`FINTIV, INC.,
`
`
`v.
`
`APPLE, INC.,
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`
`Plaintiff,
`
`
`
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. No. 1:19-CV-1238-ADA
`
`JURY TRIAL DEMANDED
`
`APPLE’S FINAL INVALIDITY CONTENTIONS
`
`Pursuant to the Agreed Scheduling Order entered on June 10, 2019 (Dkt. No. 38), and as
`
`agreed by the parties on January 3, 2020, Defendant Apple, Inc. (“Apple”) hereby serves its
`
`Final Invalidity Contentions for U.S. Patent No. 8,843,125 (the “’125 patent”).
`
`I.
`
`INTRODUCTORY STATEMENT
`
`Fintiv’s Preliminary Infringement Contentions served on May 20, 2019 and its proposed
`
`Amended Infringement Conventions, dated December 6, 2019 (collectively, the “Infringement
`
`Contentions”), are vague and incomplete, and do not provide the specificity necessary to allow
`
`Apple to adequately respond. For example, the Court’s Order Governing Proceedings for Patent
`
`Cases states that “Plaintiff shall produce [] all documents evidencing conception and reduction to
`
`practice for each claimed invention” but Fintiv did not produce any responsive documents. In
`
`subsequent correspondence, Fintiv advised that it had searched for conception and reduction to
`
`practice documents but did not locate any and confirmed via email dated December 3, 2019 that
`
`it was not withholding any conception or reduction to practice documents. Fintiv’s failure to
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`timely produce conception and reduction to practice documents prejudices Apple’s ability to
`
`prepare its invalidity contentions, especially given Fintiv’s assertion that “[t]he subject matter
`
`described by the Asserted Claims…may have been conceived and reduced to practice prior to
`
`1
`
`Apple Ex. 1045, p. 1
`Apple v. Fintiv
`IPR2020-00019
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`

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`[the alleged priority date of December 30, 2010].” Infringement Contentions at 4. In preparing
`
`its invalidity contentions, Apple is relying on Fintiv’s alleged December 30, 2010 priority date.1
`
`The Court’s Order Governing Proceeding for Patent Cases also required Fintiv to “serve[]
`
`preliminary infringement contentions in the form of a chart setting forth where in the accused
`
`product(s) each element of the asserted claim(s) are found.” Fintiv has failed to do so. For every
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`claim element, Fintiv contends only “on information and belief” that the claim element is
`
`satisfied. Fintiv’s Infringement Contentions provide virtually no explanation for its infringement
`
`allegations and fail to fairly apprise Apple of Fintiv’s infringement theories or what is alleged to
`
`infringe. For example, Fintiv’s Infringement Contentions for at least the following elements are
`
`deficient:
`
`• Claim 11: “displaying a contactless card applet based on attributes of the mobile device;”
`• Claim 11: “receiving a selection of a contactless card applet;”
`• Claim 11: “provisioning the selected contactless card applet, the widget, and the WMA.”
`• Claim 14: “receiving filtered contactless card applet for provisioning, wherein the
`contactless card applet is filtered based on the mobile device information.”
`• Claim 18: “a wallet client management component configured to store and to manage a
`mobile wallet application;”
`• Claim 18: “a rule engine configured to filter a widget based on the mobile device
`information,”
`• Claim 18: “wherein said wallet management system is configured to register the mobile
`device and the mobile wallet application in a Trusted Service Manager (TSM) system.”
`• Claim 23: “a wallet management applet (WMA) corresponding to the contactless card
`applet, wherein the WMA is stored in the SE;”
`• Claim 23: “wherein said OTA proxy is configured to capture mobile device information
`comprising SE information.”
`
`
`1 Fintiv’s proposed Amended Infringement Contentions claim a priority date of “no later than June 4, 2010.”
`Amended Infringement Contentions, pg. 5. This is nonsensical since a patent cannot claim priority to a date before
`the priority application was filed which, in this case, is December 30, 2010.
`
`2
`
`Apple Ex. 1045, p. 2
`Apple v. Fintiv
`IPR2020-00019
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`

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`Taking the “displaying …” limitation from claim 11 as an example, the materials cited by Fintiv
`
`do not disclose “displaying” any of the required information. See Infringement Contentions Ex.
`
`A at 13-16. Similarly, Fintiv’s Infringement Contentions identify nothing that could reasonably
`
`constitute “receiving a selection of a contactless card applet” from a user. Id. at 16-18. In at
`
`least each of the instances identified above, Fintiv fails to “set[] forth where in the accused
`
`product(s) each element of the asserted claim(s) are found.” Fintiv’s failure to identify what it
`
`contends to be infringing in its Infringement Contentions has prejudiced Apple’s ability to
`
`prepare these invalidity contentions. Moreover, Fintiv has not yet served its Final Infringement
`
`Contentions and Apple prepared these Final Invalidity Contentions without the benefit of
`
`knowing the positions Fintiv may take regarding the scope of the asserted claims, how Fintiv
`
`may interpret the Court’s claim constructions, or how Fintiv may attempt to read the claims onto
`
`the accused products. Apple specifically reserves the right to amend these Final Invalidity
`
`Contentions after receiving Fintiv’s Final Infringement Contentions.
`
`Apple understands that Plaintiff Fintiv, Inc. (“Fintiv”) has asserted claims 11, 13-14, 16-
`
`18, and 20-25 of the ’125 patent, which are collectively referred to herein as the “Asserted
`
`Claims”.
`
`To the extent that these Final Invalidity Contentions rely on or otherwise embody
`
`particular constructions of terms or phrases in the Asserted Claims, Defendant is not proposing
`
`any such constructions as proper constructions of those terms or phrases. Various positions put
`
`forth in this document are predicated on Plaintiff’s incorrect and overly broad interpretation of its
`
`claims as evidenced by its Infringement Contentions. Those positions are not intended to and do
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`not necessarily reflect Defendant’s interpretation of the true and proper scope of Plaintiff’s
`
`3
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`Apple Ex. 1045, p. 3
`Apple v. Fintiv
`IPR2020-00019
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`claims, and Defendant reserves the right to adopt claim construction positions that differ from or
`
`even conflict with various positions put forth in this document.
`
`The Court issued a Markman ruling on November 27, 2019 (Dkt. 86) construing the
`
`following terms:
`
`Term
`“wallet management applet”
`
`“widget”
`
`“mobile wallet application”
`“SE information”
`
`“mobile device information”
`“over-the-air (OTA) proxy” and
`“OTA proxy”
`
`“provision[ing]”
`
`Court’s Construction
`“software that enables management of an electronic wallet
`including, but not limited to, the functionality of storing account
`specific information”
`Plain-and-ordinary meaning, where the plain-and-ordinary
`meaning is “software that is either an application or works with an
`application, and which may have a user interface.”
`Plain-and-ordinary meaning
`“information that is about or related to the SE including, but
`not limited to, production life cycle, card serial number, card image
`number, and integrated circuit card identification”
`Plain-and-ordinary meaning
`“software, in conjunction 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.”
`Plain-and-ordinary meaning, where the plain and ordinary
`meaning is “mak[e/ing] available for use.”
`
`Apple offers these Final Invalidity Contentions in response to the Court’s claim
`
`constructions and Fintiv’s Infringement Contentions, notwithstanding the deficiencies therein,
`
`without prejudice to any position Apply may ultimately take as to any claim construction issues.
`
`Apple’s application of the Court’s claim constructions in these Final Invalidity Contentions is
`
`not an admission that Apple agrees with any of the Court’s constructions. Apple specifically
`
`disagrees with many of the Court’s constructions and reserves the right to challenge them both in
`
`this or any other proceeding, including on appeal. Nor should Apple’s Final Invalidity
`
`Contentions be interpreted as suggesting that Fintiv’s reading of the Asserted Claims is correct,
`
`that any of the Asserted Claims are not indefinite, or as an admission that any of Apple’s
`
`4
`
`Apple Ex. 1045, p. 4
`Apple v. Fintiv
`IPR2020-00019
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`

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`products or technology infringe any claim of the Asserted Patent. Apple specifically denies any
`
`such infringement.
`
`These Final Invalidity Contentions, including the attached exhibits, are subject to
`
`modification, amendment, and/or supplementation in the event that Fintiv provides any
`
`information that it failed to provide in its Infringement Contentions or attempts to cure the
`
`deficiencies in its Infringement Contentions, in light of Fintiv’s Final Infringement Contentions,
`
`and/or in view of any Court’s ruling regarding the construction or scope of the Asserted Claims,
`
`any findings as to the priority, conception, or reduction to practice date of the Asserted Claims,
`
`and/or positions that Fintiv or its expert witness(es) may take concerning claim construction,
`
`infringement, and/or invalidity issues. Further, because discovery is not complete, Apple
`
`reserves the right to revise, amend, and/or supplement the information provided herein, including
`
`identifying and relying on additional references, should Apple’s further search and analysis yield
`
`additional information or references, consistent with the applicable rules and the Federal Rules of
`
`Civil Procedure.
`
`These Final Invalidity Contentions herein are based on Apple’s present knowledge and
`
`Apple reserves the right to amend these contentions if it identifies new material despite Apple’s
`
`reasonable efforts to prepare these contentions. Apple’s investigation regarding invalidity of
`
`the ’125 patent over prior art and regarding other grounds of invalidity, including those based on
`
`the public use and on-sale bars under 35 U.S.C. § 102(b), anticipation under 35 U.S.C. § 102,
`
`obviousness under 35 U.S.C. § 103, failure to comply with 35 U.S.C. § 112, derivation and
`
`improper inventorship under 35 U.S.C. § 102(f), and prior invention under 35 U.S.C. § 102(g), is
`
`ongoing. There may be products that were known or in public use prior to the filing dates of the
`
`5
`
`Apple Ex. 1045, p. 5
`Apple v. Fintiv
`IPR2020-00019
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`

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`applications leading to the ’125 patent, but Apple must first obtain additional information
`
`regarding these products using available discovery tools.
`
`Moreover, prior art not included in this disclosure, whether known or unknown to Apple,
`
`may become relevant. In particular, Apple is currently unaware of the extent, if any, to which
`
`Fintiv will contend that limitations of the Asserted Claims are not disclosed in the prior art
`
`identified by Apple, or will contend that any of the identified references does not qualify as prior
`
`art under § 102. The identification of any patents as prior art shall be deemed to include
`
`identification of any foreign counterpart patents. To the extent that such issues arise, Apple
`
`reserves the right to identify additional teachings in the same references or in other references
`
`that anticipate or would have made the addition of the allegedly missing limitation to the
`
`apparatus or method obvious.
`
`II.
`
`INVALIDITY OF THE ’125 PATENT
`
`A.
`
`Invalidity Based on 35 U.S.C. § 101
`
`Each Asserted Claim is invalid for failing to recite patentable subject matter under 35
`
`U.S.C. § 101.
`
`In Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court
`
`established a two-part test for determining whether a claim recites patent-eligible subject matter.
`
`First, the court must determine whether the claims at issue are directed to any of the following
`
`patentable ineligible subject matter: laws of nature, natural phenomena, or abstract ideas. Id. at
`
`2355. Second, if the claims are directed to ineligible subject matter, the court must then consider
`
`the claim elements—both individually and as an ordered combination—to determine whether
`
`they add an “inventive concept.” Id. Merely claiming a generic “computer” to implement an
`
`6
`
`Apple Ex. 1045, p. 6
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`IPR2020-00019
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`abstract idea is not sufficient to transform the computer into a patent-eligible invention. Id. at
`
`2357-50.
`
`The Asserted Claims of the ’125 patent are drawn to an abstract idea. The claims are
`
`untethered to any specific implementation or environment because the patent does not materially
`
`limit the concepts and components that were commonplace in ordinary mobile devices and
`
`trusted service manager (“TSM”) servers. See, e.g., ’125 patent at 1:36-46 (“mobile wallet
`
`functionality was sought to be realized through provisioning of card issuer's account information
`
`directly into a secure element (SE) of the mobile device equipped with Near Field
`
`Communication (NFC) chipset. The SE may be a smart card chip capable of storing multiple
`
`applications, including of account specific information that may not be easily accessed by
`
`external parties. The model mobile wallet application may have the same composition as a
`
`conventional wallet, which may contain payment cards, member cards, transportation cards, and
`
`loyalty cards”); 1:47-51 (“Further, to make the wallet function more convenient to the owners of
`
`the mobile device, a method of providing contact less payment (NFC-based applications)
`
`through provisioning account specific information within the secure domain of the mobile
`
`device's SE has been provided”); 2:1-6 (“With the advent of NFC-based contactless payment
`
`applications, users were provided a way to select a contactless payment applet (i.e., contactless
`
`payment virtual card) from various contactless payment applets stored in the mobile device for
`
`payment at corresponding point-of-sale (POS) devices”). The numerous references in the
`
`following sections confirm that the concept of provisioning a contactless card applet in a mobile
`
`wallet application on a mobile device, as well as a TSM server used to support this provisioning,
`
`was well-known in the art at the time.
`
`7
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`Apple Ex. 1045, p. 7
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`IPR2020-00019
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`

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`Nor do the elements of the claims—whether individually or as a whole—evidence any
`
`“inventive concept.” The elements merely describe well-known provisioning steps, such as
`
`connecting to a TSM and transmitting and receiving information to and from it. As explained in
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`detail below and in the attached claim charts, both the concept of provisioning a contactless card
`
`applet and the particular claim steps were well-known long before the time of the ’125 patent.
`
`Merely claiming a series of generic communications to implement an abstract idea is not
`
`sufficient to transform the claims into a patent-eligible invention.
`
`Apple’s investigation concerning invalidity of the ’125 patent under Section 101 is
`
`ongoing. For example, no claim terms have been construed, Fintiv has not provided adequate
`
`infringement contentions, and discovery is ongoing. Apple thus reserves the right to supplement
`
`and/or amend its invalidity contentions with respect to Section 101.
`
`B.
`
`Invalidity Based on 35 U.S.C. §§ 102, 103
`
`The references in Exhibits A and B as well as the system prior art discussed below
`
`disclose elements of the Asserted Claims explicitly and/or inherently. These references may also
`
`be relied upon to show the state of the art at the relevant time and/or that elements of the
`
`Asserted Claims, or any Asserted Claim as a whole, would have been obvious to a person having
`
`ordinary skill in the art at the time of the alleged invention. Obviousness combinations are
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`provided in the alternative to Apple’s anticipation contentions and are not to be construed as
`
`suggesting that any reference included in the combinations is not by itself anticipatory.
`
`Apple is unable to know the extent to which Fintiv will contend that limitations of the
`
`Asserted Claims are not disclosed in the art identified by Apple as anticipatory. If any such issue
`
`arises with respect to any such limitation, Apple reserves the right to identify other references
`
`and combinations that may make obvious the addition of the allegedly missing limitation.
`
`8
`
`Apple Ex. 1045, p. 8
`Apple v. Fintiv
`IPR2020-00019
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`

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`The references discussed in Exhibits A and B as well as the system prior art discussed
`
`below are applied to the Asserted Claims. Apple also incorporates by reference the prior art and
`
`invalidity analysis contained in IPR2020-00019 challenging the Asserted Claims of the ’125
`
`patent, including but not limited to the Petition (paper 1), the Supplemental Filing Regarding the
`
`District Court’s Construction of “OTA Proxy” (paper 7), Ex. 1003 (Declaration of Dr. Cliff
`
`Neuman), and the prior art references contained in Exs. 1004-1009, 1011-1015, 1023-1026, and
`
`1028-1032, as listed below.
`
`Exhibit
`
`Description
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1023
`
`1024
`
`1025
`
`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
`
`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
`
`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
`
`9
`
`Apple Ex. 1045, p. 9
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`IPR2020-00019
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`Exhibit
`
`Description
`Library of Congress Certification
`
`1026
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`Excerpt from McPherson, “How to Do Everything with Your Pocket PC” (2nd Ed.
`2002) and Associated Library of Congress Certification
`
`U.S. Patent Publication No. 2012/0095852 to Bauer et al.
`
`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
`
`The fact that Apple’s disclosures pertain only to the Asserted Claims should not be
`
`construed to suggest that any of the other claims of the ’125 patent are valid. Should Fintiv be
`
`permitted to amend its infringement contentions to assert additional or alternative claims, or
`
`modify the bases for its contentions, Apple reserves the right to modify, amend, or supplement
`
`these disclosures.
`
`Various references discussed in Exhibits A and B as well as the system prior art
`
`discussed below may be of greater or lesser relevance and different combinations of these
`
`references may be implicated depending on Fintiv’s Final Infringement Contentions, its
`
`interpretation and application of the Court’s existing claim construction rulings, or future rulings
`
`from the Court regarding claim scope. In view of Apple’s uncertainty regarding how Fintiv will
`
`contend the claims apply, the discussion of the different references in Exhibits A and B and the
`
`system prior art discussed below may reflect alternative applications of the prior art against the
`
`Asserted Claims. A more detailed discussion of Apple’s Section 102 and/or 103 defenses will be
`
`set forth in Apple’s expert report(s) on invalidity.
`
`10
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`Apple Ex. 1045, p. 10
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`IPR2020-00019
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`Apple provides pinpoint citations to exemplary portions of the prior art for the purpose of
`
`fairly disclosing the manner in which the prior art references meet the claim limitations. Such
`
`citations should not be construed to mean that other portions of the prior art references are not
`
`relevant to the invalidity of the claims. Apple specifically reserves the right to rely on the
`
`entirety of any or all of the prior art references—whether charted or not charted—as a basis for
`
`asserting invalidity of the Asserted Claims and/or as necessary to supplement its invalidity
`
`contentions with additional citations and evidence.
`
`1.
`
`Admitted Prior Art
`
`The ’125 patent admits that certain teachings, concepts, and claim elements were known
`
`in the prior art. For example, in the Background of the Invention, the ’125 specification admits
`
`that, in the prior art, “mobile wallet functionality was sought to be realized through provisioning
`
`of card issuer's account information directly into a secure element (SE) of the mobile device
`
`equipped with Near Field Communication (NFC) chipset” and that “[t]he model mobile wallet
`
`application may have the same composition as a conventional wallet, which may contain
`
`payment cards, member cards, transportation cards, and loyalty cards.” ’125 patent at 1:36-46.
`
`The ’125 patent further admits that “a method of providing contact less payment (NFC-based
`
`applications) through provisioning account specific information within the secure domain of the
`
`mobile device's SE has been provided” and that “user financial credentials, such as credit card
`
`numbers, may be provisioned onto mobile devices equipped with Near Field Communication
`
`chipset (NFC enabled) to make payments.” Id. at 1:48-54.
`
`The ’125 patent admits that NFC payment technology “is conventionally referred to as
`
`‘contactless’ technology and a payment made with this technology is referred to as ‘contactless’
`
`payment.” Id. at 1:60-62; see also id. at 2:1-6 (admitting that “[w]ith the advent of NFC-based
`
`11
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`Apple Ex. 1045, p. 11
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`contactless payment applications, users were provided a way to select a contactless payment
`
`applet (i.e., contactless payment virtual card) from various contactless payment applets stored in
`
`the mobile device for payment at corresponding point-of-sale (POS) devices.”). Additionally,
`
`the ’125 patent admits that “the contactless card applets may be stored within a specific
`
`compartment, or a secured domain, of the SE to be accessed during an interaction with the POS
`
`device.” Id. at 2:19-21.
`
`2.
`
`Anticipation by Patents and Printed Publications
`
`Based on Apple’s understanding of Fintiv’s Infringement Contentions, at least one or
`
`more Asserted Claims are invalid as anticipated under 35 U.S.C. § 102 in view of the patent and
`
`printed publication prior art references listed below as indicated and discussed in Exhibit A, as
`
`well as any methods or systems which embody the concepts disclosed in those references.
`
`Exhibit A is a series of charts, numbered A-1 through A-8,2 that identify specific examples of
`
`where each claim limitation is found in a particular reference.
`
`Table 1: List of Anticipatory Patents and Printed Publications
`
`Chart
`A-1
`
`A-2
`
`A-3
`
`A-4
`
`A-5
`
`Reference
`U.S. Pat. Pub. No. 2010/0190437 A1 (“Buhot 437”). Buhot 437 was filed on
`December 23, 2009 and published on July 29, 2010.
`European Pat. Pub. No. EP 2211481 A1 to Buhot (“Buhot EP”). Buhot EP was
`published on July 28, 2010.
`U.S. Pat. Pub. No. 2010/0138518 A1 to Aiglstorfer (“Aiglstorfer”).
`Aiglstorfer was filed on November 18, 2009 and published on June 3, 2010.
`U.S. Pat. No. 9,558,481 to Bauer (“Bauer”). Bauer was filed on September
`28, 2010, published on March 29, 2012, and issued on January 31, 2017.
`U.S. Pat. Pub. No. 2012/0123935 to Brudnicki (“Brudnicki”). Brudnicki was
`filed on October 21, 2011 and claims priority to provisional applications filed
`November 17, 2010.
`
`
`2 Exhibit A also includes chart A-9 directed to the VivoTech Solution discussed further below.
`
`12
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`Apple Ex. 1045, p. 12
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`Chart
`A-6
`
`A-7
`
`A-8
`
`Reference
`U.S. Pat. Pub. No. 2010/0041368 A1 to Kumar (“Kumar”). Kumar was filed
`on August 12, 2008 and published on February 18, 2010.
`Chinese Pat. Pub. No. CN 101459902 A to Wang (“Wang”). Wang was
`published on June 17, 2009.
`U.S. Pat. Pub. No. 2009/0164322 to Khan (“Khan”). Khan was filed on Dec.
`19, 2008 and published June 25, 2009.
`
`
`Apple specifically asserts the references in the table above as anticipatory references
`
`under 35 U.S.C. §§ 102 (a), (b), and/or (e), but also asserts that the invention of such systems
`
`and/or methods prior to the alleged invention date of the asserted claims may also constitute
`
`prior art under 35 U.S.C. § 102(g), which will be confirmed as discovery progresses.
`
`3.
`
`Anticipation by System Art
`
`In addition to the patents and printed publications discussed above, a number of systems
`
`constitute prior art that invalidates at least one Asserted Claim of the ’125 patent under 35 U.S.C.
`
`§§ 102 (a), (b), and/or (g). In addition to the references (and corresponding systems) described
`
`in the Charts A-1 through A-8 and the B-Charts, the system prior art includes, for example, the
`
`VivoTech Solution (e.g., VivoWallet and VivoNFC), IBM Digital Wallet, Google’s Android
`
`Market, Apple’s App Store, and Ilium Software eWallet. A claim chart for the VivoTech
`
`Solution is included as Exhibit A-9.
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`Vivotech
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`On information and belief, ViVOtech Inc. (“Vivotech”) was founded in 2001 and
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`headquartered in Santa Clara, CA. Circa 2009, Vivotech was a market leader in contactless/NFC
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`payment software, over the air (OTA) card provisioning, promotion, and transaction
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`management infrastructure software, NFC smart posters, and contactless readers/writers.
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`https://web.archive.org/web/20091220095921/http://www.vivotech.com/aboutus/.
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`“ViVOtech has developed an end-to-end contactless/NFC payment and promotion
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`solution that allow consumers to make easy payments with radio frequency-enabled credit cards,
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`debit cards, key fobs, and NFC-enabled mobile phones.”
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`https://web.archive.org/web/20091226135343/http://www.vivotech.com/products. This enabled
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`“merchant systems to accept contactless card, fob of phone payments with minimum changes,”
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`“[s]ecure issuance of over the air (OTA) credit, debit, prepaid and loyalty cards to mobile
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`phones,” “[n]ext-generation contactless gift and loyalty programs based on contactless and OTA
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`technology and intelligent transaction processing.” Id. As of 2009, “[h]undreds of thousands of
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`ViVOtech products are currently in use in over 25 countries and have been recognized with
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`several industry awards.” Id.
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`Vivotech developed VivoWallet, VivoPay, and VivoNFC.
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`https://web.archive.org/web/20091220081908/http://www.vivotech.com/products/index.asp.
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`VivoPay was VivoTech’s line of contactless card readers. Id. ViVOwallet (shown below) was
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`an easy to use NFC mobile phone application that allows the download of cards to the mobile
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`phone in just a few steps. Id. VivoNFC included “a dedicated server that sits in the premises of
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`credit/debit/prepaid card, coupon, promotion, and ticket issuers. Placed behind the firewall, VpIS
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`allows these issuers to manage and provision their data over-the-air into mobile phones while
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`managing data security.” Id.
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`https://web.archive.org/web/20100301100102/http://www.vivotech.com/products/vivo_wallet/in
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`dex.asp. The VivoWallet was a versatile full featured wallet application with an intuitive user
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`interface which runs on mobile NFC devices. Id. ViVOwallet managed multiple softcards
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`stored on the mobile device, such as credit, debit, prepaid and loyalty cards, coupons or tickets.
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`ViVOwallet ensures end-to-end protection of softcard data and payment applications, with its
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`interface for over the air (OTA) provisioning as well as its management of the mobile devices
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`secure element. Id. “ViVOwallet supports a patent-pending methodology to allow for the
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`provisioning of multiple MasterCard® PayPass softcards to a single NFC phone wallet, multiple
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`Visa, Discover and Amex payment softcards are also supported.”
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`https://web.archive.org/web/20100301100102/http://www.vivotech.com/products/vivo_wallet/in
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`dex.asp. The 2006 “Vivotech RF-based Contactless Payment” white paper (version 3.0, April
`
`2006) stated that “ViVOwallet Software allows consumers secure access to their soft cards
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`directly from their mobile phone display. This software also provides transaction reporting
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`functions such as balances, payments history, and content discovery from smart posters.” Pg. 28
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`(see image below).
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`Apple Ex. 1045, p. 15
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`The Vivotech system architecture (including the combination of VivoNFC and
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`VivoWallet for OTA provisioning) is illustrated below.
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`https://web.archive.org/web/20091226223310/http://www.vivotech.com/products/vivo_nfc/index
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`
`
`.asp.
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`This architecture includes a VivoNFC Issuer Server which “operates as a standalone
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`server in the ViVOnfc contactless transaction product architecture, allowing a card issuer to
`
`
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`provision a soft card to a ViVOwallet application running on an NFC-enabled phone. The Issuer
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`Server, which is hosted in the card issuer network or a TSM, holds all the personalization
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`algorithms, features, functions, procedures, and interfaces for a card issuer. Additionally, it
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`provides all the personalization data from the issuer back-office and is responsible for
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`personalizing the ViVOwallet with all the required information for users to download the
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`issuer’s cards, coupons, or tickets.” Id.
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`It also includes a VivoNFC Control Server which “provides the Over-the-Air (OTA)
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`provisioning control function for the ViVOnfc contactless transaction product architecture. The
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`Control Server directs requests from the ViVOwallet application residing on a NFC-enabled
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`phone to the Issuer Server supporting the card issuer backoffice systems. The Control Server
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`contains a database holding Issuer Server configuration information for all Issuer Servers with
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`which the Control Server interacts (one Control Server can interact with multiple Issuer Servers).
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`The Control Server Web interface provides several administrative functions to allow your
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`Customer Support organization to interact with a subscriber’s NFC-enabled device to perform
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`account management functions. For example, if a subscriber device is lost, Customer Support
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`can lock the device, making it unavailable for use.”
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`https://web.archive.org/web/20091226223310/http://www.vivotech.com/products/vivo_nfc/index
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`.asp
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`Vivotech’s “ViVOnfc suite of Infrastructure Software has been successfully deployed in
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`more than 15 trials conducted in the United States, Taiwan, Malaysia, Singapore, Hong Kong,
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`and China with a variety of players across the NFC ecosystem from major card associations,
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`branded and retailer card issuers, merchants, major mobile phone manufacturers, to mobile
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`phone operators (wireless carriers).” See
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`https://web.archive.org/web/20100108073410/http://www.vivotech.com/products/vivo_nfc/trials
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`.asp.
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`Various NFC trials involving Vivotech occurred in the United States more than one year
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`before the alleged priority date of the ’125 patent and qualify as prior art under at least 35 U.S.C.
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`§ 102(b). News organizations publicized at least some of these trials (see, e.g.,
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`https://web.archive.org/web/20100514164811/http://www.vivotech.com/newsroom/videos/Video
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`s/Kron4_Jack_in_the_Box_Video.wmv) which include at least the following:
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`The Atlanta Trial:
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`The Atlanta Philips Arena NFC Trial (“Atlanta Trial”) was held from December 2005 to
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`September 2006 in the Philips Arena in Atlanta, Georgia. The Atlanta Trial was conducted by
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`“Nokia, al