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

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Unified Patents Inc.,
Petitioner
v.
Sentegra, LLC
Patent Owner
IPR2016-01109
Patent 8,706,627
____________
PETITION FOR INTER PARTES REVIEW
OF CLAIMS 1, 4, 6, 7, 10-13, AND 16
OF U.S. PATENT NO. 8,706,627 UNDER 35 U.S.C. 311-319
TABLE OF CONTENTS
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.
VI.
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
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
ii
C.
executable memory storage device encoded with a set of

executable computer program instructions........................................15
VII. GROUNDS OF UNPATENTABILITY........................................................16

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

and Ikeda .............................................................................................16
1. Maes Overview ..............................................................................16
2. Ikeda Overview ..............................................................................20
3. Maes in view of Ikeda ....................................................................23
4. The Combinations 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 Combinations Desired Functionality is Achieved By
An Executable Memory Storage Device Encoded with Set(s)
of Executable Computer Program Instructions ..............................65
VIII. CONCLUSION..............................................................................................91
iii
I.
INTRODUCTION
Pursuant to 35 U.S.C. 311-319, Unified Patents Inc., (Unified or
Petitioner) petitions the PTAB to institute inter partes review of claims 1, 4, 6, 7,

10-13, and 16 of U.S. Patent No. 8,706,627 to Shore (the 627 Patent, EX1001).
The challenged claims use many words to recite several simple and obvious
concepts directed to a remote, handheld, ticket-purchasing system. Beyond these
simple, obvious concepts, the claims are packed with long-known and
conventional hardware limitations found in virtually every wireless, handheld
device of the time, like wireless communications hardware, a data storage
device, a user input device, a microprocessor, etc. Tellingly, the 627 Patent
itself even admits that wireless, handheld devices, such as PDAs, were well known
before the 627 patents 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
For all exhibits, the citations refer to page number/column number:line numbers.
1
functionality performed by an admittedly well-known wireless, handheld device,

the challenged claims should be canceled as obvious.
II.
MANDATORY NOTICES
Pursuant to 37 C.F.R. 42.8(a)(1), Petitioner provides the following
mandatory disclosures:
A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could
exercise control over Unifieds 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-cv09266 (S.D.N.Y. Nov. 24, 2015);
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. 1-15cv-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

3
designation of counsel: Lead counsel is Michael L. Kiklis (Reg. No. 38,939) and
back-up counsel are Scott A. McKeown (Reg. No. 42,866); Thomas C.
Yebernetsky (Reg. No. 70,418); Katherine D. Cappaert (Reg. No. 71,639); and
Jonathan Stroud (Reg. No. 72,518).
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. Kiklis
Oblon LLP
1940 Duke Street
Alexandria, VA 22314
Email:
cpdocketkiklis@oblon.com
Telephone: 703-413-3000
Fax:
703-413-2220
Address:
Jonathan Stroud, Chief Patent Counsel

Unified Patents Inc.
171 Main St. #106, Los Altos, CA, 94022
Email:
jonathan@unifiedpatents.com
Telephone: 202-805-8931
Fax:
650-887-0349
III.
PAYMENT OF FEES
The undersigned authorizes the Office to charge the required fees and any
additional fees that might be due to Deposit Account No. 15-0030.

IV.
REQUIREMENTS FOR INTER PARTES REVIEW

As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for
4
inter partes review of the 627 Patent is satisfied.

A.
Grounds for Standing
Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 627 Patent is

available for inter partes review and that Petitioner is not barred or estopped from
requesting inter partes review challenging the patent claims on the grounds
identified herein.
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
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
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 purchasesincluding 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 thirdparties from anywhere, using the Internet. These personal, handheld devices were
also often equipped with short-range-wireless-communication capabilities, such as
infrared (IR) technology, to allow for additional functionality, such as connecting
to peripherals like printers and keyboards. (EX1003, 20-28).
The 627 Patent itself acknowledges that personal, handheld devices were
widely available as of 2000: [a] User may purchase a PDA/wireless phone at any
retail outlet that sells such devices and the claims could be applied to all
7
handheld or watch-sized PDA computing devices without departing from the spirit
of the invention. (EX1001, 25:13-14; 8:45-48). Accordingly, the 627 Patents
claimed hardware was known before 2000, as was its functionality. (EX1003,
24.)
Before 2000, it was well known that individuals were performing routine, inperson 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 Ikedas objects is to provide a system so that a
ticket buyer can purchase a ticket easily without going to a ticket issuing location.
(EX1005, [0008]; EX1003, 29.)
Additionally, it was well known before 2000 that individuals could use
either PDAs or PCs to perform these remote tasks and that PDAs and PCs were
virtually interchangeable for all but the most computation-intensive tasks. For
example, Maes notes that [t]he PDA includes a modem, a serial port and/or a
parallel port so as to provide direct communication capability with peripheral
devices (such as POS and ATM terminals) and is capable of transmitting or
receiving information through wireless communications such as radio frequency
8
(RF) and infrared communication, and Paltenghe states that a virtual wallet
system may comprise a personal storage device 12 which may comprise a
personal digital assistant (PDA). (EX1004, Abstract; EX1006, 12:10-20).
Accordingly, all aspects of the challenged claims were well known before 2000.
(EX1003, 30.)
B.
Summary of the 627 Patent
At first glance, the 627 Patents claims appear detailed. But upon closer
scrutiny, they claim nothing more than a simple, obvious invention mixed in with
lengthynon-substantiveclaim language. At its core, the 627 Patent takes the
traditional way to pay for purchases and migrates it to existing wireless mobile
devices. (EX1001, 1:28-43). The resulting remote, handheld, ticket-purchasing
system was well known prior to the 627 Patents earliest priority date. (EX1003,
31-32.)
The 627 Patent itself admits that it did not invent any kind of wireless
device or associated hardware, noting that wireless devices capable of performing
the claimed functionality were generic and available:
A User may purchase a PDA/wireless phone at any retail outlet that sells
such devices. (EX1001, 25:13-14);
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 generichardware 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 certificatean electronic ticketon
a wireless device. But that too was old. (EX1003, 33-34.)
Indeed, the claimed functionality was well known. All the 627 Patents
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 Ikedas figure 5, annotated below, demonstrates:
10
Access a website and request an authorization certificate
Exchange payment and

security information
Download and store

the authorization
certificate
(EX1005. Fig. 5; EX1003, 35.)

Claims 6 and 11 recite using biometric data for security, but this too was
well known before 2000. For example, Maes explains that [a] biometric sensor
40 of any conventional type may also be provided for collecting biometric data
to provide biometric verification. (EX1004, 5:54-60). Similarly, Paltenghe
discloses a virtual wallet having authentication mechanisms, and that
[a]uthentication information may comprise objects such as certificates, access
11
keys and biometric information. (EX1006, 5:20-21). Thus, the 627 Patent
claims nothing more than the well-known idea of a remote, handheld, ticketpurchasing 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. 17191727; 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 merchants
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 bachelors degree in electrical
12
engineering, computer engineering, computer science, or equivalent training, and

at least two years of experience in the field of embedded-communication systems.
(EX1003, 17-18).
VII. DECLARATION EVIDENCE
This Petition is supported by the declaration of Herbert Cohen, an expert in
the field of embedded-communication systems, EX1003. Mr. Cohen offers his
opinion with respect to the skill level of POSA, EX1003, 17-18, the content and
state of the prior art, id., 19-30, claim construction, id., 37-43, and the
teachings and suggestions that one of ordinary skill would understand based on
Exs. 1004-1006, id., 44-198. For over twenty years, Mr. Cohen developed
software and managed development and testing efforts to deliver wired- and
wireless-communication subsystems to major equipment providers. Mr. Cohen
thus has a deep, detailed understanding of wireless-communications protocols and
products. Mr. Cohen has been published in EE Times and has received multiple
awards for his work in wireless-communication systems. (EX1003, 2-8).
VII. CLAIM CONSTRUCTION (37 C.F.R. 42.104(B)(3))
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable interpretation (BRI) in view of the
specification in which they appear. 37 C.F.R. 42.100(b). Petitioner adopts the
plain meaning for all claims terms, but Petitioner proposes a specific construction
13
for several terms below. These constructions are consistent with the plain and
ordinary meaning under the Phillips v. AWH Corp. standard.
A.
authorization certificate
Every claim of the 627 Patent, either directly or through dependency,

recites the claim term authentication certificate. The 627 Patents 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, 56:5455). Thus, the limitation executable computer program instructions should
14
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
groupinglogical or otherwiseof 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
15
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:
16
Maess 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; 12:915). 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
17
communication channel such as internet, intranet, or local area network or may

be established through wireless communication. (EX1004, 7:36-8:2). Thus,
Maess 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, 8:1318).
18
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).
19
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 ticketissuing device 1, such as a hotel-lodging ticket. (EX1005, [0129], Fig. 5, step S2;
EX1003, 48-49).
20
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 hotels
lodging fee. (EX1005, [0132]-[0138]; EX1003, 50).
21
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 ticketas shown in
Figure 7 belowor records the information on a portable recording medium.
(EX1005, [0150]-[0151]; [0157]; EX1003, 51).
22
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 Maess PDA
device with Ikedas ticket-distribution system. Maes envisioned using its PDA
device for POS and consumer transactions and disclosed that the device could be
23
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: Maess 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 Ikedas
palm-sized PC was interchangeable with Maess 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, Ikedas ticket-purchasing and use processes could be
24
streamlined by incorporating Ikedas functionality onto Maess singular device. In

other words, Maess PDA could be used both as Ikedas user device and to
transport the ticket information to the ticket-using device (e.g., the hotel).
(EX1003, 59).
Specifically, using Maess PDA as Ikedas user device, a user could research
the desired ticket, purchase and download the ticket, and use the ticket without
having to exchange information between a PC and a separate handheld device.
Thus, the combination of Maes and Ikeda would have reduced the number of
devices a user needed to purchase and use a ticket, which was Ikedas goal,
because Ikedas system was directed to streamlining the ticket-purchasing and use
process. (EX1005, [0009]; EX1003, 60).
Moreover, using Maess PDA as Ikedas user device would have been an
obvious step with predictable results and a simple matter of design choice, because
Maess PDA included all of the hardware capabilities required by Ikedas
systemnamely a CPU, memory, and internet capabilities. (EX1004, 3:17-37).
Therefore, POSA would recognize that using Maess PDA as Ikedas user device
was a suitable option with a likelihood of success. Accordingly, it would have
been obvious to POSA to use Maess PDA as Ikedas user device to allow for the
efficient purchase and use of tickets. (EX1003, 61).
25
4.
The Combinations 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 devices functionality in Maess PDA
would be by developing software as executable-computer-program instructions.
The alternativeimplementing the functionality in hardware components, like
dedicated circuitrywould be very costly and require much more development
time and expense than merely developing programs to reside in Maess memory
and executed by its CPU. POSA would understand that there are only a limited
number of ways to implement Ikedas user devices functionality in Maess 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 Maess
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).
26
POSA would have understood that Maess programs all perform certain
functionality, and that this functionality occurs when the programs stored in
Maess memory 14 are executed by Maess 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, which
provide[s] user verification (i.e., biometric security) prior to accessing the
financial and personal information stored in memory 14. (EX1004, 5:60-63;
EX1003, 64.)
POSA would have understood that the functionality performed by the
Maes/Ikeda combination has a grouping of code for each piece of functionality
27
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 devices 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.)
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.
28
Provided below is an abbreviated version of the claim analysis from Herbert

Cohens declaration (EX1003), which demonstrates that claims 1, 4, 6, 7, and 1113 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
29
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).
30
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 Maess 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
31
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
32
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). The CPU is a microprocessor that executes the computer
programs stored in memory 14. (See VII(A)(4); EX1003, 72).
Claim 1[e]: wireless communication hardware adapted for communications
using wireless Internet protocols over a wireless Internet connection,
Maes discloses connecting to the central server through a digital
communication channel such as internet, intranet or local area network, (an
Internet connection, which POSA would understand to use Internet protocols).
(EX1004, 7:62-66). Additionally, Maes discloses that communication between
the PDA device 10 and the central server 60 may be established through wireless
communications, e.g., via the RF port 50 and the RF processor module 48.
(EX1004, 7:66-8:2). Similarly, Maes discloses that communication between the
PDA and the POS transaction terminal could be through the RF port. (EX1004,
12:10-15). Thus POSA would have understood that Maes could communicate over
wireless Internet connections. Additionally, POSA would have understood that,
because Maess PDA was capable of wireless Internet communications, it would
necessarily have wireless communication hardware adapted for communications
using wireless Internet protocols over a wireless Internet connection, and it would
be obvious to include such. (EX1003, 73).
33
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 Maess PDA can communicate via an IR port and has an IR

processor, POSA would have understood that Maess PDA would necessarily
communicate using short-range wireless communication protocols and thus would
34
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 executable
computer 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 providers 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 Maess 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 Maess PDA could have accessed.
35
(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
36
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
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 5s 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]).
37
POSA would thus understand that the users 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
38
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
users 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).
39
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 users 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).
40
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).
41
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 devices authorization to download the particular
authorization certificate. (EX1003, 86-87).
42
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 using
wireless 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]).
43
And, as discussed at 1[e] and 1[h], POSA would understand that it would be
obvious for the downloading to occur through wireless communication hardware
using wireless Internet protocols through said wireless Internet connection.
(EX1003, 89-90).
Claim 1[o] activates a communication by said content host computer device
to said content provider computer device of confirmation data comprising
said payment information, security information, and said particular
authorization certificate, said content provider computer system being
accessible by point-of-sale devices for said particular merchant,
Ikeda discloses that after the ticket issuing device (content host computer
device) receives confirmation from the user, using user interface part 24, that the
ticket information displayed on the display part 23 is for the desired ticket, the
44
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). Ikedas 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
45
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 devices interfaces are point-of-sale devicesor alternatively,
POSA would know to use point-of-sale devicesand 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 users 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 users authorization
certificate is a true authorization certificate would include the particular
46
authorization certificate, and payment and security information. And, because the
ticket using device (content provider computer device) is (1) accessible by a pointof-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 pointof-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], Maess 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).
47
Claim 4[preamble] The wireless handheld device of claim 1, said executable

memory storage device further encoded with a third set of executable
computer program instructions, said microprocessor, executing the third set
of executable computer program instructions,
See VII(A)(4). (EX1003, 95).
Claim 4[a] communicates, using said short-range wireless communication
hardware adapted for communications using wireless short-range
communication protocols, redemption security information and said
particular authorization certificate to a point-of-sale device for said particular
merchant.
As discussed at 1[f], Maes discloses communicating using short-range
wireless communication protocols and includes short-range wireless
communication hardware because Maess PDA can communicate wirelessly via an
IR port. (EX1003, 96).
Additionally, as discussed at 1[o], Ikeda discloses communicating the user
code information (redemption security information) and the ticket information (a
particular authorization certificate) to a point-of-sale device for said particular
merchant. (EX1003, 97).
Claim 6[preamble] The wireless handheld device of claim 1, said wireless
handheld device further comprising,
See claim 1[preamble]. (EX1003, 98).
Claim 6[a] a biometric data reading device adapted for reading biometric
data of a user that is using the wireless handheld device,
48
Maes discloses that the PDAs (wireless handheld devices) 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). Maess
biometric sensor constitutes the claimed biometric data reading device and is
adapted for reading wireless handheld device users 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 said
executing 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 users thumb print was pre-stored,
otherwise validation cannot occur) and providing an authorization based on that
49
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 users 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
50
information or records it on a portable recording medium. (Id., [0151]; [0157];

Fig. 7, below).
51
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
52
through wireless communications, e.g., via the RF port 50 and the RF processor
module 48. (Id., 7:57-8:2).
Also, one of Maess objectives is to provide a PDA that can initiate a POS,
ATM, or consumer transaction, and thus POSA would understand that Maess
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].
53
Additionally, POSA would have further understood that Maess 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 106107).
Claim 11[b] a user input device,
Claim 11[b] is identical to claim 1[b]. Therefore, see claim 1[b]. (EX1003,
108).
54
Claim 11[c] a biometric data reading device adapted for reading biometric
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).
55
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 computeraccessible 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
devices 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
56
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,
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
57
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 users 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, 119121).
58
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 pointof-authorization-use device for said particular merchant.
See VII(A)(4); claims 1[d], 11[e].
Also, as discussed at 1[f], Maess PDA could communicate using shortrange 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
59
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
60
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, 21:1226). Specifically, as shown in Figure 2 below, Paltenghes 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).
61
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).
62
(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., 12:2125). Additionally, Paltenghes 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
63
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 Maess PDA
device with Paltenghes 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: Maess PDA
would be a well-suited Paltenghe virtual wallet. Specifically, using Maess PDA
as Paltenghes 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).
64
3.
The Combinations 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 wallets functionality in
Maess PDA would be by developing software in the form of executablecomputer-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 Maess memory and executed by its CPU.
(EX1003, 132).
Additionally, POSA would have understood that Maess programs all
perform certain functionality, and that this functionality occurs when the programs
stored in Maess memory 14 are executed by Maess 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
65
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
Cohens 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).
66
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 providers central server 60 through wireless
67
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 Maess PDA could be instructed to access devices at Internetaccessible addresses and that this would be done through user input of an Internetaccessible address via the user input device 34, or alternatively, it would be
obvious to do so. (EX1003, 144).
Additionally, Paltenghe discloses that the invention allows the wallet
owner to purchase, store and use tickets or other similar transferable items of
value and that the owner interacts with a theater to purchase a ticket for a show
(user input). (EX1006 21:12-16). And, as shown in Figure 9, below, the owner
interaction occurs through the wallet interface (user input device) that the user uses
to interact with a theater server (content host computer device).
68
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, Paltenghes 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
69
Internet to render it widely accessible. Thus, POSA would understand that a user
using Paltenghes 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).
70
POSA would thus understand that the users request for a theater ticket
(particular authorization certificate for exchange with a particular merchant) is sent
to the theater server (content host computer device). (EX1003, 149-150).
Claim 1[k] receives from said content host computer device a request for
security and payment information to pay for said particular authorization
certificate,
Paltenghe discloses that [t]he theater server requests payment from the
owner, who authorizes the payment. (EX1006, 21:16-17; Fig. 9, below).
71
While Paltenghe discloses that the theater server (content host computer
device) requests payment (payment information), it does not specifically disclose
that the theater server requests security information. But it would have been
obvious to POSA that the server could request such information in addition to
payment information. (EX1003, 151-152; EX1005, [0148]).
For example, Maes discloses that once the PDA has established
communication with the central server the user is prompted to enter certain
verification data (step 102) (security information) and that the central server may
ask a series of questions or prompt the user to enter a PIN that was issued during
the enrollment process. (EX1004, 8:13-16; 8:18-27). It would have been obvious
72
to POSA to incorporate Maess security features with Paltenghes system to

provide added security for the ticket purchase. (EX1003, 153).
Claim 1[l] communicates security and payment information to said content
host computer device to pay for said particular authorization certificate,
owner, who authorizes the payment. (EX1006, 21:16-17; Fig. 9, below).
While Paltenghe discloses that the wallet owner authorizes (communicates)

payment (payment information) through the wallet server to the theater server, it
does not specifically disclose that the virtual wallet sends security information. It
would have been obvious to POSA that the server could send such information in
73
addition to payment information to pay for the theater ticket (particular

authorization certificate). (EX1003, 154-155; EX1005 at [0148]).
For example, Maes 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 (communicate security
information). (EX1004, 8:34-42). It would have been obvious to POSA to
incorporate Maess security features with Paltenghes system to provide added
security for the ticket purchase. (EX1003, 156).
Claim 1[m] receives an authorization from said content host computer device
to download said particular authorization certificate,
Paltenghe discloses that [o]nce the theater verifies the payment, the theater
server sends the ticket to the wallet server, which stores the ticket for later use and
that [w]hen the owner decides that they want the ticket stored locally, the owner
makes a request to the wallet server for local storage of the ticket. (EX1006,
21:17-21; Fig. 9).
74
POSA would have understood that the transmission of the ticket (particular
authorization certificate) from the theater server (content host computer device) to
the wallet server would necessarily involve informing the owner that the ticket
purchase was successful so that they would know to download it on the night of the
show. Otherwise, if there were a problem, the owner would never know.
Alternatively, it would be obvious to POSA to inform the owner of the successful
ticket purchase to prevent the owner from purchasing another one or taking some
other action. This owner acknowledgment constitutes the claimed authorization.
(EX1003, 157-158).
75
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 using
wireless Internet protocols through said wireless Internet connection, said
data comprising said particular authorization certificate,
Paltenghe discloses that [o]nce the theater verifies the payment, the theater
server sends the ticket to the wallet server, which stores the ticket for later use.
(EX1006, 21:17-18). POSA would understand that all computers have memory,
that the data comprising the ticket (the authorization certificate) would be stored in
the memory of the theater server (content host computer device), and that the
transmission of the data from the theater server to the user wallet server and then to
the virtual wallet (wireless handheld device) as discussed above at 1[m], would
constitute a downloading of said data. And, as discussed above with respect to
claims 1[e] and 1[h], POSA would understand that it would be obvious for the
downloading to occur through wireless communication hardware using wireless
Internet protocols through said wireless Internet connection. (EX1003, 159).
Claim 1[o] activates a communication by said content host computer device
to said content provider computer device of confirmation data comprising
said payment information, security information, and said particular
authorization certificate, said content provider computer system being
accessible by point-of-sale devices for said particular merchant,
Paltenghe discloses that [u]pon arriving at the theater, the theater server
requests a ticket and the owner plugs the chip device into the wallet interface to
76
access the ticket, or alternatively into a theater interface. The owner is given
access to the theater once the ticket is then transferred to the theater server after a
mutual authentication process. (EX1006, 21:24-26). The ability to plug the chip
device into the theater interface (content provider computer device) means that the
theater interface is a hardware device: terminals at the theater, connected to the
theater server (content host computer) that the ticket owners could interact with.
POSA would understand that it would be desirable to add additional connectivity
to the theater interfaces. Specifically, POSA would have recognized the benefit of
having wireless scanners or kiosks (POS devices) connected to the theater
interfaces to more efficiently process tickets and provide the information to the
theater interface. Such a wireless connection and kiosk is taught by Maes: It is to
be understood that the PDA device 10 may be operatively linked to the kiosk either
directly . . . or through wireless communication via the RF port 50 or the IR port
53. (EX1004, 8:5-9; EX1003, 160).
As shown in Figure 9, below, a mutual authentication process verifies that
the ticket owner should be given access to the theater. (EX1006, 21:24-26; Fig. 9).
77
POSA would understand that the mutual authentication process would

require that the theater server (content host computer device) had sent payment
information and security information, discussed above at 1[l], to the theater
interface (content provider computer device). And, because the theater interface
(content provider computer device) is (1) accessible by a point-of-sale device
(wireless scanner/kiosk) that is able to read the owners ticket and is (2) able to
authenticate the owners ticket, 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,
78
161-162). 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], the wireless handheld device downloads the data
from the content host computer device. POSA would understand that downloaded
data would be stored in the data storage device of the wireless handheld device.
(EX1003, 163).
Claim 4[preamble] The wireless handheld device of claim 1, said executable
memory storage device further encoded with a third set of executable
computer program instructions, said microprocessor, executing the third set
of executable computer program instructions,
See VII(A)(4), VII(B)(3). (EX1003, 164).
Claim 4[a] communicates, using said short-range wireless communication
hardware adapted for communications using wireless short-range
communication protocols, redemption security information and said
particular authorization certificate to a point-of-sale device for said particular
merchant.
As discussed at 1[f], Maes discloses communicating using short-range
wireless communication protocols and includes short-range wireless
communication hardware because Maess PDA can communicate wirelessly via an
IR port. (EX1003, 165).
79
Additionally, as discussed at 1[o], Paltenghe discloses communicating

redemption security information and the particular authorization certificate to a
point-of-sale device for said particular merchant. (EX1003, 166).
Claim 6[preamble] The wireless handheld device of claim 1, said wireless
handheld device further comprising,
See Ground 1, claim 1[preamble].
Claim 6[a] a biometric data reading device adapted for reading biometric
Maes discloses that the PDAs (wireless handheld devices) 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). Maess
biometric sensor constitutes the claimed biometric data reading device and is
adapted for reading wireless handheld device users biometric data. (EX1003,
168).
80
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 said
executing said downloading of data.
As shown at 6[a], Maes discloses obtaining biometric data from the user of
the wireless handheld device 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 automatically reads the thumb print), validating that data with biometric
data previously stored in the data storage device (e.g., the authorized users thumb
print was pre-stored, otherwise validation cannot occur) and providing an
authorization based on that 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 the PDA will then download. (EX1004, 10:18-21; 9:65-10:11;
EX1003, 169).
owner, who authorizes the payment and that this step is performed prior to the
theater sending the ticket to the user for downloading. (EX1006, 21:16-17; Fig. 9,
below).
81
Additionally, Paltenghe discloses that, when the wallet is opened for

payment, the user must authenticate themselves to the wallet so that the wallet
knows the correct user is using the wallet interface, and that the user can
authenticate themselves utilizing biometric information. (EX1006, 18: 6-18;
Fig. 6, below).
82
POSA would have understood that authenticating the user based on

biometric information (validating the biometric data) would necessarily include
validating the automatically obtained biometric data with that pre-stored in the
virtual wallets memory (data storage device). (EX1003, 170-172).
Additionally, Paltenghe discloses that the wallet (wireless handheld device)
mutually authenticates with the wallet server and that after authentication the user
can submit payment. (EX1006 18:12-18; Fig. 6).
83
POSA would have understood that this mutual authentication, based on the
users biometric data, authorized the interaction between the wallet interface and
the wallet server. Additionally, because the authentication occurred prior to
payment, it would have been obvious to POSA that the authorization would be
required prior to executing the downloading of the ticket (data). (EX1003, 173174).
Claim 10 The wireless handheld device of claim 6, said downloading of data
comprising downloading an electronic representation of electronic cash,
Per Figure 3, below, Paltenghe discloses that the electronic wallet 271 in
one embodiment is made up of an e-cash applications container 273, an electronic
84
cash application manager 275, a user or authentication module 277, a key to

application manager 281, a key ring applications container 283, and external
applications interoperability API (applications program interface) 279, and a user
application organizer and manager 285. (EX1006, 11:9-14). Additionally,
Paltenghe discloses that the e-cash applications container 273 record[s] each of its
members as being some form of e-cash and contains a connector to the real ecash application. (Id., 15:17-19).
Because the virtual wallet can contain forms of e-cash and e-cash
applications, POSA would understand that Paltenghe discloses that the virtual
85
wallet (wireless handheld device) can download e-cash (data comprising an

electronic representation of electronic cash). (EX1003, 175-176).
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,
See Ground 1, claim 11[preamble]. (EX1003, 177).
Claim 11[a] a computer-accessible data storage device adapted for storing
data,
See Ground 1, claim 11[a]. (EX1003, 178).
Claim 11[b] a user input device,
See Ground 1, claim 11[b]. (EX1003, 179).
Claim 11[c] a biometric data reading device adapted for reading biometric
Claim 11[c] is identical to claim 6[a]. Therefore, see Ground 2, claim 6[a].
(EX1003, 180).
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), VII(B)(3); Ground 2, claim 11[h]-[o]. (EX1003, 181).
86
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), VII(B)(3); Ground 1, claim 11[e]. (EX1003, 182).
Claim 11[f] wireless communication hardware adapted for wireless
communications,
See Ground 1, claim 11[f]. (EX1003, 183).
Claim 11[g] short-range wireless communication hardware adapted for
See Ground 1, claim 11[g]. (EX1003, 184).
Claim 11[h] said microprocessor, executing the first set of executable
See VII(A)(4), VII(B)(3); Ground 1, claim 1[d], 11[e]. (EX1003, 185).
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 computeraccessible 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 Ground 2, 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
87
validation and authorization could occur at any point during the wireless handheld
devices interaction with the content host computer device, and thus could have
occurred prior to executing the second and third sets of executable computer
program instructions as an obvious matter of design choice. (EX1003, 186).
Claim 11[j] said microprocessor, executing the second set of executable
See VII(A)(4), VII(B)(3); Ground 1, claim 1[d], 11[e]. (EX1003, 187).
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 Ground 2, claim 1[h].
(EX1003, 188).
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), VII(B)(3); Ground 1, claim 1[d], 11[e].
Further, 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 through interactions with a theater server (content host
computer device). (EX1006, 21:12-16; Fig. 9).
88
POSA would thus understand that the request for a ticket (a particular
authorization certificate for exchange with a particular merchant) is sent to the
theater server (content host computer device). And as discussed at 1[f], 1[h],
POSA would understand that the interaction with the content host computer device
could occur using wireless communications. (EX1003, 189-191).
Claim 11[m] downloads the particular authorization certificate, and
Claim 11[m] is broader than claim 1[n]. Therefore, see Ground 2, claim
1[n]. (EX1003, 192).
89
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 Ground 2,
claim 1[o]. The analysis for a point-of-sale device applies to point-ofauthorization-use device. (EX1003, 193).
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 pointof-authorization-use device for said particular merchant.
See VII(A)(4), VII(B)(3); Ground 1, claim 1[d], 11[e].
Also, as discussed at Ground 1, claim 1[f], Maess PDA could communicate
using short-range wireless communication protocols and thus would include shortrange wireless communication hardware. (EX1003, 194-195).
Additionally, as discussed at Ground 2, claim 1[o] and 11[n], Paltenghe
discloses communicating redemption security information and the particular
authorization certificate to the point-of-authorization-use device for a particular
merchant. (EX1003, 196-197).
90
Claim 16 The wireless handheld device of claim 11, said downloading said
electronic authorization comprising downloading electronic cash.
Claim 16 is identical to claim 10. Therefore, see Ground 2, claim 10.
(EX1003, 198.)
VIII. CONCLUSION
Petitioner has established a reasonable likelihood of prevailing with respect
to at least one claim and respectfully requests that the PTAB institute an inter
partes review and then proceed to cancel claims 1, 4, 6, 7, 10-13, and 16.
Respectfully submitted,
OBLON LLP
Dated: May 27, 2016
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939
Customer Number
22850
Tel. (703) 413-3000
Fax. (703) 413-2220
91
PETITIONERS EXHIBIT LIST

May 27, 2016
Exhibit
Description
EX1001
U.S. Patent No. 8,706,627
EX1002
Petitioners Voluntary Interrogatory Responses
EX1003
Declaration of Herbert Cohen
EX1004
U.S. Patent No. 6,016, 476 to Maes et al. (Maes)
EX1005
Japanese Unexamined Patent Application Publication H10-69553 to

Ikeda (Ikeda)
EX1006
WO 99/24892 to Paltenghe et al. (Paltenghe)
EX1007
Prosecution history of U.S. Patent No. 8,706,627
EX1008
Merriam Webster Dictionary Definition of set
EX1009
Getting Started With Your EOTM Personal Communicator (1993)
EX1010
3Com Announces the Palm VIITM Connector Organizer, The First

Handheld Solution for Out-of-the-box Wireless Internet Access (Dec.
2, 1998)
EX1011
Cohen, H. B., Wireless Modem Takes Global Chips on the Road,

Electrical Engineering Times at 78 (Sept. 27, 1993)
EX1012
Hall, Eric, Minstrel offers impressive mobile access on demand,

InfoWorld Vol. 20, No. 13 at 102 (Mar. 30, 1998)
EX1013
Newton MessagePad 2100 Specs (available at

http://www.everymac.com/systems/apple/messagepad/stats/newton_m
p_2100.html)
Exhibit
Description
EX1014
Our history, Bluetooth (available at

https://www.bluetooth.com/media/our-history)
CERTIFICATE OF WORD COUNT
Pursuant to 37 C.F.R. 42.24(d), the undersigned certifies that the foregoing

document, excluding the portions exempted under 37 C.F.R. 42.24(a)(1),
contains 13,874 words, including the words added in annotating the figures, which
is under the limit of 14,000 words set by 37 C.F.R. 42.24(a)(1)(i).
Dated: May 27, 2016
By:
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) and
42.105(b) on the Patent Owner by Express Mail of a copy of this Petition for Inter
Partes Review and supporting materials at the correspondence address of record
for the 627 Patent as well as counsel of record in the district court litigations:
Khorsandi Patent Law Group
A Law Corporation
180 S. Lake Avenue, Suite 435
Pasadena, CA 91101
Gaston Kroub
Kroub, Sulbersher & Kolmykov
305 Broadway, 7th Floor
New York, NY 10007
Dated: May 27, 2016
By:
/Michael L. Kiklis/
Michael L. Kiklis
Reg. No. 38,939

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

Hochgeladen von

Dokumentinformationen

Copyright

Verfügbare Formate

Dieses Dokument teilen

Dokument teilen oder einbetten

Freigabeoptionen

Stufen Sie dieses Dokument als nützlich ein?

Sind diese Inhalte unangemessen?

Copyright:

Verfügbare Formate

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

Hochgeladen von

Copyright:

Verfügbare Formate

UNITED STATES PATENT AND TRADEMARK OFFICE

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

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

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

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

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

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

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

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

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

BACKGROUND OF THE 627 PATENT .....................................................6

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

Summary of the 627 Patent ..................................................................9

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

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

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

authorization certificate ...................................................................14

set of executable computer program instructions ............................14

executable memory storage device encoded with a set of

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

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

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

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

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

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

The Patent Owner

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

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

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

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

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

Identification of Lead and Back-Up Counsel

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

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

Jonathan Stroud, Chief Patent Counsel

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

REQUIREMENTS FOR INTER PARTES REVIEW

inter partes review of the 627 Patent is satisfied.

Grounds for Standing

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

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

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

The Specific Art on Which the Challenge is Based

Petitioner relies upon the following patents and printed publications:

The Specific Grounds on Which the Challenge is Based

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

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

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

BACKGROUND OF THE 627 PATENT

Background of the Technology

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

Summary of the 627 Patent

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

Access a website and request an authorization certificate

Exchange payment and

Download and store

(EX1005. Fig. 5; EX1003, 35.)

Prosecution History of the 627 Patent

PERSON OF ORDINARY SKILL IN THE ART

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

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

set of executable computer program instructions

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

executable memory storage device encoded with a set of