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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`GOOGLE LLC.,
`Petitioner
`
`v.
`
`RFCyber Corp.
`
`U.S. Patent No. 9,240,009
`
`IPR2021-00956
`
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 8
`
`
`
`I.
`
`II. MANDATORY NOTICES ............................................................................. 8
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ........................................................................... 8
`
`Related Matters ..................................................................................... 8
`
`Lead and Back-up Counsel and Service Information .......................... 9
`
`III. GROUNDS FOR STANDING ......................................................................10
`
`IV. BACKGROUND ON SMART CARDS FOR MOBILE DEVICES ............10
`
`V.
`
`THE ’009 PATENT .......................................................................................10
`
`A.
`
`B.
`
`Summary of the ’009 Patent ............................................................... 10
`
`Prosecution History of the ’009 Patent .............................................. 12
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................13
`
`VII. CLAIM CONSTRUCTION ..........................................................................13
`
`A.
`
`B.
`
`“secure element” of “SE” ................................................................... 13
`
`“an interface to receive a secure element” ......................................... 14
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR ...................................15
`
`IX.
`
`IDENTIFICATION OF CHALLENGES ......................................................15
`
`X.
`
`THE BOARD SHOULD INSTITUTE INTER PARTES REVIEW ............16
`
`A.
`
`B.
`
`This petition is not cumulative to the prosecution history ................. 16
`
`The Fintiv factors favor institution .................................................... 16
`
`1.
`
`Factor 1 is neutral (Possibility of a Stay). ................................ 17
`
`2
`
`
`
`
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Factor 2 is neutral (proximity of trial date to final
`written decision). ...................................................................... 17
`
`Factor 3 favors institution (investment in parallel
`proceeding). .............................................................................. 18
`
`Factor 4 favors institution (overlap in issues). ......................... 20
`
`Factor 5 is neutral (overlap in parties). .................................... 21
`
`Factor 6 favors institution (other circumstances). ................... 21
`
`XI.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....21
`
`A. Ground 1: Claims 1-6 and 13-17 are obvious over Staib, Wentker,
`and Holtmanns. ................................................................................... 21
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Summary of Staib..................................................................... 21
`
`Summary of Wentker ............................................................... 22
`
`Summary of Holtmanns ........................................................... 23
`
`Reasons to Combine Staib and Wentker .................................. 23
`
`Reasons to Combine Staib, Wentker, and Holtmanns ............. 26
`
`Claim 1 ..................................................................................... 28
`
`Claim 2 ..................................................................................... 41
`
`Claim 3 ..................................................................................... 42
`
`Claim 4 ..................................................................................... 43
`
`10. Claim 5 ..................................................................................... 45
`
`11. Claim 6 ..................................................................................... 46
`
`12. Claim 13 ................................................................................... 51
`
`3
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`13. Claim 14 ................................................................................... 53
`
`14. Claim 15 ................................................................................... 55
`
`15. Claim 16 ................................................................................... 56
`
`16. Claim 17 ................................................................................... 57
`
`B.
`
`Ground 2: Claims 7-12 are obvious over Staib, Wentker,
`Holtmanns, and Pesonen. ................................................................... 59
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Summary of Pesonen ............................................................... 59
`
`Reasons to combine Staib, Wentker, Holtmanns, and
`Pesonen .................................................................................... 59
`
`Claim 7 ..................................................................................... 61
`
`Claim 8 ..................................................................................... 70
`
`Claim 9 ..................................................................................... 71
`
`Claim 10 ................................................................................... 72
`
`Claim 11 ................................................................................... 74
`
`Claim 12 ................................................................................... 75
`
`XII. CONCLUSION ..............................................................................................76
`
`CERTIFICATE OF WORD COUNT ......................................................................77
`
`CERTIFICATE OF SERVICE ................................................................................78
`
`4
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`
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`
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`Petitioner’s Exhibit List
`
`GOOG-1001 U.S. Patent No. 9,240,009
`GOOG-1002 Prosecution History of U.S. Patent No. 9,240,009
`
`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 (“Staib”)
`
`GOOG-1006 U.S. Patent No. 7,628,322 to Holtmanns (“Holtmanns”)
`
`GOOG-1007 U.S. Patent No. 6,481,632 to Wentker (“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
`
`GOOG-1017
`
`Junko Yoshida, “Chip Makers Still Uncertain of Plunge into
`NFC,” Electronic Engineering Times 6 (Nov. 15, 2004)
`
`5
`
`
`
`
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`GOOG-1018 Philips Semiconductors, Functional Specification: Standard Card
`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)
`
`6
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`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
`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
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Petitioner
`
`respectfully requests the Board cancel claims 1 through 17 (hereinafter, the
`
`“Challenged Claims”) of U.S. Patent No. 9,240,009 (the “’009 Patent,” GOOG-
`
`1001) under (pre-AIA) 35 U.S.C. §103(a) based on the reasons set forth below.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`The real parties-in-interest are Google LLC1 and Google Payment Corp.
`
`B. Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), to the best knowledge of the Petitioner,
`
`the ’009 Patent is involved in the following case:
`
`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
`
`
`
`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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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`The following cases involve patents in the same family as the ’009 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.
`
`IPR2021-00955
`
`PTAB May 19, 2021
`
`Google LLC v. RFCyber Corp.
`
`IPR2021-00957
`
`PTAB May 19 2021
`
`C. Lead and Back-up Counsel and Service Information
`
`
`
`
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`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.
`
`9
`
`
`
`
`III. GROUNDS FOR STANDING
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`Petitioner certifies that the ’009 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 ON SMART CARDS FOR MOBILE DEVICES
`
`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.
`
`V. THE ’009 PATENT2
`Summary of the ’009 Patent
`A.
`
`The ’009 Patent relates to “techniques for personalizing a secure element
`
`and provisioning an application such as an electronic purse that can be
`
`advantageously used in portable devices.” GOOG-1001, 1:20-23. Fig. 1A (below)
`
`shows a mobile device 100 connected to a payment server via a network. Id., 2:44-
`
`45. Device 100 includes network interface 103, secure element (“SE”) 102,
`
`memory 107, and processor 105. Id., 6:40-54, 7:7-12.
`
`
`2 Unless otherwise specified, all emphasis in the text below is added.
`
`10
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`
`
`mobile device
`
`processor
`
`memory
`
`secure
`element
`
`network
`interface
`
`GOOG-1001, Fig. 1A (annotated)
`
`
`
`Network interface 103 (e.g., a 3G network or LTE network) facilitates
`
`downloading programs from a server for execution by processor 105 and
`
`processing of payment transactions with the server. See id., 3:60-67, 7:9-12
`
`SE 102 (which “may be … a smart card”) enables the mobile device to act as
`
`a contactless front-end for NFC-related applications on the SE to perform secure
`
`transaction against a value stored in an electronic purse. Id., 6:58-67. The SE
`
`includes an issuer security domain (ISD) and optionally, one or more supplemental
`
`security domains (SSD), each with a key set issued by the SE manufacturer,
`
`11
`
`
`
`
`service provider, or trusted third party for “Trusted Service Management” (TSM).
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`See id., 6:55-58, 7:1-48, 10:49-11:7.
`
`Applications on the SE are securely provisioned by a server. Id., Abstract.
`
`Provisioning is triggered by a user or application provider and includes installing a
`
`key set for authentication and secure communication between the application and
`
`the server. Id., 7:18-22, 12:13-33.
`
`B.
`
`Prosecution History of the ’009 Patent
`
`The ’009 Patent issued on January 19, 2016 from U.S. Patent Application
`
`No. 13/350,835 (“the ’835 application”). The ’009 Patent is a continuation-in-part
`
`of two previous applications, the earliest filed September 24, 2006. See GOOG-
`
`1001.
`
`During prosecution, the Examiner issued several rounds of prior-art-based-
`
`rejections, but none including prior art in the analysis below. See GOOG-1002,
`
`pp.148-163, pp.111-127, pp.73-90, pp.41-52. The applicant overcame each
`
`rejection by substantially limiting the scope of the original claims, including
`
`arguing that the term “secure element” means “a separate device” from the mobile
`
`device’s processor, i.e., “a second processor to act as a secure element to provision
`
`an application that subsequently functions with the secure element.” Id., p.33.
`
`The notice of allowance (see id., pp.7-15) specifically referenced this
`
`argument in allowing the claims: “Applicant states the claim requires ‘a processor
`
`12
`
`
`
`
`that is configured to provision an installed application with the secure element,
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`which indicated that the secure element is a separate device’.” Id., p.14. This is
`
`taught by the prior art as shown in the analysis below. Id.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA as of September 24, 2006 would have had a working knowledge
`
`of mobile payment techniques pertinent to the ’009 Patent, including art describing
`
`such techniques. This POSITA would have had a bachelor’s degree in computer
`
`science, computer engineering, or 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.
`
`VII. CLAIM CONSTRUCTION
`
`In IPR, claims are 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 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 those discussed below retain their plain and
`
`ordinary meaning.
`
`A.
`
`“secure element” of “SE”
`
`According to the ’009 Patent, the SE is “[t]he component in a mobile phone
`
`13
`
`
`
`
`providing the security and confidentiality required to support various business
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`models.” See id., 6:14-32. The SE provides “ongoing security and confidentiality
`
`of sensitive applications and data downloaded to and stored on an NFC enabled
`
`handset for performing contactless transactions.” Id., 6:27-29. “Depending on
`
`implementation, the SE … may be in form of a smart card, an integrated circuit
`
`(IC) or a software module upgradable by overwriting some of all of the
`
`components therein.” Id., 6:58-61.
`
`During prosecution, the Applicant further limited the SE to “a separate
`
`device” being “a second processor to act as a secure element to provision an
`
`application that subsequently functions with the secure element.” GOOG-1002,
`
`p.33 (Response filed 09/03/2015). The Examiner cited this statement for
`
`allowance. See id., p.14 (“Arguments found on Page 9 of the Response filed
`
`9/03/2015 are particularly persuasive in pointing out the deficiencies of the prior
`
`art relating to the secure element.”).
`
`A POSITA thus would have interpreted the SE in light of the specification
`
`and prosecution history to mean “a separate device, such as a smart card, included
`
`in a mobile device, such as a mobile phone, for securely hosting an application.”
`
`GOOG-1003, ¶84.
`
`B.
`
`“an interface to receive a secure element”
`
`The ’009 Patent describes several ways to incorporate an SE into a mobile
`
`14
`
`
`
`
`device. Id., 7:4-6. One embodiment is “a chip embedded … in a miniature card
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
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`inserted into the mobile device 100 via a card interface 109.” Id. This is the only
`
`embodiment that uses “an interface” for adding the SE to the mobile device.
`
`GOOG-1003, ¶86. Because only one embodiment supports this limitation when the
`
`SE is a separate device, a POSITA would have interpreted this term to mean “an
`
`interface that adds a card with a secure element to a mobile device.”3 Id.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR
`
`Petitioner asks that the Board institute trial and cancel the challenged claims
`
`in view of the analysis below.
`
`IX.
`
`IDENTIFICATION OF CHALLENGES
`
`Claims 1-17 are challenged as follows:
`
`No.
`
`#1
`
`#2
`
`Ground
`Claims 1-6 and 13-17 are obvious under 35 U.S.C. § 103 over
`Staib, Wentker, and Holtmanns.
`
`Claims 7-12 are obvious under 35 U.S.C. § 103 over Staib,
`Wentker, Holtmanns, and Pesonen.
`
`U.S. Publication No. 2005/0222961 to Staib et al. (“Staib,” GOOG-1005)
`
`was filed September 14, 2004 and published October 6, 2005, and is prior art under
`
`
`3
`This is consistent with the prosecution history cited above where the
`
`Applicant limited the SE to a separate device. See GOOG-1002, p.14.
`
`15
`
`
`
`
`35 U.S.C. § 102(a), (e).
`
`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`U.S. Patent No. 6,481,632 to Wentker et al. (“Wentker,” GOOG-1007)
`
`issued November 19, 2002 and is prior art under 35 U.S.C. § 102(b).
`
`U.S. Patent No. 7,628,322 to Holtmanns et al. (“Holtmanns,” GOOG-1006)
`
`was filed September 28, 2005 and is prior art under 35 U.S.C. § 102(e).
`
`U.S. Patent No. 7,699,233 to Pesonen (“Pesonen,” GOOG-1009) was filed
`
`November 2, 2005 and is prior art under 35 U.S.C. § 102(e).
`
`X. THE BOARD SHOULD INSTITUTE INTER PARTES REVIEW
`A. This petition is not cumulative to the prosecution history
`
`Institution should not be denied under § 325(d). None of the prior art
`
`asserted below was presented to or considered by the Examiner during prosecution.
`
`Under the first part of the Advanced Bionics framework, § 325(d) is improper here.
`
`IPR2019-01469, Paper 6 at 8-9 (PTAB Feb. 13, 2020) (precedential).
`
`B.
`
`The Fintiv factors favor institution
`
`The ’009 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.
`
`16
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`
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`IPR2021-00956 Petition
`Inter Partes Review of U.S. Patent 9,240,009
`
`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
`
`would be improper to speculate … what the Texas court might do regarding a
`
`motion to stay,” when a stay had not yet been requested).
`
`Without “specific evidence” of how the court would rule on any stay motion,
`
`this factor is neutral. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking
`
`LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative).
`
`2.
`
`Factor 2 is neutral (proximity of trial date to final written
`decision).
`
`On May 12, 2021, the district court held a scheduling conference and
`
`scheduled trial for March 21, 2022. GOOG-1014, p.1. While the final written
`
`decision here would issue approximately nine months after, this period alone does
`
`not warrant discretionary denial. See Hulu, LLC v. SITO Mobile R&D IP, LLC,
`
`IPR2021-00206, Paper 11 at 10-11 (PTAB May 10, 2021) (trial date scheduled
`
`months before the Board issues final written decision weighs only “marginally in
`
`favor of exercising [] discretion to deny institution.”).
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`17
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`Inter Partes Review of U.S. Patent 9,240,009
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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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`3.
`
`Factor 3 favors institution (investment in parallel
`proceeding).
`
`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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`18
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`Inter Partes Review of U.S. Patent 9,240,009
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`On the current timeline at the district court, fact and expert discovery will
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`
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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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`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
`
`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.
`
`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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`19
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`issued orders related to the patent…, this fact weighs against exercising discretion
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`Inter Partes Review of U.S. Patent 9,240,009
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`to deny institution.”).
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`Further, Petitioner acted diligently in filing the Petition within a week after
`
`being served with preliminary infringement contentions on May 12, 2021.
`
`Petitioner’s diligence thus weighs in favor of institution. See, e.g., Hulu, LLC v.
`
`SITO Mobile R&D IP, LLP, IPR2021-00206, Paper 11 at 12 (PTAB May 10, 2021)
`
`(diligence in filing two months after receiving preliminary infringement
`
`contentions favors institution).
`
`4.
`
`Factor 4 favors institution (overlap in issues).
`
`Because invalidity discovery is at an early stage as of the filing of this
`
`Petition, Petitioner does not yet know which invalidity positions it will take as the
`
`district court. However, as the facts and positions of the parties develop during
`
`fact discovery at the district court, Petitioner is willing to meet and confer with
`
`Patent Owner regarding an appropriate stipulation to avoid overlapping positions
`
`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
`
`grounds in district court mitigates “concerns of potentially conflicting decisions.”);
`
`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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`20
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`
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`same grounds in district court resulted in “no overlap” between the IPR and district
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`Inter Partes Review of U.S. Patent 9,240,009
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`court proceeding).
`
`5.
`
`Factor 5 is neutral (overlap in parties).
`
`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.
`
`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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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Ground 1: Claims 1-6 and 13-17 are obvious over Staib, Wentker,
`and Holtmanns.
`
`1.
`
`Summary of Staib
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`Staib describes a payment system where a portable device acts as a smart
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`card. GOOG-1005, ¶2. The system “facilitate[es] contactless payment transactions
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`across different contactless payment systems using a common mobile device”
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`securely storing a digital cash value. Id., Abstract. In Staib, “a mobile application
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`and a communication module allows the mobile device … to emulate various
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`transmission standards and data exchange formats that are used in different
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`21
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`payment systems” so contactless payments can be performed with various
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`merchants. Id.
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`Staib’s mobile device includes memory and an NFC module connected to an
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`external security module (e.g., a smart card like a Universal Subscriber Identity
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`Module (USIM))4 have secured memory storing a digital cash value. Id., ¶38. A
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`mobile application on the device provides contactless payment transactions using
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`the stored value. Id., ¶¶22, 38, 52. This “electronic purse” is rechargeable using
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`funds from a user’s bank accessible via a secure Internet connection. Id., ¶¶51, 89-
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`95. Via the NFC, the mobile device facilitates contactless payment transactions
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`with a merchant terminal using the digital cash. Id., ¶¶40-41.
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`2.
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`Summary of Wentker
`
`Wentker teaches a smart card architecture that “extends the functionality of a
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`security domain” to “perform delegated management of smart card applications”
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`including “loading, installation and/or deletion of an application.” GOOG-1007,
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`2:63-67. Wentker’s architecture includes a card manager that “manages the run-
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`time environment for applications and controls the overall system and security.”
`
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`4 See, e.g., GOOG-1009, 3:66-4:9 (“‘smart cards’ as described herein, may
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`comprise … detachable secure elements such as those in SIM cards and other
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`smart cards.”).
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`22
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`
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`Id., 6:50-52, 4:50-53. The card manager includes a security domain that “allows
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`Inter Partes Review of U.S. Patent 9,240,009
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`parties other than the card issuer” to manage their own applications via an Open
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`Platform API. Id., Abstract, 6:48-55, 12:9-12. Security domains “ensure separation
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`of keys between the card issuer and different application providers” to authenticate
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`communications between the application and its provider. Id., 7:38-54, 14:3-9,
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`17:29-32.
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`3.
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`Summary of Holtmanns
`
`Holtmanns teaches a smart card personalization process enabling a user to
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`“use his or her mobile device in the same manner as he or she would use a credit
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`card.” GOOG-1006, 9:57-10:10. Holtmanns’ process utilizes secret keys to create
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`an issuer security domain that establishes a secure communication channel
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`between the device and a server. Id., 3:45-4:33. The keys are stored in a secure
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`core or “element” along with “one or more payment or ticketing applications 614
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`installed by or on behalf of the user to facilitate usage of the UE for payment or
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`ticketing.” Id., 11:4-14.
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`4.
`
`Reasons to Combine Staib and Wentker
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`A POSITA would have found it obvious to implement the external security
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`module (smart card/secure element) in Staib’s mobile device using Wentker’s
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`Open Platform smart card architecture. Doing so would have allowed Staib’s
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`mobile device to securely manage the loading and installation of multiple smart
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`23
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`card applications including, for example, a payment application for managing the
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`Staib’s securely-stored digital cash value. See GOOG-1005, ¶38; GOOG-1003,
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`¶103.
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`Staib discloses that its security module (e.g., USIM) has “its own processor
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`for handling data encryption”
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