`RFCYBER CORP.,
`
`
`
`v.
`
`Plaintiff,
`
`
`GOOGLE LLC and GOOGLE PAYMENT
`CORP.,
`
`
`
`
`
`RFCYBER CORP.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`Case No. 2:20-cv-00274-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`Case No. 2:20-cv-00335-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`
`Defendants.
`
`Plaintiff,
`
`v.
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO. LTD and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`Defendants.
`
`
`
`SAMSUNG’S INVALIDITY AND SUBJECT-MATTER ELIGIBILITY CONTENTIONS
`
`I.
`
`INTRODUCTION
`
`Pursuant to Rule 3-3 of the Local Patent Rules (“P. R.”) of the Eastern District of Texas
`
`and the Standing Order Regarding Subject-Matter Eligibility Contentions, Defendants Samsung
`
`Electronics America, Inc. and Samsung Electronics Co., Ltd. (collectively, “Defendants” or
`
`“Samsung”) hereby provide their Invalidity and Subject-Matter Eligibility Contentions with
`
`respect to the claims identified by Plaintiff RFCyber Corp. (“Plaintiff” or “RFCyber”) in its
`
`Disclosure of Asserted Claims and Infringement Contentions, served on May 12, 2021, in the
`
`above captioned case. Plaintiff asserts infringement of the following claims:
`
`
`ACTIVE 58123500v3
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`RFCyber's Exhibit No. 2006, IPR2021-00981
`Page 001
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`

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` Claims 1-18 of U.S. Patent No. 8,118,218 (the “’218 patent”);
` Claims 1-19 of U.S. Patent No. 9,189,787 (the “’787 patent”);
` Claims 1-17 of U.S. Patent No. 8,448,855 (the “’855 patent”);
` Claims 1-17 of U.S. Patent No. 9,240,009 (the “’009 patent”); and
` Claims 1-2, 5 of U.S. Patent No. 10,600,046 (the “’046 patent”).
`
`Pursuant to P. R. 3-3 and 3-4 and the Standing Order Regarding Subject-Eligibility
`
`Contentions, Samsung hereby provides its invalidity and subject-matter eligibility disclosures
`
`and related documents pertaining only to the asserted claims as identified by Plaintiff in its
`
`Infringement Contentions. With respect to each asserted claim and based on its investigation to
`
`date, Samsung hereby: (a) identifies each currently known item of prior art that either anticipates
`
`or renders obvious each asserted claim; (b) specifies whether such prior art anticipates each
`
`asserted claim or renders it obvious; (c) submits a chart identifying where each element in each
`
`asserted claim is disclosed, described, or taught in the prior art, including for each element that is
`
`governed by 35 U.S.C. § 112, ¶ 6, the identity of the structure(s), act(s), or material(s) in each
`
`item of prior art (if any) that performs the claimed function; and (d) identifies the grounds for
`
`invalidating asserted claims based on indefiniteness under 35 U.S.C. § 112, ¶ 2, or non-
`
`enablement or lack of written description under 35 U.S.C. § 112, ¶ 1. Samsung further relies on
`
`and incorporates all prior art references cited in and/or on the cover of the Asserted Patents and
`
`their respective prosecution histories, including for supporting the obviousness of any asserted
`
`claim. Samsung further relies on and incorporates by reference, as if originally set forth herein,
`
`all invalidity positions (but not necessarily claim construction 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, including
`
`RFCyber v. Google, 2-20-cv-00274-JRG (E.D. Tex.), RFCyber v. LG Electronics, 2-20-cv-
`
`00336-JRG (E.D. Tex.), PGR2021-00028, PGR2020-00029, IPR2021-00954, IPR2021-00955,
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`RFCyber's Exhibit No. 2006, IPR2021-00981
`Page 002
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`

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`IPR2021-00956, IPR2021-00957, IPR2021-00978, IPR2021-00979, IPR2021-00980, and
`
`IPR2021-00981. Samsung 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, based on its investigation to date, Samsung has produced, and hereby
`
`produces the documents currently in its possession, custody, or control required to accompany
`
`these Invalidity and Subject-Matter Eligibility Contentions pursuant to P. R. 3-4.
`
`II.
`
`RESERVATIONS OF RIGHTS
`
`Pursuant to P. R. 3-3 and 3-4 and the Standing Order Regarding Subject-Eligibility
`
`Contentions, Samsung hereby provides disclosures and related documents pertaining only to the
`
`asserted claims identified by Plaintiff in its Infringement Contentions. Samsung reserves the
`
`right to modify, amend, or supplement these Invalidity Contentions to show the invalidity of any
`
`additional claims that the Court may allow Plaintiff to later assert. The Local Patent Rules and
`
`the Court’s Docket Control Order contemplate that these Invalidity Contentions be prepared and
`
`served in response to Plaintiff’s Infringement Contentions. But, Plaintiff’s Infringement
`
`Contentions are insufficient in that they lack proper and complete disclosure as to how Samsung
`
`allegedly infringes the asserted claims. As such, Samsung reserves the right to modify, amend,
`
`and/or supplement these Invalidity Contentions should the Court permit Plaintiff to correct,
`
`clarify, amend, and/or supplement its Infringement Contentions.
`
`Samsung’s Invalidity and Subject-Matter Eligibility Contentions and selection of
`
`documents accompanying them are based on information currently available to Samsung and is
`
`subject to further revision. For example, Plaintiff (or its counsel) may be in possession of prior
`
`art that has not been disclosed to Samsung. As another example, because discovery has only
`
`recently begun, Samsung reserves the right to amend or supplement the information provided
`
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`herein, including identifying and relying on additional references.
`
`To the extent that these Invalidity and Subject-Matter Eligibility Contentions reflect or
`
`otherwise embody particular constructions of terms or phrases in the asserted claims, Samsung is
`
`not proposing any such constructions as proper constructions of those terms or phrases. Various
`
`positions put forth in these Invalidity and Subject-Matter Eligibility Contentions are predicated
`
`on RFCyber’s incorrect and/or overbroad interpretation of its claims as evidenced by its
`
`Infringement Contentions provided to Samsung. These Invalidity and Subject-Matter Eligibility
`
`Contentions are not intended to, and do not necessarily, reflect Samsung’s interpretation of the
`
`true and proper scope of the asserted claims. Samsung reserves the right to adopt claim
`
`construction positions that differ from positions put forth in this document. Also, Samsung
`
`objects to any attempt to infer any claim constructions from any identification of potential prior
`
`art. In those instances where Samsung asserts that the asserted claims are invalid under 35
`
`U.S.C. § 112 (e.g., no written description, not enabled, and/or indefinite), Samsung has applied
`
`the prior art in accordance with its assumption that RFCyber contends such asserted claims
`
`(1) are definite, (2) have written description support, and (3) are enabled, as evidenced by
`
`RFCyber’s Infringement Contentions. As such, Samsung’s Invalidity and Subject-Matter
`
`Eligibility Contentions do not represent its agreement or view as to the meaning, definiteness,
`
`written description support for, or enablement of any asserted claim. These Invalidity and
`
`Subject-Matter Eligibility Contentions and accompanying documents are not intended to reflect
`
`Samsung’s claim construction contentions, which will be disclosed in accordance with the
`
`Court’s Docket Control Order.
`
`Samsung’s contentions may change depending on the Court’s construction of the asserted
`
`claims, any findings as to the priority date of the asserted claims, and/or positions that Plaintiff or
`
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`RFCyber's Exhibit No. 2006, IPR2021-00981
`Page 004
`
`

`

`its experts may take concerning claim construction, infringement, and/or invalidity issues. Prior
`
`art not included in this disclosure, whether known or unknown to Samsung, may become
`
`relevant. In particular, Samsung is currently unaware of the extent, if any, to which Plaintiff will
`
`contend that limitations of the asserted claims are not disclosed in the prior art identified by
`
`Samsung, or will contend that any of the identified references do not qualify as prior art. To the
`
`extent that such an issue arises, Samsung reserves the right to identify other references that, inter
`
`alia, would have made the addition of the allegedly missing limitation to the disclosed device or
`
`method obvious.
`
`The identification of any patent or patent publication shall be deemed to include any
`
`counterpart patent or application filed, published, or issued anywhere in the world. The citation
`
`to any specifications published by standard-setting organizations shall be deemed to include any
`
`product that implements such specifications and that would qualify as prior art under 35 U.S.C.
`
`§ 102, e.g., under Sections 102(a), 102(b), or 102(g)(2).
`
`Samsung’s claim charts cite to particular teachings and disclosures of the prior art as
`
`applied to features of the asserted claims. Persons having ordinary skill in the art, however, may
`
`view an item of prior art in the context of other publications, literature, products, and
`
`understanding. As such, the cited portions are only exemplary, and Samsung reserves the right
`
`to rely on uncited portions of the prior art references and on other publications and expert
`
`testimony as aids in understanding and interpreting the cited portions, as providing context
`
`thereto, and as additional evidence that the prior art discloses a claim limitation. Samsung
`
`further reserves the right to rely on uncited portions of the prior art references, other
`
`publications, and testimony to establish bases for combinations of certain cited references that
`
`render the asserted claims obvious. Further, for any combination, Samsung reserves the right to
`
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`RFCyber's Exhibit No. 2006, IPR2021-00981
`Page 005
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`

`

`rely additionally on information generally known to those skilled in the art or common sense.
`
`The references discussed in the claim charts may disclose the elements of the asserted
`
`claims explicitly or inherently, or they may be relied upon to show the state of the art in the
`
`relevant time frame. The suggested obviousness combinations are provided in the alternative to
`
`Samsung’s anticipation contentions and are not to be construed to suggest that any reference
`
`included in the combinations is not by itself anticipatory.
`
`Samsung reserves the right to challenge patentability of the asserted claims under 35
`
`U.S.C. § 102(f) in the event Samsung obtains evidence that the named inventors of the Asserted
`
`Patents did not invent the subject matter claimed in the Asserted Patents. Should Samsung
`
`obtain such evidence, it will provide the name of the person(s) from whom and the circumstances
`
`under which the invention or any part of it was derived. Samsung further reserves the right to
`
`assert that the Asserted Patents are unenforceable due to inequitable conduct.
`
`III.
`
`IDENTIFICATION OF PRIOR ART PURSUANT TO P. R. 3-3(a)
`A.
`
`Priority Date of the Asserted Patents
`
`As to the ’218, ’855, and ’787 patents, Samsung uses September 24, 2006 for the
`
`purposes of these Invalidity and Subject-Matter Eligibility Contentions. In its Infringement
`
`Contentions, Plaintiff provided a priority date for the ’009 and ’046 patents, of September 24,
`
`2006, which is earlier than the filing dates of the priority applications to the ’009 and ’046
`
`patents.
`
`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 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
`
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`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 also 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).
`
`1.
`
`Priority Date for the ’009 Patent
`
`Without admitting the validity of any priority date, Samsung 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. 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
`
`ACTIVE 58123500v3
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`RFCyber's Exhibit No. 2006, IPR2021-00981
`Page 007
`
`

`

`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.
`
`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
`
`CIP
`
`US PAT APP 11/739044
`Liang Seng Koh, Hsin Pan, 
`Futong Cho, Fuliang Cho
`(filed 4/23/2007)
`US 2016/0335618
`
`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
`
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`
`

`

`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
`
`missing in the ’099 Parent Applications, including “electronic wallet,” “provisioning manager,”
`
`“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 ’009 patent specification.
`
`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.
`
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`Page 009
`
`

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`Claims 11–17 also recite subject matter describing a “distributor,” where the first
`
`disclosure of the distributor is found in the ’009 patent specification. 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 modules.” Each of
`
`these limitations first finds support in the ’009 patent specification (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.
`
`2.
`
`Priority Date for the ’046 Patent
`
`Without admitting the validity of any priority date, Samsung 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
`
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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
`
`Samsung incorporates by reference Google’s Petitions for Post-Grant Review of the ’046
`
`Patent (but not necessarily claim construction positions), in which Google 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., PGR2021-00028, Paper 1, at 13–25, 32–57; Google
`
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`LLC v. RFCyber Corp., PGR2021-00029, Paper 1, at 6–20. 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).1 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.2 The descriptions of Figures 1A and 1B in the ’046 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
`
`’046 patent is not entitled to the priority date of the ’218 patent, i.e., September 24, 2006. In
`
`
`1 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.
`2 The ’802 provisional also includes an “Appendix” containing the majority of the specification
`and figures of the ’832 application.
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`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.
`
`B.
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`Admitted Prior Art
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`The Asserted Patents themselves, including in their specifications, contain statements
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`admitting that certain limitations were already known in the art at the time of the purported
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`inventions. Such “[a]dmissions in the specification regarding the prior art are binding on the
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`patentee for purposes of a later inquiry into obviousness.” PharmaStem Therapeutics, Inc. v.
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`ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007); see also Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is
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`in the prior art is binding on the applicant and patentee for determinations of anticipation and
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`obviousness.”). The patent applicant also admitted during prosecution that certain limitations
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`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
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`and not exhaustive.
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`Samsung further intends to rely on admissions by Plaintiff, the named inventors, and their
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`agents concerning the scope of the claims and prior art relevant to the Asserted Patents found in,
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`inter alia, the patent prosecution for the Asserted Patents and related patents and/or patent
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`applications; statements made by Plaintiff at any hearings; any deposition testimony of Plaintiff,
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`the named inventors, or their agents; and the papers filed and any evidence submitted by Plaintiff
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`in connection with this litigation or related proceedings before the U.S. Patent and Trademark
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`Office.
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`1.
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`The ’218, ’855, and ’787 patents
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` Contactless smart card technology and MIFARE smart cards:
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`o “Single functional cards have been successfully used in enclosed environments
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`such as transportation systems. One example of such single functional cards is
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`MIFARE that is the most widely installed contactless smart card technology in the
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`world. With more than 500 million smart card ICs and 5 million reader
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`components sold, MIFARE has been selected as the most successful contactless
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`smart card technology. MIFARE is the perfect solution for applications like
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`loyalty and vending cards, road tolling, city cards, access control and gaming.”3
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`’218 patent at 1:13-22.
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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
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`Platform (GP) that is created by a cross-industry membership organization to
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`advance standards for smart card growth. A GP combines the interests of smart
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`card issuers, vendors, industry groups, public entities and technology companies
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`to define requirements and technology standards for multiple application smart
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`cards.” Id. at 4:13-20.
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` The GlobalPlatform 2.1 specification, including card manager security and security
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`domains for establishing a secured channel to personalize an application on the smart
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`card:
`o “Card Manager Security 106, referring to a general security framework of a
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`preload operating system in a smart card, provides a platform for PIN
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`management and security channels (security domains) for card personalization.
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`3 The ’218, ’855, and ’787 patents share substantially identical specifications, with slightly
`different line numbering. For simplicity, Samsung cites only to the specification of the ’218
`patent when discussing the ’218, ’855, and ’787 patents.
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`This platform via a card manager can be used to personalize a purse in one
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`embodiment. One example of the card manager security 106 is what is referred to
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`as a Global Platform (GP) that is created by a cross-industry membership
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`organization to advance standards for smart card growth. A GP combines the
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`interests of smart card issuers, vendors, industry groups, public entities and
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`technology companies to define requirements and technology standards for
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`multiple application smart cards. In one embodiment, a global platform security is
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`used to personalize a smart card. As a result, both e-purse keys and card access
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`keys are personalized into the target tag.” Id. at 4:8-22.
`o “[A] Java based smart card, SmartMX, is preloaded with an operating system
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`JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card
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`manager functionality.” Id. at 4:53-56.
`o “As described above, an e-purse is built on top of a global platform to provide a
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`security mechanism necessary to personalize applets designed therefor. In
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`operation, a security domain is used for establishing a secured channel between a
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`personalization application and the e-purse.” Id. at 5:50-54.
`o “The card manager 311 performs at least two functions: 1. establishing a security
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`channel, via a security domain, to install and personalize an external application
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`(e.g., e-purse applet) in the card personalization; and 2. creating security means
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`(e.g., PINs) to protect the application during subsequent operations. As a result of
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`the personalization process 304, the e-purse applet 312 and the emulator 314 are
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`personalized.” Id. at 6:3-10.
`o “With an application security domain (e.g., a default security setting by a card
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`issuer), a security channel is then established at 356 between a new e-purse SAM
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`(e.g., the SAM 306 of FIG. 3A) and an e-purse applet (e.g., the e-purse applet 312
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`of FIG. 3A) in the device.” Id. at 6:29-33.
`o “A security domain is used to generate session keys for a secured session between
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`two entities, such as the card manager applet and a host application, in which case
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`the host application may be either a desktop personalization application or a
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`networked personalization service provided by a backend server.” Id. at 6:41-48.
`o “[A] Java based smart card, SmartMX, is preloaded with an operating system
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`JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card
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`manager functionality.” Id. at 4:53-56
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` Using a security domain to generate session keys for a secured session between two
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`entities:
`o “A security domain is used to generate session keys for a secured session between
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`two entities, such as the card manager applet and a host application, in which case
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`the host application may be either a desktop personalization application or a
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`networked personalization service provided by a backend server.” Id. at 6:41-48.
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` The SmartMX smart card:
`o “[A] Java based smart card, SmartMX, is preloaded with an operating system
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`JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card
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`manager functionality.” Id. at 4:53-56.
`o “The SMX is pre-loaded with a Mifare emulator 208 (which is a single functional
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`card) for storing values.” Id. at 4:62-64.
`o “[T]he SMX is a JavaCard that can run Java applets.” Id. at 4:66-67
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` The JCOP 4.1 operating system:
`o “[A] Java based smart card, SmartMX, is preloaded with an operating system
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`JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card
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`manager functionality.” Id. at 4:53-56.
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` Java operating system on a mobile phone:
`o “The purse manager midlet 204 is implemented as a ‘midlet’ on a Java cellphone,
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`or an ‘executable application’ on a PDA device.” Id. at 5:11-13.
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` APDU commands:
`o “APDU commands are constructed by the servers 210 having access to a SA
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`module 212, where the APDU stands for Application Protocol Data Unit that is a
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`communication unit between a reader and a card. The structure of an APDU is
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`defined by the ISO 7816 standards.” Id. at 5:23-27.
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` Triple-DES keys:
`o “Each application security domain of a global platform includes three 3DES keys.
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`For example: Key1: 255/1/DES-ECB/404142434445464748494a4b4c4d4e4f[;]
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`Key2:
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`255/2/DES-ECB/404142434445464748494a4b4c4d4e4f[;]
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`Key3:
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`255/3/DES-ECB/404142434445464748494a4b4c4d4e4f”. Id. at 6:34-41.
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` Security Authentication Module (“S