`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`———————
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`
`
`
`
`———————
`
`IPR2021-00956
`U.S. Patent No. 9,240,009
`
`
`
`
`
`PETITIONER’S AUTHORIZED REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`Petitioner submits this reply in response to Patent Owner’s Preliminary
`
`Response (“POPR”) (Paper 6). Due to developments after the Petition was filed,
`
`the Fintiv factors now more strongly favor institution. Petitioner’s new Sotera-type
`
`stipulation eliminates all overlap between this IPR and the district court
`
`proceeding, and the parties’ Joint Claim Construction Statement confirms that the
`
`district court and parties will have invested very little in the pertinent invalidity
`
`issues at the time of institution.
`
`I. There is No Overlap Between This IPR and the District Court
`Proceeding (Factor 4)
`
` To avoid any overlap between this IPR and the parallel district court
`
`proceeding, Petitioner stipulates that, if this IPR is instituted, it will not pursue in
`
`the district court litigation (RFCyber Corp. v. Google LLC et al., No. 2:20-cv-
`
`00274) the specific grounds asserted in the IPR petition, or any other ground that
`
`was raised or could have been reasonably raised in an IPR (i.e., any ground that
`
`could be raised under 35 U.S.C. §§ 102 or 103 on the basis of prior art patents or
`
`printed publications). See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
`
`Paper 12 at 18-19 (Dec. 1, 2020) (precedential) (“Sotera”). For these grounds,
`
`Petitioner defers to the Board’s recognized technical “expertise.” See Belden Inc. v.
`
`Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015). Thus, there will be no
`
`overlap between this IPR and the district court proceeding, which “weighs strongly
`
`in favor of not exercising discretion to deny institution.” Sotera at 19.
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`The Board regularly finds that Sotera-type stipulations overcome earlier trial
`
`dates, including trial dates even earlier than the one scheduled in this case. See,
`
`e.g., Samsung Elecs. Co., Ltd. v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at
`
`43, 38 (Feb. 10, 2021) (instituting when district court trial was scheduled 10
`
`months before final written decision, and petitioner made Sotera-type stipulation);
`
`Cosentino S.A.U. v. Cambria Co., LLC, IPR2021-00216, Paper 11 at 8-17 (May
`
`18, 2021) (instituting when district court trial was scheduled 7 months before final
`
`written decision). Thus, Fintiv factor 4 strongly favors institution.1
`
`II. There is Minimal Investment in the Validity Issues in the District Court
`Proceeding (Factor 3)
`
`Patent Owner identifies litigation-related activities, including Markman
`
`briefing, as evidence of significant investment in the parallel proceeding. POPR,
`
`21-22. Sand Revolution II emphasized, however, that the focus of this factor is not
`
`the total amount invested by the court and parties, but rather the amount invested
`
`“in the merits of the invalidity positions.” Sand Revolution II, LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 10 (June 16,
`
`
`1 Patent Owner’s arguments regarding overlap ring hollow. In co-pending
`
`PGR2021-00028 and -00029, Patent Owner similarly argued for discretionary
`
`denial alleging overlap, but upon institution of those PGRs, ceased asserting the
`
`challenged patent in the district court.
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`2020) (informative) (“Sand”). Here, as in Sand, “much of the district court’s
`
`investment relates to ancillary matters untethered to the validity issue itself.” Id.
`
`Although Markman briefing and the Markman hearing will likely take place
`
`before institution, this activity is ancillary to the invalidity issues raised in the
`
`Petition. Petitioner construes two terms in the Petition: (1) “secure element” or
`
`“SE,” and (2) “an interface to receive a secure element.” Petition, 13-15. Patent
`
`Owner does not construe any terms in the POPR. In the district court proceeding,
`
`neither party proposes construing term 2, and Patent Owner proposes only “Plain
`
`and ordinary meaning” for term 1 while Petitioner proposes the same construction
`
`as in the Petition. GOOG-1034, 1-3; GOOG-1041, 6; GOOG-1042, 16. Thus, even
`
`if the district court issues a Markman order prior to institution, that order will
`
`reflect minimal investment in the merits of the invalidity issues here. Under similar
`
`circumstances, the Board consistently finds that Factor 3 favors institution. See,
`
`e.g., Huawei Tech. Co., Ltd., v. WSOU Invs., LLC, IPR2021-00229, Paper 10 at 12-
`
`13 (Jul. 1, 2021) (finding factor 3 favoring institution and noting that “while a
`
`Markman hearing has occurred, much of the invested effort is unconnected to the
`
`patentability challenges”); Apple Inc. v. Koss Corp., IPR2021-00381, Paper 15, at
`
`16-17 (Jul. 2, 2021) (factor 3 favored institution when “there is no indication as to
`
`how [the Markman] order might impact questions of patentability”). Moreover, as
`
`in Sand, “much work remains in the district court case as it relates to invalidity,”
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`including completing expert discovery and filing dispositive motions on validity
`
`issues. Ex. 2001, 3; Sand at 10-11.
`
`Accordingly, a lack of investment in invalidity, combined with Petitioner’s
`
`promptness in filing only one week after being served infringement contentions
`
`“weigh[s] against” denial. Apple Inc. v. Fintiv, Inc., IPR2019-00019, Paper 11 at
`
`11 (Mar. 20, 2020) (precedential); see also Dell Technologies Inc. v. WSOU Invs.,
`
`LLC, IPR2021-00272, Paper 13 at 11 (Jul. 1, 2021).
`
`III. Petitioner’s Pending Transfer Motion in the District Court Proceeding
`May Impact the Scheduled Trial Date (Factor 2)
`
` On August 27, 2021, Petitioner filed a renewed motion to stay the district
`
`court proceeding to permit the district court to resolve Petitioner’s pending motion
`
`to dismiss or transfer the case. GOOG-1035, 1-2; GOOG-1036 (“transfer
`
`motion”). Petitioner’s transfer motion was filed on December 7, 2020, and the
`
`district court held a hearing on the venue motion on June 29, 2021. Given the
`
`nine-month pendency of the transfer motion, it is likely that the district court will
`
`soon decide both the transfer motion and the renewed stay motion. If the district
`
`court grants the transfer motion or stays the district court proceeding, the scheduled
`
`trial date would be replaced with a new trial date (if transferred2) or delayed (if
`
`
`2 Petitioner will seek authorization for further briefing if, prior to institution, the
`
`motion is granted or Petitioner is granted relief in its N.D. Cal. APA action.
`
`4
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`stayed). Thus, the scheduled trial date is uncertain.
`
`IV. The Interests of Efficiency, Fairness, and Patent Quality Favor
`Institution (Factor 6)
`
`RFCyber cannot reasonably contend that denial of institution would create
`
`“system efficiency” and avoid “duplication of efforts” (Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, at 5, 6). After asserting the ’009 patent against Google,
`
`RFCyber separately asserted the same patent against three additional defendants
`
`over the course of a year. GOOG-1037, 4; GOOG-1038, 3, GOOG-1039; GOOG-
`
`1040, 3. RFCyber’s staggered litigation strategy highlights the need to promptly
`
`resolve the invalidity questions raised in the petition. Google’s petition is first in
`
`time and thus an appropriate vehicle for the “authoritative testing of patent
`
`validity.” Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313,
`
`344 (1971). Institution in this proceeding would streamline or avoid years of
`
`district court litigation in these subsequent lawsuits. Indeed, the Supreme Court
`
`has long warned of the “economic consequences” of repeated assertions by
`
`“holders of invalid patents.” Id. at 342-43. Therefore, the interests of efficiency,
`
`fairness, and patent quality favor institution, particularly when RFCyber continues
`
`to assert invalid claims against defendants across the mobile payment industry.
`
`Date: September 15, 2021
`
`
`
`Respectfully submitted,
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Counsel for Petitioner, Reg. No. 50,271
`
`
`
`
`
`5
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 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
`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
`IC MF1 IC S70, Revision 3.1 (Oct. 2002) (describing MIFARE
`1K smart card)
`
`GOOG-1017
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`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
`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
`
`7
`
`
`
`GOOG-1034
`(NEW)
`
`GOOG-1035
`(NEW)
`
`GOOG-1036
`(NEW)
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`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)
`Joint Claim Construction and Prehearing Statement, RFCyber
`Corp. v. Google LLC et al., 2:20-cv-00274, ECF No. 101 (E.D.
`Tex.) (Aug. 19, 2021)
`Google LLC’s Renewed Motion to Stay Pending Resolution of
`Motion to Transfer or Dismiss, RFCyber Corp. v. Google LLC et
`al., 2:20-cv-00274, ECF No. 103 (E.D. Tex.) (Aug. 27, 2021)
`Defendants’ Motion to Transfer or, in the Alternative, to Dismiss
`for Improper Venue, RFCyber Corp. v. Google LLC et al., 2:20-
`cv-00274, ECF No. 24 (redacted public version) (E.D. Tex.) (Dec.
`9, 2020) (original sealed version filed Dec. 7, 2020 (ECF No. 20))
`Complaint, RFCyber Corp. v. Samsung Elecs. Co., Ltd. et al.,
`2:20-cv-00335, ECF No. 1 (E.D. Tex. Oct. 16, 2020)
`Complaint, RFCyber Corp. v. LG Elecs., Inc., 2:20-cv-00336,
`ECF No. 1 (E.D. Tex. Oct. 16, 2020)
`Docket Sheet, RFCyber Corp. v. Google LLC et al., 2:20-cv-
`00274 (E.D. Tex.) (RFCyber Corp. v. Samsung Elecs. Co., Ltd. et
`al., 2:20-cv-00335 consolidated with RFCyber Corp. v. Google
`LLC et al., 2:20-cv-00274 (E.D. Tex.))
`Complaint, RFCyber Corp. v. Apple, Inc., 6:21-cv-00916, ECF
`No. 1 (W.D. Tex. Sept. 7, 2021)
`Joint Claim Construction and Prehearing Statement, Exhibit A:
`Plaintiff’s Proposed Claim Constructions, RFCyber Corp. v.
`Google LLC et al., 2:20-cv-00274, ECF No. 101-1 (E.D. Tex.)
`(Aug. 19, 2021)
`Joint Claim Construction and Prehearing Statement, Exhibit B:
`Defendants’ Joint Proposed Claim Constructions, RFCyber Corp.
`v. Google LLC et al., 2:20-cv-00274, ECF No. 101-1 (E.D. Tex.)
`(Aug. 19, 2021)
`
`GOOG-1037
`(NEW)
`GOOG-1038
`(NEW)
`GOOG-1039
`(NEW)
`
`GOOG-1040
`(NEW)
`GOOG-1041
`(NEW)
`
`GOOG-1042
`(NEW)
`
`
`
`
`
`8
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2021-00956 (U.S. Patent No. 9,240,009)
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`GOOGLE LLC
`
`Petitioner
`
`§
`§
`§
`
`Petition for Inter Partes Review
`
`U.S. Patent No. 9,240,009
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, under 37 C.F.R. § 42.6, that service was made on
`the Patent Owner as detailed below.
`Date of service September 15, 2021
`
`Manner of service Electronic Service by email: vrubino@fabricantllp.com;
`plambrianakos@fabricantllp.com;
`ffabricant@fabricantllp.com; eiturralde@fabricantllp.com;
`rcowell@fabricantllp.com; ptab@fabricantllp.com
`
`Documents served Petitioner’s Authorized Reply to Patent Owner’s Preliminary
`Response; and Exhibits GOOG-1034 to GOOG-1042
`
`Persons served Vincent J. Rubino, III
`Peter Lambrianakos
`Alfred R. Fabricant (subject to motion to appear pro hac vice)
`Enrique W. Iturralde
`Richard Cowell
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`
`
`
`
`
`
`
`
`
`
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
