`
`
`
`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. 9,240,009
`Filing Date: January 16, 2012
`Issue Date: January 19, 2016
`
`Inventors: Liang Seng Koh, Hsin Pan, and Xiangzhen Xie
`Title: MOBILE DEVICES FOR COMMERCE OVER UNSECURERD
`NETWORKS
`
`
`__________________________________________________________________
`
`RFCYBER CORP.’S
`PRELIMINARY RESPONSE
`
`Case No. IPR2021-00981
`
`__________________________________________________________________
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`Page(s)
`
`I.
`INTRODUCTION ............................................................................................ 1
`II. THE ’009 PATENT .......................................................................................... 1
`III. THE ALLEGED PRIOR ART ......................................................................... 5
`A. Dua (U.S. Patent App. Pub. No. 2006/0165060) .................................. 5
`B.
`GlobalPlatform ...................................................................................... 6
`IV. CLAIM CONSTRUCTION .............................................................................. 7
`V. LEVEL OF ORDINARY SKILL IN THE ART .............................................. 7
`VI. PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM............................................................................................................. 7
`A.
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 ...................................................................................................... 7
`Samsung’s Combination Fails to Disclose or Render Obvious
`“wherein the server is configured to prepare data necessary for
`the application to function as designed on the mobile device” /
`“wherein the server is configured to prepare data necessary for
`the each of the modules to function as designed on the mobile
`device” as Required by All Challenged Claims .................................... 8
`A POSITA Would Not Combine Dua with Global Platform .............12
`C.
`VII. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF
`THE DIRECTOR UNDER 35 U.S.C. § 314(A) ...........................................15
`A. No Stay of the Parallel District Court Litigation ................................17
`B.
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date .............................................................................17
`Significant Investment by the Time of Institution Favors
`Discretionary Denial............................................................................18
`
`C.
`
`B.
`
`i
`
`

`

`
`
`D.
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`The District Court Litigation Involves the Same Claims and
`the Same Arguments ...........................................................................20
`The Parallel District Court Litigation and the Petition Involve
`the Same Parties ..................................................................................21
`Other Circumstances Favor Denial of Institution ...............................22
`F.
`VIII. CONCLUSION ...............................................................................................23
`
`E.
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
` 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) ................................................................................................................... 16
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................... 15, 20
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 14
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (P.T.A.B. May 15, 2020) ......................................... 17
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)........................................... 16
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 8
`KSR Intern. Co. v. Telefex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 8
`Lyft, Inc. v. Quartz Auto Techs., LLC,
`IPR2020-01450, Paper 7 (P.T.A.B. Mar. 4, 2021) ............................................. 12
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10, at 8-16 (P.T.A.B. Oct. 16,
`2019) ................................................................................................................... 17
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)........................................... 16
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 14
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .............................................. 17
`
`iii
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ........................................... 21
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ......................................... 19
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 13
`Statutes
`35 U.S.C. § 103 ...................................................................................................... 7, 8
`35 U.S.C. § 314(A) ...................................................................................... 14, 16, 22
`35 U.S.C. § 314(b) ................................................................................................... 18
`35 U.S.C. § 316(a)(11) ............................................................................................. 17
`
`
`
`
`iv
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`EXHIBIT LIST
`
`2002
`
`2003
`
`2004
`
`Exhibit No. Description
`2001
`RFCyber Corp. v. Google LLC, 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 LLC, et al., No. 2:20-cv-00274-JRG,
`Dkt. 85 (E.D. Tex. July 26, 2021)
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`
`
`
`v
`
`

`

`
`I.
`
`INTRODUCTION
`On June 15, 2021, Samsung Electronics America, Inc. and Samsung
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`Electronics Co., Ltd. (collectively, “Petitioner” or “Samsung”) filed a petition
`
`requesting inter partes review of claims 1-17 (“challenged claims”) of U.S. Patent
`
`No. 9,240,009 (GOOG-1001, “’009 Patent”). Paper 1. (“Petition” or “Pet.”). The
`
`Declaration of Gerald Smith, Ex. 1003, (“Smith Declaration”) accompanied the
`
`Petition. On June 21, 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.
`
`II. THE ’009 PATENT
`The invention of the ’009 Patent “is generally related to commerce over
`
`networks,” particularly “techniques for personalizing a secure element and
`
`provisioning an application such as an electronic purse that can be advantageously
`
`used in portable devices configured for both electronic commerce (a.k.a., e-
`
`commerce) and mobile commerce (a.k.a., m-commerce). ’009 Patent at 1:18-24. The
`
`inventors of the ’009 Patent realized that “[o]ne of the concerns in the NFC mobile
`
`ecosystem is its security in an open network. Thus there is a need to provide
`
`techniques to personalize a secure element in a contactless smart card or an NFC-
`
`enabled mobile device so that such a device is so secured and personalized when it
`
`comes to financial applications or secure transactions.” Id. at 2:9-14.
`
`1
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`To solve these problems, the inventors of the ’009 Patent developed
`
`
`
`“techniques for personalizing secure elements in NFC devices to enable various
`
`secure transactions over a network.” ’009 Patent at 2:31-34. For example, “security
`
`keys (either symmetric or asymmetric) are personalized so as to personalize an e-
`
`purse and perform a secured transaction with a payment server.” Id. at 2:53-56.
`
`“According to one embodiment of the present invention, FIG.1D illustrates data
`
`flows among a user for an NFC device (e.g., an NFC mobile phone), the NFC device
`
`itself, a TSM server, a corresponding SE manufacturer and an SE issuer.” Id. at 9:58-
`
`61.
`
`
`
`2
`
`

`

`
`’009 Patent, Fig. 1D.
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`For example, the system makes use of an e-purse manager midlet that
`
`facilitates communication between securely stored applets and payment servers over
`
`a wireless network:
`
`’009 Patent, Fig. 2F (showing midlet (in yellow), and applet (in green)).
`
`
`
`3
`
`

`

`
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`
`
`’009 Patent, Fig. 3B (annotations added)
`
`For example, in a data flow among three entities (e.g., a SAM, an e-purse
`
`manager, and a single function tag), an e-purse manager may act as a gatekeeper “to
`
`ensure only secured and authorized data transactions could happen.” ’009 Patent,
`
`10:28-29.”
`
`4
`
`

`

`
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`’009 Patent, Fig. 1E.
`
`
`
`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
`
`which credential issuers can securely and rapidly target specific wireless devices for
`
`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
`
`5
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`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 another 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
`
`credential issuer.” Id. Extensions may be preloaded or using the secure SIP
`
`provisioning process for credentials. Id. at [0295], [0296].
`
`B. GlobalPlatform
`The GlobalPlatform Card Specification version 2.1.1
`
`
`
`(Ex. 1006,
`
`“GlobalPlatform”) describes the “specifications that shall be implemented on
`
`6
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`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 Preliminary Response only, Patent Owner believes that
`
`claim construction is not required to resolve any issues.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`For the purposes of this Preliminary Response only, Patent Owner utilizes
`
`Petitioner’s proposed level of skill in the art— “bachelor’s degree in computer
`
`science, computer engineering, electrical engineering or an equivalent, and about
`
`one year of professional experience relating to mobile payment technology.” Pet. at
`
`10-11.
`
`VI. PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM
`Samsung submits two supposed grounds of obviousness. Pet. at 6. Grounds
`
`
`
`2 and 3 only challenge dependent claims. Id. As discussed below, none of
`
`Samsung’s combinations renders any claim obvious.
`
`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
`
`7
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`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 the subject matter pertains.” KSR Intern. Co. v.
`
`Telefex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103).
`
`B.
`
`Samsung’s Combination Fails to Disclose or Render
`Obvious “wherein the server is configured to prepare data
`necessary for the application to function as designed on the
`mobile device” / “wherein the server is configured to
`prepare data necessary for the each of the modules to
`function as designed on the mobile device” as Required by
`All Challenged Claims
`Samsung fails to show that this limitation would be obvious. Samsung
`
`
`
`identifies Dua’s WCM as the “server” of the claims. Pet. at 28. But the WCM does
`
`not, even in Samsung’s combination, “prepare data necessary for” the application or
`
`modules to function as designed.
`
`
`
`Samsung first argues that the Personalization File, which the WCM receives
`
`from the issuer’s card management system or personalization server, is data that the
`
`WCM prepares. Id. (citing Dua at [0057]-[0058]). Samsung further identifies Dua’s
`
`extensions as the “application” for claim 1 or “modules” for claim 14. Id. at 28, 48-
`
`8
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`50. But Dua explains that the Personalization File is for the wallet application itself,
`
`not for any extensions. Dua at [0057]-[0063]. Moreover, Samsung does not identify
`
`any disclosure that the Personalization File is “prepared by” the WCM; the WCM
`
`merely receives the file and forwards it to the user’s device. See Pet. at 28; Dua at
`
`[0057] (“The request is forwarded to WCM 110 along with the user’s mobile (E.164)
`
`number, the credentials to be issued, encryption keys, and other information
`
`contained in the Personalization File for the specific request.”). Accordingly, Dua
`
`does not disclose this limitation.
`
`
`
`Samsung next argues that Dua, in view of GlobalPlatform, discloses this
`
`limitation. Pet. at 28-29. Samsung argues that issuing a GlobalPlatform
`
`“INSTALL” command using the Issuer Security Domain is “preparing data” for a
`
`GlobalPlatform application on a smart card. Id.; see also Ex. 1006 at 65. Samsung
`
`identifies no evidence that a POSITA would understand that issuing a command is
`
`“preparing data.” See Pet. at 28-29. Indeed, the ’009 Patent’s specification describes
`
`issuing commands differently from “preparing data.” Compare ’009 Patent 13:10-
`
`21 (“prepare customized application data” such as personalized transaction keys)
`
`with 9:11-14 (describing a command as “prepar[ing] a mechanism”).
`
`
`
`Samsung secondarily states that a GlobalPlatform application may “obtain its
`
`own keys and Cardholder-specific data” and that such data is “prepared by the
`
`WCM.” Pet. at 29. Samsung cites no evidence that the keys or Cardholder-specific
`
`9
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`data would be prepared by the WCM. Id. Moreover, that interpretation is counter
`
`to GlobalPlatform’s disclosure, and contradicts Samsung’s own arguments as to
`
`other elements.
`
`
`
`For example, the only disclosure Samsung identifies as to the limitation
`
`“sending to a server via the network interface an identifier identifying the application
`
`together with device information of a secure element” is the “delegated installation
`
`process.” Pet. at 23. But in the delegated installation process, an Application
`
`Provider, not the Card Issuer, establishes a secure channel. See id. (quoting
`
`GlobalPlatform at 92). See also Ex. 1006 at 92 (“Delegated Installation allows an
`
`Application Provider to establish a Secure Channel, for installing an Application
`
`from an Executable Load File that is associated to the Application Provider's
`
`Security Domain.”). All the communication with the application is then performed
`
`by the Application Provider, not the Card Issuer. Id. at 88 (“After an Application is
`
`installed, the Application may need to obtain its personalization data, including its
`
`own keys and Cardholder-specific data. The Application can utilize the secure
`
`communication and key decryption services of its associated Security Domain to
`
`manage the secure loading of this personalization data.” (emphasis added)). Thus,
`
`to the extent that any data is prepared, it is the Application Provider that prepares it.
`
`Samsung therefore needed to show that the WCM is in place of the GlobalPlatform
`
`10
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`Application Provider in order to disclose this limitation and render the claims
`
`obvious.
`
`
`
`However, as can be seen from Samsung’s own arguments, the WCM stands
`
`in the place of the GlobalPlatform Card Issuer, not an Application Provider. For
`
`example, Samsung argues that the “the Issuer Security Domain establishes a ‘Secure
`
`Channel’ between a GlobalPlatform-compliant smart card (i.e., the secure element)
`
`and Dua’s WCM (i.e., the server).” Pet. at 27. The Issuer Security Domain is
`
`“present on the card ‘Pre-Issuance’ before Initialization.’” Pet. at 21. That is, the
`
`Issuer Security Domain is installed by the Card Issuer, because it is present “during
`
`the Pre-Issuance phases of the card’s life.” Ex. 1006 at 39-40; see also id. (card in
`
`state INITIALIZED “is not yet ready to be issued to the Cardholder”). Moreover,
`
`“only the authenticated Card Issuer is allowed to access” the APDU interface
`
`through the Issuer Security Domain. Id. at 53. Thus, the WCM, which Samsung
`
`alleges would use the Issuer Security Domain to issue commands, takes the place of
`
`the Card Issuer in Samsung’s combination.
`
`
`
`Therefore, Samsung has not shown that its identified server—the WCM—
`
`prepares data necessary for the application or module as required by the Challenged
`
`Claims.
`
`
`
`Accordingly, Samsung has not shown that Dua, either alone or in view of
`
`GlobalPlatform, discloses or renders obvious this limitation.
`
`11
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`C. A POSITA Would Not Combine Dua with Global Platform
`As discussed above, Dua discloses using SIP for all personalization
`
`
`
`
`
`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 instead. Pet. at 16-18.
`
`
`
`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. E.g., Pet. at 41. 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.”).
`
`12
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`Adding GlobalPlatform to Dua would defeat Dua’s objective to provide a SIP-
`
`
`
`
`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 instead
`
`merely asserts that a POSITA would use GlobalPlatform to provide security over the
`
`SIP link between the wireless device and the WCM. E.g., Pet. at 26. But Dua
`
`already teaches that the SIP link is secure because it is a direct connection between
`
`13
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`the end-points. Dua at [0178] (“The direct connection between the end-points using
`
`SIP offers a secure method, without intermediary servers, by which to transmit
`
`confidential information.”) A POSITA would not be motivated to add redundant
`
`functionality.
`
`
`
`Instead of providing a motivation, Samsung merely states that one of skill in
`
`the art would use a smart card with the GlobalPlatform system. Pet. at 16-18.
`
`Samsung does not provide any actual motivation to combine Dua with
`
`GlobalPlatform; instead, it quotes, out of context, a few passages within Dua that
`
`refer to card organizations. See Pet. at 16-18. 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.”).
`
`
`
`Accordingly, Samsung has failed to show that it would be obvious to combine
`
`GlobalPlatform with Dua. Since each of Samsung’s combinations requires at least
`
`14
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`Dua to be combined with GlobalPlatform, Samsung’s obviousness arguments fail,
`
`and the Board should deny institution.
`
`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 proceedings in Texas
`
`(RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG (E.D. Tex.) (lead
`
`case), RFCyber Corp. v. Samsung Electronics Co., Ltd., et al., No. 2:20-cv-335-JRG
`
`(E.D. Tex.) (member case)) (“the Texas Action”) necessitate denial of the Petition
`
`under the 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 proceeding are the same party;” and (f) “other
`
`circumstances that impact the Board’s 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
`
`15
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`granted a stay and will not grant one under the “consistent and long established”
`
`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
`
`Final Written Decision in December 2022. See infra Section VII.B. Third, the
`
`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,
`
`there is complete overlap between the challenged claims and prior art and those at
`
`issue in the parallel proceedings. See infra Section VII.D. Fifth, Petitioner and
`
`Patent Owner will have completed claim construction before the Board issues an
`
`institution decision and will complete trial, and receive a judgment on the merits,
`
`before the projected statutory deadline for a Final Written Decision. See infra
`
`Section VII.E. Finally, as shown above, Samsung’s obviousness combination, even
`
`taken at face value, lacks a limitation of the claims and cannot render any claim
`
`obvious. Moreover, RFCyber’s antedating of the primary reference is best addressed
`
`in District Court. See infra Section VII.F.
`
`Accordingly, the Board should exercise its discretion under § 314(a) and deny
`
`the Petition because institution of this proceeding would not be consistent with the
`
`objective of the AIA to “provide an effective and efficient alternative to district court
`
`litigation.” NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, at
`
`16
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`20 (P.T.A.B. Sept. 12, 2018) (quoting Gen. Plastic Indus. Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16–17 (P.T.A.B. Sept. 6, 2017)
`
`(precedential)).
`
`A. No Stay of the Parallel District Court Litigation
`On June 22, 2021, Petitioner moved the Texas Court to stay the District Court
`
`
`
`Litigation pending the resolution of the IPRs and PGRs filed against the patents-in-
`
`suit. While the Court has not decided that motion, the long-standing practice in the
`
`Eastern District of Texas is to deny motions to stay unless all asserted claims in the
`
`case are subject to instituted proceedings in the PTAB. AGIS Software Dev. LLC v.
`
`Google LLC, No. 2:19-cv-00361-JRG, 2021 WL 465424, at *2 (E.D. Tex. Feb. 9,
`
`2021) (“It has been this Court’s consistent and long established practice to deny
`
`motions to stay pending IPR and EPR when the PTAB or PTO have instituted review
`
`on less than all asserted claims of all asserted patents . . . .”). Under that practice,
`
`there is no evidence that a stay will be granted. Accordingly, this factor weighs in
`
`favor of discretionary denial.
`
`B.
`
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date
`The Texas Court issued its Docket Control Order on June 10, 2021, setting
`
`
`
`trial for March 2022. Ex. 2001. Pursuant to 35 U.S.C. § 316(a)(11), the projected
`
`17
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`statutory deadline for a Final Written Decision is in December 2022, nine months
`
`later.
`
`
`
`Accordingly, this factor weighs strongly in favor of denying institution. See
`
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218, Paper 7, at 7-10
`
`(P.T.A.B. Jan. 7, 2020) (denying institution where jury selection was scheduled for
`
`approximately six months before trial in the Board proceeding would conclude);
`
`Next Caller Inc. v. TrustID, Inc., IPR2019-00961, -00962, Paper 10, at 8-16
`
`(P.T.A.B. Oct. 16, 2019) (denying institution where trial was scheduled to conclude
`
`“several months,” before a final decision would be due); Cisco Sys., Inc. v. Ramot
`
`at Tel Aviv Univ. Ltd., IPR2020-00122, Paper 15 at 8 (P.T.A.B. May 15, 2020)
`
`(“Because the trial date is substantially earlier than the projected statutory deadline
`
`for the Board’s final decision, this factor weighs in favor of discretionary denial.”).
`
`
`
`Samsung does not substantively address that the Texas Action will reach trial
`
`before the Final Written Decision in this case, and merely speculates that the Court
`
`may stay the case if trial is instituted on every Petition. Pet. at 10-11.
`
`
`
`
`
`Thus, this factor weighs strongly in favor of discretionary denial.
`
`C.
`
`Significant Investment by the Time of Institution Favors
`Discretionary Denial
`The parties’ investment in the parallel proceeding weighs in favor of
`
`discretionary denial. Significant work in the District Court Litigation has already
`
`18
`
`

`

`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`taken place, and nearly all substantive work will be complete by the Board’s
`
`institution decision in December.
`
`
`
`Pursuant to 35 U.S.C. § 314(b), the Board will issue an institution decision in
`
`December 2021. Under the Texas Action Court’s Docket Control Order, by the time
`
`of the institution decision, fact and expert discovery, and claim construction will be
`
`complete, and both opening and rebuttal expert reports (including on validity issues)
`
`will have been served. Ex. 2001 at 3-4. Dispositive motions will be filed within
`
`days of the institution decision. These sub