Unified Patents Inc. v. Sentegra, LLC, IPR2016-01109, Paper 1 (May 28, 2016)

8/16/2019 Unified Patents Inc. v. Sentegra, LLC, IPR2016-01109, Paper 1 (May 28, 2016)

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UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Unified Patents Inc.,

Petitioner

v.

Sentegra, LLC

Patent Owner

IPR2016-01109

Patent 8,706,627

____________

PETITION FOR INTER PARTES REVIEW

OF CLAIMS 1, 4, 6, 7, 10-13, AND 16

OF U.S. PATENT NO. 8,706,627 UNDER 35 U.S.C. §§311-319


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TABLE OF CONTENTS

I. INTRODUCTION ...........................................................................................1

II.

MANDATORY NOTICES ............................................................................. 2

A. Real Party-in-Interest ............................................................................ 2

B. The Patent Owner ..................................................................................2

C. Related Matters ...................................................................................... 2

D. Identification of Lead and Back-Up Counsel........................................ 3

E. Service Information ...............................................................................4

III. PAYMENT OF FEES .....................................................................................4

IV. REQUIREMENTS FOR INTER PARTES REVIEW ......................................4

A. Grounds for Standing ............................................................................5

B. Identification of Challenge Under 37 C.F.R. § 42.104(b) .................... 5

1. The Specific Art on Which the Challenge is Based .........................5

2.

The Specific Grounds on Which the Challenge is Based ................6

V. BACKGROUND OF THE ’627 PATENT .....................................................6

A. Background of the Technology ............................................................. 6

B. Summary of the ’627 Patent ..................................................................9

C. Prosecution History of the ’627 Patent ...............................................12

VI. PERSON OF ORDINARY SKILL IN THE ART ........................................12

VII. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(b)(3)) ............................... 13

A. “authorization certificate” ...................................................................14

B. “set of executable computer program instructions” ............................14


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C. “executable memory storage device encoded with … a set of

executable computer program instructions” ........................................ 15

VII. GROUNDS OF UNPATENTABILITY ........................................................ 16

A.

Ground 1: Claims 1, 4, 6, 7, and 11-13 are Obvious over Maes and Ikeda .............................................................................................16

1. Maes Overview ..............................................................................16

2. Ikeda Overview ..............................................................................20

3. Maes in view of Ikeda .................................................................... 23

4. The Combination’s Desired Functionality is Achieved by an

Executable Memory Storage Device Encoded with Set(s) of

Executable Computer Program Instructions ..................................26

B. Ground 2: Claims 1, 4, 6, 10, 11, and 16 are Obvious over Maes

and Paltenghe ......................................................................................61

1. Paltenghe Overview ....................................................................... 61

2. Maes in view of Paltenghe ............................................................. 63

3. The Combination’s Desired Functionality is Achieved By

An Executable Memory Storage Device Encoded with Set(s)of Executable Computer Program Instructions .............................. 65

VIII. CONCLUSION ..............................................................................................91


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I. INTRODUCTION

Pursuant to 35 U.S.C. §§ 311-319, Unified Patents Inc., (“Unified” or

“Petitioner”) petitions the PTAB to institute inter partes review of claims 1, 4, 6, 7,

10-13, and 16 of U.S. Patent No. 8,706,627 to Shore (“the ’627 Patent,” EX1001).

The challenged claims use many words to recite several simple and obvious

concepts directed to a remote, handheld, ticket-purchasing system. Beyond these

simple, obvious concepts, the claims are packed with long-known and

conventional hardware limitations found in virtually every wireless, handheld

device of the time, like “wireless communications hardware,” “a data storage

device,” “a user input device,” “a microprocessor,” etc. Tellingly, the ’627 Patent

itself even admits that wireless, handheld devices, such as PDAs, were well known

before the ’627 patent’s earliest priority date, Feb. 10, 2000. (EX1001, 25:13-141;

8:45-48; 9:12-14). Thus, the only allegedly “inventive” aspect of the ’627 Patent is

its secure-purchase functionality, but that too was well known before 2000.

In fact, the claimed functionality amounts only to accessing a website,

requesting an “authorization certificate” (or electronic ticket), exchanging payment

and security information, downloading the certificate, and storing the certificate in

memory. (EX1001, cl. 1; Figs. 12a-12d). All these steps were well known before

2000. (See, e.g., EX1005, Fig. 5). Because the ’627 Patent claims well-known

1 For all exhibits, the citations refer to page number/column number:line numbers.


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functionality performed by an admittedly well-known wireless, handheld device,

the challenged claims should be canceled as obvious.

II. MANDATORY NOTICES

Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following

mandatory disclosures:

A.

Real Party-in-Interest

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could

exercise control over Unified’s participation in this proceeding, the filing of this

petition, or the conduct of any ensuing trial. See EX1002.

B. The Patent Owner

The ’627 Patent is assigned to Sentegra, LLC (“Sentegra”).

C.

Related Matters

The ’627 Patent has been asserted in the following pending litigations, none

of which involve Unified:

1. Sentegra, LLC v. Asus Computer International, No. 1:15-cv-03768

(S.D.N.Y. May 15, 2015);

2. Sentegra, LLC v. Samsung Electronics America, Inc., No. 1:15-cv-

09266 (S.D.N.Y. Nov. 24, 2015);


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3. Sentegra, LLC v. BLU Products, Inc., No. 1:16-cv-00158 (D. Co. Jan.

21, 2016);

4.

Sentegra, LLC v. Azend Group Corp., No. 1:16-cv-00263 (D. Co. Feb.

4, 2016);

5. Sentegra, LLC v. LG Electronics MobileComm USA, Inc., No. 1-15-

cv-01535 (S.D.N.Y. Mar. 2, 2015) (settled & dismissed Nov. 17,

2015);

6.

Sentegra, LLC v. Lenovo Group Ltd., No. 1-14-cv-09096 (S.D.N.Y.

Nov. 14, 2014) (settled & dismissed Apr. 28, 2015); and

7.

Sentegra, LLC v. Blackberry Ltd., No.1-14-cv-08389 (S.D.N.Y. Oct.

21, 2014) (settled & dismissed Feb. 27, 2015).

Additionally, the ’627 Patent is the subject of multiple pending motions to

dismiss for, variously, improper venue and for failure to state a claim under

Federal Rule of Civil Procedure 12(b)(6), as patent ineligible under 35 U.S.C.

§§ 101 and 112. See, e.g., Sentegra, LLC v. Asus Computer International, No.

1:15-cv-03768, ECF 32 (S.D.N.Y. filed Sept. 18, 2015) (venue); Sentegra, LLC v.

Samsung Electronics America, Inc., No. 1:15-cv-09266 ECF 25 (S.D.N.Y. filed

Apr. 8, 2016) (§§ 101 and 112).

D. Identification of Lead and Back-Up Counsel

Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following


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designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and

back-up counsel are Scott A. McKeown (Reg. No. 42,866); Thomas C.

Yebernetsky (Reg. No. 70,418); Katherine D. Cappaert (Reg. No. 71,639); and

Jonathan Stroud (Reg. No. 72,518).

E. Service Information

Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be

served on the following:

Address: Michael L. KiklisOblon LLP

1940 Duke Street

Alexandria, VA 22314

Email: [email protected]

Telephone: 703-413-3000

Fax: 703-413-2220

Address: Jonathan Stroud, Chief Patent CounselUnified Patents Inc.

171 Main St. #106, Los Altos, CA, 94022

Email: [email protected]

Telephone: 202-805-8931

Fax: 650-887-0349

III. PAYMENT OF FEES

The undersigned authorizes the Office to charge the required fees and any

additional fees that might be due to Deposit Account No. 15-0030.

IV. REQUIREMENTS FOR INTER PARTES REVIEW

As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for


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inter partes review of the ’627 Patent is satisfied.

A.

Grounds for Standing

Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the ’627 Patent is

available for inter partes review and that Petitioner is not barred or estopped from

requesting inter partes review challenging the patent claims on the grounds

identified herein.

B.

Identification of Challenge Under 37 C.F.R. § 42.104(b)

Petitioner requests inter partes review and cancellation of claims 1, 4, 6, 7,

10-13, and 16 of the ’627 Patent as being obvious under 35 U.S.C. §103. The ’627

Patent is the national stage entry of PCT/US01/04258 and claims priority to

Provisional U.S. Patent Application Nos. 60/181,600; 60/187,924; and 60/255,980,

filed on February 10, 2000; March 8, 2000; and December 15, 2000, respectively.

(EX1001). February 10, 2000 is therefore the earliest priority date on which the

’627 patent can rely.

1.

The Specific Art on Which the Challenge is Based

Petitioner relies upon the following patents and printed publications:

Exhibit 1004 – U.S. Patent No. 6,016,476 (“ Maes”) issued on January 18,

2000 and filed on January 16, 1998. Maes is prior art under 35 U.S.C. §§ 102(a)

and (e). Maes was applied during prosecution. However, Petitioner presents new

supporting evidence and combines Maes with other prior art references that were


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never seen by the Office, forming combinations that this Office never considered

and which cast Maes in a new light.

Exhibit 1005 – Japanese Patent Application No. H10-69553 (“ Ikeda”) was

published on March 10, 1998. Ikeda is therefore available as prior art under at

least pre-AIA 35 U.S.C. § 102(b). Ikeda was not considered during prosecution

and is not cumulative of any prior art considered by the examiner(s).

Exhibit 1006 – WO 99/24892 (“Paltenghe”) was published on May 20,

1999. Paltenghe is available as prior art under at least pre-AIA 35 U.S.C. §

102(a). Paltenghe was not considered during prosecution and is not cumulative of

any prior art considered by the examiner(s).

2. The Specific Grounds on Which the Challenge is Based

Petitioner respectfully requests cancellation of claims 1, 4, 6, 7, 10-13, and

16 of the ’627 Patent the based on the following grounds:

1.

Claims 1, 4, 6, 7, and 11-13 are obvious under 35 U.S.C. § 103(a) in

view of Maes and Ikeda; and

2. Claims 1, 4, 6, 10, 11, and 16 are obvious under 35 U.S.C. § 103(a) in

view of Maes and Paltenghe.

V. BACKGROUND OF THE ’627 PATENT

A. Background of the Technology


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The ’627 Patent is generally directed to a remote, handheld, ticket-

purchasing system. Specifically, the ’627 Patent provides “[a] way to pay for

purchases … that is mobile, and that provides a user-friendly electronic interface

with financial accounting systems.” (EX1001, 1:35-40; 2:5-9). But the use of

wireless mobile devices to make secure purchases—including ticket purchases—

was well known as of 2000. (EX1003, ¶19).

Personal, handheld devices, like PDAs, were first introduced in the early

1990s. These devices, while smaller and more portable than personal computers

(PCs), included central processing units (CPUs) (i.e., microprocessors) to execute

the software programs contained on the device and provided features such as

calendars, address books, task and note entry, and handwriting recognition.

Shortly after their introduction, these devices were sold equipped with wireless

technology to allow users to interact with businesses, merchants, and other third-

parties from anywhere, using the Internet. These personal, handheld devices were

also often equipped with short-range-wireless-communication capabilities, such as

infrared (IR) technology, to allow for additional functionality, such as connecting

to peripherals like printers and keyboards. (EX1003, ¶¶20-28).

The ’627 Patent itself acknowledges that personal, handheld devices were

widely available as of 2000: “[a] User may purchase a PDA/wireless phone at any

retail outlet that sells such devices” and the claims “could be applied to all


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handheld or watch-sized PDA computing devices without departing from the spirit

of the invention.” (EX1001, 25:13-14; 8:45-48). Accordingly, the ’627 Patent’s

claimed hardware was known before 2000, as was its functionality. (EX1003,

¶24.)

Before 2000, it was well known that individuals were performing routine, in-

person transactions, such as paying bills, remotely using wireless communications,

like the Internet: “More recently, online Internet payment systems have been

developed to provide for payment of bills through online access to a centralized

payment system.” (See EX1001, 1:35-37). By 2000, many software programs and

devices had been developed that aided individuals in performing these functions

remotely. For example, one of Ikeda’s objects is to provide a system so that “a

ticket buyer can purchase a ticket easily without going to a ticket issuing location.”

(EX1005, ¶[0008]; EX1003, ¶29.)

Additionally, it was well known before 2000 that individuals could use

either PDAs or PCs to perform these remote tasks and that PDAs and PCs were

virtually interchangeable for all but the most computation-intensive tasks. For

example, Maes notes that “[t]he PDA includes a modem, a serial port and/or a

parallel port so as to provide direct communication capability with peripheral

devices (such as POS and ATM terminals) and is capable of transmitting or

receiving information through wireless communications such as radio frequency


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“The invention could be applied to all hand held or watch-sized PDA

computing devices without departing from the spirit of the invention.” ( Id .,

8:45-48) (emphasis added); and

“A wireless mobile phone enabled to perform functions according to the

present invention could be of any size or make.” ( Id . 9:12-14) (emphasis

added).

Thus, while the claims recite multiple limitations directed to generic-

hardware components, such as memory and a microprocessor, these claim

limitations were well known prior to 2000 and cannot be given patentable weight.

The only possible “inventive” aspect of the challenged claims is the claimed

functionality of purchasing an “authorization certificate”—an electronic ticket—on

a wireless device. But that too was old. (EX1003, ¶¶33-34.)

Indeed, the claimed functionality was well known. All the ’627 Patent’s

claimed functionality does is access a website, request an “authorization

certificate,” exchange payment and security information, download the certificate,

and store the certificate in memory. (EX1001, cl. 1; Figs. 12a-12d). In the ’627

Patent, an “authorization certificate” is simply a ticket that authorizes the user to

do something, i.e., “to attend a movie, to take a particular airline flight, and the

like.” (EX1001, 1:44-47). This functionality, however, was well known before

2000, as a cursory review of Ikeda’s figure 5, annotated below, demonstrates:


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(EX1005. Fig. 5; EX1003, ¶35.)

Claims 6 and 11 recite using biometric data for security, but this too was

well known before 2000. For example, Maes explains that “[a] biometric sensor

40 of any conventional type may also be provided for collecting biometric data …

to provide biometric verification.” (EX1004, 5:54-60). Similarly,Paltenghe

discloses a virtual wallet having “authentication mechanisms,” and that

“[a]uthentication information may comprise objects such as certificates, access

Access a website and request an authorization certificate

Exchange payment and

security information

Download and store

the authorization

certificate


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keys and biometric information.” (EX1006, 5:20-21). Thus, the ’627 Patent

claims nothing more than the well-known idea of a remote, handheld, ticket-

purchasing system. (EX1003, ¶36.)

C. Prosecution History of the ’627 Patent

Issued on April 22, 2014, the ’627 Patent had a long prosecution history,

during which the claims underwent multiple amendments to overcome prior art

rejections. On November 25, 2003, the Examiner allowed the claims because

Applicant amended independent claims 23 and 56 (now claims 1 and 11) to more

specifically recite the functionality of the claimed “microprocessor” and the

program instructions executed by the microprocessor. (See EX1007, pp. 1719-

1727; 1741-1744). The reason for allowance was that the prior art did not disclose

wireless-device microprocessors triggering the host computer device to send a

copy of the authorization certificate and security information to the merchant’s

computer system. (EX1007, pp. 1726-27; 1742-43). The prior-art combinations

discussed herein show exactly that and were not before the Examiner.

VI. PERSON OF ORDINARY SKILL IN THE ART

The level of ordinary skill in the art is evidenced by the prior art. See In re

GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The prior art discussed herein

demonstrates that a person of ordinary skill in the art (“POSA”) in the field of the

’627 Patent would have been a person with at least a bachelor’s degree in electrical


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engineering, computer engineering, computer science, or equivalent training, and

at least two years of experience in the field of embedded-communication systems.

(EX1003, ¶¶17-18).

VII. DECLARATION EVIDENCE

This Petition is supported by the declaration of Herbert Cohen, an expert in

the field of embedded-communication systems, EX1003. Mr. Cohen offers his

opinion with respect to the skill level of POSA, EX1003, ¶¶17-18, the content and

state of the prior art, id ., ¶¶19-30, claim construction, id ., ¶¶37-43, and the

teachings and suggestions that one of ordinary skill would understand based on

Exs. 1004-1006, id ., ¶¶44-198. For over twenty years, Mr. Cohen developed

software and managed development and testing efforts to deliver wired- and

wireless-communication subsystems to major equipment providers. Mr. Cohen

thus has a deep, detailed understanding of wireless-communications protocols and

products. Mr. Cohen has been published in EE Times and has received multiple

awards for his work in wireless-communication systems. (EX1003, ¶¶2-8).

VII. CLAIM CONSTRUCTION (37 C.F.R. § 42.104(B)(3))

In an inter partes review, claim terms in an unexpired patent are interpreted

according to their broadest reasonable interpretation (“BRI”) in view of the

specification in which they appear. 37 C.F.R. §42.100(b). Petitioner adopts the

plain meaning for all claims terms, but Petitioner proposes a specific construction


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for several terms below. These constructions are consistent with the plain and

ordinary meaning under the Phillips v. AWH Corp. standard.

A.

“authorization certificate”

Every claim of the ’627 Patent, either directly or through dependency,

recites the claim term “authentication certificate.” The ’627 Patent’s specification

clearly defines this term, providing that a PDA “would hold electronic

authorization certificates, or eTickets, to use for particular service or attend a

particular event.” (EX1001, 6:14-17). Additionally, the ’627 Patent explains that

authorization certificates could include tickets “to attend a movie, to take a

particular airline flight, and the like.” (EX1001, 1:44-48). Therefore, POSA

would understand an “authorization certificate” to be “an electronic ticket.”

(EX1003, ¶39).

B. “ set of executable computer program instructions”


recites the claim term “set of executable computer program instructions.” The

limitation “executable computer program instructions” is not defined in the

specification, although the terms “executable,” “computer,” “program,” and

“instructions” are used in various places in their plain and ordinary way. (See, e.g.,

EX1001, 2:24-30; 8:46-59; 21:35-37; 43:11-14; 55:30-31, 55:39-42, 55:67, 56:54-

55). Thus, the limitation “executable computer program instructions” should


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receive its plain and ordinary meaning. But it may be unclear what the claims

mean by the phrase “set of.” The specification does not define this term, and it

therefore appears as a convenient drafting tool used by the claim drafter to identify

some code that performs distinct functionality. Since the ordinary meaning of

“set” is “a collection of things belonging, issued, used, or growing together” (i.e., a

grouping), POSA would understand that the limitation “set of” means any

grouping—logical or otherwise—of executable-program instructions. (EX1008, p.

1228; EX1003, ¶¶40-41).

C.

“executable memory storage device encoded with … a set of

executable computer program instructions”


recites the claim term “executable memory storage device encoded with a … set of

executable computer program instructions.” The limitation “executable memory

storage device” is used in its ordinary way only twice in the specification and

“executable computer program instructions” was discussed above. (EX1001,

55:67, 56:54-55; §VII(B)). The only term needing discussion is “encoded with.”

The specification does not define or even mention this term and, although

“encoded” has several specific definitions in computer science, POSA would

understand, and common sense dictates, that “encoded with” is being used in the

’627 patent as a synonym for “store.” This is consistent with the immediately


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preceding limitation that recites that the storage device is “adapted for storing

executable-program instructions.” Therefore, this limitation means “executable

memory storage device that stores … a set of executable computer program

instructions.” (EX1003, ¶¶42-43).

VII. GROUNDS OF UNPATENTABILITY

Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), this section demonstrates that

claims 1, 4, 6, 7, 10-13, and 16 of the ’627 Patent are unpatentable.

A.

Ground 1: Claims 1, 4, 6, 7, and 11-13 are Obvious over Maes and Ikeda

1. Maes Overview

Maes discloses a PDA on which a user can store their credit card and other

personal information and then interact with a point-of-sale (POS) system to

perform a consumer transaction. (EX1004, 2:23-31.) Maes is specifically

designed to work with any POS system immediately, without any infrastructure

changes. (EX1004, 4:12-18).

Maes discloses a “portable information and transaction processing (PDA)

device,” the heart of which “is a central processing unit (CPU) 12, which controls

the operations of the PDA device 10 via programs stored in a memory 14 and

executed by the CPU 12.” (EX1004, 4:65-5:4; EX1003, ¶45). Figure 1 provides

an overview of Maes:


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Maes’s PDA includes a touch screen or equivalent user interface 34, a

central processing unit (CPU) 12 for processing data, such as the biometric data

used for user verification, a memory 14 (data storage device) for storing user

information, and ports that provide communication capability to other devices,

such as a central server 60 and POS systems. (EX1004, 3:17-37; 7:57-8:9; 12:9-

15). For example, Maes discloses user communication between the PDA 10 and

both the central server 60 and a POS terminal using the serial port 42, parallel port

44, modem 42, IR port 54, or RF port 50. (EX1004, 7:57-8:9; 12:9-15). Maes also

discloses that the PDA 10 can connect to the central server 60 “through a digital


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communication channel such as internet, intranet, or local area network” or “may

be established through wireless communication.” (EX1004, 7:36-8:2). Thus,

Maes’s PDA could connect to external devices via the Internet wirelessly.

(EX1004, 8:5-9; EX1003, ¶46).

As shown in Figure 4, “[o]nce the communication has been established, the

user is prompted … to enter certain verification data (step 102),” which “is then

transmitted to the central server via the communication link L1.” (EX1004, 8:13-

18).


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For example, the central server may ask a series of questions or prompt the user to

enter a PIN. (EX1004, 8:18-28). Additionally, the system can require biometric

verification to obtain the digital certificate from the central server. (EX1004,

10:18-21; EX1003, ¶47).


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2. Ikeda Overview

Ikeda discloses a remote, ticket-purchase system where a person can

remotely request, purchase, and receive a ticket from a ticket-issuing device at a

ticket-issuing facility. (EX1005, ¶[0010]).

( Id ., Fig. 1.) Specifically, Ikeda discloses a personal device (called a user device 2)

that a user uses to input a ticket-issue request; a ticket-issuing device 102 that

receives the request and issues a ticket; and a ticket-using device 104, the business

that uses the purchased ticket (e.g., airline or hotel). (EX1005, ¶[0009]). For

example, as shown in Fig. 5, the user device 2 can request a ticket from the ticket-

issuing device 1, such as a hotel-lodging ticket. (EX1005, ¶[0129], Fig. 5, step S2;

EX1003, ¶¶48-49).


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Ikeda discloses that the ticket-issuing device can be “a WWW server

installed in the travel agency or a WWW server installed in the hotel” in which

case “the user receives the ticket issuing service over the internet.” (EX1005,

¶[0130]). Once the ticket-issuing device retrieves the search results, the user can

select the desired hotel, as illustrated in Figure 6(C), below, select a hotel (Fig.

6(G)), and input payment information (Fig. 5, step S6) to pay the reserved hotel’s

lodging fee. (EX1005, ¶¶[0132]-[0138]; EX1003, ¶50).


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Additionally, the ticket-issuing device requests user information, like name

and password, to provide security for the ticket. (EX1005, ¶¶[0145]-[0148]).

Once the hotel reservation and charging information are confirmed, the user device

is alerted that the ticket information will be transmitted shortly and that a fee will

be withdrawn from the credit card (Fig. 6(H)). (EX1005, ¶[0149]). The ticket is

then encoded and transmitted to the user device (Fig. 5, step S14), and the user

device decodes the ticket information and either prints the ticket—as shown in

Figure 7 below—or records the information on a portable recording medium.

(EX1005, ¶¶[0150]-[0151]; [0157]; EX1003, ¶51).


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Additionally, in Figure 5, step S18, “the ticket issuing device also transmits the

ticket information and the user code information . . . to the ticket using device 3.”

(EX1005, ¶[0152]; EX1003, ¶52).

3. Maes in view of Ikeda

Maes discloses the hardware and communications features recited in claims

1, 4, 6, 7, and 11-13. Although Maes discloses that it makes requests to a POS

system, it does not explicitly disclose the claimed remote-ticket-purchasing

functionality. But, Ikeda does, and it would have been obvious to POSA to

combine Maes and Ikeda. (EX1003, ¶57.)

Specifically, it would have been obvious to POSA to use Maes’s PDA

device with Ikeda’s ticket-distribution system. Maes envisioned using its PDA

device for POS and consumer transactions and disclosed that the device could be


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“immediately employed without having to change the existing infrastructure”

because it was designed to work with existing consumer-transaction systems.

(EX1004, 2:23-30; 4:12-18). Ikeda discloses one such system: “an object [of the

invention] is to provide a ticket issuing system, a ticket issuing device, and a ticket

using device with which a ticket buyer can purchase a ticket easily.” (EX1005,

¶[0008]). Thus, combining the two references would have been obvious to POSA

with an expectation of success: Maes’s PDA would be a well-suited Ikeda user

device. (EX1003, ¶58).

Moreover, POSA would be motivated to combine Maes and Ikeda because

doing so would have been a simple combination of prior-art elements according to

known methods to yield the predictable result of allowing a user to purchase tickets

using one device instead of two. For example, while Ikeda states that the user

device is a PC (EX1005, ¶[0076]), it also teaches that the user device may have “a

data recording part 26 for recording data on a portable recording medium” such as

“a palm-sized ultra-small PC.” (EX1005, ¶¶[0107], [0112]). This palm-sized PC

is used to transport the ticket information from the user device to the ticket-using

device (e.g., the hotel). Id . It would have been obvious to POSA that Ikeda’s

palm-sized PC was interchangeable with Maes’s PDA, and that, instead of using a

PC as the user device and a palm-sized PC to transfer the ticket information to the

ticket using device, Ikeda’s ticket-purchasing and use processes could be


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4.

The Combination’s Desired Functionality is Achieved by an

Executable Memory Storage Device Encoded with Set(s) of

Executable Computer Program Instructions

The Maes/ Ikeda combination discloses all the challenged claims’ hardware

elements and functionality. POSA would readily understand that perhaps the

easiest way to implement the Ikeda user device’s functionality in Maes’s PDA

would be by developing software as executable-computer-program instructions.

The alternative—implementing the functionality in hardware components, like

dedicated circuitry—would be very costly and require much more development

time and expense than merely developing programs to reside in Maes’s memory

and executed by its CPU. POSA would understand that there are only a limited

number of ways to implement Ikeda’s user device’s functionality in Maes’s PDA.

Therefore, doing so by using executable-program instructions is an obvious matter

of design choice. Moreover, POSA would recognize that implementing this

functionality through the use of executable-program instructions residing in Maes’s

memory and run by the CPU would be an obvious, natural, routine step for POSA

to take and would yield predicable results. (EX1003, ¶62.)

As shown in Figure 1 below, Maes discloses a CPU that “controls the

operations of the PDA device 10 via programs stored in a memory 14 and executed

by the CPU 12.” (EX1004 at 5:1-4; EX1003, ¶63).


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performed. As such, by virtue of the combination performing a particular function,

it is an obvious matter that a group or set of code that performs that function would

exist and be identifiable. The term “set” cannot be given any more significance

because the ’627 Patent does not even discuss sets of executable program

instructions. So, this term should not be given any significance beyond requiring

some code to perform the particular functionality. Even if the term “set” required

more, which it should not, it would have been an obvious matter of design choice

to group the executable-computer-program instructions into any particular number

of sets to achieve the device’s desired functionality. (EX1003, ¶65)

In the claim analysis below, Petitioner shows only that the claimed

functionality is performed by the Maes/ Ikeda combination, knowing that POSA

would readily understand that it would be an obvious matter for that functionality

to be performed by a grouping or set of executable-program instructions and it

would be obvious to group the executable-program instructions in any way.2

(EX1003, ¶66.)

2 The analysis in this section applies equally to Ground 2, as Maes is the primary

reference in both grounds, and Ground 2 relies upon Paltenghe for its functionality.


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Provided below is an abbreviated version of the claim analysis from Herbert

Cohen’s declaration (EX1003), which demonstrates that claims 1, 4, 6, 7, and 11-

13 of the ’627 Patent are rendered obvious by Maes in view of Ikeda.

Claim 1[preamble]: “A wireless handheld device for executing a mobile

transaction using the wireless handheld device, said wireless handheld device

comprising,”

The annotated figure below shows that Maes discloses a wireless handheld

device for executing a mobile transaction using the wireless handheld device.

Maes discloses “a portable client PDA with a touch screen or other equivalent

interface” (a wireless handheld device) that has a “local central processing unit

(CPU) for processing voice commands and for processing biometric data to

provide user verification” and that “also includes a memory for storing financial

and personal information of the user.” (EX1004, Abstract). Maes also discloses

that the CPU “controls the operations of the PDA device 10 via programs stored in

a memory 14 and executed by the CPU” and that the PDA has a client/server

operating mode in which it “connect[s] the PDA device 10 with the central server

60 of the service provider (Link L1, FIG. 3) in order to obtain a valid digital

certificate from the central server 60 prior to initiating a consumer transaction”

(i.e., executing a transaction). (EX1004, 5:1-4; 7:36-41). Maes further discloses

mobile communications, as they can be performed “through a digital

communication channel such as internet, intranet or local area network” or


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“through wireless communications, e.g., via the RF port 50 and the RF processor

module 48.” (EX1004, 7:57-8:2; 12:5-16; EX1003, ¶67).

Claim 1[a]: “a data storage device adapted for storing data,”

The figure below shows that Maes discloses a memory 14 (data storage

device) adapted for storing user information (data). Specifically, Maes discloses

that the device has “a central processing unit (CPU) 12, which controls the

operations of the PDA device 10 via programs stored in a memory 14 and executed

by the CPU 12.” (EX1004, 5:1-4; Fig. 1).


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Maes also discloses that memory 14 stores data, such as “financial and

personal information of the user” and the “digital certificate.” (EX1004, 3:22-23;

7:49-51; EX1003, ¶¶68-69).

Claim 1[b]: “a user input device,”

The annotated figure below shows that Maes’s PDA discloses a user

interface/display 34 (a user input device):

a user interface/display 34, which is preferably a liquid crystal display

(LCD) touch screen display (or equivalent user interface), for

displaying or inputting data associated with the operations or


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functions of the PDA device 10. Alternatively, the interface/display

24 may be comprised of a keyboard and a conventional LCD display.

(EX1004, 5:36-42; EX1003, ¶70).

Claim 1[c]: “an executable memory storage device adapted for storing

executable program instructions, the executable memory storage device

encoded with a first set of executable computer program instructions, and a

second set of executable computer program instructions,”

See §VII(A)(4), claim 1[g]-1[p]. (EX1003, ¶71).

Claim 1[d]: “a microprocessor programmed for executing the first set of

executable computer program instructions, and the second set of executable

computer program instructions”

Maes discloses a microprocessor programmed for executing the first and

second sets of executable computer programs because Maes discloses that the PDA


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Claim 1[f]: “short-range wireless communication hardware adapted for

communications using wireless short-range communication protocols,”

Maes discloses that the PDA could connect to the central server 60 and to a

POS transaction terminal “through wireless communication via … the IR port” and

“through an established connection link L2 … i.e., via the … IR port 54.”

(EX1004, 8:5-9; 12:10-15; Fig. 1, below).

Because Maes’s PDA can communicate via an IR port and has an IR

processor, POSA would have understood that Maes’s PDA would necessarily

communicate using short-range wireless communication protocols and thus would


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include short-range wireless communication hardware; moreover, such would be

obvious to POSA. (EX1003, ¶¶74-75).

Claim 1[g]: “said microprocessor, executing the first set of executablecomputer program instructions,”

See §VII(A)(4); claim 1[d]. (EX1003, ¶76).

Claim 1[h]: “accesses a content host computer device at an Internet-accessible

address according to a user input through said user input device of an

indication of said Internet-accessible address, said accessing said content host

computer device comprising accessing said Internet-accessible address

through said wireless communication hardware using wireless Internet

protocols through said wireless Internet connection, and”

Maes does not explicitly disclose accessing a content host computer device

at an Internet-accessible address. But as discussed above at 1[e], Maes discloses

accessing a service provider’s central server 60 through wireless communication

hardware using wireless Internet protocols through a wireless Internet connection.

Additionally, Maes discloses accessing POS terminals through wireless

communications. (EX1004, 12:10-15). Therefore, POSA would have understood

that Maes’s PDA could be instructed to access devices at Internet-accessible

addresses and that this would be done through user input of an Internet-accessible

address via the user input device 34, or alternatively, it would be obvious to do so.

(EX1003, ¶77).

Ikeda discloses an example of a ticket issuing device (content host computer

device) at an Internet-accessible address that Maes’s PDA could have accessed.


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(Fig. 5, below). Specifically, Ikeda teaches a “ticket issuing processing procedure

when reserving a lodging ticket for a hotel” where “ticket issue request information

is transmitted to the ticket issuing device 1 from the user device 2” and “where the

ticket issuing device 1 can be a WWW server installed in the travel agency or a

WWW server installed in the hotel,” (Internet-accessible address) in which case

“the user receives the ticket issuing service over the internet.” (EX1005,

¶¶[0128]–[0130]).

Ikeda also teaches that the user inputs the Internet-accessible address

through a user input device as “[t]he user operates the user interface part 24 to


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input ticket issue request information for purchasing a desired ticket.” (EX1005,

¶[0090]). POSA would understand that in Ikeda a user necessarily inputs an

Internet-accessible address via the user device to access a content host computer

device available at the Internet-accessible address, or alternatively, it would be

obvious to do so. (EX1003, ¶¶78-79).

Claim 1[i]: “said microprocessor, executing the second set of executable

computer program instructions,”

See §VII(A)(4); claim 1[d]. (EX1003, ¶80).

Claim 1[j] “requests said content host computer device for a particular

authorization certificate for exchange with a particular merchant,”

Ikeda discloses that “[t]he user operates the user interface part 24 to input

ticket issue request information for purchasing a desired ticket.” (EX1005,

¶[0090]). And, referring to Figure 5’s step S2, annotated below, Ikeda discloses

that “[t]his ticket issue request information includes, for example, retrieval request

information for requesting the retrieval of ticket information for a hotel lodging

ticket, condition indication information for indicating a plurality of conditions

limiting the hotels, and the like.” ( Id ., ¶[0129]).


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POSA would thus understand that the user’s request for a desired ticket

(particular authorization certificate for exchange with a particular merchant) is sent

to the ticket issuing device (content host computer device). (EX1003, ¶¶81-82).

Claim 1[k] “receives from said content host computer device a request for

security and payment information to pay for said particular authorization

certificate,”

Ikeda discloses that the ticket issuing device (content host computer device)

displays the hotel results on the display part 23 of the user device and that after

“the user selects one hotel by operating the user interface part 24,” the user

“operates the user interface part 24 so as to input charging identification

information to pay the lodging fee for the hotel” (requests payment information to


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pay for said particular authorization certificate). (EX1005, ¶¶[0134]-[0138]; Fig.

5, below). Ikeda also discloses that the ticket issuing device (content host

computer device) “transmits user information submission request information

requesting the transmission of user identification information for identifying the

user” (requests security information) and that this information can include the

user’s name and a password. ( Id ., ¶¶[0145]-[0148]; Fig. 5, below).

POSA would understand that after the user selects a ticket, i.e., a hotel, the user

receives a request from the ticket issuing device (content host computer device) to

input user information and payment information to pay for the hotel (security and

payment information). (EX1003, ¶¶83-84).


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Claim 1[l] “communicates security and payment information to said content

host computer device to pay for said particular authorization certificate,”

Ikeda discloses that “the user operates the user interface part 24 so as to

input charging identification information, such as a bank account number or credit

card number, for paying the lodging fee of the reserved hotel” (communicates

payment information) and that this information is transmitted to the ticket issuing

device (content host computer device). (EX1005, ¶¶[0138]-[0139]; Fig. 5,

annotated below). Additionally, Ikeda discloses that the user’s name and password

information is provided to the ticket issuing device to enhance the security of the

ticket received at the user device (communicates security information). (EX1005

at ¶[0146]-[0148]; Fig. 5, below; EX1003, ¶85).


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Claim 1[m] “receives an authorization from said content host computer device

to download said particular authorization certificate,”

Ikeda discloses that “[w]hen the hotel reservation information and the

charging identification information are confirmed, the confirmation result is

transmitted to the user device 2” from the ticket issuing device (content host

computer device), the user device displays that the “ticket information will be

transmitted thereafter,” and then “[t]he ticket issuing device 1 transmits the

encoded ticket information and user code information to the user device 2.”

(EX1005, ¶¶[0149]-[0150]; Fig. 6H, below).


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Once the ticket information and user code information (the authorization

certificate) are transmitted from the ticket issuing device (content host computer

device) to the user device, they can be recorded on a portable medium by the data

recording part 26. ( Id ., ¶[0151]). POSA would have understood that the

transmission of the confirmation result to the user device would constitute the

content host computer device’s authorization to download the particular

authorization certificate. (EX1003, ¶¶86-87).


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Claim 1[n] “executes a downloading of data from a memory storage device

associated with either the content host computer device or a content provider

computer device, said executing said downloading of data comprising

downloading said data from said memory storage device to said wireless

handheld device through said wireless communication hardware usingwireless Internet protocols through said wireless Internet connection, said

data comprising said particular authorization certificate,”

See 1[m]. As depicted in Figure 5 below, Ikeda teaches that “[i]n step S14,

the data processing part 11 of the ticket issuing device 1 then encodes ticket

information indicating the content of the ticket, each condition of the hotel, or the

like and user code information indicating the issue number of the ticket” and

“transmits the encoded ticket information and user code information to the user

device 2.” (EX1005, ¶[0150]). POSA would understand that all computers have

memory and that thus the data comprising the ticket information, i.e., the

authorization certificate, would be stored in the memory of the ticket issuing

device (content host computer device) and that the transmission of the data from

the ticket issuing device to the user device (wireless handheld device) would

constitute a downloading of that data. Alternatively, POSA would understand that

it would be obvious to do so. (EX1003, ¶88). Then, “[i]n step S16, the user device

2 decodes the transmitted ticket information and user code information” and either

prints the information or records it on a portable recording medium. (EX1005,

¶[0151]).


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data processing part 11 of the ticket issuing device 1 also transmits the user code

information transmitted to the user device 2 from the modem 13 to the ticket using

device 3.” (EX1005, ¶[0108]; ¶[0153] (“[I]n step S18, the ticket issuing device 1

also transmits the ticket information and user code information transmitted to the

user device 2 to the ticket using device 3.”); Fig. 5, below). Ikeda’s ticket using

device constitutes the claimed content provider computer device. (EX1003, ¶91).

Additionally, as shown in step S22 of Figure 5, Ikeda discloses that when the

user presents the lodging ticket at the hotel, “the ticket using device 3 reads the

user code information of the lodging ticket.” When the information is stored on a


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portable storage medium or a small device, Ikeda describes at [0113] that a

medium drive device, “connection cable, light, wireless communication device, or

the like can be used” to read the information. POSA would understand that this

reading would be done using a point-of-sale device which POSA would understand

is simply the interface at the venue that the user interacts with. The ticket using

device also “collates this user code information with the user code information

transmitted from the ticket issuing device 1” and that if the information presented

by the user matches the information sent from the ticket issuing device (content

host computer device) to the ticket using device (content provider computer

system), “it is discriminated that the lodging ticket … is a true lodging ticket.”

(EX1005, ¶¶[0083], [0112], [0113], [0152], [0154]). POSA would understand that

the ticket using device’s interfaces are point-of-sale devices—or alternatively,

POSA would know to use point-of-sale devices—and that it would be obvious to

use multiple such devices. Ikeda also discloses that the user code information is

based on the user identification information, which includes “the user’s name,

address, bank account number or credit card number used to pay the price of the

ticket, or the like.” ( Id ., ¶¶[0103], [0173]). POSA would thus understand that the

ticket information and user code information that is transmitted to the ticket using

device (content provider computer device) to ensure that the user’s authorization

certificate is a true authorization certificate would include the particular


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authorization certificate, and payment and security information. And, because the

ticket using device (content provider computer device) is (1) accessible by a point-

of-sale device that is able to read the user code information of the lodging ticket

(particular authorization certificate) and (2) is able to collate with the information

received from the ticket issuing device (content host computer device), POSA

would understand that the content provider computer system is accessible by point-

of-sale devices for a particular merchant and receives confirmation data from the

content host provider device. (EX1003, ¶¶92-93). Thus, this combination shows

exactly what the Examiner thought the prior art lacked during prosecution. (See

§V(C)).

Claim 1[p] “and executes a storing of said data downloaded through the

content host computer device in the data storage device of said wireless

handheld device.”

As discussed above at 1[n], Maes’s PDA (wireless handheld device)

downloads the data from the content host computer device. Additionally, Ikeda

discloses that “the user device 2 decodes the transmitted ticket information and

user code information” and can record the information on a portable recording

medium. (EX1005, ¶[0151]). Similarly, Maes discloses that “[t]he digital

certificate is stored in the memory 14 of the PDA device.” (EX1004 at 7:49-51).

Thus, POSA would understand that downloaded data would be stored in the data

storage device of the wireless handheld device. (EX1003, ¶94).


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Maes discloses that the PDA’s (wireless handheld device’s) CPU includes “a

biometric processor module 22 for processing biometric data” and that the PDA

includes “[a] biometric sensor 40 . . . for collecting biometric data . . . such as a

finger, thumb or palm print, a handwriting sample, retinal vascular pattern, or a

combination thereof, to provide biometric verification as an alternative to, or in

addition to, voice biometric verification.” (EX1004, 5:8-14; 5:54-60). Maes’s

biometric sensor constitutes the claimed biometric data reading device and is

adapted for reading wireless handheld device user’s biometric data. (EX1003,

¶99).

Claim 6[b] “said transaction further comprising, prior to executing said

downloading of data, automatically obtaining biometric data from the user

that is using the wireless handheld device through said biometric data reading

device, validating the biometric data with biometric data stored in the data

storage device, and requiring an authorization from the wireless handheld

device based on said validating the biometric data before proceeding with saidexecuting said downloading of data.”

As shown at 6[a], Maes discloses obtaining biometric data from the PDA

user through a biometric data reading device to provide biometric verification,

which POSA would understand required automatically obtaining the biometric data

(e.g., the user putting their thumb on the thumb reader, which then automatically

reads the thumb print), validating that data with biometric data previously stored in

the data storage device (e.g., the authorized user’s thumb print was pre-stored,

otherwise validation cannot occur) and providing an authorization based on that


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validation. Maes also discloses that the biometric verification can be used to

obtain a digital certificate from the central server 60, and that once the user is

verified the central server 60 will create the digital certificate, which will then be

downloaded by the PDA. (EX1004, 10:18-21; 9:65-10:11). Additionally, as

discussed at 1[k] and 1[l], Ikeda discloses that the ticket issuing device requests

“the transmission of user identification information for identifying the user,”

including the user’s name and a password and that the user provides this

information prior to downloading the ticket. (EX1005, ¶¶[0145]-[0149]). Thus

POSA would understand that the biometric data is obtained and validated prior to

executing the downloading of data. (EX1003, ¶¶100-101).

Claim 7 “The wireless handheld device of claim 6, said downloading of data

comprising downloading an electronic ticket.”

As depicted in annotated Figure 5 below, Ikeda teaches that “[i]n step S14,

the data processing part 11 of the ticket issuing device 1 then encodes ticket

information indicating the content of the ticket, each condition of the hotel, or the

like and user code information indicating the issue number of the ticket” and

“transmits the encoded ticket information and user code information to the user

device 2.” (EX1005, ¶[0150]). Then, “[i]n step S16, the user device 2 decodes the

transmitted ticket information and user code information” and either prints the


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Ikeda also discloses that the ticket issuing device can be “a WWW server”

and that, in that case, the user device receives the ticket over the internet. ( Id .,

¶¶[0128]-[0130]; claim 6[preamble]). POSA would thus understand that the

downloaded data comprised an electronic ticket. (EX1003, ¶¶102-103).

Claim 11[preamble] “A wireless handheld device for interacting with a

content host computer system and with point-of-authorization use devices for

at least one merchant, for executing a mobile transaction, said wireless

handheld device comprising,”

Maes discloses “a portable client PDA with a touch screen or other

equivalent interface” (a wireless handheld device) that has a “local central

processing unit (CPU) for processing voice commands and for processing

biometric data to provide user verification” and that “also includes a memory for

storing financial and personal information of the user.” (EX1004, Abstract). Maes

also discloses that the CPU “controls the operations of the PDA device 10 via

programs stored in a memory 14 and executed by the CPU” and that the PDA has a

client/server operating mode in which it “connect[s] the PDA device 10 with the

central server 60 of the service provider (Link L1, FIG. 3) in order to obtain a valid

digital certificate from the central server 60 prior to initiating a consumer

transaction,” (i.e., executing a transaction). ( Id ., 5:1-4; 7:36-41). Maes further

discloses that the communication can be mobile, as it can be performed “through a

digital communication channel such as internet, intranet or local area network” or


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“through wireless communications, e.g., via the RF port 50 and the RF processor

module 48.” ( Id ., 7:57-8:2).

Also, one of Maes’s objectives is to provide a PDA that can “initiate a POS,

ATM, or consumer transaction,” and thus POSA would understand that Maes’s

PDA would interact with point-of-authorization use devices for at least one

merchant. (EX1003, ¶¶104-105).

Claim 11[a] “a computer-accessible data storage device adapted for storing

data,”

See claim 1[a].


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Additionally, POSA would have further understood that Maes’s PDA is a

data storage device that is computer accessible because memory 14 is accessed by

CPU 12 as shown above in annotated Fig. 1. (EX1004, Fig. 1; EX1003 ¶¶106-

107).

Claim 11[b] “a user input device,”

Claim 11[b] is identical to claim 1[b]. Therefore, see claim 1[b]. (EX1003,

¶108).


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Claim 11[c] “a biometric data reading device adapted for reading biometric

data of a user that is using the wireless handheld device,”

Claim 11[c] is identical to claim 6[a]. Therefore, see claim 6[a]. (EX1003,

¶109).

Claim 11[d] “an executable memory storage device adapted for storing


encoded with a first set of executable computer program instructions, a

second set of executable computer program instructions, a third set of

executable computer program instructions, and a fourth set of executable


See §VII(A)(4), claim 11[h]-11[o]. (EX1003, ¶110).

Claim 11[e] “a microprocessor programmed for executing the first set of

executable computer program instructions, the second set of executable

computer program instructions, the third set of executable computer program

instructions, and the fourth set of executable computer program instructions,”

See §VII(A)(4); claim 1[d].

Claim 11[f] “wireless communication hardware adapted for wireless

communications,”

Claim 11[f] is broader than claim 1[e]. Therefore, see claim 1[e]. (EX1003,

¶112).

Claim 11[g] “short-range wireless communication hardware adapted for


Claim 11[g] is identical to claim 1[f]. Therefore , see claim 1[f]. (EX1003,

¶113).


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Claim 11[h] “said microprocessor, executing the first set of executable


See §VII(A)(4); claims 1[d], 11[e]. (EX1003, ¶114).

Claim 11[i] “automatically obtains biometric data from the user that is using

the wireless handheld device through said biometric data reading device,

validates the biometric data with biometric data stored in the computer-

accessible data storage device, and requires an authorization from the wireless

handheld device based on said validating the biometric data before

proceeding with executing the second and third sets of executable computer

program instructions”

See claim 6[b] explaining how the wireless device automatically obtains

biometric data from the user, validates it, and requires authorization based on the

validation. Additionally, Maes discloses that the biometric validation can occur

before giving the user access to the financial and personal information stored in

memory 14. (EX1004, 5:60-63). POSA would have understood that this

validation and authorization could occur at any point during the wireless handheld

device’s interaction with the content host computer device as an obvious matter of

design choice, and thus could have occurred prior to executing the second and third

sets of executable computer program instructions. (EX1003, ¶115).

Claim 11[j] “said microprocessor, executing the second set of executable

computer program instructions,

See §§VII(A)(4); claims 1[d], 11[e]. (EX1003, ¶116).


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Claim 11[k] “accesses a content host computer device using wireless

communications according to a user input through said user input device of

an indication of said Internet-accessible address, and”

Claim 11[k] is broader than claim 1[h]. Therefore , see claim 1[h].

(EX1003, ¶117).

Claim 11[l] “said microprocessor, executing the third set of executable

computer program instructions interacts according to user input with the

content host computer device using wireless communications to identify a

particular authorization certificate redeemable with a particular merchant,”

See §VII(A)(4); claims 1[d], 11[e]. (EX1003, ¶118).

Further, Ikeda discloses that “[t]he user operates the user interface part 24 to

input ticket issue request information for purchasing a desired ticket.” (EX1005,

¶[0090]; see also Fig. 7, below).

And, referring to step S2 of Figure 5, annotated below, Ikeda discloses that “[t]his

ticket issue request information includes, for example, retrieval request information


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for requesting the retrieval of ticket information for a hotel lodging ticket,

condition indication information for indicating a plurality of conditions limiting the

hotels, and the like.” (EX1005, ¶[0129]).

POSA would thus understand that the user’s request for a desired ticket, or

particular authorization certificate for exchange with a particular merchant, is sent

to the ticket issuing device (content host computer device). And as discussed (see

1[[f], 1[h]), POSA would understand that the interaction with the content host

computer device could occur using wireless communications. (EX1003, ¶¶119-

121).


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Claim 11[m] “downloads the particular authorization certificate, and”

Claim 11[m] is broader than claim 1[n]. Therefore, see claim 1[n].

(EX1003, ¶122).

Claim 11[n] “activates a communication by said content host computer device

to a content provider computer device of confirmation data comprising

security information and said particular authorization certificate, said content

provider computer system being accessible by point-of-authorization-use

device for said particular merchant,”

Claim 11[n] is of similar scope to claim 1[o]. Therefore, see claim 1[o].

The analysis for a point-of-sale device applies to point-of-authorization-use device.

(EX1003, ¶123).

Claim 11[o] “said microprocessor, executing the fourth set of executable

computer program instructions in response to a request of the user,

communicates said particular authorization certificate and redemption

security information using said short-range wireless communication hardware

of the wireless handheld device to a short range wireless interface of a point-

of-authorization-use device for said particular merchant.”

See §VII(A)(4); claims 1[d], 11[e].

Also, as discussed at 1[f], Maes’s PDA could communicate using short-

range wireless communication protocols and thus would include short-range

wireless communication hardware. (EX1003, ¶¶124-125).

Additionally, as discussed at 1[o] and 11[n], Ikeda discloses that when the

user presents the lodging ticket at the hotel, “the ticket using device 3 reads the

user code information of the lodging ticket” (which can be done using a “wireless


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communications device”) and “collates this user code information with the user

code information transmitted from the ticket issuing device 1” and that if the ticket

information presented by the user matches that received by the ticket using device

from the ticket issuing device, it is discriminated that the lodging ticket … is a true

lodging ticket.” (EX1005, ¶¶[0113], [0152], [0154]). POSA would have

understood that the lodging ticket presented at the hotel (point-of-authorization-use

device) would include user code information (security information) and ticket

information (the particular authorization certificate) and could be communicated

using the short-range wireless communication hardware. (EX1003, ¶¶126-127).

Claim 12 “The wireless handheld device of claim 11, said wireless handheld

device further comprising a fifth set of executable computer program

instructions for sending the content host computer device security information

for validation before proceeding with executing said third set of executable

computer program instructions.”

See §VII(A)(4). Also, Maes discloses that once the PDA has established

communication with the central server the user is prompted “to enter certain

verification data (step 102).” (EX1004, 8:13-16). For example, the central server

may ask a series of questions or prompt the user to enter a PIN that was issued

during the enrollment process. ( Id ., 8:18-27). Maes then discloses that “[t]he user

may provide the requested verification data by providing answers to the questions”

or “may enter his or her assigned PIN through the user interface display.” ( Id .,

8:34-42). POSA would have understood that the verification data, or security


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information for validation, would be sent to the central server 60 (content host

computer device) prior to executing the third set of executable-program

instructions, which provides for interaction according to user input with the content

host computer device using wireless communications to identify a particular

authorization certificate redeemable with a particular merchant. See claim 11[l].

(EX1003, ¶128.)

Claim 13 “The wireless handheld device of claim 11, said downloading said

electronic authorization comprising downloading an electronic ticket.”

Claim 13 is identical to claim 7. Therefore, see claim 7. (EX1003, ¶129.)

B. Ground 2: Claims 1, 4, 6, 10, 11, and 16 are Obvious over Maes

and Paltenghe

1. Paltenghe Overview

Paltenghe discloses a virtual wallet system with a broad range of

functionalities, including allowing the owner to remotely request, purchase, and

receive a ticket from a point-of-sale at a ticket-issuing facility. (EX1006, 21:12-

26). Specifically, as shown in Figure 2 below, Paltenghe’s virtual wallet system

includes a personal storage device 12, like a PDA, that a user uses to

“communicate with outside world 18 for purpose of point of sale transactions 15.”

(EX1006, 12:10-16; 13-21-22).


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These point-of-sale transactions include purchasing a theater ticket, where

the user shops for a particular theater ticket on a theater server using the PDA, the

theater server requests payment and sends the ticket, which the user downloads and

then uses at the theater to attend the show. ( Id ., 21:12-26; Fig. 9, below).


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(EX1006, 21:16-18; EX1003, ¶¶53-54).

Paltenghe also discloses that the PDA may include multiple data types like

“electronic currency (e-currency); coupons; tokens; tickets; loyalty credits and the

like” and may be used for “authenticating; digital signing; or paying.” ( Id ., 12:21-

25). Additionally, Paltenghe’s “virtual wallets include software programs that will

reside on a … client PC/PDA/STB.” ( Id ., 13:30-31; EX1003, ¶55).

2.

Maes in view of Paltenghe

As discussed above in §VII(A)(1), Maes discloses the hardware and

communications features recited in claims 1, 4, 6, 10, 11, and 16. Although Maes

discloses that it makes requests to a POS system, it does not explicitly disclose the


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claimed remote-ticket-purchasing functionality. But, Paltenghe does, and it would

have been obvious to POSA to combine Maes and Paltenghe. (EX1003, ¶57).

Specifically, it would have been obvious to POSA to use Maes’s PDA

device with Paltenghe’s ticket-distribution system and POSA would be motivated

to combine Maes and Ikeda because doing so would have been a simple

combination of prior-art elements according to known methods to yield the

predictable result of allowing a user to purchase tickets from a PDA. Maes

envisioned using its PDA device for POS and consumer transactions and the

device could be “immediately employed without having to change the existing

infrastructure” because it was designed to work with existing consumer transaction

systems. (EX1004, 2:23-30; 4:12-18). Paltenghe discloses one such system:

“[A]nother feature of the present invention allows the wallet owner to purchase,

store and use tickets, tokens or other similar transferable items of value.”

(EX1006, 21:12-14). Thus, combining the two references would have been

obvious to POSA, who would have had an expectation of success: Maes’s PDA

would be a well-suited Paltenghe virtual wallet. Specifically, using Maes’s PDA

as Paltenghe’s virtual wallet would allow a user to interact with a theater to

purchase a ticket for a show, purchase and download the ticket, and use the ticket

at the venue. (EX1003, ¶131).


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3.

The Combination’s Desired Functionality is Achieved By

An Executable Memory Storage Device Encoded with Set(s)

of Executable Computer Program Instructions

For the same reasons as discussed at §VII(A)(4), the Maes/Paltenghe

combination discloses all claimed “sets of” executable instructions. The

Maes/Paltenghe combination discloses all the challenged claims’ hardware

elements and functionality. Specifically, POSA would readily understand that

perhaps the easiest way to implement the Paltenghe virtual wallet’s functionality in

Maes’s PDA would be by developing software in the form of executable-

computer-program instructions. As discussed above, the alternative—

implementing the functionality in hardware components, like dedicated circuitry—

would be very costly and require much more development time and expense than

merely developing programs to reside in Maes’s memory and executed by its CPU.

(EX1003, ¶132).

Additionally, POSA would have understood that Maes’s “programs” all

perform certain functionality, and that this functionality occurs when the programs

stored in Maes’s memory 14 are executed by Maes’s CPU 12. For example, Maes

shows that some of these programs stored in memory and executed by the CPU

include multiple functional modules, like the biometric processor module 22.

(EX1004, 5:60-63). POSA would have understood that the functionality

performed by the Maes/Paltenghe combination would have a grouping of code for


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each piece of functionality performed. And, as discussed, it is an obvious matter

that a group or set of code that performs the function would exist and be

identifiable, or alternatively, it would be an obvious matter of design choice.

(EX1003, ¶¶133-134).

Thus, in the claim analysis below, Petitioner shows only that the claimed

functionality is performed by the Maes/Paltenghe combination, knowing that

POSA would readily understand that it would be an obvious matter for that

functionality to be performed by a grouping or set of executable-program

instructions, and it would be obvious to group the executable-program instructions

in any way. (EX1003, ¶135.)

Provided below is an abbreviated version of the claim analysis from Herbert

Cohen’s declaration (EX1003), which demonstrates that claims 1, 4, 6, 10, 11, and

16 of the ’627 Patent are rendered obvious by Maes in view of Paltenghe.

Claim 1[preamble]: “A wireless handheld device for executing a mobile

transaction using the wireless handheld device, said wireless handheld device

comprising,”

See Ground 1, claim 1[preamble]. (EX1003, ¶136).

Claim 1[a]: “a data storage device adapted for storing data,”

See Ground 1, claim 1[a]. (EX1003, ¶137).

Claim 1[b]: “a user input device,”

See Ground 1, claim 1[b]. (EX1003, ¶138).


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Claim 1[c]: “an executable memory storage device adapted for storing


encoded with a first set of executable computer program instructions, and a

second set of executable computer program instructions,”

See §§VII(A)(4), VII(B)(3), Ground 2, claim 1[g]-1[p]. (EX1003, ¶139).

Claim 1[d]: “a microprocessor programmed for executing the first set of

executable computer program instructions, and the second set of executable

computer program instructions”

See Ground 1, claim 1[d]. (EX1003, ¶140).

Claim 1[e]: “wireless communication hardware adapted for communications

using wireless Internet protocols over a wireless Internet connection,”

See Ground 1, claim 1[e]. (EX1003, ¶141).

Claim 1[f]: “short-range wireless communication hardware adapted for


See Ground 1, claim 1[f]. (EX1003, ¶142).

Claim 1[g]: “said microprocessor, executing the first set of executable


See §§VII(A)(4), VII(B)(3); Ground 1, claim 1[d]. (EX1003, ¶143).

Claim 1[h]: “accesses a content host computer device at an Internet-accessible

address according to a user input through said user input device of an

indication of said Internet-accessible address, said accessing said content host

computer device comprising accessing said Internet-accessible address

through said wireless communication hardware using wireless Internet

protocols through said wireless Internet connection, and”

Maes does not explicitly disclose accessing a content host computer device

at an Internet-accessible address. But as discussed above at Ground 1 claim 1[e],

Maes discloses accessing a service provider’s central server 60 through wireless


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Thus, POSA would understand that Paltenghe discloses accessing a content host

computer device according to user input through said user input device. (EX1003,

¶¶145-146).

Additionally, Paltenghe’s “personal storage device 12 may communicate

with the outside world for purpose of point of sale transactions 15,” “can

communicate via secure interface interactions,” and can communicate with an

institutional server 14 that can also “communicate with the outside world 18 via

intermediated internet transactions 17.” (EX1006, 13:18-19; 17:14-26). Thus,

whether explicitly stated or not, Paltenghe contemplated the use of the Internet,

and POSA would therefore be motivated to connect the theater server to the


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Internet to render it widely accessible. Thus, POSA would understand that a user

using Paltenghe’s virtual wallet (user input device) could access the theater server

(content host computer device) over the Internet and that one way the user could

access the content host computer device at an Internet-accessible address, input

into the user input device. (EX1003, ¶147).

Claim 1[i]: “said microprocessor, executing the second set of executable


See §§VII(A)(4), VII(B)(3); Ground 1 claim 1[d]. (EX1003, ¶148).

Claim 1[j] “requests said content host computer device for a particular

authorization certificate for exchange with a particular merchant,”

In annotated Figure 9 below, Paltenghe discloses that “the present invention

allows the wallet owner to purchase, store and use tickets, tokens or other similar

transferable items of value” and provides an example where “the owner interacts

with a theater to purchase a ticket to a show.” (EX1006, 21:12-16; Fig. 9).

Paltenghe discloses that the interaction with the theater is through the “theatre

server” (content host computer device). ( Id ., Fig. 9).


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POSA would thus understand that the user’s request for a theater ticket

(particular authorizati

Documents

Unified Patents Inc. v. Sentegra, LLC, IPR2016-01109, Paper 1 (May 28, 2016)