Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 1 of 35
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`FINTIV, INC.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No.: 6:18-CV-372-ADA
`
`JURY TRIAL DEMANDED
`
`APPLE’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`Apple Ex. 1018, p. 1
` Apple v. Fintiv
`IPR2020-00019
`
`

`

`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 2 of 35
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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ................................................................................................................ i
`TABLE OF AUTHORITIES ......................................................................................................... ii
`TABLE OF ACRONYMS ............................................................................................................ iv
`I.
`CLAIM CONSTRUCTION IS NECESSARY .................................................................. 1
`A.
`THE COURT SHOULD CONSTRUE THE CLAIM TERMS TO
`RESOLVE THE PARTIES’ DISPUTES............................................................... 2
`THE COURT SHOULD CONSTRUE THE CLAIM TERMS BECAUSE
`THEY ARE TECHNICAL IN NATURE AND POTENTIALLY
`CONFUSING TO THE JURY............................................................................... 5
`FINTIV IMPROPERLY IGNORES THE PROVISIONAL APPLICATIONS
`THAT ARE PART OF THE ’125 SPECIFICATION ....................................................... 6
`CLAIM CONSTRUCTIONS............................................................................................. 8
`A.
`“WALLET MANAGEMENT APPLET (WMA)” (CLAIMS 11 AND 13) .......... 8
`1.
`WMA IS A COINED TERM THAT REQUIRES
`CONSTRUCTION ..................................................................................... 8
`THE COURT SHOULD ADOPT APPLE’S PROPOSED
`CONSTRUCTION ..................................................................................... 9
`a.
`The WMA is a Software Application .......................................... 11
`b.
`The WMA Stores Duplicate Account Information ...................... 12
`FINTIV FAILS TO SUPPORT ITS PROPOSED ALTERNATIVE
`CONSTRUCTION ................................................................................... 14
`“WIDGET” (CLAIMS 11, 18, AND 23) ............................................................. 14
`“MOBILE WALLET APPLICATION” (CLAIMS 11, 18, AND 23)................. 18
`“SE INFORMATION” (CLAIMS 14 AND 23) .................................................. 21
`“MOBILE DEVICE INFORMATION” (CLAIMS 14, 18, AND 23) ................. 23
`“OVER-THE-AIR (OTA) PROXY” (CLAIM 23) AND “OTA PROXY”
`(CLAIM 16) ......................................................................................................... 25
`“PROVISION[ING]” (CLAIMS 11 AND 23) .................................................... 28
`G.
`CONCLUSION ................................................................................................................ 29
`
`II.
`
`III.
`
`IV.
`
`B.
`
`B.
`C.
`D.
`E.
`F.
`
`2.
`
`3.
`
`i
`
`Apple Ex. 1018, p. 2
` Apple v. Fintiv
`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 3 of 35
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Alloc, Inc. v. Int’l Trade Comm’n,
`342 F.3d 1361 (Fed. Cir. 2003)................................................................................................17
`
`Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc.,
`262 F.3d 1258 (Fed. Cir. 2001)................................................................................................17
`
`CardSoft, LLC v. VeriFone, Inc.,
`807 F.3d 1346 (Fed. Cir. 2015)................................................................................................16
`
`Cobalt Boats, LLC v. Brunswick Corp.,
`773 F. App’x 611 (Fed. Cir. 2019) ............................................................................................2
`
`Cook Biotech, Inc. v. Acell, Inc.,
`460 F.3d 1365 (Fed. Cir. 2006)..................................................................................................7
`
`Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010)..............................................................................................4, 5
`
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012)..............................................................................13, 15, 18, 19
`
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
`933 F.3d 1345 (Fed. Cir. 2019)................................................................................8, 10, 11, 18
`
`Kraft Foods, Inc. v. Int’l Trading Co.,
`203 F.3d 1362 (Fed. Cir. 2000)..........................................................................................15, 16
`
`MarcTec, LLC v. Johnson & Johnson,
`664 F.3d 907 (Fed. Cir. 2012)....................................................................................................7
`
`Microsoft Corp. v. Multi-Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004)................................................................................................17
`
`Multiform Desiccants, Inc. v. Medzam, Ltd.,
`133 F.3d 1473 (Fed. Cir. 1998)................................................................................................16
`
`Neomagic Corp. v. Trident Microsystems, Inc.,
`287 F.3d 1062 (Fed. Cir. 2002)................................................................................................29
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................1, 2, 3, 4, 9, 18
`
`ii
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`Apple Ex. 1018, p. 3
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 4 of 35
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)................................................................................................23
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)................................................................................................19
`
`Seachange Int’l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005)................................................................................................17
`
`SRI Int’l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985)................................................................................................29
`
`Stasher, Inc. v. Zip Top, LLC et al.,
`No. W-18-cv-00312-ADA (W.D. Tex. Jun. 7, 2019) ..............................................................28
`
`Toro Co. v. White Consol. Indus.,
`199 F.3d 1295 (Fed. Cir. 1999)................................................................................................17
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016)................................................................................................23
`
`Trustees of Columbia Univ. in City of New York v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)..........................................................................6, 11, 19, 20, 24
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)..........................................................................................3, 4, 5
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014)..............................................................................10, 11, 12, 15
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)............................................................................................23, 25
`
`Whirlpool Corp. v. TST Water, LLC,
`No. 2:15-cv-1528-JRG, 2016 WL 3959811 (E.D. Tex. July 22, 2016)...............5, 6, 14, 21, 29
`
`iii
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`Apple Ex. 1018, p. 4
` Apple v. Fintiv
`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 5 of 35
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`TABLE OF ACRONYMS
`
`CCA: Contactless Card Applet
`NFC: Near Field Communications
`MNO: Mobile Network Operator
`OTA: Over-the-Air
`POS: Point of Sale
`SE: Secure Element
`SP: Service Provider
`TSM: Trusted Service Manager
`WMA: Wallet Management Applet
`WMS: Wallet Management System
`
`iv
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`Apple Ex. 1018, p. 5
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 6 of 35
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`The Court should construe the seven claim terms at issue to resolve the parties’ disputes
`regarding claim scope1 and to assist the jury in understanding the technical terminology of the
`asserted claims. To adopt across-the-board “no construction needed” approach to claim
`construction advocated in Fintiv’s Opening Claim Construction Brief (“Fintiv Opening Br.”)
`(D.I. 72) would improperly place the resolution of claim construction disputes—which is the
`exclusive purview of the Court—in the hands of the jury. This, the Court should not do.
`When the full intrinsic record is examined, it is clear that Apple’s proposed claim
`constructions should be adopted. Fintiv’s Opening Brief failed to acknowledge—let alone
`consider—the four provisional applications which are incorporated by reference into the
`specification of the asserted patent (U.S. Pat. No. 8,843,125 (the “’125 patent”)). As set forth in
`Apple’s Opening Claim Construction Brief (“Apple Opening Br.”) (D.I. 71) and herein, the
`Court should adopt Apple’s proposed constructions which are commensurate with the scope of
`the alleged invention as set forth in the claims and throughout the entirety of the specification’s
`written description.
`
`I. CLAIM CONSTRUCTION IS NECESSARY
`Claim construction is a critical part of nearly every patent infringement case, and this
`case is no exception. Claim construction is necessary here for two primary reasons: (1) to
`resolve the parties’ disputes regarding the scope of the claims; and (2) to reduce the likelihood of
`jury confusion about the meaning of the technical terminology of the claims. Fintiv’s proposal
`of “plain and ordinary meaning” for all of the disputed terms is tantamount to no proposal at all,
`and if adopted by the Court, the parties’ clear disputes regarding scope will not be resolved. The
`Federal Circuit has said failing to resolve a clear dispute as to claim scope by adopting “plain
`and ordinary meaning” is legal error. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
`
`1 The claim scope disputes are apparent by comparing Apple’s constructions with Fintiv’s
`alternative constructions. See Supplemental Declaration of Travis Jensen in Support of Apple’s
`Responsive Claim Construction Brief (“Jensen Supp. Dec.”), Ex. 21 (side-by-side comparison of
`competing constructions).
`
`1
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`Apple Ex. 1018, p. 6
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 7 of 35
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`F.3d 1351, 1361 (Fed. Cir. 2008). Therefore, a construction of each proposed claim term is
`necessary, as outlined below.
`
`A. The Court Should Construe the Claim Terms to Resolve the Parties’ Disputes
`As in the overwhelming majority of patent cases, the parties here dispute the scope of the
`asserted claims. Apple proposed seven claim terms for construction: (1) “wallet management
`applet (WMA),” (2) “widget,” (3) “mobile wallet application,” (4) “SE information,” (5) “mobile
`device information,” (6) “over-the-air (OTA) proxy,” and (7) “provision[ing].” With the sole
`exception of the term “provision[ing],”2 the parties’ dispute what each of these claim terms
`means in the context of the ’125 patent. The parties’ divergent views regarding the scope and
`meaning of these claim terms are apparent from the opening claim construction briefs and by
`comparing the parties’ proposed constructions. See Jensen Supp. Dec., Ex. 21 (side-by-side
`comparison of competing constructions).
`While the specific disputes regarding each term are discussed in further detail in their
`respective sections below, the claim term “wallet management applet (WMA)” provides an
`example of the type of disputes that exist between the parties. Among other things, Apple
`contends that a WMA must store a duplicate copy of a user’s account information. Fintiv
`contends that “the specification does not require, as Apple’s construction proposes, that the
`‘wallet management applet’ store duplicate account specific information.” Fintiv Opening Br. at
`9. This is a clear dispute as to the scope of the term “WMA,” which must be resolved by the
`Court. O2 Micro, 521 F.3d at 1361; see also Cobalt Boats, LLC v. Brunswick Corp., 773 F.
`App’x 611, 614 (Fed. Cir. 2019) (unpublished).
`
`2 Apple has offered to stipulate to Fintiv’s alternative construction so there is no dispute about
`the meaning of the term “provision[ing].” Fintiv has refused Apple’s offer, insisting that the
`term should not be construed. Thus, the only dispute is whether the term should be construed at
`all. Apple believes construction is necessary because of the technical context in which the term
`appears. See infra section III.G.
`
`2
`
`Apple Ex. 1018, p. 7
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 8 of 35
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`Fintiv, however, incorrectly argues that no claim terms should be construed. Fintiv
`Opening Br. at 1 (“Fintiv does not believe that any terms of the ’125 Patent require
`construction.”). The only reason Fintiv gives for not construing the terms is its own bald
`assertion that each disputed term has a plain and ordinary meaning to a person of ordinary skill
`in the art (“POSITA”). See id. at 5, 10, 11, 13, 14, 15 and 17.3 But that argument was squarely
`rejected in O2 Micro where the Federal Circuit explained that “[a] determination that a claim
`term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a
`term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning
`does not resolve the parties’ dispute.” 521 F.3d at 1361. The parties in O2 Micro agreed that the
`term “only if” had a plain and ordinary meaning but disputed what that meaning was. Id. The
`district court declined to construe the term, reasoning that it “has a well-understood definition,
`capable of application by both the jury and this court in considering the evidence submitted in
`support of an infringement or invalidity.” Id. But the Federal Circuit held that was error because
`doing so “[did] not resolve the parties’ dispute, and claim construction requires the court to
`determine what claim scope is appropriate in the context of the patents-in-suit.” Id.
`Such is the case here. Merely stating that the claim terms “widget,” “mobile wallet
`application,” “SE information,” and “mobile device information” have their “ordinary meaning”
`would not resolve the parties’ disputes because each party contends its construction is the plain
`and ordinary meaning the term would have to a POSITA. O2 Micro applies a fortiori to the
`terms “wallet management applet (WMA)” and “over-the-air (OTA) proxy” which Apple
`
`3 If making such an assertion was all that was required for a party to avoid claim construction,
`claim construction would rarely take place in any case. But that is not the law. Indeed, Fintiv
`admits as much when it recognizes that “‘[c]laim construction is a matter of resolution of
`disputed meanings and technical scope, to clarify and when necessary to explain what the
`patentee covered by the claims, for use in the determination of infringement.’” Fintiv Opening
`Br. at 4 (emphasis added) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
`Cir. 1997)). Fintiv proposes an alternative construction for each term which it contends is the
`plain and ordinary meaning. See Jensen Supp. Dec., Ex. 21 (side-by-side comparison of
`competing constructions). Fintiv’s constructions help crystallize the disputes between the parties
`and, in doing so, undermine its argument that no construction is needed.
`
`3
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`Apple Ex. 1018, p. 8
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`IPR2020-00019
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`contends were coined terms without a plain and ordinary meaning. Thus, claim construction is
`necessary for all of the disputed terms to resolve the parties’ disagreement over claim scope.
`Ignoring the well-known O2 Micro line of cases, Fintiv cites two other Federal Circuit
`cases to support its position that no construction is necessary, U.S. Surgical and Finjan, both of
`which are clearly distinguishable. See, e.g., Fintiv Opening Br. at 4-5.
`First, Fintiv cites U.S. Surgical for the proposition that a “district court properly refused
`to adopt [a] claim construction that amounted to an ‘undisputed restatement of what these words
`mean.’” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
`The issue on appeal was whether a new trial should be granted where the district court did not
`read to the jury an undisputed claim construction and the jury returned a verdict of obviousness.
`U.S. Surgical, 103 F.3d at 1566. The Federal Circuit held that no new trial was warranted
`because reading the undisputed construction would not have affected the obviousness
`determination. Id. at 1570 (“U.S. Surgical does not explain how any reasonable claim
`construction that it requested would have deprived the verdict of obviousness of its support”). In
`reaching this conclusion, the Court took pains to explain there was no actual claim construction
`dispute. Id. at 1567 (“This information from the specification resolved no dispute, for there was
`none.”);4 id. (“This text, again, repeated the function in the same words as in the claim, and
`repeated the undisputed description in the specification”).
`By contrast, in this case, there are clear disputes as to the proper scope of the disputed
`terms (except for “provision[ing]”), all of which are likely to bear on issues of noninfringement
`and invalidity. Among other things, Fintiv disputes that a “wallet management applet” must
`store duplicate account information, that a “widget” must be a software application, that a
`“mobile wallet application” must be capable of being independently downloaded and installed,
`that “mobile device information” refers only to hardware or software properties relating to the
`mobile device, and that an OTA proxy must be a software application.
`
`4 All emphasis is added unless otherwise noted.
`
`4
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`Apple Ex. 1018, p. 9
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 10 of 35
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`The second Federal Circuit case Fintiv cites is Finjan, Inc. v. Secure Computing Corp.,
`626 F.3d 1197 (Fed. Cir. 2010). Fintiv relies on Finjan for the proposition that a district court
`“did not err in construing [a] claim phrase according to its plain meaning because the court
`resolved the parties’ dispute.” Fintiv Opening Br. at 5 (citing Finjan, 626 F.3d at 1207). As in
`U.S. Surgical, the Federal Circuit observed that “even on appeal, Defendants do not propose an
`alternative construction of [the claim term] or explain how a different definition would negate
`infringement of the [asserted] patent.” Finjan, 626 F.3d at 1207. In contrast, as noted above,
`Apple has proposed constructions that are likely to bear on issues of noninfringement and
`invalidity in this case. Moreover, in Finjan, the Federal Circuit affirmed the verdict without
`vacating the claim construction because the district court had resolved the parties’ underlying
`dispute when it “rejected Defendants’ construction, which required an IP address.” Id. Here, in
`contrast, merely stating that the claim terms at issue have their “plain and ordinary meaning” will
`not resolve the parties’ disputes and the district court should construe the disputed terms.
`
`B. The Court Should Construe the Claim Terms Because They Are Technical in
`Nature and Potentially Confusing to the Jury
`Claim construction is appropriate here for the additional reason that the disputed terms
`are technical in nature and construing them would assist the jury. Fintiv did not dispute that the
`majority of the disputed terms were technical. Nor did Fintiv contend that lay jurors are likely to
`be familiar with terms like “wallet management applet (WMA)” or “over-the-air (OTA) proxy.”
`Rather, Fintiv contends that the terms are “comprehensible to one of ordinary skill in the art
`based on the teaching of the claims and specification.” See, e.g., Fintiv Opening Br. at 7. But
`even if that were true, the jurors are unlikely to qualify as persons of ordinary skill in the art, and
`in all likelihood will find the disputed claims terms confusing without construction by the Court.
`See Turnbull Dec., ¶¶67, 80, 90, 99, 103, 1085; see also Whirlpool Corp. v. TST Water, LLC, No.
`
`5 Though Apple’s constructions should prevail based on the arguments and evidence presented in
`its opening claim construction brief, Apple nevertheless provides expert testimony of Dr. Don
`Turnbull, an expert in the area of mobile device software, to further assist the Court in
`
`5
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`Apple Ex. 1018, p. 10
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 11 of 35
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`2:15-cv-1528-JRG, 2016 WL 3959811, at *11 (E.D. Tex. July 22, 2016) (“[t]hese disputed terms
`are technical terms and are potentially confusing, so [t]he Court believes that some construction
`of the disputed claim language will assist the jury to understand the claims”) (internal quotation
`omitted).
`
`II. FINTIV IMPROPERLY IGNORES THE PROVISIONAL APPLICATIONS THAT
`ARE PART OF THE ’125 SPECIFICATION
`Fintiv universally ignores the disclosure of four patent applications incorporated by
`reference in the ’125 patent which inform the meaning of the disputed claim terms and support
`Apple’s constructions. As explained in Apple’s Opening Brief, the ’125 patent incorporates by
`reference four provisional applications filed on December 30, 2010 and claims priority to the
`same date.6 See Apple Opening Br. at 1-2 (citing ’125 patent, 1:8-20). Each of the four
`provisional applications emphasizes a different aspect of the wallet management system, and two
`of the four provisional applications include documents describing a commercial wallet
`management system being developed by SK C&C, the original assignee of the ’125 patent.
`It is black letter law that material incorporated by reference in a patent document “is
`effectively part of the host document as if it were explicitly contained therein.” Cook Biotech,
`Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir. 2006). As such, provisional applications are as
`relevant to the claim construction analysis as the face of the specification itself. See, e.g.,
`Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1365-66
`(Fed. Cir. 2016) (relying on disclosure in provisional application incorporated by reference for
`construction of “byte sequence feature” that requires “machine code instructions.”); see also
`
`understanding the technology at issue, the asserted claims, and how a POSITA would understand
`the disputed claim terms as used in the ’125 patent. See Declaration of Dr. Don Turnbull in
`Support of Apple’s Proposed Claim Constructions (“Turnbull Dec.”), filed concurrently
`herewith.
`6 The four provisional applications are Nos. 61/428,846 (“’846 provisional”); 61/428,851 (“’851
`provisional”); 61/428,852 (“’852 provisional”); and 61/428,853 (“’853 provisional”). The ’846,
`’851, ’852, and ’853 provisional applications are attached to the Jensen Dec. as Exs. 2 (D.I. 71-
`3), 3 (D.I. 71-4), 4 (D.I. 71-5) and 5 (D.I. 71-6), respectively. The ’125 patent is attached to the
`Jensen Dec. as Ex. 1 (D.I. 71-2).
`
`6
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`Apple Ex. 1018, p. 11
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 12 of 35
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`Cook Biotech, 460 F.3d at 1375-77 (construing claim term based on earlier filed patent that was
`incorporated by reference).
`And yet, Fintiv’s Opening Brief did not attach, quote from, cite to, reference, or even
`acknowledge the existence of the four provisional applications. Fintiv’s complete failure to take
`into account the disclosures of the provisional applications is a wholesale failure to consider the
`vast majority of the ’125 patent specification itself and the Court should be skeptical of Fintiv’s
`proposed constructions since they are based on an incomplete record. See MarcTec, LLC v.
`Johnson & Johnson, 664 F.3d 907, 920 (Fed. Cir. 2012) (improper to “ignore[] language in the
`specification and statements made during prosecution” when advancing “plain meaning”).
`Fintiv’s failure to consider the provisional applications manifests itself in each of Fintiv’s
`proposed constructions, which do not align with the full disclosure of the specification.7 As one
`example, the ’846 provisional application states that the wallet management applet (WMA) “is
`unique” because it stores a copy of the user’s account information “within the mobile device’s
`[secure element] separate from the contactless card applets.” ‘846, ¶42. Fintiv’s construction
`ignores this—and other—critical disclosure about the WMA. When all of the intrinsic evidence
`is considered, it is clear that Apple’s construction for WMA (and all other terms) should prevail.
`
`7 Notwithstanding that Fintiv failed to produce any of the four provisional applications that are
`incorporated by reference in the ’125 patent as required by the Agreed Scheduling Order
`Subsequent to Case Management Conference (D.I. 38) in this case, Fintiv nevertheless claimed
`priority to the December 30, 2010 filing date of the provisional applications for every asserted
`claim. See Jensen Supp. Dec., Ex. 22 (Fintiv’s Initial Disclosure of Asserted Claims, Accused
`Instrumentalities, and Infringement Contentions) at 4. It is disingenuous to seek the benefit of
`the provisional applications for priority date purposes (presumably because Fintiv believes they
`contain written description support for the asserted claims), but to entirely ignore the very same
`disclosure for purposes of claim construction. When the entirety of the intrinsic record is
`considered, Apple’s constructions prevail.
`
`7
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`Apple Ex. 1018, p. 12
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`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 13 of 35
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`III. CLAIM CONSTRUCTIONS
`
`A.
`
`“Wallet Management Applet (WMA)” (claims 11 and 138)
`
`Apple’s Proposed Construction
`“software application for storing duplicate
`account specific information accessible to
`the mobile wallet application”
`
`Fintiv’s Proposed Construction
`Plain and ordinary meaning. To the extent the
`Court requires construction the plain and ordinary
`meaning is “integrated functionality that enables
`management of a wallet related applet.”
`
`1. WMA Is a Coined Term That Requires Construction
`The term “wallet management applet (WMA)” should be construed because it is a coined
`term with no plain and ordinary meaning to a POSITA outside the context of the asserted patent,
`and the construction mandated by the intrinsic evidence, as Apple proposed, is “software
`application for storing duplicate account specific information accessible to the mobile wallet
`application.” See Apple Opening Br. at 10-11 (explaining and citing evidence that WMA is a
`coined term); id. at 11-14 (collecting intrinsic evidence supporting Apple’s construction);
`Turnbull Dec., ¶¶67-73 (WMA had no plain and ordinary meaning to a POSITA circa 2010 and
`POSITA would not even know what acronym WMA stood for); Iridescent Networks, Inc. v.
`AT&T Mobility, LLC, 933 F.3d 1345, 1351 (Fed. Cir. 2019) (coined term is one which “has no
`ordinary meaning in the industry”).
`Fintiv contends that the term “wallet management applet (WMA)” does not require
`construction, Fintiv Opening Br. at 5, and “should be given its plain and ordinary meaning,” id.
`at 7. Fintiv reasons that no construction is necessary “because one of ordinary skill in the art
`would have reasonable certainty about the meaning and scope of the term from its context in the
`claims and specification.” Fintiv Opening Br. at 5; see also id. at 7 (WMA “would be readily
`comprehensible to one of ordinary skill in the art based on the teaching of the claims and
`
`8 In its Opening Brief, Fintiv states it “is asserting claims 11, 14, 16, 18 and 23.” But Fintiv
`confirmed thereafter in an email to Apple’s counsel that the actual asserted claims are 11, 13, 14,
`16, 17, 18, 20, 21, 22, 23, 24, and 25, as listed in Fintiv’s Preliminary Infringement Contentions
`served on May 20, 2019. Jensen Supp. Dec., Ex. 22 at 1.
`
`8
`
`Apple Ex. 1018, p. 13
` Apple v. Fintiv
`IPR2020-00019
`
`

`

`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 14 of 35
`
`specification”).9 At most, this amounts to a recitation of the well-known and uncontroversial
`claim construction standard that claims should be construed from the perspective of a POSITA
`and in the context of the intrinsic evidence.10 But merely because a POSITA would understand a
`newly-coined term does not mean that a lay jury would understand it or that the term has a plain
`and ordinary meaning, nor does it mean construction is unnecessary where the parties disagree
`on how a POSITA would understand the term. To the contrary, it is precisely because the parties
`dispute how a POSITA would understand the term as used in the patent—regardless of whether
`it is considered a coined term or not—that construction is necessary. O2 Micro, 521 F.3d at
`1361 (construction necessary when “‘ordinary’ meaning does not resolve the parties’ dispute”).
`
`2. The Court Should Adopt Apple’s Proposed Construction
`Once the Court determines that a construction is in fact needed, Apple’s proposal should
`prevail. In fact, Fintiv’s introductory description of WMA supports Apple’s proposed
`construction. That introduction cites the ’125 patent for the proposition that the WMA stores
`“account specific information of the contactless card apple[t] (e.g. credit card number, expiration
`date, security code, PIN, etc.)” to enable the user to “view and manage the information stored in
`the WMA 21 applet through the corresponding widget.” Fintiv Opening Br. at 6 (quoting ’125
`patent, 8:60-9:5). This supports Apple’s construction in two ways: (1) it says the WMA stores a
`copy of the “account specific information,” just as Apple’s construction requires; and (2) it says
`the duplicate account information in the WMA enables the user to view the account information
`which is reflected in Apple’s construction requiring that the “information [is] accessible to the
`mobile wallet application” where the widget is located.
`
`9 Both parties agree that WMA is “readily comprehensible” to a POSITA who has studied the
`intrinsic evidence, they simply disagree on how a POSITA would understand the term.
`10 Apple agrees with this standard—indeed, this standard is what compels Apple’s construction.
`Unlike Fintiv, who ignores the majority of the intrinsic evidence and whose proposed
`construction is treated as an afterthought in its own brief, Apple’s proposed construction is
`driven by the intrinsic evidence itself as it would be understood by a POSITA. See Apple
`Opening Br. at 11-14; Turnbull Dec., ¶¶74-79.
`
`9
`
`Apple Ex. 1018, p. 14
` Apple v. Fintiv
`IPR2020-00019
`
`

`

`Case 6:18-cv-00372-ADA Document 74 Filed 10/03/19 Page 15 of 35
`
`Rather than argue in favor of its own construction, Fintiv focuses entirely on rebutting
`Apple’s proposed construction. Specifically, Fintiv argues: (1) that construing WMA to be a
`software application “improperly attempts to read specific examples into the claim language,”
`Fintiv Opening Br. at 7; and (2) that “Apple also improperly asks this Court to read limitations
`into the claim by requiring that the ‘wallet management applet (WMA)’ store duplicate account
`specific information,” Fintiv Opening Br. at 8. Both of Fintiv’s arguments are based on the
`faulty premise that there must be “lexicography or disclaimer” for Apple to prevail. Fintiv
`Opening Br. at 7. In other words, according to Fintiv, unless the patentee acted as its own
`lexicographer by explicitly redefining a claim term with a special definition different from its
`ordinary meaning or expressly relinquished claim scope in the specification or file history, a
`claim term cannot be construed commensurate with the disclosed embodiments.
`But, as Apple explained in its Openin