UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PAYPAL, INC.
`Petitioner
`v.
`IOENGINE, LLC
`Patent Owner
`____________
`Case No.: IPR2019-00844
`U.S. Patent No. 8,539,047
`Issue Date: September 17, 2013
`Title: Apparatus, Method and System for a Tunneling Client Access Point
`____________
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`____________
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 1 of 5
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PAYPAL, INC.
`Petitioner
`v.
`IOENGINE, LLC
`Patent Owner
`____________
`Case No.: IPR2019-00844
`U.S. Patent No. 8,539,047
`Issue Date: September 17, 2013
`Title: Apparatus, Method and System for a Tunneling Client Access Point
`____________
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`____________
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 1 of 5
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`23. Claim 26
`
`Claim 26 is substantially similar to claim 22 (which depends on claim 1)
`
`except that the terminal processor must execute the second code in claim 26. Claim
`
`26 is broader in one respect than claim 1—the third code in claim 26 is not limited
`
`to executing on the device processor. This difference, however, only allows
`
`additional ways claim 26 may be invalid. Petitioner addresses this requirement at
`
`element 26b. Claim 26 is thus invalid for the same reasons as claim 22 (and
`
`underlying independent claim 1) together with the explanation for element 26b.
`
`a. Preamble
`
`To the extent the preamble is limiting, it is satisfied for the same reasons as
`
`claim 1 preamble and elements 1a-1c.
`
`b. Element 26a
`
`Element 26a is satisfied for the same reasons as claim 22.
`
`c. Element 26b
`
`Claim 26 is substantially similar to element 1c2, except claim 26 additionally
`
`requires that the terminal be provided access to the second program code and that
`
`the terminal processor executes that code. Abbott and Shmueli each meets element
`
`26b. Neuman, ¶¶277-280.
`
`70
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 2 of 5
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`Several examples of second code were identified for element 1c2, including
`
`Shmueli’s keylets for the password manager function (automatic website logon),
`
`Abbott’s API code for user authentication (e.g., VerifyPIN API), the code for
`
`Abbott’s secure document VPN access (combined with Shmueli’s web-browser
`
`launching bar), and the code for establishing a Bluetooth connection. The
`
`paragraphs that follow address how Abbott’s API code and Shmueli’s password
`
`manager function meet the unique aspects of element 26b. More particularly,
`
`Abbott’s API code and Shmueli’s password manager function code that is executed
`
`by the terminal processor and such code could originate from the portable device
`
`(i.e. the portable device could provide the terminal with access to the code) satisfy
`
`the second code limitation.
`
`Abbott discloses that code for APIs 260 (and related applications 110) resides
`
`on the host computer. Abbott, Fig. 2 (red box). The API 260 function calls, such as
`
`the VerifyPIN API call, are executed by the terminal processor. Abbott, 21:1-4;
`
`Neuman, ¶¶278-279. The API code resident on the terminal for making a VerifyPIN
`
`call would not have been present by default in the host operating system. Neuman,
`
`¶279. Rather, that code would need to come from somewhere else and an obvious
`
`location is the portable device. Id. A POSITA would have found it obvious to
`
`include, on the portable device itself, the code necessary for host computers to
`
`interact with the portable device. Id. One reason for this is that Abbott intended for
`
`71
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 3 of 5
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`its portable device to be “use[d] on a wide variety of computer platforms.” Abbott
`
`at 3:6-8; see also 4:26-36 (“the user will need to use and interact with a variety of
`
`computer platforms”). Providing the API code on the portable device would achieve
`
`this goal. Neuman, ¶279. The code could be copied by the user to the terminal or it
`
`could be provided via the autorun functionality described in Shmueli. Shmueli, ¶¶7,
`
`26; Neuman, ¶¶85-88, 279.
`
`Shmeuli’s web logon feature (which a POSITA would be motivated to
`
`combine with Abbott) also satisfies element 26b. Neuman, ¶280. Shmueli “keylets”
`
`(e.g., Java applet code) are “stored on the key 10 and capable of executing on the
`
`host 12.” Shmueli, ¶31, 24 (“at least certain aspects of the software 20 [on the
`
`portable device] are capable of running or executing on the host12”). The keylets
`
`72
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 4 of 5
`
`
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`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`may “also reside on a host system itself” and a POSITA reading Shmueli would
`
`understand that keylets would be provided to the terminal from the portable device
`
`where they are stored. Id., see also Fig. 4; Neuman, ¶¶85-88, 279. Shmueli discloses
`
`that “software on the portable device will automatically execute on the host
`
`computing device after the host computing device recognizes the presence of the
`
`portable device.” Shmueli, ¶7, 26. This is one way the portable device “provid[es]
`
`the terminal with access to second program code” that is executed by the terminal.
`
`Neuman, ¶¶85-88, 149, 279.
`
`d. Elements 26c-26d
`
`Elements 26c-26d are satisfied for the same reasons as element 1c3.
`
`e. Element 26e
`
`Element 26e is satisfied for the same reasons as element 1d.
`
`24. Claim 27
`
`Claim 27 is substantially similar to claim 1, except that claim 27 is drafted in
`
`Beauregard format and does not contain the final two “wherein” limitations (1d and
`
`1e) of claim 1. Abbott’s memory 214 stores program code and is a “non-transitory
`
`computer readable medium” as required by claim 27. See, e.g., Abbott, 7:7-13.
`
`Likewise, Shmueli’s memory 18 stores the program code and is a “non-transitory
`
`computer readable medium” as required by claim 27. Shmueli, ¶10 (“The present
`
`73
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00885 (US 8,539,047)
`Exhibit 2084
`Page 5 of 5
`
`
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