UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`
`v.
`
`PAYRANGE INC.,
`Patent Owner.
`
`Case No. IPR2023-01186
`Patent No. 8,856,045
`
`DECLARATION OF MICHAEL I. SHAMOS, PH.D., J.D.
`
`PayRange EXHIBIT - 2020
`CSC ServiceWorks, Inc. v. PayRange, Inc. - IPR2023-01186
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION AND QUALIFICATIONS ...................................................................... 2
`I.
`II. SCOPE OF WORK ................................................................................................................. 5
`III.
`LEGAL PRINCIPLES ........................................................................................................ 6
`IV.
`SUMMARY OF THE ’045 PATENT ................................................................................ 8
`V. LEVEL OF ORDINARY SKILL AND RELEVANT TIME ............................................... 16
`VI.
`CLAIM CONSTRUCTION .............................................................................................. 18
`A.
`“an authorization request for funds” ................................................................................. 19
`VII. GROUND 1 (Low, Claims 1, 18) ..................................................................................... 21
`A. Petitioner does not show that Low discloses the recited “authorization request for funds”
`
`21
`B. Petitioner does not show that Low discloses the recited dispensing “in response to
`receiving user input … if said adapter module has received said authorization grant” ............ 23
`VIII. GROUND 2 (Low + Skowronek, Claims 2-3, 19-20) ...................................................... 26
`A. Petitioner advances inconsistent arguments that “said authorization grant” is
`secured/encrypted by technology of “said server” .................................................................... 26
`B. Petitioner does not provide a sound basis for modifying Low as proposed ..................... 29
`IX.
`GROUND 3 (Low + Freeny, Claims 4-6, 21-23) ............................................................. 32
`A. Petitioner does not provide a sound reason to combine the references as proposed ........ 32
`B. Petitioner does not show that the references teach the claimed transmissions in the
`authorization and payment zones .............................................................................................. 35
`C. Petitioner does not show that the references teach that “said authorization zone is within
`said communication zone” (Claims 5 and 22) .......................................................................... 37
`X. GROUND 4 (Low + Skowronek + Freeny, Claims 10-14) .................................................. 38
`XI.
`GROUND 5 (Low + Wilson, Claims 8-9, 25-26) ............................................................. 39
`A. Petitioner does not show that the references teach the recited adapter module having male
`and female adapters (Claims 9 and 26) ..................................................................................... 39
`XII. GROUND 6 (Low + Freeny + Wilson, Claims 7, 24) ...................................................... 44
`A. Petitioner does not provide a sound reason for combining the references as
`proposed(Claims 7 and 24) ....................................................................................................... 44
`B. Petitioner does not show that the proposed combination satisfies “displaying funds
`available based on information from said authorization grant” (Claims 7 and 24) .................. 46
`XIII. GROUND 7 (Low + Skowronek + Freeny + Wilson, Claims 15-17) .............................. 47
`XIV. CONCLUSIONS............................................................................................................... 47
`XV.
`JURAT .............................................................................................................................. 48
`XVI. Appendix A – Materials Cited .......................................................................................... 49
`
`-1-
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`I, Dr. Michael I. Shamos, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by counsel for Patent Owner PayRange, Inc.
`
`(“PayRange”) to provide technical analysis and opinions relating to CSC
`
`ServiceWorks, Inc.’s (“Petitioner’s”) Petition for inter partes review challenging
`
`the validity of all claims (1-26, the “Challenged Claims”) of U.S. Patent No.
`
`8,856,045 (“the ’045 Patent” or “the Patent,” EX1001).
`
`2.
`
`I currently hold the title of Distinguished Career Professor in the
`
`School of Computer Science at Carnegie Mellon University in Pittsburgh,
`
`Pennsylvania. I am a member of two departments in that School, the Software and
`
`Societal Systems Department and the Language Technologies Institute. I was a
`
`founder and Co-Director of the Institute for eCommerce at Carnegie Mellon from
`
`1998-2004 and from 2004-2018 was Director of the eBusiness Technology
`
`graduate program in the Carnegie Mellon University School of Computer Science.
`
`Since 2018, I have been Director of the M.S. in Artificial Intelligence and
`
`Innovation degree program at Carnegie Mellon.
`
`3.
`
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American University
`
`in Technology of Management, an M.S. degree from Yale University in Computer
`
`-2-
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`

`

`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`Science, an M. Phil. from Yale University in Computer Science, a Ph.D. from Yale
`
`University in Computer Science, and a J.D. degree from Duquesne University.
`
`4.
`
`I have taught graduate courses at Carnegie Mellon in Electronic
`
`Commerce, including eCommerce Technology, Electronic Payment Systems,
`
`Electronic Voting, Internet of Things, Electronic Payment Systems and
`
`eCommerce Law and Regulation, as well as Analysis of Algorithms. Since 2007, I
`
`have taught an annual course in Law of Computer Technology, which is required
`
`by three graduate programs. I currently also teach Artificial Intelligence and
`
`Future Markets. From 2001-2021, I was a Visiting Professor at the University of
`
`Hong Kong, where I taught an annual graduate course in Electronic Payment
`
`Systems.
`
`5.
`
`My professional experience extends to wireless payment systems
`
`involving unattended retail machines such as vending machines. For example, I
`
`have worked with students in developing a kiosk for providing replacement keys
`
`(such as a house key) upon customer authentication via credit card. Other
`
`examples include development of an automated store checkout system and an
`
`unmanned medication dispensing machine.
`
`6.
`
`I am the author and lecturer in a 24-hour video course on Internet
`
`protocols and taught computer networking, wireless communication, and Internet
`
`architecture from 1999-2018.
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`7.
`
`From 1979-1987, I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`8.
`
`I am a named co-inventor on the following six issued patents relating
`
`to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278, 7,747,465,
`
`8,195,197, 8,280,773, and 9,456,299.
`
`9.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have
`
`been asked to render opinions in this declaration as a technical expert. I have not
`
`been asked to offer any opinions on patent law in this proceeding.
`
`10.
`
`I have previously served as an expert in over 370 cases concerning
`
`computer technology. In particular, I have been involved in multiple cases
`
`involving electronic payment systems.
`
`11.
`
`I am being compensated at the rate of $625 per hour for my work. I
`
`have no financial interest in any of the parties or in the outcome of this matter.
`
`12. A summary of my education, experience, awards and honors, patents,
`
`publications, and presentations is provided in my CV, a copy of which is submitted
`
`separately. EX2019.
`
`13.
`
`The statements made and opinions provided in this Declaration are
`
`based on my own personal knowledge and experience.
`
`-4-
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`

`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`14.
`
`In this declaration, all emphasis has been added unless otherwise
`
`noted.
`
`II.
`
`SCOPE OF WORK
`15.
`I understand that Petitioner alleges the following Grounds of
`
`invalidity:
`
`Grd.
`1
`2
`3
`4
`5
`6
`7
`
`References
`
`Sec.
`102, 103 Low
`103
`Low in view of Skowronek
`103
`Low in view of Freeny
`103
`Low in view of Skowronek and Freeny
`103
`Low in view of Wilson
`103
`Low in view of Freeny and Wilson
`103
`Low in view of Skowronek, Wilson, and
`Freeny
`
`Challenged
`Claims
`1, 18
`2-3, 19-20
`4-6, 21-23
`10-14
`8-9, 25-26
`7, 24
`15-17
`
`16.
`
`I have been asked to provide my expert technical opinions regarding
`
`Petitioners’ assertions that the references they assert as prior art anticipate or
`
`render obvious the Challenged Claims, as those assertions appear in the Petition
`
`and/or Neuman Declaration.
`
`17.
`
`In connection with my analysis, I have reviewed the ’045 Patent, the
`
`Petition, and the Declaration of Dr. Neuman (EX1003). I have also reviewed and
`
`considered various other documents in arriving at my opinions, and cite them in
`
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`

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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`this declaration. For convenience, documents cited in this declaration are listed in
`
`the Appendix in Section XVI.
`
`18.
`
`I reserve the right to supplement my opinions as expressed in this
`
`Declaration to address any new information obtained in the course of this
`
`proceeding, or based on any new positions taken by Petitioners.
`
`III. LEGAL PRINCIPLES
`19.
`I have not been asked to provide, nor will I provide, in this
`
`declaration, any opinions on the law. Counsel for Patent Owner has informed me
`
`of the legal principles that apply in this proceeding.
`
`20.
`
`The burden of proving every proposition of unpatentability in this
`
`proceeding rests on the Petitioner and must be proven by a preponderance of the
`
`evidence. This burden of proof applies to each factual matter in each Ground
`
`raised in the Petition, including specific arguments raised by the Petitioners
`
`regarding patent eligibility, enablement, indefiniteness, anticipation, and
`
`obviousness.
`
`21.
`
`I am informed that the post-AIA text of 35 U.S.C. ¶¶ 102 and 103 are
`
`applicable in this proceeding. A claim is unpatentable as anticipated if each and
`
`every element of the claim is described, either expressly or inherently, in a single
`
`prior art reference in the same configuration in which those elements are claimed.
`
`To establish anticipation by inherency, the inherent teaching must necessarily
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`result from what is described in the prior art reference. The mere probability or
`
`possibility that a certain thing may result from a given set of circumstances is not
`
`sufficient to demonstrate inherency.
`
`22. A claimed invention is unpatentable for obviousness if the differences
`
`between the invention and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to the person of
`
`ordinary skill in the art, in view of the prior art. The U.S. Supreme Court set out
`
`the framework for the obviousness inquiry as follows:
`
`The scope and content of the prior art are to be determined; differences
`between the prior art and the claims at issue are to be ascertained; and
`the level of ordinary skill in the pertinent art resolved. Against this
`background, the obviousness or nonobviousness of the subject matter
`is determined. Such secondary considerations as commercial success,
`long felt but unsolved needs, failure of others, etc., might be utilized to
`give light to the circumstances surrounding the origin of the subject
`matter sought to be patented.
`
`23.
`
`Secondary considerations of non-obviousness are sometimes referred
`
`to as objective indicia of non-obviousness, and these must be considered in every
`
`case in which they are present.
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
`
`24.
`
`I understand that the steps of a method claim may be performed in any
`
`order unless a particular order is expressed or implied by the claim, or is
`
`determined by physical or logical constraints.
`
`IV.
`
`SUMMARY OF THE ’045 PATENT
`25.
`The ’045 patent is entitled “Mobile-Device-to-Machine Payment
`
`Systems.” EX1001, cover. The Abstract of the ’045 patent states that the patent
`
`describes “a mobile-device-to-machine payment system and method for facilitating
`
`a cashless transaction for purchase of at least one product or service by a user from
`
`a payment accepting unit.” EX1001, Abstract. The communication between the
`
`mobile device and the payment accepting unit (e.g., a vending machine) is short-
`
`range, as the user must be relatively close to the machine to engage in a
`
`transaction. The second communication capability can be long-range, e.g., cellular
`
`communication, as the authorization server could be anywhere in the world. In the
`
`“Background of the Invention” section, the specification of the ’045 Patent states:
`
`“Disclosed herein are mobile-device-to-machine payment systems and, more
`
`specifically, mobile-device-to-machine payment systems over a non-persistent
`
`network connection and featuring hands-free and manual modes.” EX1001, 1:14-
`
`17.
`
`26.
`
`In the conventional operation of a vending machine, a user either
`
`inserts cash into a slot or physically inserts, or possibly taps, a credit card to a
`
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`Case IPR2023-01186
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`reader on the machine. The user then selects goods to be purchased. In the cash
`
`scenario, the goods will be dispensed if sufficient cash has been inserted to cover
`
`the cost of the goods. In the credit card scenario, once the user selects the goods to
`
`be purchased, the machine uses information from the user’s credit card to obtain an
`
`authorization through a payment network (e.g., VisaNet) to charge the card for the
`
`amount of the purchase. The authorization is obtained after the goods have been
`
`selected and a definitive purchase amount has been determined.
`
`27.
`
`The ’045 Patent is not concerned with either of these scenarios. In the
`
`’045 Patent, the user possesses a wireless device, such as a smartphone. Unlike
`
`traditional online purchases, the user does not select any goods using the device
`
`before requesting authorization for funds. EX1001, 31:47-60. When the device
`
`comes within a certain distance of the machine, the machine sends an authorization
`
`request for funds to the user’s mobile device using short-range communications
`
`technology. Id., 4:53-67, 31:54-57, claim 1. The device then, using long-range
`
`communications technology, forwards the authorization request for funds to a
`
`server. Id., 4:67-5:5, claim 1. The server generates and transmits an authorization
`
`grant for funds to the user’s mobile device, which ultimately passes it on to the
`
`machine. Id., 5:6-16, 14:66-15:46, 31:57-60, claim 1. All of this takes place
`
`before any goods have been selected, and it may even take place before the user
`
`has even had an opportunity to choose any goods. Id., 5:16-20, 31:54-57, claim 1.
`
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`Case IPR2023-01186
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`The authorization grant for funds informs the machine that it may dispense goods
`
`up to a particular dollar amount, and payment may be made for any goods whose
`
`total does not exceed that amount. Id., 5:61-67, 10:62-11:1, 11:17-32, 20:41-46,
`
`31:54-62. The Patent describes this as “preemptively” authorizing funds, that is,
`
`authorizing before any goods have been selected and before any transaction
`
`amount is known. Id., 31:54-57.
`
`28.
`
`This approach provides several technological advantages. For
`
`example, this solution provides a mechanism for, with minimal user interaction
`
`with the mobile device, preemptively obtaining authorization for funds that can be
`
`spent on subsequent cashless transactions at payment accepting units lacking a
`
`persistent network connection to a remote server. EX1001, 10:1-37, 13:14-18,
`
`30:43-31:7. It also allows the user to make multiple purchases (provided that the
`
`purchase totals do not exceed the authorized funds) based on a single authorization
`
`for funds. Id., 9:36-41, 11:17-32, 21:32-64, 29:61-30:2 (discussing “multi-vend”
`
`capability), Figs. 8D, 9E.
`
`29.
`
`The ’045 Patent also solves another technological problem that arises
`
`in the context of its mobile-device-to-machine payment system. That is, once the
`
`authorization credential is sent to the machine, the machine may dispense goods to
`
`anyone who selects them. If the machine is located in a publicly accessible place,
`
`multiple people may be in its vicinity, and any one of them, not necessarily the
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`person who obtained the authorization, might obtain goods. However, the user
`
`who obtained the authorization would be charged for goods they did not receive.
`
`One way that the Patent solves the problem is by establishing a pair of signaling
`
`zones, an “authorization zone” and a “payment zone,” the latter being a subset of
`
`the former. Id., 4:22-32, 5:45-57, 21:32-23:25, Fig. 1, claims 4-5. When the
`
`device is within the authorization zone of the machine, the device obtains an
`
`authorization. Id. However, to prevent an unauthorized user from making use of
`
`an authorization that is not their own (and thus obtain goods that the authorized
`
`user would pay for), the device does not send the authorization to the machine until
`
`the user has moved closer to the machine, i.e., into the payment zone. Id. The
`
`payment zone is restricted to ensure that the only person close enough to the
`
`machine to cause it to dispense goods is the user who obtained and sent the
`
`authorization. See, e.g., id., 27:6-40, 29:22-36.
`
`30.
`
`The ’045 Patent contains 26 claims, all of which are challenged.
`
`Claims 1, 10, and 18 are independent. For reference, I have reproduced claim 1
`
`below. The identifying labels in brackets correspond to those in the Petition, and
`
`the limitations have been paraphrased.
`
`1.[pre] A mobile-device-to-machine payment system for facilitating a
`cashless transaction for purchase of at least one product or service by a
`user from a payment accepting unit having input mechanisms,:
`
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`Case IPR2023-01186
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`[pre(i)] the user having a mobile device having both short-range
`communication
`technology
`and
`long-range
`communication
`technology,
`
`[pre(ii)] the payment accepting unit capable of dispensing at least one
`product or service, said system comprising:
`
`(a) an adapter module associated with the payment accepting unit, said
`adapter having
`short-range
`communication
`technology
`for
`communicating with the short-range communication technology of the
`mobile device;
`
`(b) a server having long-range communication technology for
`communicating with the long-range communication technology of the
`mobile device;
`
`(c) said adapter module for sending an authorization request for funds
`to the mobile device using short-range communication technology, the
`mobile device forwarding said authorization request for funds to said
`server using long-range communication technology; and
`
`(d) said server for sending an authorization grant for funds to the mobile
`device using long-range communication technology, the mobile device
`forwarding said authorization grant for funds to said adapter module
`using short-range communication technology;
`
`(e) wherein the payment accepting unit dispenses the at least one
`product or service in response to receiving user input to the payment
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`accepting unit input mechanism if said adapter module has received
`said authorization grant.
`
`31. Claims 1-9 depend directly from claim 1. Claim 2 further recites that
`
`the adapter module and server have security technology and said server having
`
`security technology, the authorization request is secured by the adapter module
`
`security technology, the authorization grant being secured by the server security
`
`technology, and the secured authorization request and secured authorization grant
`
`are undecipherable to the mobile device.
`
`32. Claim 3 recites that the adapter module and server share a unique
`
`private key, the adapter module and server have encryption/decryption technology,
`
`the authorization request is encrypted by the encryption/decryption technology
`
`using the key, the authorization grant is encrypted by the encryption/decryption
`
`technology using the key, the authorization grant is decrypted by the adapter
`
`module using the key, and the authorization request and authorization grant are
`
`undecipherable to the mobile device.
`
`33. Claim 4 recites that the adapter module is surrounded by a payment
`
`zone and an authorization zone, the adapter module sends the authorization request
`
`when the mobile device is in the authorization zone, and the mobile device
`
`forwards the authorization grant when the mobile device is in the payment zone.
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`34. Claim 5 recites that the adapter module is surrounded by a payment
`
`zone, an authorization zone, and a communication zone, the payment zone is in the
`
`authorization zone and the authorization zone is in the communication zone, the
`
`mobile device receives advertising from the adapter module within the
`
`communication zone, the adapter module sends the authorization request when the
`
`mobile device is in the authorization zone, and the mobile device forwards the
`
`authorization grant to the adapter module when the mobile device is in the payment
`
`zone.
`
`35. Claims 6 recites that the system of claim 1 has a hands-free mode in
`
`which the payment accepting unit dispenses a product or service without the user
`
`interacting with the mobile device.
`
`36. Claim 7 recites that the system of claim 1 has a hands-free mode in
`
`which the payment accepting unit dispenses a product or service without the user
`
`interacting with the mobile device. the payment accepting unit displays funds
`
`available based on the authorization grant and the payment accepting unit allows
`
`the user to select a product or service to be dispensed.
`
`37. Claim 8 recites that the adapter module is an in-line dongle within a
`
`multi-drop bus of the payment accepting unit.
`
`38. Claim 9 recites that, in the system of claim 1, the payment accepting
`
`unit has a multi-drop bus to a payment receiving mechanism, the multi-drop bus
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`has male and female adapters, the adapter unit has male and female adapters, and
`
`the adapter module is insertable in serial with the multi-drop bus by connecting the
`
`male adapter of the adapter module to the female adapter of the multi-drop bus and
`
`by connecting the female adapter of the adapter module to the male adapter of the
`
`multi-drop bus.
`
`39.
`
`Independent claim 10 is effectively an amalgam of claims 1 and 5 and
`
`portions of claim 2.
`
`40. Claim 11 depends from claim 10 and adds that the authorization grant
`
`is undecipherable to the mobile device.
`
`41. Claim 12 depends from claim 10 and adds the limitations of claim 3.
`
`42. Claim 13 depends from claim 10 and is parallel to claim 5.
`
`43. Claim 14 depends from claim 10 and is parallel to claim 6.
`
`44. Claim 15 depends from claim 10 and is parallel to claim 7.
`
`45. Claim 16 depends from claim 10 and is parallel to claim 8.
`
`46. Claim 17 depends from claim 10 and is parallel to claim 9.
`
`47.
`
`Independent claim 18 is effectively a method form of claim 10.
`
`48. Claim 19 depends from claim 18 and adds limitations from claim 12.
`
`49. Claim 20 depends from claim 18 and adds other limitations from
`
`claim 12.
`
`50. Claim 21 depends from claim 18 and is parallel to claim 4.
`
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`

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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`51. Claim 22 depends from claim 18 and is parallel to claim 5.
`
`52. Claim 23 depends from claim 18 and is parallel to claim 6.
`
`53. Claim 24 depends from claim 18 and is parallel to claim 7.
`
`54. Claim 25 depends from claim 18 and is parallel to claim 8.
`
`55. Claim 26 depends from claim 18 and is parallel to claim 9.
`
`V.
`
`LEVEL OF ORDINARY SKILL AND RELEVANT TIME
`56.
`I have been advised that “a person of ordinary skill in the relevant
`
`field” (“POSITA”) is a hypothetical person who is presumed to be familiar with all
`
`relevant art at the time of the invention, and to whom one could assign a routine
`
`task with reasonable confidence that the task would be successfully carried out.
`
`According to the Petition, the relevant timeframe is December 2013. See Pet., 11.
`
`57.
`
`Petitioners in this case assert that a “person having ordinary skill in
`
`the art would have had “a bachelor’s degree in electrical engineering, computer
`
`engineering, computer science, or equivalent training, and approximately three
`
`years of experience with electronic payment systems, vending machine
`
`technologies, or distributed network systems. Additional education can substitute
`
`for less work experience, and vice versa.” Pet., 11.
`
`58.
`
`The Neuman Declaration propounds the same characterization at ¶19,
`
`but provides no basis for it.
`
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`Case IPR2023-01186
`U.S. Patent No. 8,856,045
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`59.
`
`I understand that the specification and the claims inform the required
`
`level of skill.
`
`60.
`
`The background section of the ’045 Patent (1:14-17) states:
`
`Disclosed herein are mobile-device-to-machine payment systems and,
`more specifically, mobile-device-to-machine payment systems over a
`non-persistent network connection and featuring hands-free and
`manual modes.
`
`61.
`
`Therefore, a POSITA would need to be familiar with mobile network
`
`communications and electronic payment systems.
`
`62.
`
`The claims are drawn to mobile-to-machine communication, both
`
`short-range and long-range and networked client-server communication, including
`
`data encryption and decryption. In 2013, mobile-to-machine communication and
`
`data encryption/decryption were standard components of the undergraduate
`
`curriculum in the fields of computer science and electrical engineering. However,
`
`electronic payment systems require familiarity with the operation of payment
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`networks.
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`63. Accordingly, in my opinion, a person of ordinary skill in the relevant
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`field prior to December 2013 would have, through education or practical
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`experience, the equivalent of a Bachelor of Science in Electrical Engineering,
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`Computer Science, or a related/equivalent field and, in addition, one year of work
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`U.S. Patent No. 8,856,045
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`experience in wireless communication, vending machine technology, and
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`electronic payment systems. Additional applicable education can substitute for
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`less work experience, and vice versa.
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`64.
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`I do not believe that any differences between my characterization and
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`that of Dr. Neuman are material to the issues with Grounds 1-7 that I discuss in this
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`declaration, and I have been asked to apply Petitioner’s characterization for
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`purposes of this proceeding even though I do not entirely agree with Dr. Neuman’s
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`characterization. In 2013, my education and professional experience satisfied both
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`my own POSITA characterization as well as the one set forth in Dr. Neuman’s
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`declaration.
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`VI. CLAIM CONSTRUCTION
`65.
`I have been advised that, absent some reason to the contrary, the ’045
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`Patent claims are given their ordinary and customary meaning as would be
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`understood by a POSITA in view of the intrinsic evidence. If the inventor has
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`acted as his own lexicographer (as is the case here), then I understand that the
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`definitions in the Patent are controlling. I further understand that the terminology
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`used in the specification and the claims need not be the same. I have followed
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`these principles in my analysis throughout this Declaration.
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`66.
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`In the Institution Decision, the Board did not find that any claim
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`construction was necessary. However, I see that Petitioner has interpreted the
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`U.S. Patent No. 8,856,045
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`claims in a way that contradict the express definitions given in the Patent, so I
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`believe the defined terms require discussion. The definitions appear in EX1001 in
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`a section labeled “DEFINITIONS” that extends from 11:49-18:43.
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`A. “an authorization request for funds”
`This term is defined expressly at 14:53-65 of EX1001 as follows:
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`67.
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`Authorization Request (AuthRequest): When a user enters the
`authorization zone 104, the mobile device 150 notifies the adapter
`module 100 and the adapter module 100 sends the secured authorization
`request (e.g. the encrypted authorization request) as a “message” (also
`referred to as a communication or transmissions) to the server 130 via
`the mobile device 150. Encryption may be performed by a security unit
`755 (security technology that may be associated with the processing
`unit 750 and/or the memory 760). Significantly, the AuthRequest is a
`request for authorization of funds, not a request for authorization
`of a transaction. The purpose of the funds is irrelevant to the server
`30.
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`68.
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`The inventor acted as its own lexicographer by providing a definition
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`that expressly distinguishes between an authorization request for funds (the
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`purposes of which is irrelevant to the server) and a request to authorize a
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`transaction.
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`69.
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`This distinction is supported by the rest of the specification. For
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`example, the specification expressly distinguishes the disclosed systems from
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`known systems in which the user contacts the server to obtain authorization to
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`“make a specific purchase.” The specification expressly distinguishes the disclosed
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`systems from known systems in which the user contacts the server to obtain
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`authorization to “make a specific purchase”:
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`The mobile-device-to-machine payment systems described herein
`take a completely different approach. The mobile-device-to-
`machine payment systems described herein are not specifically
`interested in the details of the transaction to authorize the
`transaction. Instead, the mobile-device-to-machine payment systems
`function more like a gift card, a credit card, or a debit card in that they
`allow the user to have funds to make a purchase. When a user is in
`range, the adapter module 100 (via a mobile device 150) sends an
`AuthRequest
`to
`the server 130
`to preemptively obtain
`authorization to make funds available. The server 130 returns the
`AuthGrant for funds to the adapter module 100 (via a mobile device
`150) so that the user may use the funds to make a purchase. The
`AuthGrant may remain valid until it expires. This gives the user
`significantly more flexibility than known systems and methods.
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`EX1001, 31:47-62. The specification contrasts the approach of the “systems
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`described herein” with the transaction flow described in Low, in which the user
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`sends the server a purchase request for a particular product (“authorization request
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`for a transaction”). Further, all the disclosed embodiments are consistent with the
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`definition given in the Patent. In the description of Figs. 8B and 9A, the user sends
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`Case IPR2023-01186
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`the server an authorization request for funds, not a purchase request for a particular
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`product or service. At that point, the user has not yet selected a product, so the
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`amount of the potential transaction is not yet known. EX1001, 28:52-29:13. The
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`transaction itself does not take place until the user reaches the machine and selects
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`a product or service. EX1001, 29:14-60, Figs. 8D, 9C-D.
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`70. Accordingly, a POSITA reading the claims in the light of the
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`specification would have understood that the recited “authorization request for
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`funds” as defined in the Patent is “not a request for authorization of a transaction.”
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`EX1001, 14:53-65. However, in its analysis, Petitioner treats the “authorization
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`request for funds” as encompassing a request for authorization of a transaction,
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`which the definition expressly forbids.
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`VII. GROUND 1 (Low, Claims 1, 18)
`71. Ground 1 fails