`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.
`
`
`
`U.S. Patent No. 9,240,009 to Koh et al.
`
`IPR Case No. IPR2021-00981
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1-17 OF U.S. PATENT NO. 9,240,009
`
`

`

`TABLE OF CONTENTS
`BACKGROUND ............................................................................................. 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) FOR INTER
`PARTES REVIEW ........................................................................................... 2 
`A. 
`Real Party in Interest Under 37 C.F.R. § 42.8(b)(1) ............................. 2 
`B. 
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 2 
`C. 
`Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) and Service
`Information under 37 C.F.R. § 42.8(b)(4) ............................................. 4 
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.15 ......................................... 5 
`III. 
`IV.  CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D) ....... 5 
`V. 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 5 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 5 
`B. 
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested .............................................................................................. 5 
`VI.  THE ’009 PATENT ......................................................................................... 6 
`A.  Overview ............................................................................................... 6 
`B. 
`Effective Filing Date ............................................................................. 6 
`C. 
`’009 Patent’s Prosecution ...................................................................... 6 
`VII.  PETITIONERS’ GROUNDS ARE NEW AND DISCRETIONARY
`DENIAL IS UNWARRANTED UNDER GENERAL PLASTIC & FINTIV .. 7 
`General Plastic ...................................................................................... 8 
`A. 
`Fintiv ...................................................................................................... 9 
`B. 
`VIII.  PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ................... 10 
`IX.  CLAIM CONSTRUCTION .......................................................................... 11 
`X.  OVERVIEW OF PRIOR ART ...................................................................... 11 
`A.  Dua ...................................................................................................... 11 
`B. 
`GlobalPlatform .................................................................................... 12 
`Smart Card Handbook ........................................................................ 14 
`C. 
`D. 
`Thibadeau ............................................................................................ 15 
`XI.  DETAILED ANALYSIS ............................................................................... 16 
`A.  Ground 1: Dua in view of GlobalPlatform render obvious claims 1-6
`and 13-17 ............................................................................................. 16 
`
`i
`
`

`

`B. 
`
`The scope and content of the prior art ...................................... 16 
`1. 
`2.  Motivation/Rationale for Combining the Prior Art .................. 16 
`3. 
`Application of Prior Art to Claims 1-6 and 13-17 .................... 18 
`Ground 2: Dua in view of GlobalPlatform and Smart Card Handbook
`render obvious claims 7-10 ................................................................. 54 
`1. 
`The scope and content of the prior art ...................................... 54 
`2.  Motivation/Rationale for Combining the Prior Art .................. 54 
`3. 
`Application of Prior Art to Claims 7-10 ................................... 56 
`Ground 3: Dua in view of GlobalPlatform, Smart Card Handbook,
`and Thibadeau renders obvious claims 11 and 12 .............................. 63 
`1. 
`The scope and content of the prior art ...................................... 63 
`2.  Motivation/Rationale for Combining the Prior Art .................. 64 
`XII.  CONCLUSION .............................................................................................. 66 
`
`
`
`C. 
`
`ii
`
`

`

`CLAIM 1:
`
`CLAIM LISTING
`
`
`[1.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[1a] a network interface;
`
`[1b] an interface to receive a secure element;
`
`[1c] a memory space for storing at least a module and an application
`
`downloaded from the network;
`
`[1d] a processor coupled to the memory space and configured to execute the
`
`module to perform operations including:
`
`[1di] sending to a server via the network interface an identifier
`
`identifying the application together with device information of a
`
`secure element, [1dii] wherein the application is downloaded from the
`
`network in the mobile device;
`
`[1diii] establishing a secured channel between the secure element and
`
`the server using a key set installed on the secure element, [1div]
`
`wherein the server is configured to prepare data necessary for the
`
`application to function as designed on the mobile device; and
`
`[1dv] receiving the data from the server to associate the application
`
`with the secure element, [1dvi] wherein the application subsequently
`
`iii
`
`

`

`functions in conjunction with the secure element.
`
`CLAIM 2:
`
`The mobile device as recited in claim 1, wherein the data received in the mobile
`
`device includes an application key set for the application, and a user interface
`
`specifically designed for the mobile device.
`
`CLAIM 3:
`
`The mobile device as recited in claim 2, wherein the mobile device is a near field
`
`communication (NFC) enabled mobile phone, and the application is an electronic
`
`purse (e-purse), the mobile device is used to exchange secured data with another
`
`device within a near distance to conduct a transaction.
`
`CLAIM 4:
`
`The mobile device as recited in claim 3, wherein the secured data is being
`
`exchanged over a secured channel between the mobile device and the another
`
`device established by the application key set.
`
`CLAIM 5:
`
`The mobile device as recited in claim 4, wherein the transaction is conducted
`
`without the mobile device communicating with a transaction server.
`
`CLAIM 6:
`
`[6.PREAMBLE] The mobile device as recited in claim 1, [6a] wherein said
`
`sending to a server via the network interface an identifier identifying the
`
`iv
`
`

`

`application together with device information of a secure element comprises:
`
`[6bi] determining whether the secure element has been personalized with a
`
`Trusted Service Management (TSM) system, [6bii] wherein the TSM system
`
`is a collection of services configured to distribute and manage contactless
`
`services for customers signed up with the TSM, and provide data exchanges
`
`among different parties to make electronic commerce possible over a
`
`wireless network; and
`
`[6ci] performing a personalization process for the secure element when the
`
`secure element has not been personalized with the Trusted Service
`
`Management (TSM) system, [6cii] wherein the secure element when
`
`personalized establishes a security platform for the application to run on the
`
`mobile device.
`
`CLAIM 7:
`
`[7.PREAMBLE] The mobile device as recited in claim 6, wherein the
`
`personalization process comprises:
`
`[7a] causing the mobile device to initiate data communication with a server
`
`in the TSM system;
`
`[7bi] retrieving device information of the secure element in responding to a
`
`request from the TSM server after the TSM server determines that the secure
`
`element is registered therewith, [7bii] wherein the device information is a
`
`v
`
`

`

`sequence of characters uniquely identifying the secure element;
`
`[7ci] receiving at least a set of keys from the TSM server, [7cii] wherein the
`
`keys are generated in the TSM server in accordance with the device
`
`information of the secure element; and
`
`[7d] storing the set of keys in the secure element to facilitate a subsequent
`
`transaction with the secure element in the computing device.
`
`CLAIM 8:
`
`The mobile device as recited in claim 7, wherein the device information includes
`
`an identifier of the secure element, manufacturer information and a batch number.
`
`CLAIM 9:
`
`The method as recited in claim 8, wherein part of the data is used to facilitate the
`
`server to remotely manage the application.
`
`CLAIM 10:
`
`The mobile device as recited in claim 7, wherein the secure element is embedded
`
`in the mobile device and integrated with the mobile device via the interface.
`
`CLAIM 11:
`
`The mobile device as recited in claim 7, wherein the secure element is a software
`
`module installed in a secure memory space only accessible by a distributor of the
`
`secure element.
`
`vi
`
`

`

`CLAIM 12:
`
`The mobile device as recited in claim 11, wherein some components are updated
`
`when the secure element is upgraded by the distributor.
`
`CLAIM 13:
`
`[13.PREAMBLE] The mobile device as recited in claim 1, wherein the operations
`
`further comprises:
`
`[13a] receiving a message from a distributor of the application, the message
`
`including an identifier identifying the application;
`
`[13b] verifying that the message is indeed from the distributor;
`
`[13c] disassociating the application with the secure element in responding to
`
`a confirmation from the distributor after the message has been verified and
`
`was indeed from the distributor; and
`
`[13d] notifying the distributor that the application installed in the mobile
`
`device is no longer active.
`
`CLAIM 14:
`
`[14.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[14a] a network interface;
`
`[14b] a secure element;
`
`[14c] a memory space for storing various modules downloaded from the network,
`
`vii
`
`

`

`each of the modules configured to provide an application or a service to a user of
`
`the mobile device;
`
`[14d] a processor coupled to the memory space and configured to execute an
`
`embedded module to perform operations including:
`
`[14di] provisioning each of the modules, wherein said provisioning each of
`
`the modules with a distributor comprises:
`
`[14dii] sending to a server via the network interface an identifier
`
`identifying the each of the modules together with device information
`
`of the secure element, [14diii] wherein the each of the modules is
`
`downloaded from the network in the mobile device;
`
`[14div] establishing a secured channel between the secure element
`
`and the server using a key set installed on the secure element, wherein
`
`the server is configured to prepare data necessary for the each of the
`
`modules to function as designed on the mobile device; and
`
`[14dv] receiving the data from the server to associate the each of the
`
`modules with the secure element, wherein the data includes a set of
`
`keys generated for the each of the modules, wherein the each of the
`
`modules subsequently functions in conjunction with the secure
`
`element.
`
`viii
`
`

`

`CLAIM 15:
`
`[15.PREAMBLE] The mobile device as recited claim 14, wherein the operations
`
`further comprise:
`
`[15a] receiving a message from a distributor of one of the modules, the
`
`message including an identifier identifying the one of the modules;
`
`[15b] verifying that the message is authenticated;
`
`[15c] disassociating the one of the modules with the secure element in
`
`responding to a confirmation from the distributor after the message has been
`
`verified and was indeed from the distributor; and
`
`[15d] notifying the distributor that the one of the modules installed in the
`
`mobile device is no longer active.
`
`CLAIM 16:
`
`The mobile device as recited claim 14, wherein the mobile device includes a
`
`display configured to display a user interface showing some of the modules that are
`
`still provisioned and active, each of the modules is configured to show another user
`
`interface particularly designed for the display of the mobile device when the each
`
`of the modules is activated by a user.
`
`CLAIM 17:
`
`The mobile device as recited claim 16, wherein the secure element must be
`
`personalized before each of the modules is provisioned, each of the provisioned
`
`ix
`
`

`

`modules is associated with the personalized secure element and a key set generated
`
`in accordance with a key set of the secure element.
`
`
`
`
`
`
`
`x
`
`

`

`PETITIONERS’ EXHIBIT LIST
`
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. U.S. 9,240,009 (the “’009 patent”)
`
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`
`Declaration of Gerald Smith Regarding Invalidity of U.S. Patent
`No. 8,118,218
`
`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
`
`Defendants’ Contingent Election Regarding Invalidity Defenses,
`RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-
`00335 (E.D. Tex.) (Dkt. 60) (filed June 8, 2021).
`
`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
`
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`
`Common Electronic Purse Specifications, Technical
`Specification Version 2.3 (March 2001)
`
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October
`2004)
`
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
`
`xi
`
`

`

`Exhibit No. Description
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote
`APDU structure for UICC based applications (Release 6)”
`
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
`
`RESERVED
`
`Excerpt from Cambridge Business English Dictionary
`
`U.S. Patent No. 6,983,882
`
`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
`
`RESERVED
`
`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
`
`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
`
`“Here Comes The Wallet Phone,” IEEE Spectrum, November
`2005
`
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`
`RESERVED
`
`RFC 3261, SIP: Session Initiation Protocol, The Internet Society
`(June 2002).
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`xii
`
`

`

`Exhibit No. Description
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`U.S. Patent Application Publication No. 2006/0196931
`
`Declaration of Sylvia Hall-Ellis, Ph.D.
`
`U.S. Patent Application Publication No. 2006/0174352
`(“Thibadeau”)
`
`File history of U.S. Patent No. 9,240,009 (“’009 FH”)
`
`U.S. Patent No. 9,189,787
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`
`
`
`xiii
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. hereby
`
`Petition Requesting Inter Partes Review
`
`
`
`seek inter partes review of claims 1-17 (“the Challenged Claims”) of U.S. Patent
`
`No. 9,240,009. Ex-1001 (the “’009 patent”).
`
`I.
`
`BACKGROUND
`The ’009 patent proclaims that “the present invention is related to techniques
`
`for personalizing a secure element and provisioning an application such as an
`
`electronic purse that can be advantageously used in portable devices” for use in
`
`conducting commercial transactions. Ex-1001, 1:18-24. One concern that the ’009
`
`patent purportedly addressed was “concerns in the NFC mobile ecosystem” about
`
`security. Id., 2:9-10. The patent states that “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., 2:10-14. The “secure element” (SE) in the
`
`patent “may be in form of a smart card.” Id., 6:45, 6:58-62. Processes for installing,
`
`personalizing, and removing applications from “secure elements” are claimed. Ex-
`
`1001, cl.1, 6 (personalizing application), 13 (removing application); Ex-1003, ¶¶30-
`
`37.
`
`The problem is that the examiner was unaware of Dua, which discloses
`
`“embedded smart card[s]” in wireless devices that can have “mini-programs” called
`
`“extensions” stored on the card for performing a variety of financial transactions,
`
`1
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`like paying for subway fare. Ex-1004, ¶¶[0289]-[0295]. The examiner was also not
`
`Petition Requesting Inter Partes Review
`
`
`
`presented with an industry standard for performing operations on smart cards called
`
`“GlobalPlatform” which describes how to do what the patent alleges was the
`
`invention: personalizing and securing a smart card. Ex-1006, pp.51-103(§§6-8)
`
`(describing “Card Manager,” “Security Domains” including use of same for
`
`“Personalization Support,” and “Secure Communication”); Ex-1003, ¶¶46-50. As
`
`shown below, the challenged claims would not have issued had the examiner known
`
`of the references applied herein.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) FOR INTER
`PARTES REVIEW
`A. Real Party in Interest Under 37 C.F.R. § 42.8(b)(1)
`The real parties-in-interest in this petition are Samsung Electronics America,
`
`Inc. and Samsung Electronics Co., Ltd.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioners identify the following related matters:
`
` RFCyber Corp. v. Google LLC et al., 2:20-cv-00274 (E.D. Tex.) (the
`
`“Google case”);
`
` RFCyber Corp v. LG Electronics, Inc., 2:20-cv-00336 (E.D. Tex.);
`
` RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-00335
`
`(E.D. Tex.) (the “Samsung case”);
`
` Google LLC v. RFCyber Corp., PGR2021-00028 and -00029
`
`2
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`concerning U.S. Patent No. 10,600,046;
`
`
`
`Petition Requesting Inter Partes Review
`
` Google LLC v. RFCyber Corp., IPR2021-00954 concerning the ’855
`
`patent;
`
` Google LLC v. RFCyber Corp., IPR2021-00955 concerning U.S. Patent
`
`No. 9,189,787;
`
` Google LLC v. RFCyber Corp., IPR2021-00956 concerning U.S. Patent
`
`No. 9,240,009; and
`
` Google LLC v. RFCyber Corp., IPR2021-00957 concerning U.S. Patent
`
`No. 8,118,218.
`
`Petitioners are aware that certain patent applications claiming the benefit of
`
`one or more patents related to the challenged patent remain pending before the Patent
`
`Office including at least the following applications: 13/782,948, 16/234,587, and
`
`17,316,688.
`
`Petitioners are a party to the Samsung case, which is in its earliest stages: a
`
`scheduling conference occurred on May 12 and RFCyber’s Infringement
`
`Contentions were served that day. Discovery has just begun. Petitioners are not a
`
`party to any of the other proceedings identified above; however, the Samsung case
`
`has been consolidated with the Google case for pretrial purposes.
`
`Petitioners have filed IPR Petitions against related family members to the ’009
`
`patent, including against U.S. Patent Nos. 8,118,218 (“the ’218 patent”), 8,448,855
`
`3
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`(“the ’855 patent”), and 9,189,787 (“the ’787 patent”), all of which are asserted in
`
`Petition Requesting Inter Partes Review
`
`
`
`the Samsung case. See IPR2021-00978, -00979, -00980.
`
`The undersigned is unaware of any other judicial or administrative matter that
`
`would affect, or be affected by, a decision in the proceeding.
`
`C. Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) and Service
`Information under 37 C.F.R. § 42.8(b)(4)
`Petitioners designate the following lead and backup counsel:
`
`Lead Counsel
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1144 15th St. Suite 3300
`Denver, CO 80202
`Telephone: 303-685-7418
`Facsimile: 720-904-6118
`BriggsH@gtlaw.com
`Backup Counsel
`Allan A. Kassenoff (pro hac vice
`forthcoming)
`Greenberg Traurig, LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`KassenoffA@gtlaw.com
`
`Backup Counsel
`Andrew R. Sommer (Reg. No. 53,932)
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`Telephone: 703-749-1370
`Facsimile: 703-749-1301
`SommerA@gtlaw.com
`Backup Counsel
`Jeffrey R. Colin
`forthcoming)
`Greenberg Traurig, LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`ColinJ@gtlaw.com
`
`(pro hac vice
`
`Service on Petitioners may be made by mail or hand delivery to: Greenberg Traurig,
`
`LLP, 1144 15th St., Suite 3300, Denver, CO 80202. Petitioners also consent to and
`
`prefers electronic service by emailing Samsung-RFCyber-iprs@gtlaw.com and
`
`counsel of record (shown above).
`
`4
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15
`Petitioners authorize the U.S. Patent & Trademark Office to charge Deposit
`
`Petition Requesting Inter Partes Review
`
`
`
`Account No. 50-2638 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes for any additional fees to be charged to this Deposit Account.
`
`IV. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D)
`Petitioners certify that the word count in this Petition is 13,273 words, as
`
`counted by the word-processing program Microsoft Word for Office 365 used to
`
`generate this Petition, where such word count excludes the table of contents, table
`
`of authorities, mandatory notices, certificate of service, appendix of exhibits, and
`
`this certificate of word count. This Petition is in compliance with the 14,000 word
`
`limit set forth in 37 C.F.R. § 42.24(a)(1)(i).
`
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioners certify that the ’009 patent is available for inter partes review, and
`
`that Petitioners are not barred or estopped from requesting an IPR on the grounds
`
`identified herein.
`
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Petitioners present the following grounds and requests that the challenged
`
`claims be canceled:
`
`5
`
`

`

`Patent No. 9,240,009
`IPR2021-00981
`Ground Challenged Claim(s) Prior Art
`
`
`
`Petition Requesting Inter Partes Review
`
`Basis
`
`§103
`
`§103
`
`§103
`
`1
`
`2
`
`3
`
`1-6, 13-17
`
`7-10
`
`11-12
`
`Dua (Ex-1004) and
`GlobalPlatform (Ex-1006)
`
`Dua, GlobalPlatform, and Smart
`Card Handbook (Ex-1008)
`
`Dua, GlobalPlatform, Smart Card
`Handbook, and Thibadeau (Ex-
`1041)
`
`VI. THE ’009 PATENT
`A. Overview
`An overview of the ’009 patent is given in Section I.
`
`B. Effective Filing Date
`To resolve Petitioners’ challenge, the Board may presume that the effective
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`filing date of the ’009 patent is September 24, 2006, even though that date is
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`doubtful.
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`C. ’009 Patent’s Prosecution
`The ’009 patent is a continuation-in-part of two earlier-filed applications. Ex-
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`1001, cover. The references cited by the examiner during prosecution of the earlier-
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`filed applications and the application leading to the ’009 patent are not used herein.
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`While the ’009 patent briefly references “a global platform,” and “a Global Platform
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`(GP) card manager,” Ex-1001, 15:39-40, 18:20, it cribs numerous concepts from the
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`prior art GlobalPlatform standards and fails to add non-obvious modifications to the
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`cribbed material. Although Applicants drew heavily from GlobalPlatform, they
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`Petition Requesting Inter Partes Review
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`
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`never provided a copy to the Patent Office.
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`A significant issue during prosecution was whether the claims were entitled
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`to either parent applications’ filing date. Ex-1044, pp.140-142, 168-170, 179-182,
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`205-208. The examiner ultimately agreed with Applicant that the claims were
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`entitled to a filing date of April 23, 2007. Ex-1044, p.214. The examiner then
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`rejected the claims as being obvious over publications to Labrou and Rackley. Id.,
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`pp.215-222. Applicants distinguished Labrou because Labrou’s use of a phone
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`number to conduct a secure transaction was not the same as using “multiple
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`identifiers” to identify “multiple applications . . . running on the mobile device” and
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`because Labrou was “silent about a secure element in a mobile device.” Ex-1044,
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`pp.239-240. Applicants also argued that Rackley did not disclose “provisioning an
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`installed application with a secure element.” Ex-1044, p.240. This led to allowance
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`of the claims. Id., pp.252-254.
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`VII. PETITIONERS’ GROUNDS ARE NEW AND DISCRETIONARY
`DENIAL IS UNWARRANTED UNDER GENERAL PLASTIC &
`FINTIV
`Applicants’ prosecution arguments focused on how the prior art failed to
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`disclose a secure element that was personalized and the identification of applications
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`using application identifiers (as opposed to phone numbers). Supra §VI.C.3. These
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`features—as well as the other features of the Challenged Claims—are obvious over
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`Dua and GlobalPlatform, neither of which have been considered by the Office in the
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`Petition Requesting Inter Partes Review
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`
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`context of the ’009 patent claims before. Dua discloses an “embedded smart card”
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`in a wireless device and GlobalPlatform describes a standardized process for
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`securing a smart card that includes identifying applications by Application
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`Identifiers (AIDs) on the smart card. Ex-1004, ¶¶[0295], [0309]; Ex-1006,
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`p.20(§1.4) (AID is “Application Identifier”). These teachings are relevant to
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`Applicant’s distinctions over the prior art and the allowance of the claims.
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`A. General Plastic
`Google has filed an IPR against the ’009 patent. The General Plastic factors
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`weigh against exercising discretionary denial. The present circumstance is
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`consistent with those in Qualcomm v. Monterey Research (IPR2020-01493), Paper
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`11, (Mar. 21, 2021) where the Board declined to discretionarily deny a petition.
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`This IPR relies upon different grounds than the Google IPR. There is no
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`significant relationship between the parties. While Google and Samsung are both
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`defendants in litigations over the ’009 patent, Samsung and Google are distinct
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`parties represented by different counsel; simply being co-defendants challenging the
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`same patent’s claims is insufficient to establish a significant relationship. Id., p.16.
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`Moreover, Patentee’s infringement contentions were only served on May 12,
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`Google’s IPR was filed on May 19, and Petitioners filed this independent Petition
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`promptly thereafter after evaluating Google’s IPR to ensure the present filing was
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`still warranted. “[I]t benefits the Board for Petitioner to have considered whether a
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`Petition Requesting Inter Partes Review
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`
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`substantively distinct challenge is warranted.” Id., pp.16-17. Samsung and Google
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`are also not accused of infringement based on the same products or functionalities.
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`Id., p.17. Therefore, Factors 1 and 4-5 weigh against denying institution. Id., pp.17-
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`18. Factor 3 also weighs against denying institution because no POPR has been
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`filed. Id., p.18. Factor 2 “has a limited, neutral value” as the “parties here are neither
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`the same party nor related parties.” Id., p.17. Factors 6-7 “are neutral” because
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`while Samsung and Google cite different primary references (Dua for Samsung;
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`Staib for Google), and different secondary references, “there is substantial overlap
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`in the subject matter of the references,” (e-purse technology employed with
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`GlobalPlatform) which “somewhat minimize[s]” the burden on the Board despite
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`the two wholly different proceedings. Id., p.18. Accordingly, General Plastic does
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`not counsel in favor of discretionary denial. Id., pp.18-19.
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`B. Fintiv
`The Fintiv factors also weigh against exercising authority to deny. The
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`District Court proceedings are at the earliest stage: a scheduling conference was held
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`on May 12, 2021, discovery has just begun, no depositions have occurred and the
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`court has not engaged in claim construction or motion practice. Patentee’s
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`infringement contentions were served May 12, 2021, Petitioners filed this Petition a
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`month after receiving those contentions and about four months prior to the §315(b)
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`deadline. Moreover, the Samsung case is currently scheduled for trial in March
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`Petition Requesting Inter Partes Review
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`
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`2022, so the Board’s institution decision would issue many months before trial,
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`potentially resulting in a stay of the Samsung case. Agis Software Dev. LLC v.
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`Google LLC, 2021 U.S. Dist. LEXIS 24195, at *11-12 (E.D. Tex. Fed. 9, 2021)
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`(granting motion to stay pending ex parte reexamination despite being “late in the
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`progression of this case—with discovery complete, pretrial briefing submitted, and
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`jury selection pending”). Finally, in accordance with Sotera, Petitioners have
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`stipulated that, if the Board institutes trial, Petitioners will not pursue in the litigation
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`the specific grounds asserted in the IPR or “any other ground … that was raised or
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`could have been reasonably raised in [that] IPR (i.e., any ground that could be raised
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`under §§ 102 or 103 on the basis of prior art patent or printed publications),” which
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`“weighs strongly in favor of not exercising discretion to deny institution.” Ex-1005;
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`Sotera Wireless, Inc. v. Masimo Corporation (§II.A), IPR2020-01019, Paper 12 at
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`19 (Dec. 1, 2020) (precedential). Accordingly, Fintiv does not counsel to
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`discretionarily deny. Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15, (Oct.
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`21, 2020) (precedential).
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`VIII. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`A POSITA in the field of the ’009 patent at the time of the effective filing date
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`would have would have been knowledgeable regarding mobile payment methods
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`and systems pertinent to the ’009 patent. A POSITA would have had at least a
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`bachelor’s degree in computer science, computer engineering, electrical engineering
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`Petition Requesting Inter Partes Review
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`or an equivalent, and about one year of professional experience relating to mobile
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`payment
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`technology, which would have exposed
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`them
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`to concepts
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`like
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`GlobalPlatform and smart cards. Lack of professional experience could be remedied
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`by additional education, and vice versa. Ex-1003, ¶¶28-29.
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`IX. CLAIM CONSTRUCTION
`Under Phillips v. AWH Corp., 415 F.3d 1303, 1312-16 (Fed. Cir. 2005) (en
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`banc), claim terms are typically given their ordinary and customary meanings, as
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`would have been understood by a POSITA, at the time of the invention, having taken
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`into consideration the language of the claims, the specification, and the prosecution
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`history of record.1 Petitioners apply the plain and ordinary meaning to the claims as
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`no specific constructions are required to resolve the grounds presented in this
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`Petition.
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`X. OVERVIEW OF PRIOR ART
`A. Dua
`Dua was filed January 21, 2005 and published on July 27, 2006 making it
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`1 The claims may be invalid for reasons not raised herein, including reasons based
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`on statutory grounds unavailable in an IPR.
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`Patent No. 9,240,009
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`§§102(a), (e) prior art.2 Ex-1004, cover. Dua is analogous art to the ’009 patent
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`Petition Requesting Inter Partes Review
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`
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`because it discloses e-purses in a smart card on a mobile device to pay for things like
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`subway fare. Id., ¶¶[0288]-[0289], [0293]-[0295], [0368].
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`Dua discloses a “system and methodology for conducting financial and other
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`transactions using a wireless device.” Id., Abstract. Dua’s wireless device includes
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`a “wallet application” that receives, stores, manages, and transmits multiple
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`payment, identification, and other confidential information electronically. Id.,
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`¶[0041]. Card issuers like banks or merchants can develop custom “extensions”
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`which are installed in the wallet application and stored in an embedded smart card.
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`Id.,