amount of
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`uncertainty about the meaning of the term is acceptable.
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`19.
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`I understand that the Supreme Court of the United States has instructed that in order
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`for a claim to be definite, “a patent’s claims, viewed in light of the specification
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`and prosecution history, [must] inform those skilled in the art about the scope of
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`the invention with reasonable certainty.”1 The Supreme Court also warned that
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`“the definiteness requirement must take into account the inherent limitations of
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`language . . . Some modicum of uncertainty . . . is the price of ensuring the
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`appropriate incentives for innovation.” The Court also stated that “a patent must
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`be precise enough to afford clear notice of what is claimed, thereby apprising the
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`public of what is still open to them.”2
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`20.
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`I understand that the Federal Circuit has held that certain claims may be invalid as
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`indefinite if they cover both an apparatus and a method of use of that apparatus. For
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`example, claims that cover an apparatus and require a user to actually use the
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`apparatus are subject to this rule. I further understand that claims are not indefinite
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`under this rule if the claims merely recite a structure and its capabilities. One must
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`examine the language of the claims to determine if it is directed at user actions or
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`system capabilities.
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`4.
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`THE PATENTS AT ISSUE
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`4.1. Description of the ‘218 and ‘787 Patents
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`1 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).
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`2 Id. at 2123.
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`21.
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`I understand that Visa contends that certain claim terms of the ‘218 and ‘787, patent
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`are indefinite. The ‘218, and ‘787 patents share a common specification, and
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`citations to the specification herein are to the ‘218 Patent unless otherwise noted.
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`22.
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`The ’218 patent, entitled “Method and Apparatus for Providing Electronic Purse”
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`was issued on February 21, 2012. The ’218 patent was filed on September 24, 2006.
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`23.
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`The ‘787 patent, entitled “Method and Apparatus for Conducting E-Commerce and
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`M-Commerce,” was issued on November 17, 2015. The ‘787 patent was filed on
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`May 28, 2013, and is a continuation of the application which issued as the ‘855
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`patent.
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`24.
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`I understand that RFCyber may claim a priority date for the patent at issue based
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`on a date of invention, at least as early as August 2004.
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`25.
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`The patent at issue discloses inventions “for portable devices functioning as an
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`electronic purse”:
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`26.
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` In exemplary embodiments, the invention provides a portable device, such as cell
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`phone with a smart card module, configured to conduct e-commerce transactions
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`over contactless interfaces and m-commerce transactions over wireless interfaces:
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`27.
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`According to exemplary embodiments, a purse manager midlet may act as an agent
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`to conduct transactions with one or more e-purse applets:
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 11 of 31
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`Referring now to FIG. 2, there shows an exemplary archi-
`tecture diagram 200 according to one embodiment of the
`present invention. The diagram 200 includesa cellphone 202
`embedded with a smart card module. An example of such a
`cell phone is a near field communication (NFC) enabled
`cellphone that includes a Smart MX (SMX) module. The
`SMX is pre-loaded with a Mifare emulator 208 (which is a
`single functional card) for storing values. The cellphone is
`equipped with a RFID interface (e.g., ISO 144443) that
`allows the cellphoneto act as a tag. In addition, the SMX is a
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`JavaCardthat can run Java applets. According to one embodi-
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 12 of 31
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`‘218 Patent at 4:57-5:29.
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`28.
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`In exemplary embodiments, the invention provides an electronic purse which may
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`be personalized over secure channels, such as secure channels between an applet
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`and a security authentication module (“SAM”).
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`29.
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`In exemplary embodiments, a security channel may be established via an
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`application security domain. Personalization may further include creating keys over
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`a security channel to protect subsequent operations:
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 14 of 31
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`‘218 patent at 5:60-6:25; see also id. at 6:26-7:9.
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`30.
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`In exemplary embodiments, the invention is financed overt the air:
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 15 of 31
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`See also ‘218 patent at 7:10-8:6.
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`5.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`31.
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`I understand that claims are to be construed from the viewpoint of a person of
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`ordinary skill in the art as of the date of the invention (e.g., on or around September
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`1, 2004). I understand that the level of ordinary skill in the art is a function of many
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`factors, including: (1) the educational level of the inventor; (2) type of problems
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`encountered in the art; (3) prior art solutions to those problems; (4) rapidity with
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`which innovations are made; (5) sophistication of the technology; and (6)
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`educational level of active workers in the field.
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`32.
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`It is my opinion that the person of ordinary skill in the art would have a bachelor’s
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`degree in computer science, computer engineering, or equivalent, with one to two
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`years of experience in the areas of secure computing and portable computing
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`devices. Extensive experience and technical training may substitute for educational
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`requirements, while advanced education might substitute for experience. I also
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`understand that the patent at issue claims priority to a date of invention at least as
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 16 of 31
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`early as August, 2004, and that is the relevant time period from which a person of
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`ordinary skill in the art would evaluate the disclosure of the patent at issue. Further,
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`even if the relevant time period were later, such as between August 2004 and
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`September 2006, this would not affect the opinions I set forth in this declaration.
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`33.
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`I myself, based on my education and experience as described above, would exceed
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`the qualifications and background of a POSITA.
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`6.
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`TERMS IN DISPUTE
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`34.
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`I have been asked to provide my opinions on the term addressed below. It is my
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`understanding that the defendant, Visa, as well as Visa’s expert (Michael Shamos), contend that
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`these terms are indefinite.
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`6.1.
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`“contactless interface that facilitates communication between the e-purse
`applet in the smart card and the payment server over a wired network”3
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`35.
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`I understand that the Defendant has taken the position that this term is indefinite. I
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`understand that RFCyber has taken the position that this term is not indefinite and
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`should be given its plain and ordinary meaning. I note that Defendant does not
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`contend that the terms “e-purse,” “smart card,” “applet,” or “payment server” are
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`indefinite.
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`36.
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`Both in the 2004-2006 timeframe and today, the plain meaning of this term would
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`have been clear to a POSITA. Further, as described herein and in the patent itself,
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`the meaning of this term is clear from the claims and the specification. A person of
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`ordinary skill in the art would have been reasonably certain as to the scope of this
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`term.
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`3 ‘218 patent (all claims)
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`37.
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`This term is recited in all independent claims of the ‘218 patent. For example, claim
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`1 of the ‘218 patent recites:
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`
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`38.
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`Both the specification and claims of the ‘218 patent support RFCyber’s
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`construction of the plain meaning of this term. A POSITA would recognize the
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`plain and ordinary meaning of this term with reasonable certainty. For example,
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`claim 1 recites a “contactless interface that facilitates communication … over a
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`wired network” in contrast with “a midlet that is configured to facilitate
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 18 of 31
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`communication … over a wireless network.” On this basis, a POSITA would be
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`reasonably certain that a “contactless interface that facilitates communication …
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`over a wired network” is used for contactless payments, such as radio-frequency
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`identification (“RFID”) and near field communication (“NFC”) interfaces, as
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`opposed to wireless communication interfaces, such as Wi-Fi or cellular adapters.
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`39.
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`The disclosure of the specification would reinforce a POSITA’s understanding of
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`the plain and ordinary meaning of this term. For example, the specification
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`discloses one embodiment of the invention, consistent with Figure 2, is an NFC-
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`enabled cellphone with an RFID interface:
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`‘218 patent at 1:17-27, 4:57-66 and FIG. 2 (emphasis added). Based on this disclosure, a
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`POSITA would be reasonably certain that the term “contactless interface” is recited
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`with its plain and ordinary meaning, including contactless payment interfaces, and
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`that a “wired network” for e-commerce includes networks which can be interfaced
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`with contactlessly (e.g. via an RFID reader).
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`40.
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`The specification of the ‘218 patent also discloses that a contactless interface may
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`be used to conduct e-commerce with a RFID reader (e.g. a contactless card reader),
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`in contrast with m-commerce which is conducted wirelessly (e.g. over the internet):
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 21 of 31
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`‘218 Patent at 2:25-41 and FIG. 2. Based on this disclosure, a POSITA would be
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`reasonably certain that a contactless interface may be used to conduct “e-commerce”
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`over a wired network (e.g. via an RFID POS system in communication with a
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`payment network and servers via a web agent on PC), in contrast with a wireless
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`interface, which may be used to conduct “M-commerce” over a wireless network (e.g.
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`Wi-Fi or a cellular network).
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`41.
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`Accordingly, it is my opinion that this term should be given its plain and ordinary
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`meaning, and that it is not indefinite.
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`6.2. The Asserted System Claims Do Not Mix Methods and Apparatus
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`42.
`
`I have been asked to give my opinion as to whether the asserted system claims
`
`(claims 11-18 of the ’218 Patent and claims 1-8 and 10 of the ’787 Patent) cover
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 22 of 31
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`both an apparatus and method of using that apparatus. I understand that both Visa
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`and Dr. Shamos assert that they do. I disagree.
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`6.2.1. Claims 11-18 of the ’218 Patent
`
`43.
`
`Claim 11 of the ’218 Patent reads:
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`A system for providing an e-purse, the system comprising:
`
` a
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` 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 the e-purse applet when the
`e-purse applet is caused to communicate with the payment server via the midlet.
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`Visa focuses on the wherein clause describing the e-purse applet: “wherein the e-
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`44.
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`purse applet is downloaded from the payment server when the smart card is in
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`communication with the payment server,”
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`45.
`
`I understand that Visa and Dr. Shamos assert that a “person of ordinary skill in the
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`art at the time of the invention would not know whether infringement occurs when
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`the portable device is created (and perhaps capable of downloading an e-purse
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`applet from the payment server), or if infringement occurs only if, or after, the e-
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`purse applet is actually downloaded.” Visa Br. at 14. I disagree.
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`46.
`
`Claims 11-18 of the ’218 Patent set out a system for providing an e-purse. The
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`system includes a portable device. That portable device includes or communicates
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`with a smart card that is pre-loaded with an emulator. The portable device further
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`includes a memory space loaded with a midlet and a contactless interface.
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`47.
`
`Claim 11 further sets out requirements for the portable device and its components.
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`One requirement is that the emulator, midlet, and contactless interface must all
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`operate with an e-purse applet.
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`48.
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`For example, the emulator is “configured to execute a request from and provide a
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`response an e-purse applet is configured to expect.”
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`49.
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`The midlet “is configured to facilitate wireless communication between the e-purse
`
`applet in the smart card and a payment server over a wireless network.”
`
`50.
`
`The contactless interface “facilitates communication between the e-purse applet in
`
`the smart card and the payment server over a wired network.”
`
`51.
`
`The claim’s use of the term “configured to” would indicate to a POSITA that the
`
`device need not include an e-purse applet to infringe. It must only be capable of
`
`operating with a particular type of e-purse applet.4
`
`52.
`
`The claim provides limitations defining the type of e-purse applet that the portable
`
`device and its components must operate with: for example, i) it must be an e-purse
`
`applet “in the smart card” and ii) “wherein the e-purse applet is downloaded from
`
`
`4 Of course, the system as a whole must meet the other limitations of claim 11. Those limitations
`are not in dispute here.
`
`-22-
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`

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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 24 of 31
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`the payment server when the smart card is in communication with the payment
`
`server.”
`
`53.
`
` A POSITA, reading claim 11, would understand that the e-purse applet itself is not
`
`a claimed element of the portable device. Instead, the elements of the portable
`
`device must be configured to operate with an e-purse applet of the type set forth in
`
`the claim.
`
`54.
`
`A POSITA, reading the claim, would therefore understand that a system infringes
`
`when the portable device is created and is configured to operate with the e-purse
`
`applet as defined. Even if no e-purse applet is ever downloaded, such a device
`
`would still infringe because it is configured to work with the type of e-purse defined
`
`in the claims. In other words, a portable device that is not configured to operate
`
`with an e-purse applet that is downloaded from the payment server while the smart
`
`card is in communication with the payment server would not infringe.
`
`55.
`
`I further disagree with Dr. Shamos that the clause “when the smart card is in
`
`communication with the payment server” imposes a temporal limitation on the
`
`claims that would indicate that the claim covers an “action.” As I explain above,
`
`the clause merely describes the type of e-purse applet with which the portable
`
`device and its components must operate.
`
`56.
`
`The statements in the prosecution history are further consistent with the proper
`
`understanding of the claim. During prosecution, the applicants amended the claims
`
`to include the limitation “wherein the e-purse applet is downloaded and installed in
`
`the smart card when the smart card is in communication with the payment server.”
`
`Ex. 3 at 2, 4.
`
`-23-
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`

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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 25 of 31
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`Ex. 3 at 2.
`
`
`
`
`
`Ex. 3 at 4.
`
`57.
`
`The applicants cited paragraph [0037] of the specification to support this addition.
`
`-24-
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`

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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 26 of 31
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`Ex. 3 at 9.
`
`58.
`
`Paragraph [0037] (reproduced below) explains that the e-purse applet is
`
`
`
`dynamically installed.
`
`
`
`
`
`
`
`Ex. 4 at 11-12.
`
`59.
`
`The applicants there explained that that an e-purse applet is dynamically installed.
`
`-25-
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`

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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 27 of 31
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`Ex. 3 at 9 (“As supported in paragraph [0037], the e-purse applet is dynamically
`
`installed and personalized.” (emphasis added)). Ex. 4 at 12 (“The card manager
`
`311 performs … establishing a security channel, via a security domain, to install
`
`and personalize an external application (e.g., e-purse applet) in the card.”). These
`
`statements explaining how an e-purse applet may generally be dynamically
`
`downloaded do not transform claim 11 such that it requires an e-purse applet to be
`
`downloaded.
`
`60.
`
`Claim 18 adds another limitation defining the type of e-purse applet that the
`
`portable device must operate with: “wherein the e-purse is funded through a
`
`financial institution that maintains an account for a user being associated with the
`
`portable device.”
`
`61.
`
`As I explain above with respect to claim 11, this clause provides further definition
`
`to the type of e-purse with which the system works.
`
`62.
`
`In my opinion, therefore, claims 11-18 do not cover both an apparatus and a method
`
`of using the apparatus and are therefore not indefinite.
`
`6.2.2. Claims 1-8, 10 of the ’787 Patent
`
`63.
`
`Claim 1 of the ’787 Patent reads:
`
`A portable device for commerce, the portable device comprising:
`an emulator loaded in a smart card module for storing security values and updated
`transaction logs, and an e-purse applet to cause the portable device to function as
`an electronic purse (e-purse), wherein both of the emulator and e-purse applet are
`already personalized via a personalization process built on a first security channel
`so that the emulator is set to store a set of keys for subsequent data access
`authentication and the e-purse applet is configured to conduct a transaction with a
`network server over a second security channel;
`
` first interface configured to perform field communication (NFC) with a reader to
`perform electronic commerce with the e-purse applet against a fund stored in the
`emulator;
`
`
` a
`
`-26-
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`

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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 28 of 31
`
`a second interface configured to perform mobile commerce with a payment server
`via an application against the fund stored in the emulator; and
`
` purse manager midlet being executed in the portable device to act as an agent to
`facilitate communications between the e-purse applet and a payment server to
`conduct transactions therebetween.
`
`
` a
`
`64.
`
`I understand that Visa and Dr. Shamos assert that it is “not clear whether any device
`
`that merely has the midlet installed would infringe or whether infringement would
`
`only occur when the midlet is actually being executed.” I disagree.
`
`65.
`
`A POSITA would understand that the phrase “being executed in the portable
`
`device” describes the functional capability of the midlet. Thus, the midlet, when
`
`executed, acts as an agent to facilitate communications. Indeed, the midlet is a
`
`component of the claimed portable device.
`
`66.
`
`A POSITA would not read the claim as requiring the midlet to actually be executed
`
`to infringe. So long as the midlet will have the requisite functionality, it will
`
`infringe.
`
`67.
`
`In other words, a manufacturer would understand that a midlet that cannot be
`
`executed to act as an agent to facilitate communications as claimed would not
`
`infringe claim 1 of the ’787 Patent.
`
`68.
`
`Visa also argues that claim 2 of the ’787 Patent separately sets out a specific timing
`
`and use of the system.
`
`-27-
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`Case 6:22-cv-00697-ADA Document 43-3 Filed 09/05/23 Page 29 of 31
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`Visa Br. at 15.
`
`
`
`69.
`
`70.
`
`I disagree.
`
`Claim 2 reads: “The portable device as recited in claim 1, further comprising a
`
`security module configured to install and personalize the e-purse applet via either
`
`the first interface or the second interface, wherein the keys are updated when the
`
`personalization process built on the first security channel completes.” Visa focuses
`
`on “wherein the keys are updated when the personalization process built on the first
`
`security channel completes.”
`
`71.
`
`Claim 1 imposes a precondition on the portable device thatboth the emulator and
`
`the e-purse applet “are already personalized via a personalization process.” Claim
`
`2 merely makes clear that after the process is completed, the keys must have b