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`RFCYBER CORP.,
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`Plaintiff,
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`GOOGLE LLC,
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`
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`v.
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`Defendant.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
` Case No. 2:20-cv-00274-JRG
`
`JURY TRIAL REQUESTED
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`
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`GOOGLE’S INVALIDITY AND SUBJECT MATTER ELIGIBILITY CONTENTIONS
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`RFCyber's Exhibit No. 2012, IPR2021-00956
`Page 001
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`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................3
`A.
`Plaintiff’s Infringement Contentions .......................................................................3
`B.
`Overview of Invalidity Grounds ..............................................................................4
`C.
`Priority Date of the Asserted Patents .......................................................................6
`1.
`Plaintiff’s Contentions Regarding the Priority Date of the Asserted
`Patents ..........................................................................................................6
`Priority Date for the ’218, ’855, and ’787 Patents .......................................8
`2.
`Priority Date for the ’009 Patent ..................................................................8
`3.
`Priority Date for the ’046 Patent ................................................................11
`4.
`INVALIDITY CONTENTIONS .......................................................................................14
`A.
`Local Patent Rule 3-3(a), (b), and (c): Anticipation and Obviousness ..................14
`1.
`Admitted Prior Art .....................................................................................15
`2.
`Identification of Prior Art Patents and Patent Publications, Non-
`Patent Publications, and Systems ...............................................................34
`Level of Ordinary Skill in the Art ..............................................................86
`3.
`Exemplary Prior Art Combinations ...........................................................86
`4.
`Anticipation of the Asserted Claims ..........................................................95
`5.
`Obviousness of the Asserted Claims..........................................................95
`6.
`Motivation to Combine Prior Art Cited in Claim Chart Exhibits ..............99
`7.
`Obviousness-Type Double Patenting .......................................................127
`8.
`Local Patent Rule 3-3(d): Invalidity Under 35 U.S.C. § 112 ..............................152
`2.
`Lack of Enablement/Written Description Under 35 U.S.C. § 112,
`¶ 1 .............................................................................................................152
`Invalidity Under 35 U.S.C. § 112, ¶ 2 and/or ¶ 6 ....................................177
`3.
`SUBJECT MATTER ELIGIBILITY CONTENTIONS ..................................................190
`A.
`Subject Matter Eligibility Charts .........................................................................190
`B.
`Unpatentable Subject Matter Under 35 U.S.C. § 101 ..........................................191
`1.
`The ’009 Patent ........................................................................................192
`2.
`The ’046 Patent ........................................................................................201
`PATENT RULE 3-4 DOCUMENT PRODUCTION ......................................................209
`
`B.
`
`2
`
`I.
`
`II.
`
`III.
`
`IV.
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`RFCyber's Exhibit No. 2012, IPR2021-00956
`Page 002
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`Pursuant to Patent Rule 3-3 and the Docket Control Order (Dkt. 63), Defendant Google
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`LLC (“Google”) provides its invalidity contentions for the claims asserted by Plaintiff RFCyber
`
`Corp. from U.S. Patent Nos. 8,118,218 (the “’218 patent”), 8,448,855 (the “’855 patent”),
`
`9,189,787 (the “’787 patent”), 9,240,009 (the “’009 patent”) and 10,600,046 (the “’046
`
`patent”) (collectively, the “Asserted Patents”). With these invalidity contentions, Google also
`
`serves its document production according to Patent Rule 3-4. Pursuant to the Court’s Standing
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`Order Regarding Subject Matter Eligibility Contentions Applicable to All Patent Infringement
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`Cases Assigned to Chief District Judge Rodney Gilstrap (“Standing Order”) and the Docket
`
`Control Order, Google also provides its subject-matter eligibility contentions. Google reserves
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`the right to amend these contentions as provided by Federal Rule of Civil Procedure 26(e), Patent
`
`Rule 3-6, the Court’s Standing Order, and any other applicable rules.
`
`I.
`
`Introduction
`
`Plaintiff’s Infringement Contentions
`
`A.
`On June 2, 2021, Plaintiff served Google with its Infringement Contentions, asserting 74
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`claims (the “Asserted Claims”) across five patents. The Asserted Claims are:
`
`Asserted Patent Asserted Claims
`
`’218 patent
`
`’855 patent
`
`’787 patent
`
`’009 patent
`
`1–18
`
`1–17
`
`1–19
`
`1–17
`
`’046 patent
`
`1–2, 5
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`Plaintiff’s Infringement Contentions are deficient in that they fail to properly and
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`completely disclose how Google allegedly infringes the Asserted Claims. By way of example
`
`
`
`
`3
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`Page 003
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`only, Plaintiff’s Infringement Contentions allege that the “Pixel 3 includes or communicates with
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`a smart card, such as a smart card comprising an NXP PN81B NFC Controller,” and further
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`allege that the “smart card of every Accused Product (e.g., NFC Module, NFC Controller, and/or
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`secure element) is pre-loaded with an emulator configured to execute a request from an e-purse
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`applet (e.g., a payment card applet within Google Pay) and provide a response the e-purse applet
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`is configured to expect.” See, e.g., Appx. A (’218 claim chart) at 9, 14. However, Plaintiff has
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`failed to identify any specific instrumentalities within the Pixel 3 phone (alleged to be
`
`representative of all Accused Devices) that communicate with an “e-purse applet” that resides in
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`a smart card, secure element, or NFC controller. See id. at 9–33. As another example, Plaintiff
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`has not identified any specific instrumentalities within the Pixel 3 phone that “personalize the e-
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`purse applet [e.g., payment card applet within Google Pay] by reading off data from the smart
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`card [e.g., NFC module] to generate in the smart card one or more operation keys that are
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`subsequently used to establish a secured channel . . . .” See id. at 69–84. Indeed, Plaintiff has
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`alleged infringement of numerous claim limitations “upon information and belief” only, without
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`identifying Plaintiff’s specific theories of infringement. Google reserves the right to amend
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`and/or supplement these Invalidity Contentions should the Court permit Plaintiff to correct,
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`clarify, amend, and/or supplement its Infringement Contentions.
`
`Overview of Invalidity Grounds
`
`B.
`The Asserted Claims of the Asserted Patents are invalid under 35 U.S.C. § 102 and/or
`
`§ 103 because they are anticipated and/or obvious in view of the prior art and the understanding
`
`of a person of ordinary skill in the art at the times of the alleged inventions. Each of the Asserted
`
`Patents discloses and claims concepts that were well known in the prior art. See Section II.A
`
`(Local Patent Rule 3-3(a), (b), and (c): Anticipation and Obviousness), infra.
`
`
`
`
`4
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`The Asserted Claims also are invalid under 35 U.S.C. § 112 for lack of written
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`description, lack of enablement, indefiniteness, and/or because they do not set forth what the
`
`patentee regarded as the invention. See Section II.B (Local Patent Rule 3-3(d): Invalidity Under
`
`35 U.S.C. § 112), infra.
`
`The Asserted Claims also are invalid because they fail to claim patent-eligible subject
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`matter under 35 U.S.C. § 101. See Section III (Subject Matter Eligibility Contentions), infra.
`
`Moreover, Plaintiff has filed patent infringement litigation involving the same five
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`Asserted Patents in RFCyber Corp. v. Samsung Electronics Co. Ltd., and Samsung Electronics
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`America, Inc., No. 2:20-cv-00335-JRG (E.D. Tex.), and RFCyber Corp. v. LG Electronics, Inc.,
`
`No. 2:20-cv-00336 (E.D. Tex.). The defendants in these cases likely will identify additional prior
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`art, invalidity contentions, and subject matter eligibility contentions. Plaintiff is on notice of such
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`prior art, invalidity contentions, and subject matter eligibility contentions. Google expressly
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`incorporates by reference, as if fully set forth herein, the invalidity contentions, prior art, claim
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`charts, and subject matter eligibility contentions served on Plaintiff by these defendants, either in
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`the district court litigation or in any proceedings before the Patent Trial and Appeal Board.
`
`Consistent with the Local Patent Rules of the Eastern District of Texas, the Local Rules,
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`and the Federal Rules, Google will amend its disclosures herein as appropriate. These disclosures
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`are made based on prior art presently known to Google. Discovery in this case has only recently
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`commenced, and Google is still awaiting responses to subpoenas that it has served and may
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`further serve on several third parties. The Court has not construed the terms of the Asserted
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`Claims, and the Court has not determined the level of education or experience of one of ordinary
`
`skill in the art. Google reserves the right to modify, amend, and/or supplement these Invalidity
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`Contentions in view of, without limitation, information provided by Plaintiff concerning its
`
`
`
`
`5
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`infringement allegations; discovery concerning the alleged priority, conception, and reduction to
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`practice of any of the Asserted Claims; additional prior art obtained through discovery or further
`
`investigation, including without limitation discovery from Plaintiff or third parties; a claim
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`construction order by the Court; positions taken by Plaintiff in this action or any other
`
`proceeding; the parties’ expert reports; and/or as other circumstances warrant.1
`
`Pursuant to Local Patent Rule 3-3 and 3-4, Google has provided disclosures and related
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`documents pertaining only to the Asserted claims as identified by Plaintiff in its Infringement
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`Contentions. Google will modify, amend, or supplement these Invalidity Contentions to show the
`
`invalidity of any additional claims that the Court may allow Plaintiff to later assert. Google will
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`further supplement its P.R. 3-4 document production should it later find additional, responsive
`
`documents.
`
`C.
`
`Priority Date of the Asserted Patents
`
`1.
`
`Plaintiff’s Contentions Regarding the Priority Date of the Asserted
`Patents
`
`Plaintiff’s infringement contentions also fail to identify “the priority date to which each
`
`asserted claim allegedly is entitled.” P.R. 3-1(f). However, in its response to Interrogatory No. 3
`
`dated June 25, 2021, Plaintiff stated that “[e]ach Asserted Claim is entitled to a priority date at
`
`
`1 To reduce overlap, if the Patent Trial and Appeal Board (“PTAB”) institutes trial with respect
`to Google’s petition for post-grant review of the ’046 patent on obviousness grounds, Google
`stipulates that it will not assert in the district court litigation invalidity grounds relying on any of
`the prior art contained in the obviousness grounds raised in its petition, for the claims on which
`trial is instituted, while trial is instituted. In addition, if the Board institutes trial with respect to
`Google’s petition for post-grant review of the ’046 patent on § 101 or § 112 grounds, Google
`stipulates that it will not assert in the district court litigation any invalidity grounds under § 101
`and will not assert the written description invalidity grounds under § 112 that were raised in its
`petition, for the claims on which trial is instituted, while trial is instituted.
`
`
`
`
`6
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`least as early as December 12, 2004, based on conception, and diligent reduction to practice at
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`least through the September 24, 2006 filing date of U.S. Patent Application No. 11/534,653.”
`
`The ’009 and ’046 patents issued from continuation-in-part applications. By definition, a
`
`continuation-in-part application is a continuing patent application that discloses new subject
`
`matter not disclosed in the parent application. See Manual of Patent Examining Procedure
`
`(“MPEP”) § 201.08; Univ. of W. Va. v. VanVoorhies, 278 F.3d 1288, 1297 (Fed. Cir. 2002). To
`
`support an effective filing date earlier than the actual filing date of an application, the priority
`
`application and each intermediate application in a priority chain must (1) provide an adequate
`
`written description of the claimed invention; and (2) enable a skilled artisan to practice the
`
`claimed invention. See 35 U.S.C. §§ 112(a) and 120. “[I]f a claim in a continuation-in-part
`
`application recites a feature which was not disclosed or adequately supported by a proper
`
`disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first
`
`introduced or adequately supported in the continuation-in-part application, such a claim is
`
`entitled only to the filing date of the continuation-in-part application.” MPEP § 211.05; see Nat.
`
`Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375, 1383 (Fed. Cir. 2018). In continuation-in-part
`
`applications, priority is assessed on a claim-by-claim basis. Transco Prods., Inc. v. Performance
`
`Contracting, Inc., 38 F.3d 551, 557 n.6 (Fed. Cir. 1994).
`
`“Patent claims are not entitled to an earlier priority date merely because the patentee
`
`claims priority. Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee
`
`must demonstrate that the claims meet the requirements of 35 U.S.C. § 120. Accordingly, claims
`
`in a patent or patent application are not entitled to priority under § 120 at least until the patent
`
`owner proves entitlement to the PTO, the Board, or a federal court.” Nat. Alternatives, 904 F.3d
`
`at 1380 (citations and internal quotation marks omitted) (emphasis in original).
`
`
`
`
`7
`
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`Page 007
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`Priority Date for the ’218, ’855, and ’787 Patents
`
`2.
`Without admitting the validity of any priority date, Google uses September 24, 2006, as
`
`the priority date of the ’218, ’855, and ’787 patents for the purposes of these Invalidity and
`
`Subject Matter Eligibility Contentions. Google specifically reserves the right to contest any
`
`claim to priority based on later discovery.
`
`Priority Date for the ’009 Patent
`
`3.
`Without admitting the validity of any priority date, Google uses January 16, 2012, as the
`
`priority date of the ’009 patent for the purposes of these Invalidity and Subject Matter Eligibility
`
`Contentions.
`
`The ’009 patent is not entitled to a priority date any earlier than January 16, 2012, the
`
`filing date of U.S. Patent Application No. 13/350,835 (the “’835 application”), which issued as
`
`the ’009 patent. As shown below, the ’009 patent is a continuation-in-part of U.S. Patent
`
`Application No. 11/534,653, which issued as the ’218 patent, and is also a continuation-in-part of
`
`U.S. Patent Application No. 11/739,044, filed on April 23, 2007, now abandoned (collectively,
`
`the “’009 Parent Applications”). See ’009 patent at 1:7–13.
`
`During prosecution of the ’009 patent, the applicant argued that the pending claims
`
`should receive an effective filing date of April 23, 2007, and the examiner ultimately agreed. See
`
`’009 File History, 2/23/2015 Applicant Remarks at 7–10; ’009 File History, 5/5/2015 Non-Final
`
`Rejection at 2.
`
`
`
`
`8
`
`RFCyber's Exhibit No. 2012, IPR2021-00956
`Page 008
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`

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`US PAT 8,118,218
`Liang Seng Koh, Futong Cho,
`Hsin Pan, Fuliang Cho
`11/534653 (filed 9/24/2006)
`US 2008/0073426
`Grant 2/21/2012
`
`CIP
`
`US PAT APP 11/739044
`Liang Seng Koh, Hsin Pan,
`Futong Cho, Fuliang Cho
`(filed 4/23/2007)
`US 2016/0335618
`
`CIP
`
`US PAT 9,240,009
`Koh, Pan, Xie
`13/350835 (filed 1/16/2012)
`US 2012/0130839, 5/24/2012
`Grant 1/19/2016
`
`CIP
`
`A person of ordinary skill in the art would have understood that the ’009 patent contains
`
`figures and descriptions not found in either of the ’009 Parent Applications. For example, the
`
`’009 Parent Applications do not include Figures 1A, 1B, 1C, 1D, 2A, 2B, 2C, 2D, and 2E, nor do
`
`they include the associated descriptions (6:14–10:2 and 10:41–14:36 in the ’009 patent). These
`
`figures and descriptions were first introduced together in the ’009 patent. Other portions of the
`
`’009 patent specification also are new. See, e.g., ’009 patent at 1:20–21; 1:45–2:19; 2:31–42;
`
`2:49–52; 3:2–4:23; 4:35–61; 4:62–64; 5:1–3; 14:44–50; 15:30; 16:9–10; 16:27; 18:18–19; and
`
`18:49–50.
`
`There is no disclosure in the ’009 Parent Applications of certain claim terms in the ’009
`
`patent claims, such as “secure element” (claims 1, 6–8, 10–15, and 17), “Trusted Service
`
`Management,” “TSM,” and “TSM server” (claims 6 and 7), “identifier identifying the
`
`application” (claims 1, 6, and 13), “identifier identifying the each of the modules” (claim 14),
`
`“identifier identifying the one of the modules” (claim 15), “provisioning” and “provisioned”
`
`(claims 14, 16, and 17), “distributor” (claims 11–15), “distributor of the secure element” (claim
`
`11), “distributor of the application” (claim 13). Other terms in the written description also are
`
`
`
`
`9
`
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`missing in the ’099 Parent Applications, including “electronic wallet,” “provisioning manager,”
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`“application key set,” “issuer security domain,” and “ISD.”
`
`All of the Asserted Claims therefore recite subject matter first described in the
`
`specification of the ’835 application, which issued as the ’009 patent. For example, independent
`
`claims 1 and 14 as well as dependent claims 6–8, 10–13, 15, and 17 recite a “secure element.”
`
`The only support for such a limitation is first found in the specification of the ’009 patent. See,
`
`e.g., 1:19–21 (“[T]he present invention is related to techniques for personalizing a secure
`
`element and provisioning an application . . . .”); 6:58–67 (“[T]he SE 102 may be in form of a
`
`smart card, an integrated circuit (IC) or a software module upgradable by overwriting some of
`
`[sic] all of the components therein.”). The remainder of the claims depend from claims 1 and 14
`
`and therefore inherit the same issues.
`
`Claims 6–17 further recite subject matter first described in the specification filed with the
`
`’009 patent. For example, claim 6 recites a “TSM system [that] is a collection of services
`
`configured to distribute and manage contactless services for customers signed up with the TSM.”
`
`The only support for such a limitation is first found in the description of the ’009 patent (see
`
`7:36-39). Likewise, claim 7 recites a “server in the TSM system,” and the only support for such a
`
`limitation is also found only in the ’009 patent specification (see 9:58-61, 7:32-60). Claims 8-12
`
`depend from claim 7 and therefore inherit the same issues.
`
`Claims 11–17 also recite subject matter describing a “distributor,” where the first
`
`disclosure of the distributor is found in the specification filed with the ’009 patent. For example,
`
`claims 11–13 each describe a distributor interacting with a secure element, claim 14 describes
`
`provisioning a secure element “wherein said provisioning of each of the modules with a
`
`distributor comprises,” and claim 15 recites “receiving a message from a distributor of one of the
`
`
`
`
`10
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`modules.” Each of these limitations first finds support in the specification filed with the ’009
`
`patent (see 8:27-62, 9:30-61, 14:3-6). Claims 16 and 17 depend from claim 14 and therefore
`
`inherit the same issues.
`
`Because the ’009 Parent Applications lack adequate written description to support the
`
`claims of the ’009 patent, the earliest effective filing date of the ’009 patent is the filing date of
`
`the ’835 application, which issued as the ’009 patent, i.e., January 16, 2012. In addition, as
`
`further evidence that the claims of the ’009 patent are not entitled to claim priority to the filing
`
`dates of the ’009 Parent Applications, the named inventors of the ’009 patent are different from
`
`those listed on either of the ’009 Parent Applications.
`
`Priority Date for the ’046 Patent
`
`4.
`Without admitting the validity of any priority date, Google uses March 29, 2013, as the
`
`priority date of the ’046 patent for the purposes of these Invalidity and Subject Matter Eligibility
`
`Contentions.
`
`As shown below, the ’046 patent was filed on June 2, 2015, as a continuation of U.S.
`
`Patent No. 9,057,601 (the “’601 patent”), which was filed on March 29, 2013. The ’601 patent
`
`claims priority to U.S. Provisional No. 61/618,802 (the “’802 provisional”), filed April 1, 2012.
`
`The ’601 patent also claims to be a continuation-in-part of U.S. Patent Application No.
`
`13/350,832 (the “’832 application”), which is itself a continuation-in-part of the ’653 application,
`
`which issued as the ’218 patent. See ’046 patent at (63) and (60); ’601 patent at (63) and (60).
`
`Because the application that issued as the ’601 patent was filed after the America Invents Act
`
`
`
`
`11
`
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`went into effect on March 16, 2013, the three earlier applications are referred to herein
`
`collectively as the “’046 Pre-AIA Parent Applications.”
`
`US PAT 8,118,218
`Liang Seng Koh, Futong Cho,
`Hsin Pan, Fuliang Cho
`11/534653 (filed 9/24/2006)
`US 2008/0073426
`Grant 2/21/2012
`
`
`CIP
`
`US PAT APP 13/350832
`Liang Seng Koh, Hsin Pan,
`Xiangzhen Xie
`(filed 1/16/2012)
`US 2012/0130838
`
`US PROV 61/618,802
`Xiangzhen Xie
`(filed 4/1/2012)
`US 2012/0130838
`
`CIP
`
`Non-Provisional
`
`US PAT 9,047,601
`Xiangzhen Xie, Liang Seng Koh,
`Hsin Pan
`13/853937 (filed 3/29/2013)
`US 2014/0006194
`Grant 6/2/2015
`
`Continuation
`
`US PAT 10,600,046
`Xiangzhen Xie, Liang Seng Koh,
`Hsin Pan
`14/728349 (filed 6/2/2015)
`US 2015/0278800
`Grant 3/24/2020
`
`Google specifically incorporates by reference its Petitions for Post-Grant Review of the
`
`’046 patent, in which it explained why the claims of the ’046 patent are not entitled to an
`
`effective filing date any earlier than March 16, 2013. See Google LLC v. RFCyber Corp.,
`
`
`
`
`12
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`

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`PGR2021-00028, Paper 1, at 13–25, 32–57; Google LLC v. RFCyber Corp., PGR2021-00029,
`
`Paper 1, at 6–20. Briefly, a person of ordinary skill in the art would have understood that the
`
`’046 patent and ’601 patent (the “AIA Patents”) contain figures and descriptions not found in
`
`any of the three ’046 Pre-AIA Parent Applications. For example, the ’832 and ’653 applications
`
`do not include Figures 1A and 1B and the associated description in the common specification of
`
`the AIA Patents (see ’046 patent at 5:29-8:30).2 While Figures 1A and 1B of the AIA Patents
`
`were included in the pre-AIA ’802 provisional, the associated description in the AIA Patents was
`
`not included. Instead, the ’802 provisional includes a brief, high-level overview of the figures.3
`
`The descriptions of Figures 1A and 1B in the ’009 patent were first introduced together in the
`
`application that issued as the ’601 Patent. A person of ordinary skill in the art therefore would
`
`have understood that claim 1 of the ’046 patent recites subject matter supported only in the
`
`descriptions of Figures 1A and 1B that were first filed with the ’601 patent on March 29, 2013.
`
`Additionally, a person of ordinary skill in the art would have understood that claim 1
`
`recites subject matter without support in any of the above specifications because such subject
`
`matter was added by amendment during prosecution of the ’046 patent. The remainder of the
`
`Asserted Claims of the ’046 patent depend from claim 1 and therefore inherit the same issues.
`
`Because the ’046 Pre-AIA Parent Applications lack adequate written description to
`
`support the claims of the ’046 patent, the earliest effective filing date of the ’046 patent is the
`
`filing date of the ’937 application, which issued as the ’601 patent, i.e., March 29, 2013.
`
`Furthermore, for reasons similar to those set forth in connection with the ’009 patent above, the
`
`
`2 The ’832 and the ’653 applications instead include Figures 1A and 1B that are wholly different
`than the Figures 1A and 1B in the AIA Patents.
`3 The ’802 provisional also includes an “Appendix” containing the majority of the specification
`and figures of the ’832 application.
`
`
`
`
`13
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`

`

`’046 patent is not entitled to the priority date of the ’218 patent, i.e., September 24, 2006. In
`
`addition, as further evidence that the claims of the ’046 patent are not entitled to the same
`
`priority date as the ’218 patent, the named inventors of the ’046 patent are different from those
`
`listed on the ’218 patent.
`
`II.
`
`Invalidity Contentions
`
`Local Patent Rule 3-3(a), (b), and (c): Anticipation and Obviousness
`
`A.
`Google contends that all the Asserted Claims are invalid as obvious under 35 U.S.C.
`
`§§ 102 and/or 103. Google relies on and incorporates all prior art references cited on the cover of
`
`the Asserted Patents, in their respective prosecution histories, and in the prosecution histories of
`
`other patents and patent applications that are in the same family and/or related by subject matter
`
`to the Asserted Patents, including for supporting the obviousness of any asserted claim. Google
`
`further relies on and incorporates by reference, as if originally set forth herein, all invalidity
`
`positions, and all associated prior art and claim charts, disclosed to Plaintiff by present or former
`
`defendants in any lawsuits or other proceedings or by potential or actual licensees to any of the
`
`Asserted Claims. Google hereby discloses and identifies as if originally set forth herein, all prior
`
`art references listed and/or asserted in the above as invalidating prior art against each of the
`
`Asserted Claims. In addition, Google identifies prior art patents, publications, products, and
`
`systems that disclose the elements of the Asserted Claims explicitly, inherently, or as part of an
`
`obvious combination, and such references also may be relied on to show the state of the art in the
`
`relevant timeframes and/or reasons or motivations to combine prior art references.
`
`In addition, Google reserves the right to assert invalidity under 35 U.S.C. § 102(c) or
`
`(d) to the extent that discovery or further investigation yield information forming the basis for
`
`such invalidity. Google further reserves the right to assert that any or all of the Asserted Patents
`
`are invalid pursuant to § 102(f) and/or § 102(g)(2) on additional grounds if it obtains evidence
`
`
`
`
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`during discovery that the named inventors of those patents did not invent, or did not first invent,
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`the subject matter claimed in the patents. Google further reserves the right to assert that any or all
`
`of the Asserted Patents are unenforceable due to inequitable conduct after further discovery.
`
`Some Asserted Claims, including claims 1–18 of the ’218 patent, claims 1–17 of the ’855
`
`patent, claims 1–10 of the ’787 patent, and claims 1–17 of the ’009 patent, are product-by-
`
`process claims wherein the determination of validity would focus only on the product itself. See
`
`Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed. Cir. 2009). Google has
`
`applied the prior art to the Asserted Claims in accordance with its assumption that Plaintiff
`
`contends each Asserted Claim is not a product-by-process claim. Google’s Invalidity
`
`Contentions should not be construed as an admission that any Asserted Claim is not a product-
`
`by-process claim. In addition, in those instances in which Google asserts that an Asserted Claim
`
`is invalid under 35 U.S.C. § 112, Google has applied the prior art in accordance with its
`
`assumption that Plaintiff contends such Asserted Claim (1) has sufficient supporting written
`
`description, (2) is enabled, (3) is not indefinite, and (4) sets forth what the inventors regarded as
`
`the invention. Google’s Invalidity Contentions should not be construed as an admission that any
`
`Asserted Claim meets the requirements of § 112.
`
`Admitted Prior Art
`
`1.
`The Asserted Patents themselves, including in their specifications, also contain
`
`statements admitting that certain limitations were already known in the art at the time of the
`
`purported inventions. Such “[a]dmissions in the specification regarding the prior art are binding
`
`on the patentee for purposes of a later inquiry into obviousness.” PharmaStem Therapeutics, Inc.
`
`v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007); see also Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is
`
`in the prior art is binding on the applicant and patentee for determinations of anticipation and
`
`15
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`obviousness.”). The patent applicant also admitted during prosecution that certain limitations
`
`were already known in the art at the time of the purported inventions. The following list of
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`examples of admitted prior art for purposes of one or more of the Asserted Patents is illustrative
`
`and not exhaustive.
`
`Google further intends to rely on admissions by Plaintiff, the named inventors, and their
`
`agents concerning the scope of the claims and prior art relevant to the Asserted Patents found in,
`
`inter alia, the patent prosecution for the Asserted Patents and related patents and/or patent
`
`applications; statements made by Plaintiff at any hearings; any deposition testimony of Plaintiff,
`
`the named inventors, or their agents; and the papers filed and any evidence submitted by Plaintiff
`
`in connection with this litigation or related proceedings before the U.S. Patent and Trademark
`
`Office.
`
`(a)
`
`The ’218, ’855, and ’787 patents
`
`• Contactless smart card technology and MIFARE smart cards:
`
`o “Single functional cards have been successfully used in enclosed environments
`such as transportation systems. One example of such single functional cards is
`
`MIFARE that is the most widely installed contactless smart card technology in the
`
`world. With more than 500 million smart card ICs and 5 million reader
`
`components sold, MIFARE has been selected as the most successful contactless
`
`smart card technology. MIFARE is the perfect solution for applications like
`
`loyalty and vending cards, road tolling, city cards, access control and gaming.”4
`
`’218 patent at 1:13-22.
`
`
`4 The ’218, ’855, and ’787 patents share substantially identical specifications. For simplicity,
`Google cites only to the specification of the ’218 patent when discussing the ’218, ’855, and ’787
`patents.
`
`
`
`
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`• Multi-application smart cards:
`
`o “One example of the card manager security 106 is what is referred to as a Global
`Platform (GP) that is created by a cross-industry membership organization to
`
`advance standards for smart card growth. A GP combines the interests of smart
`
`card issuers, vendors, industry groups, public entities and technology companies
`
`to define requirements and technology standards for multiple application smart
`
`cards.” Id. at 4:13-20.
`
`• The GlobalPlatform 2.1 specification, including card manager security and security
`
`domains for establishing a secured channel to personalize an application on the smart
`
`card:
`
`o “Card Manager Security 106, referring to a general security framework of a
`preload operating system in a smart card, provides a platform for PIN
`
`management and security channels (security domains) for card personalization.
`
`This platform via a card manager can be used to personalize a purse in one
`
`embodiment. One example of the card manager security 106 is what is referred to
`
`as a Global Platform (GP) that is created by a cross-industry membership
`
`organization to advance standards for smart card growth. A GP combines the
`
`interests of smart card issuers, vendors, industry groups, public entities and
`
`technology companies to define requirements and technology standards for
`
`multiple application smart cards. In one embodiment, a global platform securi