Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`CPI CARD GROUP INC.
`Petitioner
`
`v.
`
`Gemalto S.A.
`Patent Owner
`
`________________________________
`
`Case: IPR2017-IPR2017-01320
`U.S. PATENT NO. 6,786,418
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO 6,786,418
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
`
`

`

`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................ 1
`I.
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8 ................................................ 3
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ........................................ 3
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................................. 3
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .............................. 3
`D. Service Information Under 37 C.F.R. § 42.8(b)(4) .......................................... 3
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103 .................................................... 4
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104 ......................................... 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ......................................... 4
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .......................................................................................................... 4
`C. Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3) ................... 5
`1.
`“Customizing station” ................................................................................ 5
`2.
`“monitoring the occurrence of a request” and “monitoring the availability
`of each server” .................................................................................................... 6
`3.
`“Management Interface” ............................................................................ 9
`4.
`“Data Server” ............................................................................................. 9
`5.
`“as soon as they are received” and “as soon as said server [it] is
`available” ..........................................................................................................10
`D. How the Construed Claims are Unpatentable Under 37 C.F.R. § 42.104(b)(4)
` 12
`E. Supporting Evidence Under 37 C.F.R. § 42.104(b)(5) ...................................12
`V. TECHNOLOGY BACKGROUND ................................................................12
`VI. THE ALLEGED INVENTION OF THE ’418 PATENT ..............................13
`VII. LEVEL OF ORDINARY SKILL IN THE ART .........................................15
`VIII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(b) .................15
`A. All References Relied Upon As Grounds for Trial Are Prior Art to the ’418
`Patent Under Pre-AIA 35 U.S.C. § 102(e) .....................................................15
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`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
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`B. Ground 1: Claims 1-2, 7-13 and 15-17 are Invalid Under § 103 over Goman
` 16
`1. Technical Overview of Goman ................................................................16
`2. Claim 1 is Obvious Over Goman .............................................................22
`3. Claim 2 is Obvious Over Goman .............................................................36
`4. Claim 7 is Obvious Over Goman .............................................................40
`5. Claim 8 is Obvious Over Goman .............................................................41
`6. Claim 9 is Obvious Over Goman .............................................................43
`7. Claim 10 is Obvious Over Goman ...........................................................44
`8. Claim 11 is Obvious Over Goman ...........................................................45
`9. Claim 12 is Obvious Over Goman ...........................................................45
`10. Claim 13 is Obvious Over Goman ...........................................................46
`11. Claim 15 is Obvious Over Goman ...........................................................49
`12. Claim 16 is Obvious Over Goman ...........................................................49
`13. Claim 17 is Obvious Over Goman ...........................................................50
`C. Ground 2: Claim 4 is Invalid Under § 103 over Goman in view of
`Applicant’s Admitted Prior Art. .....................................................................52
`D. Ground 3: Claims 1, 3, and 13-14 are Obvious under §103(a) over
`Mackenthun .....................................................................................................54
`1. Technical Overview of Mackenthun........................................................54
`2. Claim 1 is Obvious Over Mackenthun ....................................................57
`3. Claim 3 is obvious over Mackenthun ......................................................66
`4. Claim 13 is Obvious Over Mackenthun ..................................................69
`5. Claim 14 is obvious over Mackenthun ....................................................73
`IX. CONCLUSION ...............................................................................................74
`
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`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 5
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 53, 54, 67
`
`Statutes
`
`35 U.S.C. § 102 .................................................................................................... 4, 18
`
`35 U.S.C. § 102(e) ......................................................................................... 4, 15, 16
`
`35 U.S.C. §§ 311-319................................................................................................. 1
`
`35 U.S.C. § 325(d) ................................................................................................... 18
`
`United States Code Title 35 ....................................................................................... 4
`
`America Invents Act .................................................................................................. 4
`
`Other Authorities
`
`37 C.F.R., Part 42 ....................................................................................................... 1
`
`37 C.F.R. § 42.8 ......................................................................................................... 3
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 3
`
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 3
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 3
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 4
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`
`37 C.F.R. § 42.103 ..................................................................................................... 4
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
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`Case IPR2017-IPR2017-01320
`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
`Patent No. 6,786,418
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`37 C.F.R. § 42.104(a) ................................................................................................. 4
`37 CPR. § 42.104(a) ............................................................................................... ..4
`
`37 C.F.R. § 42.104(b) .......................................................................................... 4, 15
`37 CPR. § 42.104(b) ........................................................................................ ..4, 15
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 5
`37 CPR. § 42.104(b)(3) .......................................................................................... ..5
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 12
`37 CPR. § 42.104(b)(4) ........................................................................................ ..12
`
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 12
`37 CPR. § 42.104(b)(5) ........................................................................................ ..12
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`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
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`PETITIONER’S EXHIBIT LIST
`
`Exhibit Description
`
`Ex. 1001 U.S. Patent No. 6,786,418 (“’418 Patent”)
`
`Ex. 1002 File History for U.S. Patent No. 6,786,418
`
`Ex. 1003
`
`Declaration of Nathaniel Polish Ph.D. in Support of the Petition for
`Inter Partes Review of U.S. Patent No. 6,786,418
`
`Ex. 1004 U.S. Patent No. 6,196,459 to Goman et al.
`
`Ex. 1005 U.S. Patent No. 5,969,318 to Mackenthun
`
`Ex. 1006
`
`Exhibit A to Gemalto S.A.’s Amended Disclosure Of Asserted Claims
`And Infringement Contentions dated October 13, 2016 in Gemalto
`S.A. v. CPI Card Group Inc. Civil Action No. 1:16-cv-01006-RBJ,
`DCO
`
`Ex. 1007
`
`Joint Chart Of Disputed Claim Terms dated December 16, 2016 in
`Gemalto S.A. v. CPI Card Group Inc. Civil Action No. 1:16-cv-
`01006-RBJ, DCO
`
`Ex. 1008
`
`Plaintiff Gemalto S.A.’s Response In Opposition To Defendant CPI
`Card Group’s Motion To Dismiss For Failure To State A Claim Upon
`Which Relief Can Be Granted, dated June 15, 2016 in Gemalto S.A. v.
`CPI Card Group Inc. Civil Action No. 1:16-cv-01006-RBJ, DCO
`
`Ex. 1009
`
`Exhibit A to Gemalto’s Response To Invalidity Contentions, dated
`October 28, 2016 in Gemalto S.A. v. CPI Card Group Inc. Civil
`Action No. 1:16-cv-01006-RBJ, DCO
`
`Ex. 1010
`
`“Webster’s New World Dictionary of Computer Terms, 6th Ed.,”
`Simon & Schuster (1997)
`
`Ex. 1011 Curriculum Vitae of Nathaniel Polish, Ph.D.
`
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`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
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`Exhibit Description
`
`Ex. 1012
`
`Order Denying Motion to Dismiss, Dkt. 66, in Gemalto S.A. v. CPI
`Card Group Inc. Civil Action No. 1:16-cv-01006-RBJ, DCO
`
`Ex. 1013 Transcript of Deposition Of François Maurel, April 20, 2017
`
`
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`Case IPR2017-IPR2017-01320
`Patent No. 6,786,418
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`I.
`
`INTRODUCTION
`CPI Card Group Inc. petitions for inter partes review under 35 U.S.C. §§ 311-
`
`319 and 37 C.F.R., Part 42 of claims 1-4 and 7-17 of U.S. Patent No. 6,786,418 (the
`
`“’418 Patent”), which was originally issued to Gemplus, and is purportedly assigned
`
`to Gemalto S.A. As shown herein, there is a reasonable likelihood that Petitioner
`
`will prevail by proving those claims are invalid.
`
`The ’418 Patent claims are all directed to systems for “customizing” smart
`
`cards. Smart cards are cards that contain a microcircuit including a memory. The
`
`process of customization, also known as “personalization,” involves loading the
`
`memory of the smart card with data and/or software applications to make it useable.
`
`Ex. 1003 ¶18; Ex. 1012, 3. As described in the Background of The Invention section
`
`of the ’418 Patent, the prior art customization systems included customizing
`
`machines having several customizing stations. Each prior art customizing station
`
`included a microprocessor and reader/encoder for loading the data onto the smart
`
`cards. The data in the prior art is supplied to the customizing stations from peripheral
`
`devices. Ex. 1001, Abstract, 1:14-30; Ex. 1003 ¶22; Ex. 1013, 18:22-20:7.
`
`The ’418 Patent identifies two purported problems in the prior art. First, the
`
`communication bus connecting the customizing stations and the peripherals
`
`supplying data is insufficient for managing the volume of data. Ex. 1001, 1:44-50;
`
`Ex. 1012, 3; Ex. 1013, 72:12-14. Second, data requests from two or more
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`customizing stations may be made of a particular data peripheral, also described as
`
`a data server, when another data server is available. This architecture results in one
`
`or more of the customizing stations waiting for its requested data. Ex. 1001, 2:3-8.
`
`The solution described in the ’418 Patent to these purported problems is to provide
`
`a management interface with respective bidirectional links to the data servers and to
`
`the customizing stations, that are separate from the communication bus, to allow
`
`sharing of the common data resource. Ex. 1001, 2:12-37; Ex. 1012, 3. This was
`
`confirmed by the inventor, Mr. Maurel:
`
`So the purpose of this invention is to allow the six -- I don't know how
`many stations, I don't remember. The seven or six stations -- so to allow
`the six stations to communicate with one DEP or several DEPs in
`realtime. So the purpose of the invention, I think, is the resource
`sharing -- the DEP resource sharing across multiple stations.
`Ex. 1013, 20:17-23.
`
`But as shown in detail below, by more than a year prior to the earliest possible
`
`effective filing date of the ’418 Patent, those skilled in the art had developed
`
`customizing systems that included bidirectional links between the customizing
`
`stations and the data servers, with a management interface to allow the sharing of
`
`the common data sources. The challenged ’418 Patent claims recite nothing more
`
`than the customizing system explicitly taught by the prior art or obvious variants
`
`thereon, known well before the ’418 Patent effective filing date.
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`Patent No. 6,786,418
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`II. MANDATORY NOTICES – 37 C.F.R. § 42.8
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`The real party-in-interest is CPI Card Group Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The purported current owner of the ’418 Patent (the “PO”) has asserted at least
`
`claims 1-2, 4, 7-13 and 15-17 of the ’418 Patent against Petitioner in the United
`
`States District Court for the District of Colorado in the case numbered 1:16-cv-
`
`01006-RBJ.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Lead: Michael J. Scheer (Reg. No. 34,425, The Law Office Of Michael J.
`
`Scheer, 5531 Murietta Avenue, Sherman Oaks, CA 91401, P: 818-616-3363,
`
`mscheer@michaeljscheer.com). Backup: Pejman Sharifi (Reg. No. 45,097,
`
`WINSTON & STRAWN LLP, 200 Park Avenue, New York, NY 10166-4193, P:
`
`212-294-2603 / F: 212-294-4700, psharifi@winston.com) and Louis Campbell
`
`(Reg. No. 59,963, WINSTON & STRAWN LLP, 275 Middlefield Rd., Suite 205
`
`Menlo Park, CA 94025; P:
`
`(650) 858-6500
`
`/ F:
`
`(650) 858-6550,
`
`llcampbell@winston.com).
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Service via hand-delivery may be made at the postal mailing address of lead
`
`and back-up counsel. Petitioner consents to service by e-mail.
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`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`The required fee is being paid through PRPS.
`
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’418 Patent is available for IPR and that it is not
`
`barred or estopped from requesting this IPR.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests cancellation of claims 1-4 and 7-17 of the ’418 Patent in
`
`view of the following prior art references: (1) U.S. Patent No. 6,196,459 (“Goman”);
`
`(2) U.S. Patent No. 5,969,318 (“Mackenthun”); and (3) Applicant’s Admitted Prior
`
`Art (“AAPA”). Mackenthun and Goman are both prior art references under 35
`
`U.S.C. §102 (pre-AIA).1 Each of these patents was filed prior to the earliest effective
`
`filing date of the ’418 Patent and are therefore prior art under at least §102(e).
`
`Petitioner presents the following grounds for trial: Ground 1: Claims 1, 2, 7-
`
`13 and 15-17 are obvious under §103(a) over Goman. Ground 2: Claim 4 is obvious
`
`under §103(a) over Goman in view of AAPA discussed in the specification of the
`
`
`1 All citations to statutes are to Title 35 of the United States Code before the
`
`passage of the America Invents Act (“AIA”) unless otherwise noted.
`
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`’418 Patent. Ground 3: Claims 1, 3, and 13-14 are obvious under §103(a) over
`
`Mackenthun.
`
`C. Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3)
`In an inter partes review, “[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
`
`it appears.” 37 C.F.R. § 42.100(b). See also In re Cuozzo Speed Techs., LLC, 793
`
`F.3d 1268 (Fed. Cir. 2015) (approving the use of the “BRI” standard). Since claim
`
`construction standards differ in a court proceeding, Petitioner reserves the right to
`
`argue for a different construction in any pending or later court proceeding.
`
`1.
`The element “customizing station” appears in independent claims 1 and 13
`
`“Customizing station”
`
`and dependent claims 2-4, 8, 9, 11, and 16-17. As described in the specification and
`
`recited in independent claims 1 and 13, the primary function of a customizing station
`
`is to request data for customizing a smart card. “The invention concerns a smart
`
`card customizing system characterised [sic] in that it comprises: at least one
`
`customizing machine each equipped with at least one customizing station sending
`
`customizing data requests.” Ex. 1001, 2:18-21. The specification is completely
`
`silent on any specific components, devices, hardware or software in the customizing
`
`station for generating or sending the requests for customizing data. Ex. 1003 ¶59.
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`Although the claims never recite that the customizing station actually writes
`
`data to a smart card, in a specific hardware embodiment disclosed in the
`
`specification, recited in claim 4, the customizing station includes a “reader/encoder”
`
`and “a microprocessor” that perform this unclaimed function. Ex. 1001, 3:57-64;
`
`Ex. 1003 ¶¶60-61.
`
`As described in the specification, the customizing stations thus comprise one
`
`or more devices used for customizing smart cards. Accordingly, considering the
`
`description contained in the specification, the term “customizing station” is
`
`construed as “one or more devices for customizing a smart card.” Id. ¶62.
`
`2.
`
`“monitoring the occurrence of a request” and
`“monitoring the availability of each server”
`
`The term “monitoring” appears in claim 2. There is no description contained
`
`in the specification of what is meant by “monitoring” or how such monitoring is
`
`accomplished, most likely because the inventor had not conceived of this monitoring
`
`should be done:
`
`Q How was that monitoring achieved? How was it performed?
`
`Was it pinging? What was the technical mechanism?
`
`A I don't know the technical. I know that it was scrutinized -- to
`
`scrutinize the serial link and input, you know. And then I think
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`you have a stack, and you scrutinize also the availability of the
`
`DEPs, and you synchronize. But I didn't write the software.
`
`Ex. 1013, 97:7-14.
`
`The term “monitoring” only appears in the specification where the Summary
`
`of the Invention section repeats verbatim the language of claim 2. Ex. 1001, 2:41-
`
`43. Given the absence of any description of “monitoring” in the specification and
`
`the interpretation by PO in the related litigation, described below, a person of
`
`ordinary skill in the art (“POSITA”) would not interpret either of these limitations
`
`to require any active monitoring, such as polling or status checking by the
`
`management interface. Ex. 1003 ¶65.
`
`i.
`In the co-pending litigation, the PO has not proposed a claim construction for
`
`“monitoring the occurrence of a request”
`
`the phrase “monitoring the occurrence of a request.” In its Infringement
`
`Contentions, PO has indicated that this phrase is satisfied simply by the reception of
`
`a request. Id. ¶¶66-68. “Further, the application server 50a receives requests from
`
`the bank branch (see col. 8, ll. 61-66 of the ’075 patent stating that ‘a bank branch
`
`15 issues a card instant issue request … to the application server 50a,’ [sic]
`
`necessitates the monitoring of the occurrence of a request.” Ex. 1006, 13. Given
`
`the lack of any substantive description in the specification and considering the
`
`interpretation in the related litigation, the phrase “monitoring the occurrence of a
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`request” is construed as “determining that a request has been received.” Ex. 1003
`
`¶69.
`
`ii.
`In the co-pending litigation, PO has not proposed an explicit claim
`
`“monitoring the availability of each server”
`
`construction for the limitation “monitoring the availability of each server” and
`
`obliquely refers to its proposed construction for a different limitation. Ex. 1007, 56,
`
`39. PO has indicated in its Infringement Contentions that this phrase is allegedly
`
`satisfied by connecting to a server and a queuing process. Ex. 1003 ¶74. “In
`
`addition, ‘the application server 50a then connects to the application server 50b to
`
`retrieve card magnetic stripe calculation data’ … in conjunction with ‘[t]he system
`
`10 is now ready for another card print request’ indicate a queuing process, which
`
`reads on ‘monitoring the availability of each server.’” Ex. 1006, 15 (citations
`
`omitted). This interpretation begs the question of how the queuing process knows
`
`when a server is available. Ex. 1003 ¶76. Petitioner agrees that typical protocols
`
`involved in the process of making a connection to a server, e.g., handshaking,
`
`determines its availability. Id. ¶75. Given the lack of any substantive description in
`
`the specification and considering PO’s interpretation in the related litigation, the
`
`phrase “monitoring the availability of each server” is construed as “connecting to a
`
`server.” Id. ¶77.
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`3.
`The term “management interface” appears in claims 1-3 and 9-14. There is
`
`“Management Interface”
`
`no mention or discussion whatsoever of the claimed “management interface” in the
`
`Detailed Description section of the ’418 Patent specification. The Summary of the
`
`Invention section describes that “[t]his management interface comprises: a computer
`
`equipped with a multiway card,” Ex. 1001, 2:48-50, and further states that “each
`
`data server and each customizing station being respectively connected to the
`
`computer by a serial link on the multiway card.” Id. at 2:48-52. See Ex. 1013, 80:24-
`
`81:5. These recitations in the Summary are consistent with the claims. Applicants
`
`confirmed this interpretation of the management interface during prosecution of the
`
`application that led to the ’418 Patent. “Thus, in the context of claim 1, the
`
`management interface functions as a communication gateway between the
`
`customizing machine and the data server.” Ex. 1002, 69. See Ex. 1003 ¶80; Ex.
`
`1013, 119:1-120:7.
`
`Considering the use of the term in the specification, claims, and as further
`
`defined in the prosecution history, “management interface” is construed as “a
`
`communication interface between two devices.” Ex. 1003 ¶¶78-81.
`
`4.
`The term “data server” or “server” is found in claims 1-3, 7 and 12. The
`
`“Data Server”
`
`Detailed Description section in the ’418 Patent specification describes the “data
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`server” as comprising “a computer such as a personal computer PC which is
`
`equipped with a multiway card CM, a multitask real time system, for example six
`
`peripheral encrypting devices DEP1 to DEP6.” Ex. 1001, 4:2-11. However, this
`
`description of the phrase “data server” in the Detailed Description is inconsistent
`
`with the description in the Summary of the Invention and inconsistent with the
`
`recitation in the claims, as it includes the personal computer PC and the multiway
`
`card CM, both of which were previously expressly described in the Summary as part
`
`of the “management interface.” §IV.C.3.
`
`The Summary and claims make clear that the management interface is a
`
`separate element, connected to the data server by a computer link. Ex. 1003 ¶84. In
`
`the embodiment illustrated in Figure 1, the devices providing data to the
`
`management interface are the “peripheral encrypting devices DEP1 to DEP6.” Ex.
`
`1001, 4:5-6. Accordingly, considering the description in the Summary and its use
`
`in the claims, the term “data server” is construed as “a device providing data.” Ex.
`
`1003 ¶¶82-88.
`
`5.
`
`“as soon as they are received” and “as soon as
`said server [it] is available”
`
`The phrases “as soon as they are received,” and “as soon as said server [it] is
`
`available” appear in claims 1 and 2. Other than the replication of the same claim
`
`language in the Summary of the Invention section, there is no description of these
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`phrases in the specification of the ’418 Patent. In the co-pending litigation, PO has
`
`proposed these phrases be construed as “receiving said requests and expediently
`
`transmitting them to at least one of said servers as soon as they are received and as
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`soon as said server is available and retaining said requests until one of said servers
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`is available.” Ex. 1007, 39. In this proposed construction, PO has interpreted “as
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`soon as” to mean “expediently.” Ex. 1003 ¶91.
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`A POSITA understands that in communications between devices there will be
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`delays, e.g., handshaking to ensure connectivity, and that the communication will be
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`expedient rather than instantaneous. Ex. 1003 ¶92. This was confirmed by Mr.
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`Maurel:
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`Q Right. And "as soon as" means as soon as is sort of practically
`possible; it doesn't mean instantaneously.
`A Yes.
`Q Did you put any boundaries on sort of what you mean by "as soon
`as"? Was there –
`A It's not easy. No, I don't think so.
`Q Okay.
`Ex. 1013, 95:1-7.
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`A POSITA would further understand that in communicating requests for data,
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`some processing of the request may have to take place due to protocol and formatting
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`differences between the requesting device and the device supplying the requested
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`data. Ex. 1003 ¶93. Given the lack of any substantive description in the
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`specification and considering PO’s interpretation in the related litigation, the phrases
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`“as soon as they are received” and “as soon as said server [it] is available” are
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`construed as performing these operations “expediently”. Id. ¶94.
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`D. How the Construed Claims are Unpatentable Under 37 C.F.R.
`§ 42.104(b)(4)
`See infra § VIII.
`
`Supporting Evidence Under 37 C.F.R. § 42.104(b)(5)
`
`E.
`Each ground for trial is supported by the expert testimony of Dr. Nathaniel
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`Polish (Ex. 1003) and other exhibits identified throughout this Petition and Dr.
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`Polish’s declaration.
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`V. TECHNOLOGY BACKGROUND
`The technology described in the ’418 Patent relates to computer systems and
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`equipment for customizing, also known as personalizing, smart cards (e.g., debit,
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`credit, identification, etc.). The process of customization involves loading the
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`memory of the smart card with software and data (e.g., required security measures)
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`specific to the ultimate use(s) contemplated for the card. As described in the ’418
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`Patent, the prior art customizing machines had several customizing stations
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`operating in parallel. The customizing stations are the devices that perform the
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`actual
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`interaction with
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`the smartcard and
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`include a microprocessor and
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`reader/encoder for loading the data onto the memory of the smart cards. The data in
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`the prior art customizing systems is supplied to the customizing stations from
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`peripheral devices such as the encryption devices described in the ’418 Patent
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`specification. Ex. 1001, Abstract, 1:14-50; Ex. 1003 ¶¶17-22.
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`VI. THE ALLEGED INVENTION OF THE ’418 PATENT
`There are two independent claims, 1 and 13, in the ’418 Patent. Each recite
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`the prior art customization machines, prior art customization stations and prior art
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`devices for delivering customization data. Ex. 1001, 1:10-50; Ex. 1003 ¶24. The
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`allegedly novel and unobvious elements in the independent claims are the
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`“management interface” element and the links connecting the customizing stations
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`and the data servers. See Ex. 1013, 27:3-8. As illustrated in Figure 1 of the ’418
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`Patent “[t]his management interface comprises: a computer [PC] equipped with a
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`multiway card [CM],” and that “each data server [DEP1-DEP6] and each
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`customizing station [PPP1–PPP6] being respectively connected to the computer by
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`a serial link [LS1-LS6, LD1-LD6] on the multiway card.” Ex. 1001, 2:48-52.
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`13
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`
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`As described above, the ’418 Patent identifies two purported problems in the
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`prior art customization systems: 1) insufficient capacity on the prior art
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`communication bus, Ex. 1001, 1:44-50; and 2) inefficient sharing of common
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`resources, e.g., data servers. Id. at 2:3-8. PO confirmed these were the two problems
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`solved in the ’418 Patent in its Opposition to CPI’s Motion to Dismiss in the co-
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`pending litigation, as did the Court in denying that Motion. Ex. 1008, 2-3; Ex. 1012,
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`2-3.
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`The solution described in the ’418 Patent for the first problem is to provide
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`computer links between the data servers and the customizing stations that are
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`separate from the communication bus. Ex. 1001, 1:58-65. The proposed solution to
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`the second problem is to provide a management interface on the computer links to
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`manage the data between the data servers and the customizing stations. “This aim
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`is achieved by having recourse to an interface management means, disposed between
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`the customizing machines and the servers.” Id. at 2:12-14. Both proposed solutions,
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`and thus the alleged invention, were also confirmed by PO in the corresponding
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`litigation. Ex. 1008, 3.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`When the ’418 Patent was filed, a POSITA relevant to the ’418 Patent had at
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`least a bachelor’s degree in computer science, electrical or computer engineering, or
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`a related field of study, and two or more years of industry experience relating to
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`smart card manufacturing. Additional graduate education could substitute for
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`professional experience, or significant experience in the field could substitute for
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`formal education. Ex. 1003 ¶28. In this Petition, reference to a POSITA refers to a
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`person with these qualifications.
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`VIII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B)
`A. All References Relied Upon As Grounds for Trial Are Prior Art
`to the ’418 Patent Under Pre-AIA 35 U.S.C. § 102(e)
`
`The earliest effective filing date of the ’418 Patent is August 27, 1999, the
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`filing date of the ’418 Patent’s parent PCT application PCT/FR99/02608. Goman
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`(U.S. Patent No. 6,196,459) was filed on May 11, 1998 and issued as a patent on
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`March 6, 2001. Mackenthun (U.S. Patent No. 5,969,318) was filed on November
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`24, 1997 and issued as a patent on October 19, 1999. As each of Goman and
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`Mackenthun are patents granted on an application for patent by another filed in the
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`United States before the invention by the applicant for the ’418 Patent, they
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`constitute §102(e) prior art and thus prior art under §103(a).
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`B. Ground 1: Claims 1-2, 7-13 and 15-17 are Invalid Under § 103
`over Goman
`1.
`Goman teaches “[a] smart card personalization system [that] provides an
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`Technical O