Square, Inc.
`v.
`4361423 Canada Inc.
`
`IPR2019-01629
`
`January 27, 2021
`
`4361423 Canada Inc. Exhibit 2012
`Square, Inc. v. 4361423 Canada Inc.
`IPR2019-01629
`Page 1
`
`1
`
`
`v.
`4361423 Canada Inc.
`
`IPR2019-01629
`
`January 27, 2021
`
`4361423 Canada Inc. Exhibit 2012
`Square, Inc. v. 4361423 Canada Inc.
`IPR2019-01629
`Page 1
`
`1
`
`
`
`IPR2019-01629
`
`U.S. Patent No. 9,269,084
`
`• Ground 1:
`• Claims 1-8 - Proctor in view of Vrotsos and Hasumi under 35 U.S.C. §103(a)
`• Ground 2:
`• Claims 1-8 - Bear in view of Landman and Colnot under 35 U.S.C. §103(a)
`
`2
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 2
`
`
`
`The ‘084 Patent
`
`3
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001
`
`IPR2019-01629 Exhibit 2012 Page 3
`
`
`
`The ‘084 Patent
`
`Ex. 1001 (‘084 Patent). All references to claims are to the ‘084 Patent
`unless otherwise noted. Yellow highlight added for emphasis
`throughout.
`
`4
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, p. 15
`
`IPR2019-01629 Exhibit 2012 Page 4
`
`
`
`Ground 1
`
`Claims 1-8 - Proctor in view of Vrotsos and Hasumi
`under 35 U.S.C. §103(a)
`
`5
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 5
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Claim 1 requires a “smart card reader device,” and claim 5 requires a
`“card reader device comprising a sensor for reading information stored
`on the integrated circuit of a smart card …”
`
`Proctor does not disclose a “smart card” or a smart card reader. POR, pp.
`18-21; POSR, pp. 3-7.
`
`6
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 6
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Ex. 1004, p. 3
`
`Ex. 1004, p. 2 (Fig. 1)
`
`7
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 7
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`“A ‘smart card’ incorporates an integrated circuit (‘IC’) chip that
`contains information, such as account number and expiration date,
`needed to perform commercial payment transactions.” POR, p. 18, citing Ex.
`2004, ¶¶21-26.
`
`“The term smart card is used within the payment card industry to
`identify specific types of transaction cards that contain ICs conforming
`to standards in the payment card industry.” Id.
`
`8
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 8
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Claims 1 and 5 both require “a sensor for reading information stored on
`an integrated circuit” of a “smart card.”
`
`Proctor does not disclose a “smart card” as discussed above or a
`“sensor” for reading a smart card. POR, p. 21; Ex. 2004, ¶44.
`
`Proctor only discloses “…the read head that reads the magnetic stripe
`on the payment card, and which a POSITA would understand would not
`be capable of reading a memory chip.” POR, p. 22, citing Ex. 2004, ¶44.
`
`9
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 9
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`10
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 10
`
`Ex. 1004, p. 2 (Fig. 1)
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Claims 1 and 5 require reading and producing an encrypted analog
`signal.
`
`11
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, p. 15
`
`IPR2019-01629 Exhibit 2012 Page 11
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Neither Proctor nor Hasumi discloses producing an encrypted analog
`signal as claimed. POR, pp. 22-26.
`
`Petition does not identify any disclosure in Proctor for producing an
`encrypted analog signal. See, e.g., Petition, p. 27.
`
`Petition relies on Hasumi for producing an encrypted analog signal as
`claimed. Id.
`
`12
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 12
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`The Hasumi reader (reading/writing device 4) reads encrypted card
`data but does not produce it. POR, pp. 23-26; Ex. 2004, ¶¶60-65.
`
`13
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1009, p. 13
`
`IPR2019-01629 Exhibit 2012 Page 13
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Hasumi encrypts card data at communication terminal 2, not at the
`reading/writing device 4. Ex. 2004, ¶¶62-65.
`
`Ex. 1009, p. 2
`
`14
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1009, p. 13
`
`IPR2019-01629 Exhibit 2012 Page 14
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Claim 1 recites “said sensor including circuitry for converting said
`encrypted analog signal to a format suitable for transmission to a
`hands-free jack of a mobile communication device”
`
`Neither Proctor nor Vrotsos disclose the “circuity for converting said
`encrypted signal.” POR, pp. 26-30.
`
`15
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 15
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Petition asserts that Proctor discloses the “circuity for converting said
`encrypted signal” but Proctor has no encrypted analog signal to
`convert. POR, pp. 26-27
`
`16
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Petition, p. 28
`
`IPR2019-01629 Exhibit 2012 Page 16
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Petition asserts that “Vrotsos teaches circuitry” (Petition, p. 28), but
`Vrotsos has no encrypted analog signal to convert. POR, pp. 27-30.
`
`Vrotsos transmits a digital
`signal from Processor 303
`to Antenna 5.
`
`17
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1006, p. 15 (Fig. 10)
`IPR2019-01629 Exhibit 2012 Page 17
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Vrotsos transmits a digital signal from Processor 303 to Antenna 5. POR,
`pp. 27-30.
`
`18
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1006, p. 22
`
`IPR2019-01629 Exhibit 2012 Page 18
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Claim 5 recites “providing said encrypted analog signal indicative of the
`information stored on the integrated circuit to said mobile
`communication device for further processing by circuitry contained in
`said mobile communication device” (Emphasis added).
`
`Petition relies on Proctor to disclose this step. Petition, pp. 36-37.
`
`19
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Petition, p. 36
`IPR2019-01629 Exhibit 2012 Page 19
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`
`Proctor makes no reference to an “encrypted analog signal.”
`
`Proctor does not disclose “providing said encrypted analog signal
`indicative of the information stored on the integrated circuit to said
`mobile communication device” as recited by claim 5. (Emphasis added).
`
`20
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 20
`
`
`
`Ground 1: Proctor + Vrotsos + Hasumi
`Proctor does not disclose “…for further processing by circuitry
`contained in said mobile communication device.” POR, pp. 30-32.
`
`21
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1004, p. 2 (Fig. 1)
`
`IPR2019-01629 Exhibit 2012 Page 21
`
`
`
`Ground 1: No Motivation to Combine
`In re Nuvasive, Inc., 842 F.3d 1376, 1381-82 (Fed. Cir. 2016) (“‘[T]he
`factual inquiry whether to combine references must be thorough and
`searching,’ and ‘[t]he need for specificity pervades [our] authority’ on
`the PTAB's findings on motivation to combine.”) (Emphasis added)
`Plas-Pak Industries, Inc., 600 Fed. Appx. 755, 758-60 (Fed. Cir. 2015)
`(affirming conclusion of nonobviousness where proposed combination
`would change the “basic principles under which the [prior art device]
`was designed to operate”) (Emphasis added)
`Johns Manville Corp., IPR2018-00827 (PTAB Oct. 16, 2018), Paper 9
`(merely saying that combining the teachings of two references would
`have been “well within the skill of a POSA” because the results “were
`well known and predictable” is not enough) (Emphasis added)
`
`22
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 22
`
`
`
`Ground 1: No MtC for Proctor + Vrotsos
`
`Ex. 1004, p. 2 (Fig. 1)
`
`Ex. 1006, p. 15 (Fig. 10)
`
`23
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 23
`
`
`
`Ground 2
`
`Claims 1-8 - Bear in view of Landman and Colnot under
`35 U.S.C. §103(a)
`
`24
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 24
`
`
`
`Ground 2: Bear + Landman + Colnot
`Claims 1 and 5 require reading and producing an encrypted analog signal.
`
`25
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, p. 15
`
`IPR2019-01629 Exhibit 2012 Page 25
`
`
`
`Ground 2: Bear + Landman + Colnot
`Petition relies on Landman for producing an encrypted analog signal.
`
`26
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Petition, p. 51
`
`IPR2019-01629 Exhibit 2012 Page 26
`
`
`
`Ground 2: Bear + Landman + Colnot
`Landman does not disclose “producing an encrypted analog signal
`indicative of the information” as claimed. POR, pp. 36-38
`
`The information within the smart card is already encrypted as required
`by industry standards. POR, p. 37; Ex. 2004, ¶105; see also id. ¶¶21-22 (discussing ISO
`standard)
`
`The only encryption by Encryption/Decryption 335 unit is when “the
`reader/writer has to encrypt the random challenge (number) with a
`shared encryption key and return the result to the card. Ex. 1011, p. 17 (15:7-8);
`Ex. 2004, ¶105
`
`27
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 27
`
`
`
`Ground 2: Bear + Landman + Colnot
`Claim 1 recites:
`
`Bear + Colnot do not disclose converting the encrypted analog signal to
`a format suitable for transmission to a hands-free jack. POR, pp. 40-42.
`
`Ex. 1001, p. 15
`
`28
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 28
`
`
`
`Ground 2: Bear + Landman + Colnot
`
`Claim 5 recites “further processing” of the encrypted analog signal:
`
`29
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, p. 15
`
`IPR2019-01629 Exhibit 2012 Page 29
`
`
`
`Ground 2: Bear + Landman + Colnot
`Bear+Landman do not disclose “further processing by circuitry
`contained in said mobile communication device.” POR, pp. 43-44.
`
`30
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Petition, p. 64
`
`IPR2019-01629 Exhibit 2012 Page 30
`
`
`
`Ground 2: Bear + Landman + Colnot
`Bear+Landman+Colnot do not disclose transmitting to a transaction
`server for further processing. POR, pp. 44-50.
`
`Claim 1:
`
`Claim 5:
`
`31
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Ex. 1001, p. 15
`
`IPR2019-01629 Exhibit 2012 Page 31
`
`
`
`Ground 2: Bear + Landman + Colnot
`
`Petition, p. 57
`
`Petition, p. 58
`
`32
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 32
`
`
`
`Ground 2: Bear + Landman + Colnot
`Neither Bear nor Colnot disclose a remote transaction server for
`processing an encrypted analog signal. POR, pp. 45-48
`• Bear’s IVR server does not process encrypted audio signals. Ex. 2004,
`¶¶100-101
`• A POSITA would not consider an IVR unit capable of processing
`encrypted analog signals, or capable of processing a payment card
`transaction. Ex. 2004, ¶¶142-143
`• An IVR can accept touch tone commands—not a set of DTMF tones
`representing a set of data. Ex. 2004, ¶144
`
`33
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`IPR2019-01629 Exhibit 2012 Page 33
`
`
`
`Ground 2: Bear + Landman + Colnot
`Petitioner argues that “Colnot discloses teaches [sic] sending
`information to a remote server for further processing to secure online
`transactions over the phone.” Petition, p. 59
`
`• Colnot discloses communication devices connected to a PC. Ex. 2004, ¶149
`
`• The embodiments of Colnot refer only to performing a client-
`authentication transaction. Ex. 2004, ¶156
`
`• Colnot does not teach the transmission of a signal having payment
`information for further processing at a transaction server. Ex. 2004, ¶158
`IPR2019-01629 Exhibit 2012 Page 34
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`34
`
`
`
`Ground 2: No MtC for Bear + Landman + Colnot
`
`35
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`POR, p. 44
`
`IPR2019-01629 Exhibit 2012 Page 35
`
`
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