APPLE INC.,
`
`VISA INC., and VISA U.S.A. INC.
`
`v.
`
`Universal Secure Registry LLC
`
`Case Nos. IPR2018-00809, -00810, -00813
`U.S. Patent Nos. 9,530,137 and 9,100,826
`
`Patent Owner’s Demonstratives
`
`Hearing Date: July 16, 2019
`
`Demonstrative Exhibit – Not Evidence
`
`1
`
`
`
`VISA INC., and VISA U.S.A. INC.
`
`v.
`
`Universal Secure Registry LLC
`
`Case Nos. IPR2018-00809, -00810, -00813
`U.S. Patent Nos. 9,530,137 and 9,100,826
`
`Patent Owner’s Demonstratives
`
`Hearing Date: July 16, 2019
`
`Demonstrative Exhibit – Not Evidence
`
`1
`
`
`
`IPR2018-00809
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`2
`
`
`
`Claims 1, 12: “one or more signals including…”
`
`POR at 12-15.
`
`’137 Patent Claim 1[e]:
`
`’137 Patent Claim 12[e]:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`3
`
`Ex. 1101 at Cls. 1, 12.
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not Include
`All Three Types of Required Information (1[e], 12[e])
`
`POR at 17-22;
`Sur-Reply at 4.
`
` Petitioner is wrong that Jakobsson’s authentication code includes all three
`claimed types of information because Jakobsson’s system only transmits
`one form of a unitary authentication code 290 (either code 291, 292, or 293)
`that is created using a transformative “combination function.”
`
`POR at 17-22 Sur-reply at 4.
`
`Jakobsson
`Reference:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`4
`
`Ex. 1113 at Fig. 2.
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not Include
`All Three Types of Required Information (1[e], 12[e])
`
`POR at 17-22;
`Sur-Reply at 4.
`
` Petitioner maps the claimed “first authentication information” to Jakobsson's
`“authentication code 291”, the claimed “indicator of biometric authentication”
`to Jakobsson's “E”, and the claimed “time varying value” to Jakobsson's “T”,
`but there is no embodiment within Jakobsson where authentication code 291,
`E, and T are all transmitted.
`
`POR at 17-22 Sur-reply at 4.
`
` Rather, as shown in Figure 2 of Jakobsson, only a unitary authentication code
`290 (one form being code 291) is transmitted. Petitioner is therefore double-
`counting inputs used to create authentication code 291 and the code itself in an
`attempt to read on the challenged claims.
`
`POR at 17-22 Sur-reply at 4.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`5
`
`Sur-Reply at 4.
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not Include
`All Three Types of Required Information (1[e], 12[e])
`
`POR at 17-22;
`Sur-Reply at 4.
`
` Petitioner is wrong that the authentication code “includes” the inputs used to
`generate the code, because a one-way function is used to completely transform
`the inputs into the resultant code; once transformed, the inputs can no longer be
`easily derived. A POSITA would therefore not recognize Jakobsson’s system to
`transmit “one or more signals” that “includes” the three claimed pieces of
`information.
`
`POR at 17-22 Sur-reply at 4.
`
`Dr. Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`6
`
`Ex. 2010 at ¶ 54.
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not Include
`All Three Types of Required Information (1[e], 12[e])
`
`POR at 17-22;
`Sur-Reply at 4.
`
` The one-way function is a critical component of Jakobsson’s system and is
`required to achieve security.
`
`POR at 17-22 Sur-reply at 4.
`
`Dr. Jakobsson:
`
`Ex. 2017 at 127:6-20.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2017 at 134:1-13.
`
`IPR2018-00809
`
`7
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not Include
`All Three Types of Required Information (1[e], 12[e])
`
`POR at 17-22;
`Sur-Reply at 4.
`
` Jakobsson’s authentication code cannot “include” the three claimed pieces of
`information because Petitioner’s own expert acknowledged that it would be
`difficult to derive the inputs from the output of a one-way function.
`
`POR at 17-22 Sur-reply at 4.
`
`Petitioner’s Expert:
`
`Ex. 2019 at 71:3-10.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2019 at 79:14-24.
`
`IPR2018-00809
`
`8
`
`
`
`Claims 1, 12: “enablement signal indicating [an] approved []
`transaction”
`
`POR at 7-8.
`
`’137 Patent Claim 1[h], [i]:
`
`’137 Patent Claim 12[h], [i]:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`9
`
`Ex. 1101 at Cls. 1, 12.
`
`
`
`Jakobsson’s “Acknowledgement” Is Not Based on the
`Recited Claimed Information (1[h], 1[i], 12[h], 12[i])
`
`POR at 23-28;
`Sur-Reply at 9-10.
`
` Petitioner is wrong that Jakobsson’s “acknowledgment” is based on the
`biometric authentication and first/second authentication information
`because Jakobsson’s “acknowledgement” merely indicates successful
`receipt of information.
`
`POR at 23-25 Sur-reply at 9-10.
`
`Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1113 at ¶ 50.
`
`IPR2018-00809
`
`10
`
`
`
`Jakobsson’s “Acknowledgement” Does Not Indicate The
`Transaction Was Approved (1[h], 1[i], 12[h], 12[i])
`
`POR at 23-28;
`Sur-Reply at 9-10.
`
` Petitioner is wrong that Jakobsson’s “acknowledgment” indicates an approved
`transaction because an acknowledgement merely indicates successful receipt of
`information.
`
`POR at 23-25 Sur-reply at 9-10.
`
`Dr. Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2010 at ¶¶ 60-61.
`
`IPR2018-00809
`
`11
`
`
`
`Independent Claims 1 & 12
`
`’137 Patent:
`
`POR at 7-8.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1101 at Cls. 1, 12.
`
`IPR2018-00809
`
`12
`
`
`
`The Claimed “One or More Signals Including…” Three Distinct Pieces
`of Information
`
`POR at 12-15.
`
`’137 Patent:
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1101 at Cls. 1, 12.
`
`IPR2018-00809
`
`13
`
`
`
`Petitioner’s Mapping of the Three Claimed Pieces of Information
`Included in the “One or More Signals”
`
`POR at 17-22;
`Sur-Reply at 4.
`
`Petition:
`
`Petitioner’s Reply:
`
`Petition at 33.
`
`Reply at 2.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`14
`
`Sur-Reply at 4.
`
`
`
`Jakobsson’s System Only Sends A Unitary Authentication Code
`
`POR at 17-22;
`Sur-Reply at 3.
`
`Jakobsson Reference:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`15
`
`Ex. 1101 at Fig. 2.
`
`
`
`Petitioner’s Double-Counting is Improper
`
`Sur-Reply at 4-5.
`
`“Where a claim lists elements separately, ‘the clear implication
`of the claim language is that those elements are ‘distinct
`component[s]’ of the patented invention.”
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
`(quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)).
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`16
`
`
`
`Jakobsson’s Unitary Authentication Code Does Not “Include” the
`Three Claimed Pieces of Information
`
`POR at 22;
`Sur-Reply at 7-8.
`
`Dr. Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`17
`
`Ex. 2010 at ¶ 54.
`
`
`
`Jakobsson Requires the Use of a One-Way Function In Order to
`Maintain Security
`
`Sur-Reply at 6-7.
`
`Dr. Jakobsson:
`
`Ex. 2017 at 127:6-20.
`
`Ex. 2017 at 134:1-13.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`18
`
`
`
`Petitioner’s Own Expert Acknowledged It Would Be Hard to Derive the
`Inputs From the Output of a One-Way Function
`
`Sur-Reply at 9.
`
`Petitioner’s Expert Admits:
`
`Ex. 2019 at 71:3-10.
`
`Ex. 2019 at 79:14-24.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`19
`
`
`
`Independent Claims 1 & 12
`
`’137 Patent:
`
`POR at 7-8.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 1101 at Cls. 1, 12.
`
`IPR2018-00809
`
`20
`
`
`
`Jakobsson’s Enablement Signal Is Only Based on the Unitary
`Authentication Code
`
`POR at 23-28;
`Sur-Reply at 9-10.
`
`Petitioner’s Reply:
`
`Jakobsson Reference:
`
`Reply at 7-8.
`
`Ex. 1101 at Fig. 2.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`21
`
`
`
`Jakobsson Discloses an “Acknowledgement,” Not An
`“Enablement Signal”
`
`POR at 26-27;
`Sur-Reply at 11-12 & fn 6.
`
`Jakobsson Reference:
`
`Ex. 1113 at ¶ 50.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`22
`
`
`
`An “Acknowledgement” Indicates Successful Receipt, Not
`Transaction Approval
`
`POR at 26-27;
`Sur-Reply at 12.
`
`Dr. Jakobsson:
`
`Ex. 2010 at ¶ 60.
`
`Ex. 2010 at ¶ 61.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`23
`
`
`
`Jakobsson Teaches Away From Use of Enablement Signals
`
`POR at 27-28;
`Sur-Reply at 13-12.
`
`Jakobsson Reference:
`
`Ex. 1113 at ¶¶ [0014]-[0015].
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`24
`
`
`
`Jakobsson Teaches Away From Use of Enablement Signals
`
`POR at 27-28;
`Sur-Reply at 13-12.
`
`Dr. Jakobsson:
`
`Ex. 2010 at ¶ 62.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`25
`
`
`
`Jakobsson Teaches Away From Use of Enablement Signals
`
`POR at 27-28;
`Sur-Reply at 13-12.
`
`Petitioner’s Expert:
`
`Ex. 2019 at 126:16-23.
`
`Ex. 2019 at 125:8-23.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`26
`
`
`
`Dependent Claim 5
`
`POR at 28-30;
`Sur-Reply at 14-16.
`
`’137 Patent:
`
`Ex. 1001 at Cl. 5.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`27
`
`
`
`Jakobsson Is Silent As To How Local Authentication Occurs
`
`POR at 28-30;
`Sur-Reply at 14-16.
`
`Jakobsson Reference:
`
`Ex. 1113 at ¶ [0059]
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`28
`
`
`
`Local Authentication Can Be Performed in Many Ways
`
`POR at 28-30;
`Sur-Reply at 14-16.
`
`Dr. Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`29
`
`Ex. 2010 at ¶ 64
`
`
`
`Local Authentication Does Not Necessarily Involve a
`Local Comparison
`
`POR at 28-29.
`
`“The mere fact that a certain thing may result from a given set
`of circumstances is not sufficient.”
`
`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting In re Oelrich, 666 F.2d 578, 581-82
`(CCPA 1981));
`see also ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00137,
`Paper 58 at 25-26 (PTAB July 1, 2014).
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809
`
`30
`
`
`
`Niwa Is Silent As To Which Device Performs the Matching
`
`POR at 28-30;
`Sur-Reply at 14-16.
`
`Niwa:
`
`Dr. Jakobsson:
`
`Ex. 1117 at Abstract.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2010 at ¶ 65.
`
`IPR2018-00809
`
`31
`
`
`
`IPR2018-00809
`
`Motion to Amend
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`32
`
`
`
`“networked validation-information entity” (NVIE) Limitation
`Claims 13[pre]/[c]/[e], 21[pre][d]/[f]
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 14-16, 21-24.
`
`NVIE Limitation: “the first authentication information including a multi-digit
`identification (ID) code allowing a networked validation-information entity to
`map the multi-digit ID code to a credit and/or debit card number” and “the second
`device being the networked validation-information entity configured to enable the
`credit and/or debit card transaction based on authentication of the user.”
`
`MTA at B1, B4.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`33
`
`
`
`’660 Application Provides Written Description Support for
`NVIE Limitation
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 21-24
`
` Petitioner is wrong that the NVIE limitation lacks written description
`support because the Specification provides support that the “networked
`validation-information entity” may be a universal secure registry.
`
`Reply ISO MTA at 21-24.
`
`USR approves/denies financial transactions
`based on user authentication:
`
`Reply ISO MTA at 22-23.
`
`’660 Application indicating NVIE
`approves/denies financial transactions based
`on user authentication just like a USR:
`Reply ISO MTA at 22-23.
`
`Ex. 2006 at FIG. 7, 23:20-24:11.
`
`Demonstrative Exhibit – Not Evidence
`
`Ex. 2006 at 10:27-29.
`
`IPR2018-00809 MTA
`
`34
`
`
`
`’660 Application Provides Written Description Support for
`NVIE Limitation
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 21-24
`
` Petitioner is wrong that the NVIE limitation lacks written description
`support because the Specification provides support that the “multi-digit ID
`code” is the code the USR uses to map to the user’s real credit card number.
`
`Reply ISO MTA at 23-24.
`
` The code used by the USR to map to the user’s real credit card number may
`have multiple digits and identifies the user’s card number.
`
`Reply ISO MTA at 23-24.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`35
`
`Ex. 2006 at 23:23-34
`
`
`
`Prior Art Fails to Disclose NVIE Limitation
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 14-16.
`
` Petitioner is incorrect in assuming NVIE Limitation is the same as Claims 8
`and 11.
`
`Reply ISO MTA at 14-16; See MTA Opp. at 17-18.
`
` Relying on this incorrect assumption, Petitioner only incorporates by
`reference arguments from its Petition into its MTA Opposition.
`
` Such incorporation by reference is improper.
`
`Reply ISO MTA at 14-16; See MTA Opp. at 17-18.
`
`Reply ISO MTA at 14-16.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`36
`
`
`
`NVIE Limitation is Different than Claims 8 and 11
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 14-16.
`
` Petitioner’s assumption that the NVIE Limitation of Claims 13 and 21 is the
`same as disclaimed Claims 8 and 11 is wrong because:
`
` Claim 8 recites a “credit card issuer” while the NVIE Limitation does
`not.
`
`Reply ISO MTA at 2-4, 14-16;
`Ex. 1101 at Cl. 8.
`
` Claim 11 does not depend from Claim 8 and does not require that Claim
`8’s credit card issuer be the second device.
`
`Reply ISO MTA at 2-4, 14-16;
`Ex. 1101 at Cl. 11.
`
` By contrast, the NVIE Limitation requires that the NVIE both “map the
`multi-digit ID code” and be the second device.
`
`Reply ISO MTA at 2-4, 14-16;
`MTA at B1, B4.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`37
`
`
`
`Petitioner’s Incorporation By Reference is Improper
`
`Reply ISO MTA at 14-16.
`
` In attempting to show that the NVIE Limitation is invalid over Jakobsson,
`Maritzen, and Schutzer, Petitioner improperly incorporates by references
`arguments from its Petition into its MTA Opposition in violation of the
`Board’s Order (Paper 17).
`
`Reply ISO MTA at 14-16;
`See MTA Opp. at 17-18.
`
`Petitioner’s MTA Opposition:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`38
`
`MTA Opp. at 17-18.
`
`
`
`The Petition’s Motivation to Combine Schutzer with
`Jakobsson Fails
`
`Reply ISO MTA at 14-16.
`
` Petitioner’s Sur-reply is wrong that Schutzer discloses the NVIE Limitation
`and that a POSITA would be motivated to combine Schutzer with
`Jakobsson/Maritzen.
`
`See MTA Sur-reply at 1-2
`(citing Petition at ¶¶63-72.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`39
`
`
`
`’660 Application Provides Written Description Support for Periodic
`Communication to Prevent Intentional Deletion (17[a])
`
`MTA at 3-12, B3; Reply ISO
`MTA at 24-25.
`
`Substitute Claim 17:
`
` Petitioner does not dispute claim 17’s unpatentability other than that it lacks
`written description support.
`
`Reply ISO MTA at 24-25; See MTA Opp. at 25..
`
`MTA at A3.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`40
`
`
`
`’660 Application Provides Written Description Support for Periodic
`Communication to Prevent Intentional Deletion (17[a])
`
`MTA at 3-12, B3; Reply ISO
`MTA at 24-25.
`
` Petitioner is incorrect when it limits “intentional deletion” to mean that data
`deletion at the first device must be “at the direction of a user of the first device”
`because the Specification makes clear that the user device automatically deletes
`data if periodic communication with the second device fails. Such automatic
`deletion is intentionally done to prevent unauthorized access to the device.
`
`Reply ISO MTA at 24-25 (citing
`Ex. 2006 at 39:21-32, 40:8-24).
`
`’660 Application:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`41
`
`Ex. 2006 at 40:14-24.
`
`
`
`Petitioner’s Thesaurus Exhibit Undermines Its Argument
`
`MTA at 3-12, B3; Reply ISO
`MTA at 24-25.
`
` “Automatic” and “intentional” are not mutually exclusive: Petitioner’s own
`thesaurus provides first-definition synonyms for “automatic” that include “pre-
`programmed,” “self-directing,” and “self-executing.”
`
`See MTA Sur-reply at 8-10; Ex. 1139 at 15.
`
`Petitioner’s Exhibit 1139:
`
`Ex. 1139 at 15.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`42
`
`
`
`A POSITA Would Not Be Motivated to Prepend/Append Jakobsson’s
`Input Values Without a One-way Function
`
`MTA at 3-12, B1; Reply ISO
`MTA at 16-19.
`
` Petitioner is wrong that a POSITA would be motivated to prepend/append
`Jakobsson’s event state (E), time value (T), and user data (P) together because a
`critical aspect of Jakobsson’s combination function 230 described in ¶73 of
`Jakobsson is that a one-way function is used at some point when combining
`multiple input values to provide security to such sensitive information.
`
`Reply ISO MTA at 16-19 (citing Ex.
`2017 at 134:1-13, 134:19-135:7.
`
`Dr. Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`43
`
`Ex. 2017 at 134:1-10.
`
`
`
`A POSITA Would Not Be Motivated to Prepend/Append Jakobsson’s
`Input Values Without a One-way Function
`
`MTA at 3-12, B1; Reply ISO
`MTA at 16-19.
`
` Petitioner’s reliance on ¶58 of Jakobsson in its MTA Sur-reply is also inapposite
`because it does not relate to the combination function 230 of ¶73 that combines
`multiple input values like E, T, P, and K. Nor does ¶58 describe prepending or
`appending, which is what Petitioner relies on to show “separable fields.”
`
`See MTA Sur-reply at 3-4 (citing Ex. 1005 at [0058]).
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`44
`
`
`
`Petitioner’s MTA Opposition Failed to Address “Generated Using a
`Private Key Associated with the First Device” (18[b])
`
`MTA at 3-12, B3; Reply ISO
`MTA at 19-21.
`
` Petitioner’s MTA Opposition completely ignores the claim limitation “generated
`using a private key associated with the first device.”
`
`Reply ISO MTA at 19-21; See MTA Opp.
`at 21-23.
`
` Petitioner’s MTA Sur-reply also does not dispute that Schutzer fails to describe
`how its digital signature is generated.
`
`See MTA Sur-reply at 4-6.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`45
`
`
`
`Petitioner’s New Argument for “Generated Using a Private Key
`Associated with the First Device” (18[b]) Should Be Ignored
`
`MTA at 3-12, B3; Reply
`ISO MTA at 19-21.
`
` Petitioner’s new argument that its expert “explained that a POSITA would have
`recognized that forming digital signatures, like those in Schutzer, could include
`generating a digital signature using a private key associated with the first
`device” should be ignored.
`
`MTA Sur-reply at 4-6 (citing
`Ex. 1129 at ¶ ¶44-51).
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`46
`
`
`
`Patent Owner Satisfied its Duty of Candor and Should Not be
`Estopped From Amending Its Claims
`
`Reply ISO MTA at 6-8.
`
` Petitioner’s contention that Patent Owner violated its Duty of Candor or that it
`should be estopped from amending its claims is wrong because substitute
`Claims 13 and 21 are substantively different than disclaimed claims 8 and 11.
`
`Reply ISO MTA at 2-4, 6-8.
`
` Claim 8 recites a “credit card issuer” while the NVIE Limitation does not.
`
` Claim 11 does not depend from Claim 8 and does not require that Claim 8’s
`credit card issuer be the second device.
`
`Reply ISO MTA at 2-4;
`Ex. 1101 at Cl. 8.
`
`Reply ISO MTA at 2-4;
`Ex. 1101 at Cl. 11.
`
` By contrast, the NVIE Limitation requires that the NVIE both “map the
`multi-digit ID code” and be the second device.
`
`Reply ISO MTA at 2-4;
`MTA at B1, B4.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`47
`
`
`
`Patent Owner Satisfied its Duty of Candor and Should Not be
`Estopped From Amending Its Claims
`
`Reply ISO MTA at 6-8.
`
` Petitioner is incorrect that Patent Owner sought inconsistent positions before the
`Board because Patent Owner has always maintained that Claims 8 and 11 were
`valid in view of the prior art, including Ground 3.
`
`Reply ISO MTA at 6-8;
`See POPR at 32.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`48
`
`
`
`Patent Owner Should Not be Estopped From Amending Its Claims
`
`Reply ISO MTA at 6-8.
`
` Patent Owner does not derive any unfair advantage or impose an unfair
`detriment on Petitioner since Petitioner was free to raise in its Opposition the
`same arguments it made in the Petition with respect to claims 8 and 11, or any
`new argument, if it believed them to be relevant to substitute claims 13-21.
`
`Reply ISO MTA at 6-7.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`49
`
`
`
`Patent Owner’s Substitute Claims Each Respond to a Ground of
`Unpatentability
`
`Reply ISO MTA at 2-6.
`
` Petitioner is wrong that Patent Owner failed to respond to Ground 3 of
`unpatentability because:
`
` Substitute Claims 13 and 21 are substantively different than disclaimed
`claims 8 and 11.
`
`Reply ISO MTA at 2-4.
`
` Claim 13 includes other amendments (e.g., “separable fields”) that respond
`to other grounds of unpatentability.
`
`Reply ISO MTA at 4-5.
`
` Claim 21 replaces claim 12, which never depended from claims 8 and 11
`and included limitations that were different than claim 1.
`
`Reply ISO MTA at 5.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`50
`
`
`
`“networked validation-information entity” (NVIE) Limitation
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 14-16, 21-24.
`
`Substitute Claim 13:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`51
`
`MTA at B1, B4.
`
`
`
`Specification Provides Support for a Networked Validation-Information Entity
`That Approves/Denies Financial Transactions Similar to a USR
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 21-24.
`
`’660 Application:
`
`Ex. 2006 at 10:27-29.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`52
`
`
`
`Specification Provides Support for a multiple digit code used by the
`USR/Second Device to identify and map a CC number
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 21-24.
`
`’660 Application:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`53
`
`Ex. 2006 at FIG. 7.
`
`
`
`NVIE Limitation is Different than Claims 8 and 11
`
`MTA at 3-12, B1, B4;
`Reply ISO MTA at 14-16.
`
`’137 Patent:
`
`NVIE Limitation:
`13. “…the first authentication
`information including a multi-digit
`identification (ID) code allowing a
`networked validation-information
`entity to map the multi-digit ID code to
`a credit and/or debit card number…the
`second device being the networked
`validation-information entity
`configured to enable the credit and/or
`debit card transaction based on
`authentication of the user
`
`MTA at A1.
`
`Ex. 1101 at cls. 8, 11.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`54
`
`
`
`Petitioner Improperly Incorporates By Reference
`Arguments From Petition Into MTA Opp.
`
`Reply ISO MTA at 14-16.
`
`Petitioner’s MTA Opp.:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`55
`
`MTA Opp. at 17-18.
`
`
`
`Schutzer’s System and Alternate Card Number
`
`Reply ISO MTA at 14-16;
`Sur-reply at 1-2.
`
`Schutzer:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`56
`
`
`
`Claim 17 “prevent intentional deletion”
`
`MTA at 3-12, B3; Reply ISO
`MTA at 24-25.
`
`Substitute Claim 17:
`
`MTA at A3.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`57
`
`
`
`’660 Specification Provides Written Description Support
`
`MTA at 3-12, B3; Reply ISO
`MTA at 24-25.
`
`’660 Application:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`58
`
`Ex. 2006 at 40:14-24.
`
`
`
`Petitioner’s Thesaurus Undermines Petitioner’s Argument
`
`Ex. 1139; See Sur-reply at 8-10.
`
`Petitioner’s Exhibit 1139:
`
`Ex. 1139 at 15.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA
`
`59
`
`
`
`One-way Function is Critical to Jakobsson’s Authentication Code
`
`MTA at 3-12, B1; Reply ISO MTA at 16-19.
`
`PO’s Expert Dr. Markus Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA , -00810 MTA, -00813 MTA
`
`60
`
`Ex. 2017 at 134:1-10.
`
`
`
`Petitioner’s MTA Opposition Failed to Address “Generated Using a
`Private Key Associated with the First Device” (18[b])
`
`MTA at 3-12, B3; Reply ISO
`MTA at 19-21.
`
`Motion to Amend:
`
`MTA at A3.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00809 MTA , -00810 MTA, -00813 MTA
`
`61
`
`
`
`IPR2018-00810
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`62
`
`
`
`Claims 1, 10, 21, 30: “first authentication information”
`
`POR at 22-25; Sur-reply at 2-6.
`
`’826 Patent Claim 1[h]:
`
`Ex. 1001 at Cl. 1.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`63
`
`
`
`Maritzen’s Biometric Key Is Not Derived/Determined From
`Biometric Information (1[h],10[c],21[g],30[b])
`
`POR at 22-25; Sur-reply at 2-6.
`
` Petitioner is wrong that Maritzen’s biometric key is derived/determined
`from biometric information because Maritzen never discloses how or from
`what the biometric key is created after the privacy card validates the user’s
`biometric.
`
`POR at 22-25; Sur-reply at 2-6.
`
`Maritzen:
`
`Ex. 1004 at [0044].
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`64
`
`
`
`Maritzen’s Biometric Key Is Not Derived/Determined From
`Biometric Information (1[h],10[c],21[g],30[b])
`
`POR at 22-25; Sur-reply at 2-6.
`
` Maritzen does not disclose that the biometric key is even created in the
`embodiment where the privacy card is integrated into the personal
`transaction device (PTD), which is the embodiment Petitioner relies on.
`
`POR at 22-25; Sur-reply at 2-6.
`
` Instead, the PTD itself validates the user’s biometric information directly; it
`makes little sense in this case for the privacy card to then create the
`biometric, transmit it internally to the PTD so PTD can “unlock” itself.
`
`POR at 22-25; Sur-reply at 2-6.
`
`Maritzen:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`65
`
`Ex. 1004 at [0044].
`
`
`
`Maritzen’s Biometric Key Is Not Derived/Determined From
`Biometric Information (1[h],10[c],21[g],30[b])
`
`POR at 22-25; Sur-reply at 2-6.
`
` Rather, Maritzen supports that the biometric key is stored in PTD memory
`and retrieved as needed for each transaction since the clearing house 130
`would need to receive the same key in order to match the received key to a
`pre-stored key at the clearing house 130.
`
`POR at 22-25.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`66
`
`Ex. 1004 at [0048].
`
`
`
`Petitioner’s New Arguments Should Be Ignored
`
`POR at 22-25; Sur-reply at 2-6.
`
` Petitioner’s new argument that “biometric key” is a term of art for a
`cryptographic key derived from or determined from biometric information
`should be ignored.
`
`Sur-reply at 2-4; See Reply at 5-6
`(citing Ex. 1018 at ¶21; See Exs.
`1025-1029.
`
` Petitioner’s own exhibit contradicts this assertion where it states that it
`“coin[s] the name ‘Biometric Key Cryptography’” and describes it as a
`novel concept at the time.
`
`Sur-reply at 2-4; See Ex. 1029 at 12.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`67
`
`Ex. 1029 at 12.
`
`
`
`A POSITA Would Not Be Motivated to Modify Maritzen with
`Jakobsson Combination Function
`
`POR at 25-36; Sur-reply at 6-11.
`
` A POSITA would not be motivated to modify Maritzen with Jakobsson’s
`combination function because it would directly contradict Maritzen’s goal
`of maintaining user anonymity and its repeated teaching that no user
`identifying information is to be transmitted from the PTD.
`
`POR at 25-36; Sur-reply at 6-11.
`
` Jakobsson is an “identity authentication system” that relies on a user’s
`transmission of an “identity authentication code” and separately “user
`identification information” such as a user name.
`
`POR at 25-36; Sur-reply at 6-11.
`
`Jakobsson:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`68
`
`Ex. 1005 at [0004].
`
`
`
`A POSITA Would Not Be Motivated to Modify Maritzen with
`Jakobsson Combination Function
`
`POR at 25-36; Sur-reply at 6-11.
`
` A POSITA would not be motivated to modify Maritzen with Jakobsson’s
`combination function because it would require extensive changes to
`Maritzen’s process to incorporate Jakobsson’s authentication scheme,
`including modifying Maritzen’s PTD and clearing house to include and
`process event state (E), time value (T), user data (P), and combination
`function.
`
`POR at 25-36; Sur-reply at 6-11.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`69
`
`
`
`A POSITA Would Not Be Motivated to Modify Maritzen with
`Jakobsson’s Combination Function
`
`POR at 25-36; Sur-reply at 6-11.
`
` Petitioner is incorrect that Maritzen’s admonition against transmitting user
`identifying information is limited to non-encrypted transmissions because
`Maritzen never distinguishes between encrypted and unencrypted user
`identifying information—instead it repeatedly says that no user identifying
`information should be transmitted.
`
`Sur-reply at 6-11.
`
`Maritzen:
`
`Ex. 1004 at [0090].
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`70
`
`
`
`A POSITA Would Not Be Motivated to Modify Maritzen with
`Jakobsson’s Combination Function
`
`POR at 25-36; Sur-reply at 6-11.
`
` Petitioner’s contention that clearing house 130 already stores user
`identifying information is irrelevant because Maritzen stresses that the PTD
`does not transmit user identifying information to the VAPGT, which means
`no user identifying information is sent from the VAPGT to the clearing
`house during a transaction.
`
`Sur-reply at 6-11.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`71
`
`
`
`PO’s Claim Construction for “enable or disable use of the
`first handheld device” (Cls. 7, 14, 26, 34)
`
`POR at 15-19.
`
` PO’s Claim Construction: “enable or disable use of the first handheld
`device based on a result of the comparison” means “to expand…and reduce
`the range of functionality…based on [the] result of the comparison.”
`
`POR at 15-19.
`
` Support: The plain language of the claims use “enable” and “disable” as
`active verbs indicating some action takes place; the specification describes
`how the user device may be “shutdown” or data may be deleted upon
`unsuccessful authentication; and Petitioner’s own dictionary definition for
`“disable” includes “to make ineffective or inoperative” which indicates an
`active change in functionality.
`
`POR at 15-19, 48-51;
`Sur-reply at 21-23.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`72
`
`
`
`Maritzen Fails to Disclose “enable or disable use of the first
`handheld device” (Cls. 7, 14, 26, 34)
`
`POR at 15-19, 48-51;
`Sur-reply at 21-23.
`
` Maritzen fails to disclose “enable or disable use” under PO’s construction
`because the PTD’s failure to validate a user’s biometric information in
`Maritzen does not reduce the PTD’s functionality by changing the PTD’s
`state—the PTD simply remains in the same locked state.
`
`POR at 48-51; Sur-reply at 21-23.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`73
`
`
`
`Maritzen Fails to Disclose “enable or disable use of the first
`handheld device” (Cls. 7, 14, 26, 34)
`
`POR at 15-19, 48-51;
`Sur-reply at 21-23.
`
` Maritzen distinguishes between disabling the PTD from simply remaining
`in a locked state because it expressly discloses a “PTD disabler manager”
`that “disable[s] the PTD 100 if an invalid transaction message is received”
`such that the PTD transitions from an unlocked state to a locked state.
`
`POR at 48-51; Sur-reply at 21-23.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`74
`
`
`
`Maritzen Fails to Disclose “enable or disable use of the first
`handheld device” (Cls. 7, 14, 26, 34)
`
`POR at 15-19, 48-51;
`Sur-reply at 21-23.
`
` Petitioner’s contention that Maritzen makes no distinction between the PTD
`disabling itself and the PTD remaining locked since both are rendered
`inoperable for some functional purpose is wrong because:
`
` The PTD at least changes from an unlocked state to a locked state,
`taking away the user’s ability to access the PTD, when the PTD
`disables itself after an invalid transaction message. By contrast, there is
`no such reduction in functionality or change in state when the device
`simply remains locked.
`
`POR at 48-51; Sur-reply at 21-23.
`
` Maritzen extensively describes the PTD disabler manager but never
`discloses disabling the PTD after an unsuccessful biometric validation.
`
`POR at 48-51; Sur-reply at 21-23.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`75
`
`
`
`Maritzen Fails to Disclose “enable or disable use of the first
`handheld device” (Cls. 7, 14, 26, 34)
`
`POR at 15-19, 48-51;
`Sur-reply at 21-23.
`
` Even if the Board chooses not to adopt PO’s specific claim construction, it
`should still find that disabling use of a device requires a change in the
`device, which Maritzen fails to disclose.
`
`Sur-reply at 22.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`76
`
`
`
`Claims 1[a] and 10[a]: “authenticating…a user…based on
`authentication information”
`
`Ex. 1001 at Cls. 1 and 10
`
`’826 Patent:
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`77
`
`Ex. 1001 at Cl. 10.
`
`
`
`Petitioner’s Claim Construction for “authentication
`information” Should Be Rejected
`
`POR at 11-15.
`
` Petitioner’s Construction: “authentication information” means
`“information used by the system to verify the identity of an individual.”
`
`Petition at 15.
`
`Petitioner’s construction merits rejection because:
`
` Petitioner argues that “authentication information” covers the claimed
`“biometric information” but these two terms are separately recited in the
`claims, which creates a presumption that authentication information means
`something different than biometric information.
`
`POR at 11-15.
`
` Claim 10 performs the step of “authenticating…a user of the first handheld
`device as the first entity based on authentication information” before it
`performs “retrieving or receiving first biometric information of the user,”
`which means these two terms are different.
`
`POR at 11-15.
`
`Demonstrative Exhibit – Not Evidence
`
`IPR2018-00810
`
`78
`
`
`
`Petitioner Fails to Show
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