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
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 1 of 6
`
`
`____________
`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
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 1 of 6
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`Shmueli’s “key interface 24” is the claimed “external communications
`
`interface” because it “facilitate[s] an interface with one or more of the hosts 12.” Id.,
`
`¶25; ¶28 (“[T]he key interface 24 may be USB compatible”); ¶6, 8 (“The portable
`
`device may interact with the host computing device through a direct or wireless
`
`interface.”); ¶25, ¶91 (“The interfaces may include those standard for personal
`
`computers, such as the universal serial bus (USB), IEEE 1392, etc., or wireless
`
`interfaces, such as that provided by Bluetooth, IEEE 802.11, and the like.”);
`
`Neuman, ¶186.
`
`c. Element 1b
`
`Abbott alone, and combined with Shmueli, satisfies element 1b (“a [portable
`
`device] processor”). Neuman, ¶¶187-188.
`
`Abbott’s “personal key comprises a USB-compliant interface …; a memory;
`
`and a processor.” Abbott, Abstract. Abbott’s portable device processor 212 (blue)
`
`is shown in annotated Figs. 2 and 6. See, e.g., id., 7:7-34, 16:60-65, 23:3-19.
`
`35
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 2 of 6
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`Shmueli’s “portable memory device may include control circuitry to assist in
`
`interaction with the host computing devices as well as organizing the data stored
`
`thereon.” Shmueli, ¶6; see also ¶25. As explained in section VI.C, a POSITA would
`
`have been motivated to use Abbott’s processor in lieu of the “control circuitry” in
`
`Shmueli. Neuman, ¶¶151, 158-160, 187-188. Moreover, a POSITA would have
`
`understood that at least some embodiments in Shmueli—such as the smartcard
`
`embodiment in Fig. 2B—would already use a processor as its control circuitry. Id.,
`
`¶160.
`
`d. Element 1c
`
`Abbott and Shmueli each satisfy element 1c (“a memory having executable
`
`program code stored thereon”). Neuman, ¶¶189-191. Abbott’s portable device
`
`memory 214 includes “auxiliary program instruction space 322, and a processor
`
`36
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 3 of 6
`
`
`
`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
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 4 of 6
`
`
`
`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
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 5 of 6
`
`
`
`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
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2089
`Page 6 of 6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
