UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`APPLE INC.
`Petitioner
`v.
`FINTIV, INC.
`Patent Owner
`
`____________________________
`
`U.S. Patent No. 8,843,125
`Original Issue Date: September 23, 2014
`Title: SYSTEM AND METHOD FOR MANAGING MOBILE WALLET AND
`ITS RELATED CREDENTIALS
`
`Case No. IPR2020-00019
`_________________________________________________________________
`
`APPLE INC.’S SUPPLEMENTAL FILING REGARDING THE
`DISTRICT COURT’S CONSTRUCTION OF “OTA PROXY”
`_________________________________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`APPLE INC.
`Petitioner
`v.
`FINTIV, INC.
`Patent Owner
`
`____________________________
`
`U.S. Patent No. 8,843,125
`Original Issue Date: September 23, 2014
`Title: SYSTEM AND METHOD FOR MANAGING MOBILE WALLET AND
`ITS RELATED CREDENTIALS
`
`Case No. IPR2020-00019
`_________________________________________________________________
`
`APPLE INC.’S SUPPLEMENTAL FILING REGARDING THE
`DISTRICT COURT’S CONSTRUCTION OF “OTA PROXY”
`_________________________________________________________________
`
`
`
`LISTING OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 8,843,125 to Kwon et al.
`
`File History of U.S. Patent No. 8,843,125 to Kwon et al.
`
`Declaration of Dr. Clifford Neuman
`
`U.S. Patent Publication No. 2010/0138518 to Aiglstorfer et al.
`
`U.S. Patent Publication No. 2010/0190437 to Buhot
`
`eWallet: Users Guide and Reference: Version 5.0, Ilium Software
`(Nov. 2007) (available at https://web.archive.org/web/
`20071110033509/http:/www.iliumsoft.com/gh/download/
`doc/eWallet.pdf)
`
`Excerpt from the File History of U.S. Patent No. 8,646,056 to
`Poplett
`
`CN101459902A to Wang et al.
`
`English translation of CN101459902A to Wang et al. and
`associated translator declaration
`
`[Reserved]
`
`U.S. Patent No. 6,832,373 to O’Neill
`
`Provisional U.S. Patent App. No. 61/428,846
`
`Provisional U.S. Patent App. No. 61/428,851
`
`Provisional U.S. Patent App. No. 61/428,852
`
`Provisional App. No. 61/428,853
`
`Apple’s Opening Claim Construction Brief from Fintiv, Inc. v.
`Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.), Dkt. 71.
`
`-ii-
`
`
`
`Exhibit
`
`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Plaintiff Fintiv, Inc.’s Opening Claim Construction Brief from
`Fintiv, Inc. v. Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.),
`Dkt. 72.
`
`Apple’s Responsive Claim Construction Brief from Fintiv, Inc. v.
`Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.), Dkt. 74.
`
`Plaintiff Fintiv, Inc.’s Responsive Claim Construction Brief from
`Fintiv, Inc. v. Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.),
`Dkt. 75.
`
`Apple’s Reply Claim Construction Brief from Fintiv, Inc. v. Apple
`Inc., Case No. 6:18-cv-00372 (W.D. Tex.), Dkt. 76.
`
`Plaintiff Fintiv, Inc.’s Reply Claim Construction Brief from Fintiv,
`Inc. v. Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.), Dkt. 77.
`
`Agreed Scheduling Order Subsequent to Case Management
`Conference from Fintiv, Inc. v. Apple Inc., Case No. 6:18-cv-00372
`(W.D. Tex.), Dkt. 38.
`
`Swick et al., “The X Toolkit: More Bricks for Building User-
`Interfaces−or−Widgets For Hire,” published in USENIX Winter
`1988.
`
`Excerpt from Underdahl, “iPAQ™ for Dummies®” (2004) and
`associated Library of Congress Certification
`
`Excerpt from Peacock, “Windows® CE, Clear & Simple” (1999)
`and Associated Library of Congress Certification
`
`Excerpt from McPherson, “How to Do Everything with Your
`Pocket PC” (2nd Ed. 2002) and Associated Library of Congress
`Certification
`
`Claim Construction Order from Fintiv, Inc. v. Apple Inc., Case No.
`6:18-cv-00372 (W.D. Tex.), Dkt. 86.
`
`U.S. Patent Publication No. 2012/0095852 to Bauer et al.
`
`-iii-
`
`
`
`Exhibit
`
`Description
`
`1029
`
`1030
`
`1031
`
`1032
`
`ISO/IEC 7816-4 Standard, First Edition (Sept. 1, 1995) as
`submitted on May 9, 2006 in an IDS for U.S. Pat. App. 10/471,883
`
`ISO/IEC 7816-4 Standard, First Edition (Sept. 1, 1995) and Second
`Edition (Jan. 15, 2005) as submitted on April 6, 2009 in an IDS for
`U.S. Pat. App. 12/376,360
`
`ISO/IEC 14443-4 Standard, First Edition (Feb. 2, 2001)
`
`ISO/IEC 14443-4 Standard (July 13, 2000) as submitted on Feb. 1,
`2005 in an IDS for U.S. Pat. App. 10/937,084
`
`-iv-
`
`
`
`As authorized in Paper 6, Petitioner Apple Inc. respectfully submits the
`
`district court’s Markman ruling (Ex. 1027) for U.S. Pat. 8,843,125 in Fintiv, Inc. v.
`
`Apple Inc., Case No. 6:18-cv-00372 (W.D. Tex.) and addresses how the prior art
`
`satisfies the “OTA proxy” limitation as construed by the district court.
`
`Apple’s IPR Petition applied the prior art under the claim constructions
`
`proposed be each party in district court. The district court, however, construed one
`
`term—“OTA proxy”—in a manner that was not proposed by either party. The
`
`district court construed “OTA proxy” as “software, in connection with relevant
`
`hardware, that provisions contactless card applets, captures mobile device
`
`information (including SE information), transmits data (mobile device and SE
`
`specific information) to the TSM system, and receives APDU commands from the
`
`TSM and appropriately forwards them.” (Ex. 1027 at 32.)
`
`Apple respectfully submits that its construction should be applied in this
`
`proceeding, as explained in Apple’s Petition. (Paper 1, Petition at 20.)
`
`Nevertheless, even if the district court’s construction were adopted, it is rendered
`
`obvious by the prior art.
`
`I. The District Court’s Construction
`OTA proxy appears in claims 23 and 16. Most of the district court’s
`
`construction merely repeats other limitations of claim 23 which already requires
`
`that the OTA proxy is configured to “provision the contactless card applet,”
`
`-1-
`
`
`
`“capture mobile device information comprising SE information,” and “transmit the
`
`mobile device information for registering the mobile wallet application.” The
`
`analogs to these in the district court construction are “provisions contactless card
`
`applets,” “captures mobile device information (including SE information),” and
`
`“transmits data (mobile device and SE specific information) to the TSM system,”
`
`respectively. Apple addressed how the prior art meets these requirements, and the
`
`requirement that the OTA proxy be software, in its Petition. (Paper 1, Petition at
`
`47-49, 53-55.)
`
`Unlike claim 23, claim 16 does not recite that the OTA proxy performs the
`
`aforementioned functions. While Apple believes that the district court’s
`
`construction improperly imports these limitations into claim 16, Apple’s Petition
`
`explains how the prior art teaches and renders obvious these limitations for claim
`
`23. (Paper 1, Petition at 50-55.) For the same reasons, even if claim 16 were
`
`interpreted to require everything that claim 23 requires, Aiglstorfer, Buhot, and
`
`Wang render claim 16 obvious.
`
`Thus, the only new requirement imposed by the district court’s construction
`
`is that the OTA proxy “receives APDU commands from the TSM and
`
`appropriately forwards them.” (Ex. 1027 at 32.) Apple respectfully submits that
`
`the district court’s construction is incorrect as illustrated, for example, by
`
`contrasting dependent claim 6—which expressly requires APDU commands—with
`
`-2-
`
`
`
`claims 16 and 23, neither of which mentions APDU commands at all. When the
`
`patentee intended to require the use of APDU commands, it did so expressly.
`
`Regardless, as explained below, the district court’s APDU requirement is rendered
`
`obvious by the prior art discussed herein and in Apple’s Petition.
`
`II. The Prior Art Renders Obvious the “APDU” Requirement
`
`The ’125 patent explains that APDU is an acronym for “Application
`
`Protocol Data Unit.” (Ex. 1001, ’125 patent at 8:2-3.) Unlike other terms and
`
`acronyms in the ’125 patent (e.g., wallet management applet (WMA)) which are
`
`coined terms requiring explanation in the specification, APDU commands were
`
`well-known in the art. It is thus unsurprising that the ’125 patent says relatively
`
`little about APDU commands since they were an industry standard since at least
`
`1995. (See Ex. 1029, ISO7816-4 Standard, 1st Edition (Sept. 1, 1995); Exs. 1031-
`
`1032, ISO14443-4 Standard, pg. vi (applying ISO7816-4 to contactless cards).)
`
`These standards defined the communication protocol and commands for
`
`communicating with an IC card (e.g., a smartcard) and the secure element thereon.
`
`(Id., pg. iv, Introduction.) For example, ISO7816-4 specifies how many bits of
`
`data comprise header and payload information of APDU commands. (Id., §5.3.)
`
`Thus, even if claims 16 and 23 required the OTA proxy to “receive[] APDU
`
`commands from the TSM and appropriately forward[] them” (e.g., to the secure
`
`element) as required by the district court’s construction, this would have been
`
`-3-
`
`
`
`obvious. Apple already explained how Aiglstorfer, Buhot, and Wang teach
`
`transmitting information from a TSM to the secure element of a mobile device via
`
`an OTA proxy. (See, e.g., Paper 1 Petition at 47-50, 53-55.) As explained in the
`
`Petition, Aiglstorfer’s mobile device includes a “security element” in the form of a
`
`“subscriber identify module (SIM) card” which wirelessly receives, via the mobile
`
`device’s communication hardware and a “trusted secure agent (TSA) 102,”
`
`contactless “banking card information” from a TSM for provisioning on the
`
`device. (See Ex. 1004, Aiglstorfer at Fig. 1, ¶¶[0034]-[0036].)
`
`While Aiglstorfer does not explicitly state that the TSM transmits banking
`
`card information via “ADPU commands,” as of the ’125 patent’s filing date it was
`
`well-known in the art to use APDU commands for communicating with, and
`
`provisioning cards on, a secure element like a SIM card. This is evidenced by
`
`Buhot which explains that “Application Protocol Data Unit (APDU commands),”
`
`defined by “ISO 14443-4 or ISO 7816-4,” are transmitted to/from a secure element
`
`like a SIM card during contactless card use, or when interacting with the secure
`
`element’s summary storing database 316. (Ex. 1005, Buhot, ¶¶[0017], [0100]-
`
`[0105].) The standards in Buhot are themselves prior art to the ’125 patent and
`
`demonstrate the knowledge of a POSITA circa 2010. (See Ex. 1030, ISO7816-4
`
`Standards dated 1995 and 2005; Ex. 1031, ISO14443-4 Standard dated 2001; Ex.
`
`1032, ISO14443-4 Standard dated 2000.)
`
`-4-
`
`
`
`The ISO7816-4 Standard expressly states that APDU commands are the
`
`format used for “information exchange negotiated between the outside world and
`
`the integrated circuit” in a removable security element like a SIM card. (See Ex.
`
`1030 at 5, 13.) Thus, when relaying new banking cards or other information from
`
`the TSM to Aiglstorfer’s secure element SIM card, it would have been obvious to
`
`do so via ADPU commands. (See, e.g., Ex. 1028, U.S. Pat. Pub. 2012/0095852 to
`
`Bauer et al., ¶¶[0025], [0036] (noting that “APDU commands” are sent from a
`
`“TSM server” when communicating with a mobile device’s “secure element”).)
`
`Dated: December 9, 2019
`
`Respectfully submitted,
`
`/Travis Jensen/
`Travis Jensen, Reg. No. 60,087
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Phone: (650) 614-7400
`Fax: (650) 614-7401
`Email: tjensen@orrick.com
`
`Attorney for Petitioner Apple Inc.
`
`-5-
`
`
`
`CERTIFICATE OF WORD COUNT
`
`The undersigned certifies that the foregoing SUPPLEMENTAL FILING
`
`complies with the type volume limitation in 37 C.F.R. § 42.24(c)(1). According to
`
`the utilized word-processing system’s word count, the filing—excluding the
`
`caption, table of contents, table of exhibits, certificate of word count, and
`
`certificate of service—contains 1,000 words.
`
`.
`
`/Travis Jensen/
`Travis Jensen, Reg. No. 60,087
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Phone: (650) 614-7400
`Fax: (650) 614-7401
`Email: tjensen@orrick.com
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing paper and associated
`
`exhibits were caused to be served on December 9, 2019 via email upon the
`
`following counsel of record for Patent Owner:
`
`Jonathan K. Waldrop (jwaldrop@kasowitz.com)
`Rodney R. Miller (rmiller@kasowitz.com)
`John W. Downing (jdowning@kasowitz.com)
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redstone Shores, CA 94065
`
`/Travis Jensen/
`Travis Jensen, Reg. No. 60,087
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Phone: (650) 614-7400
`Fax: (650) 614-7401
`Email: tjensen@orrick.com
`
`
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