`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.
`
`Petitioners,
`
`v.
`
`RFCYBER CORP.,
`
`Patent Owner.
`
`
`Patent No. 9,189,787
`Filing Date: May 28, 2013
`Issue Date: November 17, 2015
`
`Inventors: Liang Seng Koh, Futong Cho, Hsin Pan, and Fuliang Cho
`Title: METHOD AND APPARATUS FOR CONDUCTING
`E-COMMENCE AND M-COMMENCE
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2021-00980
`
`__________________________________________________________________
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`Page(s)
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`THE ’787 PATENT ......................................................................................... 2
`II.
`III. THE ALLEGED PRIOR ART ........................................................................ 7
`A. Dua (U.S. Patent App. Pub. No. 2006/0165060) .................................. 7
`B.
`Davis (PCT Appl. Pub. No. WO 98/49658).......................................... 9
`C.
`GlobalPlatform ...................................................................................... 9
`IV. CLAIM CONSTRUCTION ............................................................................ 9
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................10
`VI. PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM...........................................................................................................10
`A.
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 ....................................................................................................10
`A POSITA Would Not Combine Dua with Global Platform .............11
`Samsung Fails To Show That The Limitations “a
`personalization process built on a first security channel so that
`the emulator is set to store a set of keys for subsequent data
`access authentication and the e-purse applet is configured to
`conduct a transaction with a network server over a second
`security channel”/“personalizing the emulator and the e-purse
`applet via a personalization process built on a first security
`channel so that the emulator is set to store a set of keys for
`subsequent data access authentication and the e-purse applet is
`configured to conduct a transaction with a network server over
`a second security channel” as required by all Challenged
`Claims Would Be Obvious ..................................................................14
`
`B.
`C.
`
`i
`
`

`

`
`
`C.
`
`E.
`
`Dua in View of Philips Does Not Disclose or Render
`Obvious the Limitation .............................................................15
`Dua in View of GlobalPlatform and Philips Does Not
`Render this Limitation Obvious ................................................16
`VII. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF
`THE DIRECTOR UNDER 35 U.S.C. § 314(A) ...........................................17
`A. No Stay of the Parallel District Court Litigation ................................19
`B.
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date .............................................................................20
`Significant Investment by the Time of Institution Favors
`Discretionary Denial............................................................................21
`The District Court Litigation Involves the Same Claims and
`the Same Arguments ...........................................................................22
`The Parallel District Court Litigation and the Petition Involve
`the Same Parties ..................................................................................24
`Other Circumstances Favor Denial of Institution ...............................24
`F.
`VIII. CONCLUSION ..............................................................................................25
`
`
`D.
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`1.
`
`2.
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
` Page(s)
`
`Cases
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-00361-JRG, 2021 WL 465424 (E.D. Tex. Feb. 9,
`2021) ................................................................................................................... 19
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ......................... 2, 17, 18, 23
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 13
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (P.T.A.B. May 15, 2020) ......................................... 20
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)........................................... 19
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 10
`KSR Intern. Co. v. Telefex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 10
`Lyft, Inc. v. Quartz Auto Techs., LLC,
`IPR2020-01450, Paper 7 (P.T.A.B. Mar. 4, 2021) ....................................... 11, 17
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10, at 8-16 (P.T.A.B. Oct. 16,
`2019) ................................................................................................................... 20
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)........................................... 19
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 13
`
`iii
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`

`

`IPR2021-00980
`PATENT NO. 9,189,787
`
`
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .............................................. 20
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ........................................... 23
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ......................................... 22
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 12
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 10
`35 U.S.C. § 103(a) ..................................................................................................... 1
`35 U.S.C. § 314(a) ................................................................................... 2, 17, 19, 25
`35 U.S.C. § 314(b) ................................................................................................... 21
`35 U.S.C. § 316(a)(11) ............................................................................................. 20
`
`iv
`
`

`

`
`
`
`
`
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`LIST OF EXHIBITS
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Exhibit No. Description
`2001
`RFCyber Corp. v. Google, et al., No. 2:20-cv-00274-JRG, Dkt.
`63 (E.D. Tex. June 10, 2021)
`Samsung Notice of Intent to Serve Subpoenas on Nokia Corp.,
`served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on EMV Co.,
`served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on Global Platform
`Inc. served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on NXP USA,
`Corp. served June 21, 2021
`Samsung’s Invalidity and Subject Matter Eligibility Contentions,
`served July 14, 2021
`RFCyber’s First Supplemental Objections and Responses to
`Defendants Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc.’s First Set of Interrogatories (Nos. 1-
`14), dated September 14, 2021
`RFCyber Corp. v. Google, et al., No. 2:20-cv-00274-JRG, Dkt.
`85 (E.D. Tex. July 26, 2021)
`Proposed Protective Order
`A comparison of the proposed Protective Order to the default
`Protective Order
`
`2008
`
`2009
`2010
`
`v
`
`

`

`
`I.
`
`INTRODUCTION
`On June 8, 2021, Samsung Electronics America, Inc. and Samsung
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`Electronics Co., Ltd. (collectively, “Samsung” or “Petitioner”) filed a petition
`
`requesting inter partes review (“IPR”) of U.S. Patent No. 9,189,787 (Ex. 1001, the
`
`“’787 Patent”), challenging claims 1, 2, 4-12, and 14-19 as unpatentable under (pre-
`
`AIA) 35 U.S.C. § 103(a) (the “challenged claims”). The Declaration of Gerald W.
`
`Smith, Ex. 1003, (“Smith Declaration”) accompanied the Petition. On June 16,
`
`2021, the Board issued a Notice of Filing Date Accorded for the petition and set the
`
`time for filing patent owner’s preliminary response. Paper 3. Samsung is a party to
`
`the district court case captioned as RFCyber Corp. v. Google LLC and Google
`
`Payment Corp., Case No. 2:20-cv-00274-JRG (Lead Case) (E.D. Tex.) (hereinafter,
`
`the “District Court Litigation” or “Texas Action”).
`
`The Board should deny Samsung’s Petition. First, Samsung fails to show that
`
`its proposed combination discloses or renders obvious the key limitations: “a
`
`personalization process built on a first security channel so that the emulator is set to
`
`store a set of keys for subsequent data access authentication and the e-purse applet
`
`is configured to conduct a transaction with a network server over a second security
`
`channel”/“personalizing the emulator and the e-purse applet via a personalization
`
`process built on a first security channel so that the emulator is set to store a set of
`
`keys for subsequent data access authentication and the e-purse applet is configured
`
`1
`
`

`

`
`to conduct a transaction with a network server over a second security channel.”
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`Moreover, Samsung fails to show that a person of skill in the art would have
`
`combined its references to arrive at Samsung’s combination.
`
`Second, the Fintiv factors all favor denying this Petition in the discretion of
`
`the Director under 35 U.S.C. § 314(a). The District Court in the pending litigation
`
`between Petitioner and Patent Owner has set trial for March 2022, long before this
`
`proceeding will reach the projected statutory deadline for a Final Written Decision.
`
`Moreover, the parties have begun discovery and the claim construction process, and
`
`they and the District Court will have invested substantial resources in the
`
`overlapping issues before an institution decision. Indeed, the Court’s schedule will
`
`see discovery closed and claim construction completed before the institution
`
`decision. Also, and critically, Patent Owner’s strong evidence that would antedate
`
`Samsung’s primary reference is proprietary, highly confidential source code. Such
`
`materials are better addressed by the District Court which has experience and
`
`specific procedures for dealing with source code evidence.
`
`Accordingly, the Board should deny institution.
`
`II. THE ’787 PATENT
`The ’787 Patent claims methods and systems for providing electronic purses
`
`(e-purses) for use in electronic and mobile commerce. ’787 Patent at 1:17-21. The
`
`inventors of the ’787 Patent realized that existing contactless cards were not effective
`
`2
`
`

`

`
`for use in electronic or mobile commerce “because stored values and transaction
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`IPR2021-00980
`PATENT NO. 9,189,787
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`information are stored in data storage of each tag that is protected by a set of keys.”
`
`Id. at 1:33-37. Those keys “need to be delivered to the card for authentication before
`
`data can be accessed during a transaction.” Id. at 1:37-39. “This constraint makes
`
`systems using such technology difficult to be expanded to an open environment such
`
`as the Internet for e-commerce and cellular networks for m-commerce as the key
`
`delivery over a public domain network causes security concerns.” Id. at 1:39-43.
`
`To solve these problems, the inventors of the ’787 Patent developed a system
`
`for personalizing a card stored in a portable device. The system makes use of a
`
`midlet that facilitates communication between the securely stored applets and
`
`payment servers over a wireless network:
`
`3
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`

`

`
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`IPR2021-00980
`PATENT NO. 9,189,787
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`’787 Patent, Fig. 2 (showing midlet (in yellow), and applet (in green)).
`
`
`
`
`
`4
`
`

`

`
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`IPR2021-00980
`PATENT NO. 9,189,787
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`’787 Patent, Fig. 3B (annotations added).
`
`
`
`5
`
`

`

`The midlet facilitates this communication, for example, while the card is being
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`IPR2021-00980
`PATENT NO. 9,189,787
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`
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`personalized. The entire process is protected by a three-tier security model:
`
`’787 Patent, Fig. 1A
`
`
`
`
`
`“The three-tier security model 100 includes physical security 102, e-purse
`
`security 104 and card manager security 106.” ’787 Patent at 3:58-60. The physical
`
`security “refers to a security mechanism provided by a single functional card to
`
`protect data stored on the card. The card may be hardware implemented or software
`
`emulated running on a type of media.” Id. at 3:61-64. E-purse security “defines a
`
`set of protocols that enable micro payment transactions to be carried out in both
`
`6
`
`

`

`
`wired and wireless environments.” Id. at 4:4-6. “During a transaction, the purse
`
`IPR2021-00980
`PATENT NO. 9,189,787
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`uses a set of respective keys for encryption and MAC computation in order to secure
`
`the message channel between the purse and the SAM or backend servers.” Id. at
`
`4:9-13. “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.” Id. at 4:19-
`
`24.
`
`
`
`A device that has been personalized using the three-tier security as above can
`
`then perform e-commerce and m-commerce using an emulator, and NFC interface
`
`for e-commerce, and a second interface for m-commerce. Id. at 2:36-52, 5:1-15, Fig.
`
`2.
`
`III. THE ALLEGED PRIOR ART
`A. Dua (U.S. Patent App. Pub. No. 2006/0165060)
`U.S. Patent App. Pub. No. 2006/0165060 (Ex. 1004, “Dua”) is directed to a
`
`
`
`system for “managing credentials through a wireless network.” Dua at Title,
`
`Abstract. Dua was filed on January 21, 2005 and published on July 27, 2006. Dua.
`
`Dua sought to solve difficulties with inputting credentials into a wireless device.
`
`Dua at [0019]. To overcome these difficulties, Dua describes a system “through
`
`7
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`

`

`
`which credential issuers can securely and rapidly target specific wireless devices for
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`IPR2021-00980
`PATENT NO. 9,189,787
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`the distribution of the appropriate credentials.” Dua at [0020], [0024].
`
`
`
`Dua achieves its goals by using the Session Initiation Protocol (SIP). Dua at
`
`[0042]. Using SIP, each device, such as a portable phone, contains a wallet
`
`application and is assigned an “E.164 phone number, Uniform Resource Identifier
`
`(URI) or other type of unique address that can be resolved over the Internet.” Id.
`
`Dua also describes a Wireless Credential Manager (WCM), that “maintains, controls
`
`and distributes credentials.” Id. at [0043]. To provide credentials to the wireless
`
`device, a card issuer sends a personalization file to the WCM, along with the device’s
`
`phone number. Id. at [0057]. The WCM uses the phone number (or other unique
`
`device identifier) to connect to the specific device using SIP. Id. at [0061]-[0062],
`
`[0128]-[0182]. The communication may be secured using SIPS/TLS or another
`
`method. Id. at [0131], [0180]. The WCM then provides the credentials to the
`
`wireless device. Id. at [0180]. This use of SIP to “establish direct communication”
`
`between the WCM and the device is “an important aspect of” Dua. Id. at [0178].
`
`“The direct connection between the end-points using SIP offers a secure method,
`
`without intermediary servers, by which to transmit confidential information.” Id.
`
`
`
`Dua also describes “extensions.” Id. at [0289]. Dua’s extensions “‘extend’
`
`the capability of the wallet platform by enabling a new set of features defined by the
`
`8
`
`

`

`
`credential issuer.” Id. Extensions may be preloaded or using the secure SIP
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`provisioning process for credentials. Id. at [0295], [0296].
`
`B. Davis (PCT Appl. Pub. No. WO 98/49658)
`PCT Appl. Pub. No. WO 98/49658 (Ex. 1025, “Davis”) is directed to an
`
`
`
`“Internet Payment and Loading System Using Smart Card.” Davis at Title. Davis’s
`
`loading process uses interaction between a “client terminal” and “bank server” on
`
`one side, and the client terminal and a “load server” on the other. Id. at 36:7-14.
`
`The client terminal makes a request to the bank server to debit the client’s account
`
`(like a debit card transaction), and then the client terminal requests that the load
`
`server actually load the value onto the card. Id. at 37:1-35, 38:11-29. See also Fig.
`
`17, 18A-C.
`
`C. GlobalPlatform
`The GlobalPlatform Card Specification version 2.1.1
`
`
`
`(Ex. 1006,
`
`“GlobalPlatform”) describes
`
`the “specifications
`
`to be
`
`implemented on
`
`GlobalPlatform smart cards.” GlobalPlatform at 16. GlobalPlatform describes its
`
`own security architecture and commands for use in installing and personalizing
`
`applications on GlobalPlatform cards. GlobalPlatform at 65-67, 88-90.
`
`IV. CLAIM CONSTRUCTION
`For the purposes of this Preliminary Response only, Patent Owner believes
`
`that claim construction is not required to resolve any issues.
`
`9
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`

`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`For the purposes of this Preliminary Response only, Patent Owner utilizes
`
`IPR2021-00980
`PATENT NO. 9,189,787
`
`Petitioner’s proposed level of skill in the art— “a bachelor’s degree[] in computer
`
`science, computer engineering, electrical engineering or an equivalent, and one year
`
`of professional experience relating to mobile payment technology.” Pet. at 13.
`
`VI. PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM
`A. Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`differences between the claimed subject matter and the prior art, (3) the level of skill
`
`in the art, and (4) where in evidence, so called secondary considerations. Graham
`
`v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). A claim is only
`
`unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains.” KSR Intern. Co. v.
`
`Telefex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103).
`
`10
`
`

`

`B. A POSITA Would Not Combine Dua with Global Platform
`As discussed above, Dua discloses using SIP for all personalization
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`IPR2021-00980
`PATENT NO. 9,189,787
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`
`
`
`
`communications because it allows for specific targeting of a wireless device and
`
`secures end-to-end communication. Samsung argues that a POSITA would discard
`
`all of Dua’s SIP teachings and use Global Platform’s system for personalization
`
`instead. Pet. at 18-19; 24-32.
`
`
`
`However, Dua’s use of SIP architecture to establish communications between
`
`the WCM and the device for personalizing its system is key to its invention. Dua, ¶
`
`[0178] (“The use of a SIP architecture to locate a mobile end-user and to establish
`
`direct communication between the end-points (WCM and wallet application) for the
`
`purpose of transferring confidential information (e.g. credentials) is an important
`
`aspect of the present invention.” (emphasis added)). All secure communications
`
`within Dua, including downloading and installing its extensions, are done by making
`
`a SIP connection between the WCM and the mobile device. Id., ¶¶ [0296], [0311],
`
`Figs. 1, 3, 8. Indeed, Petitioner relies on these exact security features in its
`
`arguments. Pet. at 33-35. Petitioner does not explain why a POSITA would discard
`
`Dua’s security scheme for GlobalPlatform’s, nor any benefits to doing so. Lyft, Inc.
`
`v. Quartz Auto Techs., LLC, IPR2020-01450, Paper 7, at 17-20 (P.T.A.B. Mar. 4,
`
`2021) (“[W]e are left wondering why a person of ordinary skill in the art would
`
`modify Douglas only to have the same features as disclosed by Harrison.”).
`
`11
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`

`

`Adding GlobalPlatform to Dua would defeat Dua’s objective to provide a SIP-
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`IPR2021-00980
`PATENT NO. 9,189,787
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`
`
`
`based system “through which credential issuers can securely and rapidly target
`
`specific wireless devices for the distribution of the appropriate credentials over
`
`public and private networks.” Dua, ¶ [0020] (emphasis added). Dua’s entire
`
`invention is based around using SIP to securely target a particular wireless device
`
`by looking up that device’s phone number. Dua, [0131]. Indeed, all
`
`communications from the Dua device are done via SIP using that exact method. If
`
`GlobalPlatform were combined with Dua, credential issuers would not be able to
`
`target specific wireless devices to distribute credentials, because GlobalPlatform
`
`does not allow for targeting of specific devices, only specific cards. A POSITA
`
`would not be motivated to destroy Dua’s central objective. Trivascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (holding that it is not obvious to
`
`“destroy the basic objective” of the prior art reference).
`
`
`
`Moreover, there is no reason that a POSITA would combine GlobalPlatform’s
`
`security when Dua already provides security through SIPS/TLS and other encryption
`
`methods. See supra III.A. Samsung identifies no lack or flaw within Dua that would
`
`necessitate replacing Dua’s security with GlobalPlatform’s.
`
`
`
`Samsung ignores Dua’s teaching and merely states that one of skill in the art
`
`would use a smart card with the GlobalPlatform system. Pet. at 18-19. Samsung
`
`does not provide any actual motivation to combine Dua with GlobalPlatform;
`
`12
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`

`
`instead, it merely quotes, out of context, a few passages within Dua that refer to card
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`IPR2021-00980
`PATENT NO. 9,189,787
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`organizations. See Pet. at 18. The mere existence of GlobalPlatform is not enough
`
`to provide a motivation; Samsung needs to show a reason for a POSITA to actually
`
`choose to use GlobalPlatform. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d
`
`987, 993-94 (Fed. Cir. 2017) (holding that testimony that references could be
`
`combined was “not enough: it does not imply a motivation to pick out those two
`
`references and combine them to arrive at the claimed invention”); Belden Inc. v.
`
`Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns
`
`whether a skilled artisan not only could have made but would have been motivated
`
`to make the combinations or modifications of prior art to arrive at the claimed
`
`invention.”).
`
`
`
`The closest Petitioner comes to articulating a motivation to combine is when
`
`it states that “Further, GlobalPlatform specifically facilitates loading and installing
`
`of issuer specific Applications, such as Dua’s extensions.” Pet. at 19. But Dua
`
`already explains that its extensions can be loaded using its SIP-based provisioning
`
`process. Dua, ¶¶ [0295] (“Extensions may reside . . . on a remote server, securely
`
`accessible through the wallet application protocols”), [0296] (“The provisioning of
`
`such an extension to a wireless device using a valid E.164 number of URI is also
`
`possible.”). Samsung provides no reason that a POSITA would seek to use
`
`13
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`

`

`
`GlobalPlatform’s different provisioning system when Dua already can provision the
`
`IPR2021-00980
`PATENT NO. 9,189,787
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`extensions.
`
`
`
`Accordingly, Samsung has failed to show that it would be obvious to combine
`
`GlobalPlatform with Dua.
`
`C.
`
`Samsung Fails To Show That The Limitations “a
`personalization process built on a first security channel so
`that the emulator is set to store a set of keys for subsequent
`data access authentication and the e-purse applet is
`configured to conduct a transaction with a network server
`over a second security channel”/“personalizing the
`emulator and the e-purse applet via a personalization
`process built on a first security channel so that the emulator
`is set to store a set of keys for subsequent data access
`authentication and the e-purse applet is configured to
`conduct a transaction with a network server over a second
`security channel” as required by all Challenged Claims
`Would Be Obvious
`All of the challenged claims require the limitation “wherein . . [the] e-purse
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`
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`applet [is] are already personalized via a personalization process built on a first
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`security channel . . . and the e-purse applet is configured to conduct a transaction
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`with a network server over a second security channel” (’787 Patent at claim 1) or
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`“personalizing . . . the e-purse applet via a personalization process built on a first
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`security channel so that . . . the e-purse applet is configured to conduct a transaction
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`with a network server over a second security channel” (’787 Patent at claim 11).
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`Samsung argues that this limitation is disclosed in two ways: i) via Dua in view of
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`GlobalPlatform and Philips (Pet. at 25-32); and ii) via Dua in view of Philips (Pet.
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`at 32-35). As discussed below, Dua in view of Philips does not disclose the
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`IPR2021-00980
`PATENT NO. 9,189,787
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`limitation and a POSITA would not combine Dua with GlobalPlatform.
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`1.
`
`Dua in View of Philips Does Not Disclose or Render
`Obvious the Limitation
`Samsung does not show that Dua in view of Philips discloses the limitation,
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`
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`because Samsung cannot show that the personalization process is “built on a first
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`security channel” and that the “e-purse applet is configured to conduct a transaction
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`with a network server over a second security channel.” According to Samsung,
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`Dua’s extensions are the e-purse applets of the claims. Pet. at 32. Dua explains that
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`extensions are downloaded and personalized using Dua’s SIP-based provisioning
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`system. Dua, ¶¶ [0295] (“Extensions may reside . . . on a remote server, securely
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`accessible through the wallet application protocols”), [0296] (“The provisioning of
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`such an extension to a wireless device using a valid E.164 number of URI is also
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`possible.”).
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`
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`Samsung argues that the SIP provisioning system, if it uses TLS, is the first
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`security channel. Pet. at 33. Samsung then argues that the SIP system can make use
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`of a “security channel ‘built on’ the TLS security channel using S/MIME.” Id. But
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`Samsung, while quoting some sections of Dua explaining S/MIME, makes no effort
`
`to show that, after the personalization process is complete, the extension would
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`conduct transactions with network servers via S/MIME. See id. Indeed, Samsung
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`devotes its entire section to arguing that the credentials which are used, at most, to
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`IPR2021-00980
`PATENT NO. 9,189,787
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`personalize the extension would be transferred via S/MIME. See id. at 33-35. Thus,
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`even under Samsung’s characterization of Dua and Philips, the S/MIME channel is
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`used to personalize the extension, and thus cannot be the second security channel
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`over which the extension should be configured to conduct a transaction with a
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`network server. Indeed, Samsung does not even attempt to describe a network server
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`with which the extension would conduct a transaction. Samsung does not argue that
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`Philips remedies these deficiencies.
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`
`
`Accordingly, Dua in view of Philips does not disclose or render obvious the
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`limitation.
`
`2.
`
`Dua in View of GlobalPlatform and Philips Does Not
`Render this Limitation Obvious
`As discussed above, Dua discloses using SIP for all personalization
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`
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`communications because it allows for specific targeting of a wireless device and
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`secure end-to-end communication. Samsung argues that a POSITA would discard
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`all of Dua’s SIP teachings and use Global Platform’s system for personalization
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`instead. Pet. at 18-19; 24-32.
`
`
`
`As shown above, a POSITA would not use GlobalPlatform with Dua. In
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`particular, Samsung provides no reason that a POSITA would use GlobalPlatform’s
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`personalization process in place of Dua’s, especially since, as Samsung argues, Dua
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`16
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`already provides multiple layers of security. Lyft, Inc., IPR2020-01450, Paper 7, at
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`IPR2021-00980
`PATENT NO. 9,189,787
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`17-20 (“[W]e are left wondering why a person of ordinary skill in the art would
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`modify Douglas only to have the same features as disclosed by Harrison.”).
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`
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`Accordingly, Samsung has failed to show that Dua in view of GlobalPlatform
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`and Philips renders this limitation obvious.
`
`VII. THE PETITION SHOULD BE DENIED IN THE DISCRETION
`OF THE DIRECTOR UNDER 35 U.S.C. § 314(A)
`The circumstances of the parallel District Court Litigation in Texas (RFCyber
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`Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG (E.D. Tex.) (lead case),
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`RFCyber Corp. v. Samsung Electronics Co., Ltd., No. 2:20-cv-335-JRG (E.D. Tex.)
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`(member case)) (“the Texas Action”) necessitate denial of the Petition under the
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`Board’s precedent, as every factor considered in relation to efficiency, fairness, and
`
`the merits supports denial. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11,
`
`at 6 (P.T.A.B. Mar. 20, 2020) (precedential) (considering (a) “whether the court
`
`granted a stay or evidence exists that one may be granted if a proceeding is
`
`instituted;” (b) “proximity of the court’s trial date to the Board’s projected statutory
`
`deadline for a final written decision;” (c) “investment in the parallel proceeding by
`
`the court and the parties;” (d) “overlap between issues raised in the petition and in
`
`the parallel proceeding;” (e) “whether the petitioner and the defendant in the parallel
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`proceeding are the same party;” and (f) “other circumstances that impact the Board’s
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`IPR2021-00980
`PATENT NO. 9,189,787
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`exercise of discretion, including the merits.”).
`
`As set forth below, every Fintiv factor demonstrates that efficiency and
`
`integrity of the AIA are best served by denying review. First, the Court has not
`
`granted a stay and will not grant one under the “consistent and long established”
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`practice of the Eastern District of Texas. See infra Section VII.A. Second, trial (set
`
`for March 2022) will be long complete before the projected statutory deadline for a
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`Final Written Decision in December 2022. See infra Section VII.B. Third, the
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`parties have already invested massive resources developing legal and factual issues
`
`of validity and infringement, and the claim construction process will have completed
`
`before the institution decision on this petition. See infra Section VII.C. Fourth,
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`there is complete overlap between the challenged claims and prior art and those at
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`issue in the parallel proceedings. See infra Section VII.D. Fifth, Petitioner and
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`Patent Owner will have completed claim construction before the Board issues an
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`institution decision and will complete trial, and receive a judgment on the merits,
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`before the projected statutory deadline for a final written decision. See infra Section
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`VII.E. Finally, as shown above, Samsung’s obviousness combination lacks a
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`motivation to combine and fails to disclose important limitations of the claims.
`
`Moreover, RFCyber’s antedating of the primary reference is best addressed in
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`District Court. See infra Section VII.F.
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`18
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`Accordingly, the Board should exercise its discretion under § 314(a) and deny
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`IPR2021-00980
`PATENT NO. 9,189,787
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`
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`the Petition because institution of this proceeding would not be consistent with the
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`objective of the AIA to “provide an