UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Unified Patents Inc.,
`Petitioner
`v.
`
`Sentegra, LLC
`Patent Owner
`
`
`
`IPR2016-01109
`
`Patent 8,706,627
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1, 4, 6, 7, 10-13, AND 16
`OF U.S. PATENT NO. 8,706,627 UNDER 35 U.S.C. §§311-319
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ........................................................................................... 1 
`
`INTRODUCTION ......................................................................................... ..1
`
`
`
`I. 
`
`II.  MANDATORY NOTICES ............................................................................. 2 
`
`MANDATORY NOTICES ........................................................................... ..2
`
`A. 
`A.
`
`B. 
`
`B.
`
`C. 
`
`C.
`
`D. 
`D.
`
`E. 
`
`E.
`
`Real Party-in-Interest ............................................................................ 2 
`Real Party—in—Interest .......................................................................... ..2
`
`The Patent Owner .................................................................................. 2 
`
`The Patent Owner ................................................................................ ..2
`
`Related Matters ...................................................................................... 2 
`
`Related Matters .................................................................................... ..2
`
`Identification of Lead and Back-Up Counsel........................................ 3 
`Identification of Lead and Back—Up Counsel ...................................... ..3
`
`Service Information ............................................................................... 4 
`
`Service Information ............................................................................. ..4
`
`III. 
`
`III.
`
`PAYMENT OF FEES ..................................................................................... 4 
`
`PAYMENT OF FEES ................................................................................... ..4
`
`IV.  REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 4 
`REQUIREMENTS FOR INTER PARTES REVIEW .................................... ..4
`
`IV.
`
`A.  Grounds for Standing ............................................................................ 5 
`A.
`Grounds for Standing .......................................................................... ..5
`
`B. 
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 5 
`Identification of Challenge Under 37 C.F.R. § 42.104(b) .................. ..5
`
`1.  The Specific Art on Which the Challenge is Based ......................... 5 
`1. The Specific Art on Which the Challenge is Based ....................... ..5
`
`2.  The Specific Grounds on Which the Challenge is Based ................ 6 
`2. The Specific Grounds on Which the Challenge is Based .............. ..6
`
`V. 
`
`BACKGROUND OF THE ’627 PATENT ..................................................... 6 
`
`BACKGROUND OF THE ’627 PATENT ................................................... ..6
`
`A. 
`A.
`
`B. 
`B.
`
`C. 
`C.
`
`Background of the Technology ............................................................. 6 
`Background of the Technology ........................................................... ..6
`
`Summary of the ’627 Patent .................................................................. 9 
`Summary of the ’627 Patent ................................................................ ..9
`
`Prosecution History of the ’627 Patent ............................................... 12 
`Prosecution History of the ’627 Patent ............................................. ..12
`
`VI.  PERSON OF ORDINARY SKILL IN THE ART ........................................ 12 
`
`PERSON OF ORDINARY SKILL IN THE ART ...................................... ..12
`
`VI.
`
`VII.  CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................... 13 
`CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................. ..13
`
`VII.
`
`A. 
`
`A.
`
`B. 
`B.
`
`“authorization certificate” ................................................................... 14 
`
`“authorization certificate” ................................................................. .. 14
`
`“set of executable computer program instructions” ............................ 14 
`“set of executable computer program instructions” .......................... .. 14
`
`ii
`
`

`
`
`
`C. 
`
`“executable memory storage device encoded with … a set of
`executable computer program instructions” ........................................ 15 
`
`VII.   GROUNDS OF UNPATENTABILITY ........................................................ 16 
`
`A.  Ground 1: Claims 1, 4, 6, 7, and 11-13 are Obvious over Maes
`and Ikeda ............................................................................................. 16 
`
`1.  Maes Overview .............................................................................. 16 
`
`2.  Ikeda Overview .............................................................................. 20 
`
`3.  Maes in view of Ikeda .................................................................... 23 
`
`4.  The Combination’s Desired Functionality is Achieved by an
`Executable Memory Storage Device Encoded with Set(s) of
`Executable Computer Program Instructions .................................. 26 
`
`B. 
`
`Ground 2: Claims 1, 4, 6, 10, 11, and 16 are Obvious over Maes
`and Paltenghe ...................................................................................... 61 
`
`1.  Paltenghe Overview ....................................................................... 61 
`
`2.  Maes in view of Paltenghe ............................................................. 63 
`
`3.  The Combination’s Desired Functionality is Achieved By
`An Executable Memory Storage Device Encoded with Set(s)
`of Executable Computer Program Instructions .............................. 65 
`
`VIII.  CONCLUSION .............................................................................................. 91 
`
`
`
`iii
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319, Unified Patents Inc., (“Unified” or
`
`“Petitioner”) petitions the PTAB to institute inter partes review of claims 1, 4, 6, 7,
`
`10-13, and 16 of U.S. Patent No. 8,706,627 to Shore (“the ’627 Patent,” EX1001).
`
`The challenged claims use many words to recite several simple and obvious
`
`concepts directed to a remote, handheld, ticket-purchasing system. Beyond these
`
`simple, obvious concepts, the claims are packed with long-known and
`
`conventional hardware limitations found in virtually every wireless, handheld
`
`device of the time, like “wireless communications hardware,” “a data storage
`
`device,” “a user input device,” “a microprocessor,” etc. Tellingly, the ’627 Patent
`
`itself even admits that wireless, handheld devices, such as PDAs, were well known
`
`before the ’627 patent’s earliest priority date, Feb. 10, 2000. (EX1001, 25:13-141;
`
`8:45-48; 9:12-14). Thus, the only allegedly “inventive” aspect of the ’627 Patent is
`
`its secure-purchase functionality, but that too was well known before 2000.
`
`In fact, the claimed functionality amounts only to accessing a website,
`
`requesting an “authorization certificate” (or electronic ticket), exchanging payment
`
`and security information, downloading the certificate, and storing the certificate in
`
`memory. (EX1001, cl. 1; Figs. 12a-12d). All these steps were well known before
`
`2000. (See, e.g., EX1005, Fig. 5). Because the ’627 Patent claims well-known
`                                                            
`1 For all exhibits, the citations refer to page number/column number:line numbers.
`
`
`
`1
`
`

`
`
`
`functionality performed by an admittedly well-known wireless, handheld device,
`
`the challenged claims should be canceled as obvious.
`
`II. MANDATORY NOTICES
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures:
`
`A. Real Party-in-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over Unified’s participation in this proceeding, the filing of this
`
`petition, or the conduct of any ensuing trial. See EX1002.
`
`The Patent Owner
`
`B.
`The ’627 Patent is assigned to Sentegra, LLC (“Sentegra”).
`
`
`
`C. Related Matters
`The ’627 Patent has been asserted in the following pending litigations, none
`
`of which involve Unified:
`
`1.
`
`Sentegra, LLC v. Asus Computer International, No. 1:15-cv-03768
`
`(S.D.N.Y. May 15, 2015);
`
`2.
`
`Sentegra, LLC v. Samsung Electronics America, Inc., No. 1:15-cv-
`
`09266 (S.D.N.Y. Nov. 24, 2015);
`
`
`
`2
`
`

`
`
`
`3.
`
`Sentegra, LLC v. BLU Products, Inc., No. 1:16-cv-00158 (D. Co. Jan.
`
`21, 2016);
`
`4.
`
`Sentegra, LLC v. Azend Group Corp., No. 1:16-cv-00263 (D. Co. Feb.
`
`4, 2016);
`
`5.
`
`Sentegra, LLC v. LG Electronics MobileComm USA, Inc., No. 1-15-
`
`cv-01535 (S.D.N.Y. Mar. 2, 2015) (settled & dismissed Nov. 17,
`
`2015);
`
`6.
`
`Sentegra, LLC v. Lenovo Group Ltd., No. 1-14-cv-09096 (S.D.N.Y.
`
`Nov. 14, 2014) (settled & dismissed Apr. 28, 2015); and
`
`7.
`
`Sentegra, LLC v. Blackberry Ltd., No.1-14-cv-08389 (S.D.N.Y. Oct.
`
`21, 2014) (settled & dismissed Feb. 27, 2015).
`
`Additionally, the ’627 Patent is the subject of multiple pending motions to
`
`dismiss for, variously, improper venue and for failure to state a claim under
`
`Federal Rule of Civil Procedure 12(b)(6), as patent ineligible under 35 U.S.C.
`
`§§ 101 and 112. See, e.g., Sentegra, LLC v. Asus Computer International, No.
`
`1:15-cv-03768, ECF 32 (S.D.N.Y. filed Sept. 18, 2015) (venue); Sentegra, LLC v.
`
`Samsung Electronics America, Inc., No. 1:15-cv-09266 ECF 25 (S.D.N.Y. filed
`
`Apr. 8, 2016) (§§ 101 and 112).
`
`Identification of Lead and Back-Up Counsel
`
`D.
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`
`
`3
`
`

`
`
`
`designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
`
`back-up counsel are Scott A. McKeown (Reg. No. 42,866); Thomas C.
`
`Yebernetsky (Reg. No. 70,418); Katherine D. Cappaert (Reg. No. 71,639); and
`
`Jonathan Stroud (Reg. No. 72,518).
`
`Service Information
`
`E.
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on the following:
`
`
`
`
`Address: Michael L. Kiklis
`Oblon LLP
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketkiklis@oblon.com
`Email:
`Telephone: 703-413-3000
`Fax:
`703-413-2220
`
`
`
`Jonathan Stroud, Chief Patent Counsel
`Address:
`Unified Patents Inc.
`
`
`171 Main St. #106, Los Altos, CA, 94022
`
`
`jonathan@unifiedpatents.com
`Email:
`Telephone: 202-805-8931
`Fax:
`650-887-0349
`
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge the required fees and any
`
`additional fees that might be due to Deposit Account No. 15-0030.
`
`
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`
`
`4
`
`

`
`
`
`inter partes review of the ’627 Patent is satisfied.
`
`A. Grounds for Standing
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ’627 Patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review challenging the patent claims on the grounds
`
`identified herein.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b)
`
`B.
`Petitioner requests inter partes review and cancellation of claims 1, 4, 6, 7,
`
`10-13, and 16 of the ’627 Patent as being obvious under 35 U.S.C. §103. The ’627
`
`Patent is the national stage entry of PCT/US01/04258 and claims priority to
`
`Provisional U.S. Patent Application Nos. 60/181,600; 60/187,924; and 60/255,980,
`
`filed on February 10, 2000; March 8, 2000; and December 15, 2000, respectively.
`
`(EX1001). February 10, 2000 is therefore the earliest priority date on which the
`
`’627 patent can rely.
`
`The Specific Art on Which the Challenge is Based
`
`1.
`Petitioner relies upon the following patents and printed publications:
`
`Exhibit 1004 – U.S. Patent No. 6,016,476 (“Maes”) issued on January 18,
`
`2000 and filed on January 16, 1998. Maes is prior art under 35 U.S.C. §§ 102(a)
`
`and (e). Maes was applied during prosecution. However, Petitioner presents new
`
`supporting evidence and combines Maes with other prior art references that were
`
`
`
`5
`
`

`
`
`
`never seen by the Office, forming combinations that this Office never considered
`
`and which cast Maes in a new light.
`
`Exhibit 1005 – Japanese Patent Application No. H10-69553 (“Ikeda”) was
`
`published on March 10, 1998. Ikeda is therefore available as prior art under at
`
`least pre-AIA 35 U.S.C. § 102(b). Ikeda was not considered during prosecution
`
`and is not cumulative of any prior art considered by the examiner(s).
`
`
`
`Exhibit 1006 – WO 99/24892 (“Paltenghe”) was published on May 20,
`
`1999. Paltenghe is available as prior art under at least pre-AIA 35 U.S.C. §
`
`102(a). Paltenghe was not considered during prosecution and is not cumulative of
`
`any prior art considered by the examiner(s).
`
`The Specific Grounds on Which the Challenge is Based
`
`2.
`Petitioner respectfully requests cancellation of claims 1, 4, 6, 7, 10-13, and
`
`16 of the ’627 Patent the based on the following grounds:
`
`1.
`
`Claims 1, 4, 6, 7, and 11-13 are obvious under 35 U.S.C. § 103(a) in
`
`view of Maes and Ikeda; and
`
`2.
`
`Claims 1, 4, 6, 10, 11, and 16 are obvious under 35 U.S.C. § 103(a) in
`
`view of Maes and Paltenghe.
`
`V.
`
`BACKGROUND OF THE ’627 PATENT
`
`A. Background of the Technology
`
`
`
`6
`
`

`
`
`
` 
`
`The ’627 Patent is generally directed to a remote, handheld, ticket-
`
`purchasing system. Specifically, the ’627 Patent provides “[a] way to pay for
`purchases … that is mobile, and that provides a user-friendly electronic interface
`with financial accounting systems.” (EX1001, 1:35-40; 2:5-9). But the use of
`
`wireless mobile devices to make secure purchases—including ticket purchases—
`
`was well known as of 2000. (EX1003, ¶19).
`
`
`
`Personal, handheld devices, like PDAs, were first introduced in the early
`
`1990s. These devices, while smaller and more portable than personal computers
`
`(PCs), included central processing units (CPUs) (i.e., microprocessors) to execute
`
`the software programs contained on the device and provided features such as
`
`calendars, address books, task and note entry, and handwriting recognition.
`
`Shortly after their introduction, these devices were sold equipped with wireless
`
`technology to allow users to interact with businesses, merchants, and other third-
`
`parties from anywhere, using the Internet. These personal, handheld devices were
`
`also often equipped with short-range-wireless-communication capabilities, such as
`
`infrared (IR) technology, to allow for additional functionality, such as connecting
`
`to peripherals like printers and keyboards. (EX1003, ¶¶20-28).
`
`
`
`The ’627 Patent itself acknowledges that personal, handheld devices were
`
`widely available as of 2000: “[a] User may purchase a PDA/wireless phone at any
`
`retail outlet that sells such devices” and the claims “could be applied to all
`
`
`
`7
`
`

`
`
`
`handheld or watch-sized PDA computing devices without departing from the spirit
`
`of the invention.” (EX1001, 25:13-14; 8:45-48). Accordingly, the ’627 Patent’s
`
`claimed hardware was known before 2000, as was its functionality. (EX1003,
`
`¶24.)
`
`
`
`Before 2000, it was well known that individuals were performing routine, in-
`
`person transactions, such as paying bills, remotely using wireless communications,
`
`like the Internet: “More recently, online Internet payment systems have been
`
`developed to provide for payment of bills through online access to a centralized
`
`payment system.” (See EX1001, 1:35-37). By 2000, many software programs and
`
`devices had been developed that aided individuals in performing these functions
`
`remotely. For example, one of Ikeda’s objects is to provide a system so that “a
`
`ticket buyer can purchase a ticket easily without going to a ticket issuing location.”
`
`(EX1005, ¶[0008]; EX1003, ¶29.)
`
`Additionally, it was well known before 2000 that individuals could use
`
`either PDAs or PCs to perform these remote tasks and that PDAs and PCs were
`
`virtually interchangeable for all but the most computation-intensive tasks. For
`
`example, Maes notes that “[t]he PDA includes a modem, a serial port and/or a
`
`parallel port so as to provide direct communication capability with peripheral
`
`devices (such as POS and ATM terminals) and is capable of transmitting or
`
`receiving information through wireless communications such as radio frequency
`
`
`
`8
`
`

`
`
`
`(RF) and infrared communication,” and Paltenghe states that “a virtual wallet
`
`system may comprise a personal storage device 12” which “may comprise a …
`
`personal digital assistant (PDA).” (EX1004, Abstract; EX1006, 12:10-20).
`
`Accordingly, all aspects of the challenged claims were well known before 2000.
`
`(EX1003, ¶30.)
`
`Summary of the ’627 Patent
`
`B.
`At first glance, the ’627 Patent’s claims appear detailed. But upon closer
`
`
`
`scrutiny, they claim nothing more than a simple, obvious invention mixed in with
`
`lengthy—non-substantive—claim language. At its core, the ’627 Patent takes the
`
`“traditional way to pay for purchases” and migrates it to existing wireless mobile
`
`devices. (EX1001, 1:28-43). The resulting remote, handheld, ticket-purchasing
`
`system was well known prior to the ’627 Patent’s earliest priority date. (EX1003,
`
`¶¶31-32.)
`
`The ’627 Patent itself admits that it did not invent any kind of wireless
`
`device or associated hardware, noting that wireless devices capable of performing
`
`the claimed functionality were generic and available:
`
` “A User may purchase a PDA/wireless phone at any retail outlet that sells
`
`such devices.” (EX1001, 25:13-14);
`
`
`
`9
`
`

`
`
`
` “The invention could be applied to all hand held or watch-sized PDA
`
`computing devices without departing from the spirit of the invention.” (Id.,
`
`8:45-48) (emphasis added); and
`
` “A wireless mobile phone enabled to perform functions according to the
`
`present invention could be of any size or make.” (Id. 9:12-14) (emphasis
`
`added).
`
`Thus, while the claims recite multiple limitations directed to generic-
`
`hardware components, such as memory and a microprocessor, these claim
`
`limitations were well known prior to 2000 and cannot be given patentable weight.
`
`The only possible “inventive” aspect of the challenged claims is the claimed
`
`functionality of purchasing an “authorization certificate”—an electronic ticket—on
`
`a wireless device. But that too was old. (EX1003, ¶¶33-34.)
`
`
`
`Indeed, the claimed functionality was well known. All the ’627 Patent’s
`
`claimed functionality does is access a website, request an “authorization
`
`certificate,” exchange payment and security information, download the certificate,
`
`and store the certificate in memory. (EX1001, cl. 1; Figs. 12a-12d). In the ’627
`
`Patent, an “authorization certificate” is simply a ticket that authorizes the user to
`
`do something, i.e., “to attend a movie, to take a particular airline flight, and the
`
`like.” (EX1001, 1:44-47). This functionality, however, was well known before
`
`2000, as a cursory review of Ikeda’s figure 5, annotated below, demonstrates:
`
`
`
`10
`
`

`
`
`
`
`
`Access a website and request an authorization certificate
`
`
`
`Exchange payment and
`security information
`
`Download and store
`the authorization
`certificate
`
`(EX1005. Fig. 5; EX1003, ¶35.)
`
`Claims 6 and 11 recite using biometric data for security, but this too was
`
`well known before 2000. For example, Maes explains that “[a] biometric sensor
`
`40 of any conventional type may also be provided for collecting biometric data …
`
`to provide biometric verification.” (EX1004, 5:54-60). Similarly, Paltenghe
`
`discloses a virtual wallet having “authentication mechanisms,” and that
`
`“[a]uthentication information may comprise objects such as certificates, access
`
`
`
`11
`
`

`
`
`
`keys and biometric information.” (EX1006, 5:20-21). Thus, the ’627 Patent
`
`claims nothing more than the well-known idea of a remote, handheld, ticket-
`
`purchasing system. (EX1003, ¶36.)
`
`
`
`Prosecution History of the ’627 Patent
`
`C.
`Issued on April 22, 2014, the ’627 Patent had a long prosecution history,
`
`
`
`during which the claims underwent multiple amendments to overcome prior art
`
`rejections. On November 25, 2003, the Examiner allowed the claims because
`
`Applicant amended independent claims 23 and 56 (now claims 1 and 11) to more
`
`specifically recite the functionality of the claimed “microprocessor” and the
`
`program instructions executed by the microprocessor. (See EX1007, pp. 1719-
`
`1727; 1741-1744). The reason for allowance was that the prior art did not disclose
`
`wireless-device microprocessors triggering the host computer device to send a
`
`copy of the authorization certificate and security information to the merchant’s
`
`computer system. (EX1007, pp. 1726-27; 1742-43). The prior-art combinations
`
`discussed herein show exactly that and were not before the Examiner.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`
` 
`
`The level of ordinary skill in the art is evidenced by the prior art. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The prior art discussed herein
`
`demonstrates that a person of ordinary skill in the art (“POSA”) in the field of the
`
`’627 Patent would have been a person with at least a bachelor’s degree in electrical
`
`
`
`12
`
`

`
`
`
`engineering, computer engineering, computer science, or equivalent training, and
`
`at least two years of experience in the field of embedded-communication systems.
`
`(EX1003, ¶¶17-18).
`
`VII. DECLARATION EVIDENCE
`
`
`
`This Petition is supported by the declaration of Herbert Cohen, an expert in
`
`the field of embedded-communication systems, EX1003. Mr. Cohen offers his
`
`opinion with respect to the skill level of POSA, EX1003, ¶¶17-18, the content and
`
`state of the prior art, id., ¶¶19-30, claim construction, id., ¶¶37-43, and the
`
`teachings and suggestions that one of ordinary skill would understand based on
`
`Exs. 1004-1006, id., ¶¶44-198. For over twenty years, Mr. Cohen developed
`
`software and managed development and testing efforts to deliver wired- and
`
`wireless-communication subsystems to major equipment providers. Mr. Cohen
`
`thus has a deep, detailed understanding of wireless-communications protocols and
`
`products. Mr. Cohen has been published in EE Times and has received multiple
`
`awards for his work in wireless-communication systems. (EX1003, ¶¶2-8).
`
`VII. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))
`
`
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable interpretation (“BRI”) in view of the
`
`specification in which they appear. 37 C.F.R. §42.100(b). Petitioner adopts the
`
`plain meaning for all claims terms, but Petitioner proposes a specific construction
`
`
`
`13
`
`

`
`
`
`for several terms below. These constructions are consistent with the plain and
`
`ordinary meaning under the Phillips v. AWH Corp. standard.
`
`“authorization certificate”
`
`A.
`Every claim of the ’627 Patent, either directly or through dependency,
`
`recites the claim term “authentication certificate.” The ’627 Patent’s specification
`
`clearly defines this term, providing that a PDA “would hold electronic
`
`authorization certificates, or eTickets, to use for particular service or attend a
`
`particular event.” (EX1001, 6:14-17). Additionally, the ’627 Patent explains that
`
`authorization certificates could include tickets “to attend a movie, to take a
`
`particular airline flight, and the like.” (EX1001, 1:44-48). Therefore, POSA
`
`would understand an “authorization certificate” to be “an electronic ticket.”
`
`(EX1003, ¶39).
`
`B.
`
`“set of executable computer program instructions”
`
`Every claim of the ’627 Patent, either directly or through dependency,
`
`recites the claim term “set of executable computer program instructions.” The
`
`limitation “executable computer program instructions” is not defined in the
`
`specification, although the terms “executable,” “computer,” “program,” and
`
`“instructions” are used in various places in their plain and ordinary way. (See, e.g.,
`
`EX1001, 2:24-30; 8:46-59; 21:35-37; 43:11-14; 55:30-31, 55:39-42, 55:67, 56:54-
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`55). Thus, the limitation “executable computer program instructions” should
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`receive its plain and ordinary meaning. But it may be unclear what the claims
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`mean by the phrase “set of.” The specification does not define this term, and it
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`therefore appears as a convenient drafting tool used by the claim drafter to identify
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`some code that performs distinct functionality. Since the ordinary meaning of
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`“set” is “a collection of things belonging, issued, used, or growing together” (i.e., a
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`grouping), POSA would understand that the limitation “set of” means any
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`grouping—logical or otherwise—of executable-program instructions. (EX1008, p.
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`1228; EX1003, ¶¶40-41).
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`C.
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`“executable memory storage device encoded with … a set of
`executable computer program instructions”
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`Every claim of the ’627 Patent, either directly or through dependency,
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`recites the claim term “executable memory storage device encoded with a … set of
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`executable computer program instructions.” The limitation “executable memory
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`storage device” is used in its ordinary way only twice in the specification and
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`“executable computer program instructions” was discussed above. (EX1001,
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`55:67, 56:54-55; §VII(B)). The only term needing discussion is “encoded with.”
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`The specification does not define or even mention this term and, although
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`“encoded” has several specific definitions in computer science, POSA would
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`understand, and common sense dictates, that “encoded with” is being used in the
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`’627 patent as a synonym for “store.” This is consistent with the immediately
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`preceding limitation that recites that the storage device is “adapted for storing
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`executable-program instructions.” Therefore, this limitation means “executable
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`memory storage device that stores … a set of executable computer program
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`instructions.” (EX1003, ¶¶42-43).
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`VII. GROUNDS OF UNPATENTABILITY
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`Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), this section demonstrates that
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`claims 1, 4, 6, 7, 10-13, and 16 of the ’627 Patent are unpatentable.
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`A. Ground 1: Claims 1, 4, 6, 7, and 11-13 are Obvious over Maes
`and Ikeda
`1. Maes Overview
`Maes discloses a PDA on which a user can store their credit card and other
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`personal information and then interact with a point-of-sale (POS) system to
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`perform a consumer transaction. (EX1004, 2:23-31.) Maes is specifically
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`designed to work with any POS system immediately, without any infrastructure
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`changes. (EX1004, 4:12-18).
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`Maes discloses a “portable information and transaction processing (PDA)
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`device,” the heart of which “is a central processing unit (CPU) 12, which controls
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`the operations of the PDA device 10 via programs stored in a memory 14 and
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`executed by the CPU 12.” (EX1004, 4:65-5:4; EX1003, ¶45). Figure 1 provides
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`an overview of Maes:
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`Maes’s PDA includes a touch screen or equivalent user interface 34, a
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`central processing unit (CPU) 12 for processing data, such as the biometric data
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`used for user verification, a memory 14 (data storage device) for storing user
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`information, and ports that provide communication capability to other devices,
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`such as a central server 60 and POS systems. (EX1004, 3:17-37; 7:57-8:9; 12:9-
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`15). For example, Maes discloses user communication between the PDA 10 and
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`both the central server 60 and a POS terminal using the serial port 42, parallel port
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`44, modem 42, IR port 54, or RF port 50. (EX1004, 7:57-8:9; 12:9-15). Maes also
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`discloses that the PDA 10 can connect to the central server 60 “through a digital
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`communication channel such as internet, intranet, or local area network” or “may
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`be established through wireless communication.” (EX1004, 7:36-8:2). Thus,
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`Maes’s PDA could connect to external devices via the Internet wirelessly.
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`(EX1004, 8:5-9; EX1003, ¶46).
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`As shown in Figure 4, “[o]nce the communication has been established, the
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`user is prompted … to enter certain verification data (step 102),” which “is then
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`transmitted to the central server via the communication link L1.” (EX1004, 8:13-
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`18).
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`For example, the central server may ask a series of questions or prompt the user to
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`enter a PIN. (EX1004, 8:18-28). Additionally, the system can require biometric
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`verification to obtain the digital certificate from the central server. (EX1004,
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`10:18-21; EX1003, ¶47).
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`2. Ikeda Overview
`Ikeda discloses a remote, ticket-purchase system where a person can
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`remotely request, purchase, and receive a ticket from a ticket-issuing device at a
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`ticket-issuing facility. (EX1005, ¶[0010]).
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`
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`(Id., Fig. 1.) Specifically, Ikeda discloses a personal device (called a user device 2)
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`that a user uses to input a ticket-issue request; a ticket-issuing device 102 that
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`receives the request and issues a ticket; and a ticket-using device 104, the business
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`that uses the purchased ticket (e.g., airline or hotel). (EX1005, ¶[0009]). For
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`example, as shown in Fig. 5, the user device 2 can request a ticket from the ticket-
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`issuing device 1, such as a hotel-lodging ticket. (EX1005, ¶[0129], Fig. 5, step S2;
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`EX1003, ¶¶48-49).
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`Ikeda discloses that the ticket-issuing device can be “a WWW server
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`installed in the travel agency or a WWW server installed in the hotel” in which
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`case “the user receives the ticket issuing service over the internet.” (EX1005,
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`¶[0130]). Once the ticket-issuing device retrieves the search results, the user can
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`select the desired hotel, as illustrated in Figure 6(C), below, select a hotel (Fig.
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`6(G)), and input payment information (Fig. 5, step S6) to pay the reserved hotel’s
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`lodging fee. (EX1005, ¶¶[0132]-[0138]; EX1003, ¶50).
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`Additionally, the ticket-issuing device requests user information, like name
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`and password, to provide security for the ticket. (EX1005, ¶¶[0145]-[0148]).
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`Once the hotel reservation and charging information are confirmed, the user device
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`is alerted that the ticket information will be transmitted shortly and that a fee will
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`be withdrawn from the credit card (Fig. 6(H)). (EX1005, ¶[0149]). The ticket is
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`then encoded and transmitted to the user device (Fig. 5, step S14), and the user
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`device decodes the ticket information and either prints the ticket—as shown in
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`Figure 7 below—or records the information on a portable recording medium.
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`(EX1005, ¶¶[0150]-[0151]; [0157]; EX1003, ¶51).
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`Additionally, in Figure 5, step S18, “the ticket issuing device also transmits the
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`ticket information and the user code information . . . to the ticket using device 3.”
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`(EX1005, ¶[0152]; EX1003, ¶52).
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`3. Maes in view of Ikeda
`Maes discloses the hardware and communications features recited in claims
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`1, 4, 6, 7, and 11-13. Although Maes discloses that it makes requests to a POS
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`system, it does not explicitly disclose the claimed remote-ticket-purchasing
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`functionality. But, Ikeda does, and it would have been obvious to POSA to
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`combine Maes and Ikeda. (EX1003, ¶57.)
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`Specifically, it would have been obvious to POSA to use Maes’s PDA
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`device with Ikeda’s ticket-distribution system. Maes envisioned using its PDA
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`device for POS and consumer transactions and disclosed that the device could be
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`“immediately employed without having to change the existing infrastructure”
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`because it was designed to work with existing consumer-transaction systems.
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`(EX1004, 2:23-30; 4:12-18). Ikeda discloses one such system: “an object [of the
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`invention] is to provide a ticket issuing system, a ticket issuing device, and a ticket
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`using device with which a ticket buyer can purchase a ticket easily.” (EX1005,
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`¶[0008]). Thus, combining the two references would have been obvious to POSA
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`with an expectation of success: Maes’s PDA would be a well-suited Ikeda user
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`device. (EX1003, ¶58).
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`Moreover, POSA would be motivated to combine Maes and Ikeda because
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`doing so would have been a simple combination of prior-art e