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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`GOOGLE LLC.,
`Petitioner
`
`v.
`
`RFCyber Corp.
`
`U.S. Patent No. 9,189,787
`
`IPR2021-00955
`
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`1
`
`

`

`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 8
`
`
`
`I.
`
`II. MANDATORY NOTICES ............................................................................. 8
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ........................................................................... 8
`
`Related Matters ..................................................................................... 9
`
`Lead and Back-up Counsel and Service Information .......................... 9
`
`III. GROUNDS FOR STANDING ......................................................................10
`
`IV. BACKGROUND OF NFC MOBILE DEVICES AND SMART CARDS ...10
`
`V.
`
`THE ’787 PATENT .......................................................................................11
`
`A.
`
`B.
`
`Summary of the ’787 Patent ............................................................... 11
`
`Prosecution History of the ’787 Patent .............................................. 14
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................15
`
`VII. CLAIM CONSTRUCTION ..........................................................................16
`
`A.
`
`“emulator” .......................................................................................... 16
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................17
`
`IX.
`
`IDENTIFICATION OF GROUNDS .............................................................17
`
`X.
`
`THE BOARD SHOULD INSTITUTE INTER PARTES REVIEW ............17
`
`A.
`
`The challenges presented in this petition are not cumulative to
`prosecution of the ’787 Patent ............................................................ 17
`
`B.
`
`The Fintiv factors favor institution .................................................... 18
`
`1.
`
`Factor 1 is neutral (Possibility of a Stay). ................................ 18
`
`2
`
`

`

`
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Factor 2 is neutral (proximity of trial date to final
`written decision). ...................................................................... 19
`
`Factor 3 favors institution (investment in parallel
`proceeding). .............................................................................. 20
`
`Factor 4 favors institution (overlap in issues). ......................... 21
`
`Factor 5 is neutral (overlap in parties). .................................... 22
`
`Factor 6 favors institution (other circumstances). ................... 22
`
`XI.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....23
`
`A. Ground 1: Claims 1, 2, 4-12, and 14-19 are obvious over Staib in
`view of Chan. ..................................................................................... 23
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Summary of Staib..................................................................... 23
`
`Summary of Chan .................................................................... 25
`
`Reasons to Combine Staib and Chan ....................................... 29
`
`Claim 1 ..................................................................................... 34
`
`Claim 2 ..................................................................................... 53
`
`Claim 4 ..................................................................................... 55
`
`Claim 5 ..................................................................................... 56
`
`Claim 6 ..................................................................................... 59
`
`Claim 7 ..................................................................................... 65
`
`10. Claim 8 ..................................................................................... 67
`
`11. Claim 9 ..................................................................................... 67
`
`12. Claim 10 ................................................................................... 68
`
`3
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`13. Claim 11 ................................................................................... 69
`
`14. Claim 12 ................................................................................... 70
`
`15. Claim 14 ................................................................................... 71
`
`16. Claim 15 ................................................................................... 71
`
`17. Claim 16 ................................................................................... 71
`
`18. Claim 17 ................................................................................... 72
`
`19. Claim 18 ................................................................................... 72
`
`20. Claim 19 ................................................................................... 72
`
`XII. CONCLUSION ..............................................................................................73
`
`CERTIFICATE OF WORD COUNT ......................................................................74
`
`CERTIFICATE OF SERVICE ................................................................................75
`
`
`
`
`
`
`4
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`

`

`
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`Petitioner’s Exhibit List
`
`GOOG-1001 U.S. Patent No. 8,118,218
`GOOG-1002 Prosecution History of U.S. Patent No. 8,118,218
`
`GOOG-1003 Declaration of Stephen Gray under 37 C.F.R. § 1.68
`
`GOOG-1004 Curriculum Vitae of Stephen Gray
`GOOG-1005 U.S. Patent Pub. No. 2005/0222961 by Staib et al. (“Staib”)
`
`GOOG-1006 U.S. Patent No. 7,628,322 to Holtmanns et al. (“Holtmanns”)
`
`GOOG-1007 U.S. Patent No. 6,481,632 to Wentker et al. (“Wentker”)
`GOOG-1008 U.S. Patent No. 6,005,942 to Chan et al. (“Chan”)
`
`GOOG-1009 U.S. Patent No. 7,699,233 to Pesonen (“Pesonen”)
`
`GOOG-1010 U.S. Patent No. 6,367,011 to Lee et al. (“Lee”)
`GOOG-1011 Wolfgang Rankl & Wolfgang Effing, Smart Card Handbook
`(Kenneth Cox trans., John Wiley & Sons Ltd., 3d ed. 2002)
`(“Smart Card Handbook”)
`GOOG-1012 Complaint for Patent Infringement, RFCyber Corp. v. Google
`LLC et al., 2:20-cv-00274 (E.D. Tex. Aug. 21, 2020)
`GOOG-1013 Affidavits of Service in RFCyber Corp. v. Google LLC et al.,
`2:20-cv-00274 (E.D. Tex.)
`GOOG-1014 Sample Docket Control Order
`GOOG-1015 Email from RFCyber’s attorney requesting an extension of the due
`date for infringement contentions
`GOOG-1016 Motion for extension of deadlines filed in the district court case on
`April 27, 2021
`Junko Yoshida, “Chip Makers Still Uncertain of Plunge into
`NFC,” Electronic Engineering Times 6 (Nov. 15, 2004)
`GOOG-1018 Philips Semiconductors, Functional Specification: Standard Card
`
`GOOG-1017
`
`5
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`

`

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`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`IC MF1 IC S70, Revision 3.1 (Oct. 2002) (describing MIFARE
`1K smart card)
`GOOG-1019 Eric Longo & Jeff Stapleton, PKI Note: Smart Cards, PKI Forum
`Newsletter, Apr. 6, 2002
`GOOG-1020 Marijke Sas, “Mifare in Action,” Card Technology Today, Mar.
`2003, p. 10
`GOOG-1021 U.S. Patent No. 7,350,717 to Conner et al. (“Conner”)
`GOOG-1022 Philips Semiconductor, SmartMX: P5CD036: Secure Dual
`Interface PKI Smart Card Controller Revision 1.1, Aug. 27, 2004
`GOOG-1023 Press Release, GlobalPlatform Leads the Way to Cross-Industry
`Standardization with Open Platform Version 2.1 (May 16, 2001),
`at https://globalplatform.org/latest-news/globalplatform-leads-the-
`way-to-cross-industry-standardization-with-open-platform-
`version-2-1/ (last visited Mar. 24, 2021) (“Press Release,
`GlobalPlatform”)
`GOOG-1024 GlobalPlatform, Card Specification Version 2.1.1 (Mar. 2003)
`GOOG-1025 GlobalPlatform, Guide to Common Personalization Version 1.0
`(Mar. 2003)
`GOOG-1026 Smart Card Alliance, Near Field Communication (NFC) and
`Transit: Applications, Technology and Implementation
`Considerations (Feb. 2012) (“Smart Card Alliance”)
`GOOG-1027 GlobalPlatform, Concise Guide to Worldwide Implementations of
`GlobalPlatform Technology (Feb. 4, 2006) (“GlobalPlatform
`Implementation Overview”)
`GOOG-1028 Yukari Iwatani Kane, “DoCoMo Launches Phones that Could
`Replace Wallets,” Reuters (June 16, 2004)
`GOOG-1029 Yukari Iwatani Kane, “DoCoMo Mobile Phones to Double as
`Train Pass,” Reuters (Feb. 22, 2005)
`GOOG-1030 “JR East to Expand Functions of Mobile Suica Service,” Japan
`Econ. Newswire Plus (Sept. 5, 2006)
`GOOG-1031 Press Release, PR Newswire Europe, Nokia Ventures
`
`6
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`Organization, Nokia Announces the World's First NFC Enabled
`Mobile Product for Contactless Payment and Ticketing (Feb. 9,
`2005)
`GOOG-1032 Ummear Ahmad Khan, Contactless Payment with Near Field
`Communication: An Empirical Study in Ubiquitous Computing
`Context (May 2, 2006) (Master thesis, University of OSLO, Dept.
`of Informatics)
`GOOG-1033 Press Release, Business Wire, Royal Philips Electronics,
`Technology Simplifies Travel for Consumers (Apr. 19, 2006)
`
`
`
`
`
`
`7
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`

`

`
`I.
`
`INTRODUCTION
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Google LLC
`
`(“Google”) respectfully requests that the Board review and cancel as unpatentable
`
`under (pre-AIA) 35 U.S.C. §103(a) claims 1, 2, 4-12, and 14-19 (hereinafter, the
`
`“Challenged Claims”) of U.S. Patent No. 9,189,787 (the “’787 Patent,” GOOG-
`
`1001).
`
`The ’787 Patent describes “a mobile device for conducting a transaction over
`
`a network” including “techniques for personalizing a secure element and
`
`provisioning an application such as an electronic purse.” GOOG-1001, 1:20-21,
`
`3:61-62. As shown below and confirmed in the Declaration of Dr. Stephen Gray
`
`(GOOG-1003), the Challenged Claims would have been obvious to a POSITA at
`
`the time of alleged invention, in light of the prior art. The references presented in
`
`this Petition teach and render obvious the Challenged Claims.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`The real parties-in-interest are Google LLC1 and Google Payment Corp.
`
`
`1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties in interest
`
`to this proceeding.
`
`8
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`
`
`B. Related Matters
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), to the best knowledge of the Petitioner,
`
`the ’787 Patent is involved in the following cases:
`
`Case Heading
`
`Number
`
`Court
`
`Filed
`
`RFCyber Corp. v. Google LLC et al.
`
`2:20-cv-00274 EDTX Aug. 21, 2020
`
`RFCyber Corp. v. LG Electronics, Inc. 2:20-cv-00336 EDTX Oct. 16, 2020
`
`RFCyber Corp. v. Samsung
`Electronics Co., Ltd. et al.
`
`
`2:20-cv-00335 EDTX Oct. 16, 2020
`
`The parties are also involved in the following cases related to patents in the
`
`same family as the ’787 Patent:
`
`Case Heading
`Google LLC v. RFCyber Corp.
`
`Number
`IPR2021-00028
`
`Google LLC v. RFCyber Corp.
`
`IPR2021-00029
`
`Court
`PTAB
`
`PTAB
`
`Filed
`Dec. 23, 2020
`
`Dec. 23, 2020
`
`Google LLC v. RFCyber Corp.
`
`IPR2021-00954
`
`PTAB May 19, 2021
`
`Google LLC v. RFCyber Corp.
`
`IPR2021-00956
`
`PTAB May 19, 2021
`
`Google LLC v. RFCyber Corp.
`
`
`IPR2021-00957
`
`PTAB May 19, 2021
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`
`9
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`

`

`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`USPTO Reg. No. 50,271
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`
`
`Dallas, TX 75219
`
`Back-up Counsel
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Vinu Raj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`Phone: (713) 547-2060
`Fax: (214) 200-0853
`vinu.raj.irp@haynesboone.com
`USPTO Reg. No. 59,327
`
`Please address all correspondence in this proceeding to lead and back-up
`
`counsel. Petitioner consents to service in this proceeding by email at the addresses
`
`above.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’787 Patent is eligible for IPR and Petitioner is
`
`not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`IV. BACKGROUND OF MOBILE DEVICES AND SMART CARDS
`
`To assist the Board’s technical understanding, an overview regarding smart
`
`cards technology in mobile devices for conducting secure transactions is provided
`
`in GOOG-1003, Section V submitted herewith.
`
`10
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`

`
`V. THE ’787 PATENT2
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`A.
`
`Summary of the ’787 Patent
`
`The ’787 Patent describes “portable devices, functioning as an electronic
`
`purse (e-purse) to be able to conduct transactions over an open network with a
`
`payment server without compromising security.” GOOG-1001, 2:54-56. The main
`
`embodiment includes a portable device, such as a cell phone 202, a payment
`
`network and servers 210, and a security authentication module (SAM) 212 as
`
`shown in Fig. 2 below. GOOG-1001, 5:16-32. The portable device includes (1) a
`
`“midlet,” such as purse manager midlet 204, (2) an “e-purse applet” 206, (3) an
`
`“emulator” 208, and (4) a “smart card module.” GOOG-1001, 5:6-22.
`
`
`2 Unless otherwise specified, all emphasis below has been added.
`
`11
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`

`
`
`payment network
`and servers
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`SAM module
`
`portable device
`
`midlet
`
`emulator
`
`e-purse applet
`GOOG-1003, ¶68; GOOG-1001, Fig. 2 (annotated)
`
`
`
`1.
`
`Portable Device
`
`The ’787 Patent describes the portable device as a “cellphone” that is “near
`
`field communication (NFC) enabled.” GOOG-1001, 5:4-6. The cellphone is
`
`equipped with an “RFID interface.” GOOG-1001, 5:8-9. Further, the cellphone can
`
`communicate (via the midlet) “over a wireless network.” GOOG-1001, 7:41-44.
`
`2. Midlet
`
`The ’787 Patent describes the “midlet” as a “software component suitable
`
`for being executed on a portable device.” The role of the midlet is to facilitate
`
`communications between the e-purse applet, the payment network servers, and the
`
`12
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`

`
`emulator to conduct a transaction. GOOG-1001, 5:10-27.
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`3.
`
`E-Purse Applet
`
`The “e-purse applet(s) acts as a gatekeeper to regulate or control the data
`
`exchange.” GOOG-1001, 4:55-57. The e-purse applet communicates with the
`
`midlet in order to process transactions with payment network servers. GOOG-
`
`1001, 7:41-46.
`
`4.
`
`Emulator
`
`The ’787 Patent describes that “physical security is realized in an emulator.”
`
`GOOG-1001, 4:46-47. The emulator is described as “a hardware device or a
`
`program that pretends to be another particular device or program that other
`
`components expect to interact with.” GOOG-1001, 4:47-50.
`
`5.
`
`Smart Card Module
`
`The portable device, i.e. cell phone, contains a smart card module. The smart
`
`card “may be hardware implemented or software emulated running on a type of
`
`media.” GOOG-1001, 3:63-64. The smart card is pre-loaded with the emulator for
`
`storing monetary values. GOOG-1001, 5:6-8. The smart card is also preloaded
`
`with a “general security framework” that “provides a platform for PIN
`
`management and security channels (security domains).” GOOG-1001, 4:19-22.
`
`A card manager uses a “security channel, via a security domain, to install
`
`and personalize” the e-purse applet in the smart card module. GOOG-1001, 6:14-
`
`13
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`

`
`21. “With the security channel” established, the e-purse applet can be personalized.
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`GOOG-1001, 6:66-7:1.
`
`“A second security channel is then established” between a security
`
`authentication module (“SAM”) and the e-purse applet. A set of keys is generated
`
`and stored in the emulator for subsequent data access authentication. GOOG-1001,
`
`7:10-16.
`
`B.
`
`Prosecution History of the ’787 Patent
`
`The ’787 Patent issued on November 17, 2015, from U.S. Patent Application
`
`No. 13/903,420 (“the ’420 application”) filed on May 28, 2013, and claims priority
`
`through a string of continuations to September 24, 2006. See GOOG-1001.
`
`During prosecution, the Examiner issued a single office action rejecting the
`
`as-filed claims over various prior art references, including Staib. See GOOG-1002,
`
`pp.79-88. In response, the applicants amended almost all of the as-filed claims,
`
`making substantial edits to overcome the Examiner’s obviousness rejections. Id.,
`
`pp. 63-73.
`
`The Examiner issued a notice of allowance without providing any analysis in
`
`view of Staib based on the following amendments to the independent claims:
`
`• “wherein both of the emulator and e-purse applet are already
`
`personalized via a personalization process built on a first security channel
`
`so that the emulator is set to store a set of keys for subsequent data access
`
`14
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`

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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`authentication and the e-purse applet is configured to conduct a
`
`transaction with a network server over a second security channel;” and
`
`• “a purse manager midlet being executed in the portable device to act as
`
`an agent to facilitate communications between the e-purse applet and a
`
`payment server to conduct transactions therebetween.”
`
`Id., pp. 45-54, 66-71.
`
`
`
`While Staib was applied by the Examiner during prosecution, the Examiner
`
`did not consider Staib combined with Chan as applied against the challenged
`
`claims, including all amendments made during prosecution. Thus, the analysis of
`
`the claims in view of Staib and Chan is not redundant to any arguments previously
`
`considered by the Office.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA on and before September 24, 2006 would have had a working
`
`knowledge of mobile payment techniques pertinent to the ’787 Patent, including
`
`art describing mobile payment techniques. A POSITA would have had a bachelor’s
`
`degree in computer science, computer engineering, or an equivalent, and one year
`
`of professional experience relating to mobile payments. Lack of professional
`
`experience can be remedied by additional education, and vice versa. GOOG-1003,
`
`¶¶16-19.
`
`15
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`

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`VII. CLAIM CONSTRUCTION
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`In an IPR, claims shall be construed “in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). The
`
`Board only construes the claims to the extent necessary to resolve the underlying
`
`controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`
`F.3d 1013, 1017 (Fed. Cir. 2017). All terms, except as discussed below, should
`
`have their plain and ordinary meaning.
`
`A.
`
`“emulator”
`
`This term is accorded a particular use and meaning defined by the
`
`specification of the ’787 Patent:
`
`In reference to FIG. 1A, the physical security is realized in an
`emulator. As used herein, an emulator means a hardware device or
`a program that pretends to be another particular device or program
`that other components expect to interact with.
`
`GOOG-1001, 4:46-50.
`
`Because the specification provides a specific use and meaning for this term,
`
`a POSITA would have understood the term “emulator” in light of the ’787 Patent
`
`to mean “a hardware device or a program providing security that pretends to be
`
`another particular device or program that other components expect to interact
`
`16
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`

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`with.” GOOG-1003, ¶87.
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial and cancel the challenged
`
`claims as unpatentable in view of the analysis below.
`
`IX.
`
`IDENTIFICATION OF GROUNDS
`
`This petition challenges the patentability of the ’787 Patent as follows:
`
`No.
`#1
`
`Ground
`Claims 1, 2, 4-12, and 14-19 are obvious under 35 U.S.C. § 103
`over Staib in view of Chan.
`
`U.S. Publication No. 2005/0222961 to Staib et al. (“Staib” or “GOOG-
`
`1005”) was filed on September 14, 2004, and published on October 6, 2005, and is
`
`prior art under 35 U.S.C. § 102(a) and (e).
`
`U.S. Patent No. 6,005,942 to Chan et al. (“Chan” or “GOOG-1008”) issued
`
`on December 21, 1999, and is prior art under 35 U.S.C. § 102(b).
`
`X. THE BOARD SHOULD INSTITUTE INTER PARTES REVIEW
`
`A. The challenges presented in this petition are not cumulative to
`prosecution of the ’787 Patent
`
`The Board should not deny institution under § 325(d). While Staib was
`
`considered by the Examiner during prosecution, the Examiner did not consider
`
`17
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`

`
`Chan nor the combination of Staib and Chan as to the issued claims. In fact, the
`
`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
`
`face of the ’787 Patent only lists two references, one being Staib. See GOOG-1001.
`
`Under the first part of the Advanced Bionics framework, the Board should not deny
`
`institution. IPR2019-01469, Paper 6 at 8-9 (PTAB Feb. 13, 2020) (precedential).
`
`B.
`
`The Fintiv factors favor institution
`
`The ’787 Patent is asserted against Petitioner in the Eastern District of
`
`Texas. See GOOG-1012; GOOG-1013. In such cases, the Board balances six
`
`factors deciding discretionary denial under § 314(a). Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). These factors
`
`discourage discretionary denial here.
`
`1.
`
`Factor 1 is neutral (Possibility of a Stay).
`
`A stay pending the outcome of this IPR in the co-pending district court
`
`litigation has not been requested. Given that a motion to stay has not yet been filed,
`
`the Board should not infer the outcome of that motion. See Dish Network L.L.C. v.
`
`Broadband iTV, Inc., IPR2020-01359, Paper 15 at 11 (PTAB Feb. 12, 2021) (“It
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`would be improper to speculate … what the Texas court might do regarding a
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`motion to stay,” when a stay had not yet been requested).
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`Without “specific evidence” of how the court would rule on any stay motion,
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`this factor is neutral. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking
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`LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative).
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`Inter Partes Review of U.S. Patent 9,189,787
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`2.
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`Factor 2 is neutral (proximity of trial date to final written
`decision).
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`On May 12, 2021, the district court held a scheduling conference and
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`scheduled trial for March 21, 2022. GOOG-1014, p.1. While the final written
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`decision here would issue approximately nine months after, this period alone does
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`not warrant discretionary denial. See Hulu, LLC v. SITO Mobile R&D IP, LLC,
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`IPR2021-00206, Paper 11 at 10-11 (PTAB May 10, 2021) (trial date scheduled
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`months before the Board issues final written decision weighs only “marginally in
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`favor of exercising [] discretion to deny institution.”).
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`This factor is outweighed by other factors identified below, including delays
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`by Patent Owner at the district court, minimal investment in the court’s trial, and
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`petitioner’s diligence in filing the Petition. See PEAG LLC v. Varta Microbattery
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`GmbH, IPR2020-01214, Paper 8 at 15-18 (PTAB Jan. 6, 2021) (district court trial
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`seven months before final written decision outweighed by minimal investment in
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`district court trial and diligence in filing petition). And, the Federal Circuit
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`cautions of error in “relying too heavily on the scheduled trial date” because
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`“scheduled trial dates are often subject to change.” In re Apple Inc., 979 F.3d 1332,
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`1344 & n.5 (Fed. Cir. 2020). Given that the time for filing motions challenging
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`venue or requesting stays has not yet expired, many factors may still impact the
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`scheduled trial date.
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`Inter Partes Review of U.S. Patent 9,189,787
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`3.
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`Factor 3 favors institution (investment in parallel
`proceeding).
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`This factor, which focuses on work completed “at the time of the institution
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`decision,” strongly favors institution. Fintiv, IPR2020-00019, Paper 11, 9–10. This
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`factor is not about the total investment by the court and parties, but the investment
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`“in the merits of the invalidity positions.” Sand Revolution, IPR2019-01393, Paper
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`24 at 10 (emphasis added). As of the filing of this Petition, Petitioner cannot
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`speculate as to the extent of the investment in the invalidity positions when the
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`institution decision issues (approximately December 2021).
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`On the current timeline at the district court, fact and expert discovery will
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`have likely closed at the time of institution. However, delays have already
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`occurred to the invalidity discovery. For instance, at Patent Owner’s request, the
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`deadline for serving infringement contentions was delayed until May 12, 2021,
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`resulting in subsequent delays. See GOOG-1015, GOOG-1016. Because Petitioner
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`has only recently received Patent Owner’s infringement contentions, it is
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`continuing to prepare its invalidity contentions for service before July 14, 2021.
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`See GOOG-1016. Petitioner is nevertheless willing to meet and confer with Patent
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`Owner regarding an appropriate stipulation to avoid overlapping positions once its
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`invalidity contentions have been served. See PEAG, IPR2020-01214, Paper 8 at 17
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`(minimal investment in the invalidity positions in the Petition weighs against
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`discretionary denial).
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`Moreover, the parties have not filed dispositive motions on obviousness
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`issues, and as such, there will be no district court orders related that overlap issues
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`here. GOOG-1014, pp.2-3. Thus, when the Board issues its institution decision,
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`there will not have been any dispositive orders related to the validity of the patent.
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`See Verizon Bus. Network Servs. Inc. v. Huawei Techs. Co. Ltd., IPR2020-01080,
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`Paper 11 at 13-14 (Jan. 14, 2021) (finding “minimal” investment when parties had
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`not submitted dispositive briefing on validity issues); Fintiv, IPR2020-00019,
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`Paper 11 at 10 (“If, at the time of the institution decision, the district court has not
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`issued orders related to the patent…, this fact weighs against exercising discretion
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`to deny institution.”).
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`Further, Petitioner acted diligently in filing the Petition within a week after
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`being served with preliminary infringement contentions on May 12, 2021.
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`Petitioner’s diligence thus weighs in favor of institution. See, e.g., Hulu, LLC v.
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`SITO Mobile R&D IP, LLP, IPR2021-00206, Paper 11 at 12 (PTAB May 10, 2021)
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`(diligence in filing two months after receiving preliminary infringement
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`contentions favors institution).
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`4.
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`Factor 4 favors institution (overlap in issues).
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`Because invalidity discovery is at an early stage as of the filing of this
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`Petition, Petitioner does not yet know which invalidity positions it will take as the
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`district court. However, as the facts and positions of the parties develop during
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`fact discovery at the district court, Petitioner is willing to meet and confer with
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`Patent Owner regarding an appropriate stipulation to avoid overlapping positions
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`once its invalidity contentions have been served. See PEAG, IPR2020-01214,
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`Paper 8 at 17 (minimal investment weighs against discretionary denial); see also
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`IPR2019-01393, Paper 24 at 12 (petitioner’s stipulation to not pursue the same
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`grounds in district court mitigates “concerns of potentially conflicting decisions.”);
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`see also NanoCellect Biomedical, Inc. v. Cytonome/ST, LLC, IPR2020-00551,
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`Paper 19 at 23 (PTAB Aug. 27, 2020) (petitioner’s stipulation to not pursue the
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`same grounds in district court resulted in “no overlap” between the IPR and district
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`court proceeding).
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`5.
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`Factor 5 is neutral (overlap in parties).
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`Petitioner is a defendant in the litigation. This factor is neutral due to the
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`lack of overlap between this proceeding and the district court litigation.
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`6.
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`Factor 6 favors institution (other circumstances).
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`The grounds of unpatentability presented in the Petition are strong, which
`
`favors institution. See Fintiv, IPR2020-00019, Paper 11 at 14-15 (“[I]f the merits
`
`of a ground raised in the petition seem particularly strong on the preliminary
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`record, this fact has favored institution.”).
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`XI.
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Ground 1: Claims 1, 2, 4-12, and 14-19 are obvious over Staib in
`view of Chan.
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`1.
`
`Summary of Staib
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`Staib relates to an electronic payment system for portable devices that act as
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`smart cards. GOOG-1005, ¶2. Staib specifically describes “facilitating contactless
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`payment transactions across different contactless payment systems using a
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`common mobile device that acts as a stored value device.” Id., Abstract. In Staib,
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`“a mobile application and a communication module allows the mobile device,
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`which is associated with one payment system, to emulate various transmission
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`standards and data exchange formats that are used in different payment systems in
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`order to perform contactless payment transactions with merchants that are
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`associated with different contactless payment systems.” Id.
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`Staib’s mobile device includes a memory unit and an NFC module
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`connected to an external security module (e.g., a Universal Subscriber Identity
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`Module or USIM, which is a type of smart card) with a secured area of memory
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`storing a stored value (i.e., digital cash). Id., ¶38. A mobile application stored in a
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`memory of the mobile device allows the device to function as an electronic purse
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`and perform contactless payment transactions using the stored value. Id., ¶¶ 22, 52.
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`Staib describes using J2ME (Java 2 Micro Edition) MIDP (Mobile Information
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`Device Profile), Versions 1.0 and 2.0 for downloading and executing software
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`IPR2021-00955 Petition
`Inter Partes Review of U.S. Patent 9,189,787
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`applications for communication with and control of the NFC module (including the
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`external security module), where applications may be assigned to specific security
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`domains for controlling access of data, applications, and other network and device
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`resources. Id., ¶¶ 43-44, 51. The NFC module facilitates a contactless payment
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`transaction by enabling a wireless interface between the mobile device and a
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`contactless merchant terminal. Id., ¶¶ 40-41.
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`The service operator “provides the software and information technology
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`requirements of the payment clearing service of all purchase transactions.” Id., ¶47.
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`The mobile device creates a secure Internet connection between the service
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`operator and the secure storage area of the external security module attached to the
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`device’s NFC interface, which allows data and/or applications to be “transferred
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`directly from the secure storage area to the service operator or vice versa as
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`required.” Id., ¶¶43, 51. The service operator communicates with a wallet operator
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`to settle amounts owed to different merchants. Id., ¶¶23, 24. The wallet operator,
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`who may be a part of the service operator or a separate entity, receives money from
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`the user’s bank during the initial load and top up of the stored value in the device
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`and pays the merchants or the wallet operators of different contactless payment
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`systems. Id., ¶47. The wallet operator has a relationship with the bank holding the
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`user’s financial account. Id., ¶48. The wallet operator handles the financial aspects
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`of the contactless payment transactions for the service op