WIPO
`WORLD
`
`INTELLECTUAL PROPERTY
`
`ORGANIZATION
`
`DOCUMENT MADE AVAILABLE UNDER THE
`PATENT COOPERATION TREATY (PCT)
`
`International application number: PCT /I B2010/001367
`
`
`
`International filing date: 10 February 2010 (10.02.2010)
`
`
`
`Document type:
`
`
`
`Certified copy of priority document
`
`
`
`Document details: Country/Office:
`
`us
`Number:
`61/151,459
`
`
`Filing date: 10 February 2009 (10.02.2009)
`
`
`
`Date of receipt at the International Bureau: 13 April 2011 (13.04.2011)
`
`Remark: Priority document submitted or transmitted to the International Bureau but not in compliance with
`
`Rule 17.1(a),(b) or (b-bis)
`
`34, chemin des Colombettes
`
`1 211 Geneva 20, Switze1·1and
`
`
`
`www.wipo.int
`
`Square Exhibit 1022
`Square, Inc. v. 4361423 Canada Inc.
`IPR2019-01628
`Page 00001
`
`

`

`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`
`October 13, 2010
`
`THIS IS TO CERTIFY THAT ANNEXED HERETO IS A TRUE COPY FROM
`THE RECORDS OF THE UNITED STATES PATENT AND TRADEMARK
`OFFICE OF THOSE PAPERS OF THE BELOW IDENTIFIED PATENT
`APPLICATION THAT MET THE REQUIREMENTS TO BE GRANTED A
`FILING DATE UNDER 35 USC 111.
`
`APPLICATION NUMBER: 61/151,459
`FILING DATE: February 10, 2009
`
`THE COUNTRY CODE AND NUMBER OF YOUR PRIORITY
`APPLICATION, TO BE USED FOR FILING ABROAD UNDER THE PARIS
`CONVENTION, IS US611151,459
`
`By Authority of the
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`Certifying Officer
`
`IPR2019-01628 Page 00002
`
`

`

`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`4770686
`
`61151459
`
`International Application Number:
`
`Confirmation Number:
`
`2876
`
`Title of Invention:
`
`Apparatus For & Method of Secure ATM Debit Card & Credit Card Payment
`Transactions via Mobile Phone
`
`First Named Inventor/Applicant Name:
`
`Kenneth G Mages
`
`Customer Number:
`
`85483
`
`Filer:
`
`Probst Dan
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`Mages101P
`
`Receipt Date:
`
`1 O-FEB-2009
`
`Filing Date:
`
`Time Stamp:
`
`Application Type:
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`
`RAM confirmation Number
`
`20:00:45
`
`Provisional
`
`yes
`
`Credit Card
`
`$110
`
`4822
`
`Deposit Account
`
`Authorized User
`
`File Listing:
`Document I
`
`Number
`
`Document Description
`
`I
`
`File Name
`
`I File Size(Bytes)/ I Multi ,j Pages
`
`Message Digest
`
`Part /.zip (if appl.)
`
`IPR2019-01628 Page 00003
`
`

`

`1
`
`Drawings-only black and white line
`drawings
`
`KennethMages_Drawings.pdf
`
`no
`
`2
`
`63387
`
`8dc 74886025a4197 cl a454 79a260580e213
`lfeOd
`
`Warnings:
`
`Information:
`
`2
`
`Specification
`
`KennethMages_SPEC1 .pdf
`
`no
`
`3
`
`43869
`
`Warnings:
`
`Information:
`
`50f29715cbef 68f c6f 1212bfaf0d6f622d0d8
`11c
`
`1007399
`
`3
`
`Oath or Declaration filed
`
`KennethMages_Oathl .pdf
`
`no
`
`5
`
`Warnings:
`
`Information:
`
`fadbf50d636ee05cdldd7b3b331409bl852
`6a089
`
`29034
`
`4
`
`Fee Worksheet (PT0-06)
`
`fee-info.pdf
`
`no
`
`2
`
`966Be5c4ca26a62c1 bd6d7311b2a6aade6
`bl75d
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`1143689
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New ARRlications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International ARRlication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International ARRlication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`IPR2019-01628 Page 00004
`
`

`

`Job No.:P1752
`
`Title of Invention
`"Apparatus For & Method of Secure ATM Debit Card & Credit
`
`Card Payment Transactions via Mobile Phone"
`
`Drawing Description
`
`FIG. 1: is a perspective view of invention 100
`FIG. 2: is a perspective view of invention 100 magnetic strip card reader/ smart card reader 7
`FIG. 3: is a perspective view of invention 100 magnetic strip card reader/ smart card reader 7 with credit card/
`debit card 8 being processed
`FIG. 4: is a perspective view of invention 100 backside of device 9
`FIG. 5: is a plan view of invention 100 connection portal 10 and connection cable 11
`FIG. 6: is a perspective view of invention 100 with the phone jack 10 and phone jack cable 11 in the device
`connected status 12
`FIG. 7: is a perspective view of a cell phone 13 with the phone jack cable 11 in the device connected status 12
`
`Description List
`
`100. Overview:
`Invention 100 allows taxi drivers, limo drivers or any other person to collect monies via debit card or credit card &
`store them in the device until the end of the day & then transfer all monies into a designated bank account. The
`invention is a novel method of carrying out electronic payment and transactions using mobile phones.
`This invention adds a new dimension to the e-commerce today by integration mobile and internet
`payment in a seamless manner. The invention applies to various types of online transactions including
`debit/ credit card 8, stored value card and many other electronic payment methods.
`
`200. Components:
`Invention 100: 1 LCD display screen; 2 on/off function button; 3 send money function; 4 other function button; 5
`receive money button; 6 device pin pad; 7 magnetic strip card reader/ smart card reader; 8 credit card/debit card;
`9 backside of device; 10 device phone jack; 11 phone jack cable; 12 device connection status; 13 cell phone; 14
`clear content button; 15 device back button; 16 device enter/return button.
`
`300. USE:
`The invention is a device with pin pad 6, magnetic stripe reader 7, smart card reader 7 and LCD display
`screen l. The device communicates with mobile phone 13 via phone jack 10 using analog tone. It
`allows secure electronic fund transfer, debit/credit card 8 transactions over mobile phone. Currently
`the device communicates with mobile phone via phone jack 10 using audio signal. It can communicate
`with mobile phone using Bluetooth or other communication link such as USB or serial port. But the
`method is still data over voice channel.
`
`400. OTHER MANUFACTURES DEVICE PROBLEMS:
`Electronic fund transfer over mobile phones is growing popular. There are currently some solutions
`available in the market such as PayPal mobile, Obopay, Swipepay mobile.
`
`IPR2019-01628 Page 00005
`
`

`

`These solutions use either SMS or FPRS as the means of communication. However, these
`communications methods could suffer from an unbounded belay or become unavailable in locations
`where these services are not provided. Therefore, a more relievable method is required for the
`payment space. Another problem of existing solutions is that they require registration and installation
`of software. It is very inconvenient and users may be reluctant or simply do not know how to install.
`More importantly it doesn't work on all mobile phones with some many different combinations of
`hardware and software platforms. Moreover, these solutions are not secure. They are prone to
`spyware or keylogger. Hence they will never be compliant with payment card industry standards such
`as PCI PED. A secure, reliable, convenient and easy to use, universal-to-all- mobile- phone mobile
`payment solution is required.
`
`500. PAYMENT PROCEEDURE
`The payment system consists of a secure device and a secure payment server.
`A) Secure device for a card data and PIN capture.
`
`Invention 100 con'sists of a secure microprocessor, memory, LCD display screen l, magnetic strip
`card reader or smart card reader 7 and a pin pad 6. The secure microprocessor controls the
`operation flow of the device. It does the encryption required for transaction and other channel
`encryptions. Operation of the device is displayed on the LCD display screen l. Card data is
`captured by the magnetic strip reader or smart card reader 7. PIN is entered via the pin pad 6.
`
`B) Secure payment servers for transaction processing.
`
`The payment servers are used to decrypt the data sent by the phone devices where the data is
`translated and forwarded to payment network for further processing.
`
`600. ONLINE PURCHASE OR MONEY TRANSFER
`The device can be used for online purchase or money transfer.
`
`A) Online purchase.
`User goes to the merchant website to purchase. During checkout, he selects this new method
`as payment method and enters his phone number in the merchant website. Merchant sends
`the user phone number along with the purchase details the payment server. When the
`payment server receives the request from the merchant, it will call the phone number provided
`by the user. User connects the device to his phone 12 and finishes transactions according to the
`instructions displayed on the LCD display screen l. On a successful transaction, the payment
`server sends the transaction result back to the merchant for further processing.
`
`B) Person to person money transfer.
`To send money-
`User plugs the device into his mobile phone 12 and selects the send money function 3. He
`enters the recipient phone number or email address and transaction amount. He swipes his
`card and enters PIN (if required) for authentication. After collecting all the information from the
`user, the device will encrypt the data into a cryptogram which is sent to the payment server for
`processing. After processing, the transaction result will be returned and displayed on the
`device. Details to receive money will be sent to the recipient.
`
`IPR2019-01628 Page 00006
`
`

`

`To receive money-
`User plugs the device into his mobile phone 12 and selects the receive money function 5. He
`enters a password to retrieve the payment details. Based on the password and the caller ID, the
`payment server can retrieve the payment details. To collect money, the user has to swipe his
`card and enter PIN (if required) for authentication. After collection all the authentication
`information from the user, the device will encrypt the data into a cryptogram which is sent to
`the payment server for processing. After processing, the transaction result will be returned and
`displayed on the LCD display screen.
`
`IPR2019-01628 Page 00007
`
`

`

`PTO/SB/01 (10-08)
`Approved for use through 06130/2010. 0MB 0651-0032
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Un"•• the P11nerwork Red11ctlon Act of 1995 nn nersons are ,....,uir"d to resnnnd to a collectfon of lnformatJnn unle•• It con••ins a valid 0MB control number.
`Attorney Docket
`Number
`First Named Inventor
`
`Doc Code: OATH
`Docwrient Description: Oath or declaration filed
`
`/'
`
`DECLARATION FOR UTILITY OR
`DESIGN
`PATENT APPLICATION
`(37 CFR 1.63)
`
`0 Declaration
`
`Submitted
`With Initial
`Filing
`
`OR
`
`(cid:143) Declaration
`
`Submitted after Initial
`Filing (surcharge
`(37 CFR 1.16 (f))
`required)
`
`Mages101P
`
`Kenneth G. Mages
`COMPLETE IF KNOWN
`
`""
`
`Application Number
`
`Filing Date
`
`Art Unit
`
`Examiner Name
`
`I hereby declare that: (1) Each inventor's residence, mailing address, and citizenship are as stated below next to their name;
`and (2) I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which Is claimed and
`for which a patent is souaht on the invention entiUed:
`"Apparatus For & Method of Secure ATM Debit Card & Credit Card Payment Transactions via Mobile Phone"
`
`{Title of the Invention)
`
`the application of which
`
`is attached hereto
`OR
`
`was filed on (MM/DDNYYY)
`
`as United States Application Number or PCT International
`
`0
`(cid:143)
`
`Application Number
`
`I.__ _____ __.
`
`and was amended on (MM/DDNYYY)
`
`... I _____ ___,I
`
`(if applicable).
`
`I hereby state that I have reviewed and understand the contents of the above identified application, including the claims, as
`amended by any amendment specifically referred to above.
`
`I acknowledge the duty to disclose infonnation which is material to patentability as defined in 37 CFR 1.56, including for
`continuation-in-part applications, material information which became available between the filing date of the prior application
`and the national or PCT international filing date of the continuation-in-part application.
`
`Authorization To Permit Access To Application by Participating Offices
`D If checked, the undersigned hereby grants the USPTO authority to provide the European Patent Office (EPO), the Japan
`
`Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and any other intellectual property offices in which a
`·
`foreign application claiming priority to the above-identified application is filed access to the above-identified patent
`application. See 37 CFR 1.14(c) and (h). This box should not be checked if the applicant does not wish the EPO, JPO,
`KIPO, or other intellectual property office in which a foreign application claming priority to the above-identified application is
`filed to have access to the application.
`
`In accordance with 37 CFR 1.14(h)(3), access will be provided to a copy of the application-as-filed with respect to: 1) the
`above-identified application, 2) any foreign application to which the above-identified application claims priority under 35 USC
`119(a)-(d) if a copy of the foreign application that satisfies the certified copy requirement of 37 CFR 1.55 has been filed in the
`above-identified US application, and 3) any U.S. application from which benefit is sought in the above-identified application.
`
`In accordance with 37 CFR 1.14(c), access may be provided to information concerning the date of filing the Authorization to
`Permit Access to Application by Participating Offices.
`
`[Page 1 of 3] ·
`
`This collection of Information Is required by 35 U.S.C. 115 and 37 CFR 1.63. The infonnalion Is required to oblaln or retain a benefit by the public which Is lo file
`(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection Is estimated to take 21
`minutes to complete, Including gathering, preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the individual
`case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information
`Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450. Alexandria, VA 22313-1450. 00 NOT SEND FEES OR COMPLETED
`FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
`ff you nnd ass/stance in completing the form. ca/11-800-PTO-9199 and select option 2.
`
`IPR2019-01628 Page 00008
`
`

`

`PTO/SB/01 (10--08)
`Approved for use through 06130/2010. 0MB 0851-0032
`U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduc~on Act of 1995, no pen;ons are required to respond to a coll~n of Information unless It contains e valid 0MB control number.
`
`DECLARATION - Utility or Design Patent Application
`
`Claim of Foreign Priority Benefits
`
`I hereby -claim foreign priority benefits under 35 U.S.C. 119(a)-(d) or (f), or 365(b) of any foreign application(s) for patent,
`inventor's or plant breeder's rights certificate(s), or 365(a) of any PCT international application which designated at least one
`country other than the Ul'!ited States of America, listed below and have also identified below, by checking the box, any foreign
`application for patent, Inventor's or plant breeder's rights certificate(s), or any PCT international application having a filing date
`before that of the application on which priority is claimed .
`
`Prior Foreign Application
`U,
`
`' .. ,
`
`Countrv
`
`. Foreign FIiing Date
`,uu,nofYYYY\
`
`Priority
`Nnt Cl11t-a.i
`
`(cid:143)
`(cid:143)
`(cid:143)
`(cid:143)
`
`u
`
`(Page 2 of 3)
`
`Additional foreign application numbers are listed on a supplemental priority data sheet PTO/SB/02B attached hereto.
`
`Certified Copy Attached?
`Nn
`vs::s
`
`(cid:143)
`(cid:143)
`
`(cid:143)
`(cid:143)
`
`(cid:143)
`(cid:143)
`(cid:143)
`(cid:143)
`
`IPR2019-01628 Page 00009
`
`

`

`nde the Pa erwork Reduc
`
`PTO/SB/01 (10-08)
`Approved for use through 06/30/2010. 0MB 0651-0032
`.
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`res ond t a collection of informal' n unless It contains a valid MB control num
`r.
`
`DECLARATION - Utility or Design Patent Application
`
`Direct all
`correspondence to:
`
`(cid:143) The address
`
`associated with
`Customer Number:
`
`I
`
`Name
`Kenneth G. Mages
`
`Address
`730 South Clark Street Apt. #2709
`
`City
`
`Chicago
`
`I OR 0. Correspondence
`
`address below
`
`State
`IL
`
`ZIP
`60605
`
`Country
`us
`
`I
`
`Email
`
`kmages@homeATM.net
`
`Telephone
`312-835-8131
`WARNING:
`Petitioner/applicant Is cautioned to avoid submitting personal Information in documents filed in a patent application that may contribute to
`identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers (other than a check or
`credit card authorization form PT0-2038 submitted for payment purposes) is never required by the USPTO to support a petition or an
`application.
`If this type of personal information is included in documents submitted to the USPTO, petitioners/applicants should consider
`redacting such personal information from the documents before submitting them to the USPTO. Petitioner/applicant is advised that the record
`of a patent application is available to the public after publication of the application (unless a non-publication request in compliance with 37
`CFR 1.213(a) is made in the application) or issuance of a patent. Furthermore, the record from an abandoned application may also be
`available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit
`card authorization forms PT0~2038 submitted for payment purposes are not retained in the application file and therefore are not publicly
`available. Petitioner/applicant is advised that documents which form the record of a patent application (such as the PTO/SB/01) are placed
`into the Privacy Act system of records DEPARTMENT OF COMMERCE, COMMERCE-PAT-7, System name: Patent Application Files.
`Documents not retained in an application file (such as the PT0-2038) are placed into the Privacy Act system of COMMERCE/PAT-TM-10,
`System name: Deposit Accounts and Electronic Funds Transfer Profiles.
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information
`and belief are believed to be true; and further that these statements were made with the knowledge that willful false
`statements and the like so made are punishable by fine or imprisonment, or both , under 18 U.S.C. 1001 and that such willful
`false statements may jeopardize the validity of the application or any patent issued thereon.
`
`NAME OF SOLE OR FIRST INVENTOR:
`Given Name (first and middle [if any])
`Kenneth G.
`
`Inventor's Signature
`
`I D A oetition has been filed for this unsianed inventor
`
`Family Name or Surname
`
`Mages
`
`Country
`us
`
`Date
`
`Citizenship
`us
`
`I Zip
`
`60605
`
`I Country
`
`" '
`
`us
`.
`.
`sugolemental sheet{sl PTO/SB/02A or 02LR attached hereto.
`
`Residence: City
`Chicago
`
`Mailing Address
`
`730 South Clark Street Apt. #2709
`
`City
`Chicago
`
`n
`
`State
`IL
`
`State
`IL
`
`Additional inventors or a leQal regresentatlve ere beln!l named on the
`
`[Page 3 of3)
`
`IPR2019-01628 Page 00010
`
`

`

`IPR2019-01628 Page 00011
`
`IPR2019-01628 Page 00011
`
`

`

`F1D'I
`
`KGM CONSU.. TI NG
`
`PHCte NO,
`
`: 184 73282303
`
`Feb, 10 2009 05:35AM P3
`
`PTOISBID1 (1D-08)
`, AppnMCltar 11M 111V1G111 CIM0/2010. 0MB 0861-GOU
`U.S. Pmnt 11111 Tlademark 0fflOe: U.S. DEPARTMENT' 0,, COUMl!RCE
`
`(cid:143) The adCSre8s
`
`asaoclaTed with
`, Customer Number:
`
`' - - - - - - - - - ] ca 0
`
`Name
`KennelhG.Mages
`AddlllS
`730 soua, Clar1c Stntet Apt. #2709
`
`Country
`US
`
`Tel~
`312-83M131
`
`Stal8
`IL
`
`ZIP
`80806
`
`NAME OF SOLS CR PIRST INVENTOR:
`and middle pr 811'/D
`Given Name (
`Kennelh G.
`
`has been tiled tor
`·
`inWmor
`Family Name or Sumame
`Mages
`
`.
`
`. Mdllanal
`
`,.,
`
`• 8M
`
`Country
`us
`
`CitizenS111p
`us
`
`Zip
`60805
`
`Country
`us
`
`1Page3of3J
`
`J
`
`IPR2019-01628 Page 00012
`
`

`

`1/2
`
`100
`
`~ Fig.1
`
`1
`
`3
`
`2
`
`6
`
`2
`
`6
`
`/
`
`PLEASE CONNECT TO
`/ /
`/ /
`MOBILE PHONE
`
`/
`
`IT] [I] [[I
`~ rn [[]
`[[] []] [[]
`(cid:143) [[] fQQ]
`
`8
`
`Fig. 3
`
`1
`
`Fig. 2
`
`7
`
`p
`p
`PLEASE SELECT FUNCTION
`/
`/
`
`Fig. 4
`
`9
`
`[I] [I] [[I
`~ rn [[]
`[[] []] [[]
`OOliiID J
`
`15
`
`11
`
`IPR2019-01628 Page 00013
`
`(cid:143)
`

`

`212
`
`Fig. 5
`
`16
`
`10 ~ 1 1
`
`1
`
`3
`
`2
`
`6
`
`Fig. 6
`
`/
`PLEASE DIAL
`
`IT] [I] [[]
`[!] []] [!]
`[L] [[] [[]
`
`(cid:143) I]] [QID
`
`16
`
`13
`
`Fig. 7
`
`//L
`
`/.~0022
`767729
`/
`
`[!][TI[£]
`ITJITJ[[J
`ITJ[TI[IJ
`C!:::J[[J[l]
`
`12
`
`11
`
`12
`
`IPR2019-01628 Page 00014
`
`