UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS AMERICA, INC,
`Petitioner
`
`v.
`
`PROXENSE, LLC
`Patent Owner
`
`___________________
`
`IPR2021-01448
`Patent No. 10,698,989
`___________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,698,989
`UNDER 35 U.S.C § 312 AND 37 C.F.R. § 42.104
`
`

`

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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. MANDATORY NOTICES ............................................................................. 2
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a)) ..................................... 2
`
`B. Real Party in Interest ................................................................................ 3
`
`C. Related Matters ......................................................................................... 3
`
`D. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and Service
`Information (37 C.F.R. § 42.8(b)(3)-(4)) ........................................... 3
`
`E. Payment of Fees (37 C.F.R. § 42.15(a)) ................................................... 4
`
`III. LEVEL OF SKILL IN THE ART ................................................................... 4
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED ......... 5
`
`IV. OVERVIEW OF THE ’989 PATENT ............................................................ 5
`
`A.
`
`Prosecution History ............................................................................... 6
`
`V.
`
`CLAIM CONSTRUCTION ............................................................................ 7
`
`VI. CITED ART ..................................................................................................... 8
`
`A.
`
`Scott (WO1999056429) ........................................................................ 8
`
`B.
`
`Lapsley (US2001/0000535) .................................................................. 9
`
`C.
`
`Berardi (US7239226) ............................................................................ 9
`
`D.
`
`Shreve (US2002/0109580) ..................................................................10
`
`E.
`
`F.
`
`
`
`
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`Kinoshita (US2003/0055792) .............................................................10
`
`Enablement ..........................................................................................11
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`VII. DISCRETIONARY FACTORS ...................................................................11
`
`A.
`
`35 U.S.C. § 325(d) Does Not Favor Denial ......................................11
`
`B.
`
`35 U.S.C. § 314(a) Does Not Favor Denial ......................................13
`
`VII. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ..........19
`
`A. Ground 1: Claims 1-9 are rendered obvious by Scott and Lapsley. ..19
`
`B.
`
`Ground 2: Claims 1-9 are rendered obvious by Berardi, Shreve, and
`Kinoshita. ............................................................................................37
`
`VIII. SECONDARY CONSIDERATIONS ...........................................................53
`
`IX. CONCLUSION ..............................................................................................54
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`EXHIBIT LIST
`
`No.
`
`Exhibit
`
`1001 U.S. Patent No. 10,698,989
`
`1002 File History for U.S. Patent No. 10,698,989
`
`1003 Declaration of Andrew Wolfe, Ph.D.
`
`1004 Curriculum vitae of Andrew Wolfe, Ph.D.
`
`1005
`
`International App. No. WO 1999056429 to Scott et al.
`
`1006
`
`Intentionally Left Blank
`
`1007 U.S. Patent Pub. No. 2001/0000535 A1 to Lapsley et al.
`
`1008
`
`Intentionally Left Blank
`
`1009
`
`Intentionally Left Blank
`
`1010 U.S. Patent No. 7,239,226 B2 to Berardi et al.
`
`1011
`
`Intentionally Left Blank
`
`1012 U.S. Patent Pub. No. 2002/0109580 A1 to Shreve et al.
`
`1013 U.S. Patent Pub. No. 2003/0055792 A1 to Kinoshita et al.
`
`1014
`
`“Applied Cryptography—Protocols, Algorithms, and
`Source Code in C” (1996) by Schneier
`
`1015 Declaration of Sylvia Hall-Ellis, Ph.D.
`
`1016
`
`Intentionally Left Blank
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`LIST OF CHALLENGED CLAIMS
`
`Claim
`
`U.S. Patent No. 10,698,989
`
`1pre
`
`A method comprising:
`
`1A
`
`1B
`
`1C
`
`1D
`
`1E
`
`1F
`
`1G
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`1H
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`1I
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`2
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`3
`
`4
`
`
`
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`receiving, at a smartphone, an identification (ID) code from a third-party
`trusted authority, the ID code uniquely identifying the smartphone
`among a plurality of smartphones;
`
`persistently storing biometric data and the ID code on the smartphone,
`
`wherein the biometric data is one selected from a group consisting of
`facial recognition, a fingerprint scan, and a retinal scan of a legitimate
`user;
`
`receiving, at the smartphone, scan data from a biometric scan using the
`smartphone;
`
`comparing, using the smartphone, the scan data to the biometric data;
`
`determining whether the scan data matches the biometric data; and
`
`responsive to a determination that the scan data matches the biometric
`data, wirelessly sending, from the smartphone, the ID code for
`comparison by the third-party trusted authority against one or more
`previously registered ID codes maintained by the third-party trusted
`authority,
`
`a transaction being completed responsive to the third-party trusted
`authority successfully authenticating the ID code,
`
`wherein the transaction being completed includes accessing one or more
`from a group consisting of a casino machine, a keyless lock, an ATM
`machine, a web site, a file and a financial account.
`
`The method of claim 1, further comprising: Receiving a request for
`biometric verification, and responsive to a determination that the scan
`data does not match the biometric data, indicating the smartphone cannot
`verify the scan data as being from the legitimate user, the smartphone
`does not send the ID code.
`
`The method of claim 1, wherein completing the transaction includes
`accessing an application.
`
`The method of claim 1, wherein the transaction being completed
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`U.S. Patent No. 10,698,989
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`responsive to the third-party trusted authority successfully authenticating
`the ID code includes the third-party trusted authority sending an
`indication that the third-party trusted authority authenticated the ID code
`to another party.
`
`5pre
`
`A smartphone comprising:
`
`5A
`
`5B
`
`5C
`
`5D
`
`5E
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`5F
`
`5G
`
`5H
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`5I
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`5J
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`5K
`
`6
`
`
`
`
`a persistent storage having an input that receives an identification (ID)
`code from a third-party trusted authority, and biometric data,
`
`wherein the biometric data is one selected from a group consisting of
`facial recognition, a fingerprint scan, and a retinal scan, of a legitimate
`user,
`
`the ID code uniquely identifying the smartphone among a plurality of
`smartphones,
`
`the persistent storage storing the biometric data and the ID code,
`
`the persistent storage having an output configured to provide a first set of
`biometric data and the ID code for use on the smartphone;
`
`a validation module, coupled to communicate with the persistent storage
`to receive the biometric data from the persistent storage,
`
`the validation module having a scan pad to capture scan data from a
`biometric scan,
`
`the validation module comparing the scan data to the biometric data to
`determine whether the scan data matches the biometric data; and
`
`a wireless transceiver that, responsive to a determination that the scan
`data matches the biometric data, sends the ID code for comparison by the
`third-party trusted authority against one or more previously registered ID
`codes maintained by the third-party trusted authority,
`
`a transaction being completed responsive to the third-party trusted
`authority successfully authenticating the ID code,
`
`wherein the transaction being completed includes accessing one or more
`from a group consisting of a casino machine, a keyless lock, an ATM
`machine, a web site, a file and a financial account.
`
`The smartphone of claim 5, wherein the ID code is transmitted to the
`third-party trusted authority over a network.
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`7pre
`
`A system, comprising
`
`7A
`
`a smartphone that persistently stores biometric data and an ID code,
`
`7B
`
`7C
`
`7D
`
`7E
`
`7F
`
`7G
`
`wherein the biometric data is one selected from a group consisting of
`facial recognition, a fingerprint scan, and a retinal scan data of a
`legitimate user,
`
`and the ID code is received from a third-party trusted authority, the ID
`code uniquely identifying the smartphone among a plurality of
`smartphones,
`
`the smartphone configured to indicate that a biometric authentication is
`requested,
`
`the smartphone configured to wirelessly send the ID code to the third-
`party trusted authority for authentication responsive to determining that
`scan data from a biometric scan performed using the smartphone
`matches the biometric data of the legitimate user,
`
`wherein a transaction is completed responsive to successful
`authentication of the ID code by the third-party trusted authority,
`
`wherein the transaction being completed includes accessing one or more
`from a group consisting of a casino machine, a keyless lock, an ATM
`machine, a web site, a file and a financial account; and
`
`7H
`
`the third-party trusted authority operated by a third party,
`
`7I
`
`8
`
`9
`
`
`
`
`
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`the third-party trusted authority storing a plurality of legitimate ID codes
`and authenticating the ID code received based on a comparison of the ID
`code received and the legitimate ID codes included in the plurality of the
`legitimate ID codes.
`
`The system of claim 7, wherein the smartphone receives an
`authentication request, and in response, requests biometric scan from a
`user to generate the scan data and, when the smartphone cannot verify
`the scan data as being from the legitimate user, the smartphone does not
`send the ID code.
`
`The system of claim 7, wherein completing the transaction includes
`accessing an application.
`
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`GROUNDS OF CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`No. Ground for Challenge
`
`Scott and Lapsley render obvious Claims 1-9
`
`Berardi, Shreve, and Kinoshita render obvious Claims 1-9
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`2
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`I.
`
`INTRODUCTION
`
`The claims of the ’989 patent relate to preventing unauthorized use of a
`
`wireless device by verifying both biometric data and the device itself. The ’989
`
`patent describes biometric authentication of a user of a wireless device using a
`
`generic “computerized authentication” system that provides secure access to
`
`resources such as ATMs and locked areas. Ex. 1001 (’989 Patent) at 1:35-38, 2:3-
`
`5. The wireless device validates a user’s biometric scan against biometric data
`
`stored on the device. Id. at 2:9-20. Next, the wireless device transmits an ID code
`
`to a third-party to indicate that the user’s identity has been verified. Id. at 2:21-29.
`
`If the third-party determines that the code is authentic, access is granted to the user
`
`to a secure resource. Id. at 2:17-20. The ’989 patent purports to solve the problem
`
`of users having to “memorize or otherwise keep track of the[ir] credentials,” id. at
`
`1:47-49, while providing security from illegitimate users “us[ing] a stolen access
`
`object to enter a secured location because the user’s identity is never checked.” Id.
`
`at 1:60-62.
`
`But this type of biometric authentication system was known years before the
`
`’989 patent was filed. For example, in 1999—five years before the ’989 patent’s
`
`earliest filing date—the Scott reference disclosed a wireless personal identification
`
`device that verified biometric data of user via a biometric scan and authenticated
`
`the user for access to protected resources such as a hotel room or an electronic
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`transaction. Likewise, the Berardi reference also expressly discloses verifying
`
`biometric data and authenticating a user by means of a third-party trusted agent to
`
`provide access to a secure resource. In fact, numerous prior art patents teach the
`
`same concept. For example, the Shreve and Kinoshita reference uses similar
`
`portable devices in secure authentication processes.
`
`Thus, the challenged claims merely recite the well-known concept of
`
`verifying biometric data and authenticating a user’s device using a third-party
`
`trusted agent—well-worn concepts known in the art years before the ’989 patent
`
`was filed. Accordingly, the challenged claims should be held unpatentable.
`
`II. MANDATORY NOTICES
`
`Pursuant 37 C.F.R. § 42.8(a)(1), the following mandatory notices are
`
`provided as part of this Petition.
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Samsung Electronics America, Inc. (“Samsung” or “Petitioner”) respectfully
`
`requests inter partes review (“IPR”) of Claims 1-9 (“Challenged Claims”) of U.S.
`
`Patent No. 10,698,989 to Giobbi (“the ’989 Patent”) (Ex. 1001), which is indicated
`
`as assigned to Proxense LLC. (“Patent Owner” or “Proxense”).
`
`Petitioner certifies that the ’989 Patent is available for inter partes review
`
`and Petitioner is not barred or estopped from requesting review of the Challenged
`
`Claims on the grounds identified in this Petition.
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`U.S. Patent No. 10,698,989
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`B. Real Party in Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies Samsung Electronics,
`
`Co., Ltd. and Samsung Electronics America, Inc. are the real parties-in-interest.
`
`C. Related Matters
`
`The ’989 patent has been asserted against Petitioner in: Proxense, LLC v.
`
`Samsung Electronics, Co., Ltd. et al., No. 6.21-CV-00210 (W.D. Tex. March 5,
`
`2021).
`
`Moreover, Patent Owner also has asserted U.S. Patent Nos. 9,049,188;
`
`9,235,700; 9,298,905; and 8,352,730 in the above litigation, and Petitioner also is
`
`concurrently filing a petition challenging that patent.
`
`D. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) and Service
`Information (37 C.F.R. § 42.8(b)(3)-(4))
`
`Petitioner provides the following counsel and service information. Pursuant
`
`to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this Petition. Petitioner
`
`
`
`agrees to accept electronic service at the email addresses listed below. 1
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`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`James M. Glass (Reg. No. 46729)
`jimglass@quinnemanuel.com
`
`Postal and Hand Delivery Address:
`
`Marissa Ducca (Reg. No. 59,807)
`marissaduca@quinnemanuel.com
`
`Richard Lowry (Reg. No. 70,306)
`
`
`1 Petitioner consents to electronic service qe-samsung-
`
`proxense@quinnemanuel.com and the email addresses listed in the table below.
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`QUINN EMANUEL
`URQUHART & SULLIVAN, LLP
`51 Madison Ave, 22nd Floor
`New York, New York 10010
`Tel:
`(212) 849-7000
`Fax: (212) 849-7100
`
`richardlowry@quinnemanuel.com
`
`Postal and Hand Delivery Address:
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`1300 I St. NW
`Washington, DC 20005
`Tel:
`(202) 538-8000
`Fax: (202) 538-8100
`
`Sean Gloth (Reg. No. 75,316 )
`seangloth@quinnemanuel.com
`
`Postal and Hand Delivery Address:
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Ave, 22nd Floor
`New York, New York 10010
`Tel:
`(212) 849-7000
`Fax: (212) 849-7100
`
`E. Payment of Fees (37 C.F.R. § 42.15(a))
`
`The undersigned authorizes the Office to charge the fee required for this
`
`Petition for Inter Partes Review to Deposit Account No. 50-5708. Any additional
`
`fees that might be due are also authorized.
`
`III. LEVEL OF SKILL IN THE ART
`
`Petitioner proposes that a Person of Ordinary Skill in the Art would have had
`
`a bachelor’s degree in computer or electrical engineering (or an equivalent degree)
`
`with at least three years of experience in the field of encryption and security (or an
`
`equivalent). Petitioner further proposes that more education could compensate for
`
`less experience and vice versa.
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`III.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`
`Petitioner challenges claims 1-9 of the ’989 Patent and requests that these
`
`claims be found unpatentable in view of the following references:
`
`1. PCT Application No. WO 99/56429 to Scott et al., filed April 26,
`1999 and published November 4, 1999 (Ex. 1005, hereinafter
`“Scott”);
`
`2. US Patent Application Publication No. US 2001/0000535 to Lapsley
`et al., filed December 6, 2000 and published April 26, 2001 (Ex. 1007,
`hereinafter “Lapsley”)
`
`3. US Patent No. US 7,239,226 to Berardi et al., filed July 9, 2002 and
`published July 3, 2007. (Ex. 1010, hereinafter “Berardi”)
`
`4. US Patent Application No. US 2002/0109580 to Shreve et al., filed
`February 15, 2001 and published August 15, 2002. (Ex. 1012,
`hereinafter “Shreve”)
`
`5. US Patent Application Publication No. US 2003/0055792 to Kinoshita
`et al., filed July 19, 2002 and Published March 20, 2003. (Ex. 1013,
`hereinafter “Kinoshita”)
`
`Pursuant
`
`to §§42.22(a)(1) and 42.22(b)(1)-(2), Petitioner
`
`requests
`
`cancellation of claims 1-9 of the ’989 Patent on the following grounds:
`
`Ground 1: Claims 1-9 are rendered obvious by Scott and Lapsley
`
`Ground 2: Claims 1-9 are rendered obvious by Berardi, Shreve, and
`
`Kinoshita
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`IV. OVERVIEW OF THE ’989 PATENT
`
`As explained herein, the ’989 patent relates to integrated wireless devices in
`
`a generic “computerized authentication” system that are used to gain access to
`
`devices, applications, or accounts through a biometric validation procedure. Ex.
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`1001 at 1:35-38, 2:3-5. The wireless device validates a user’s biometric scan
`
`against biometric data stored on the device. Id. at 2:9-20. Next, the wireless
`
`device transmits an ID code to a third-party to indicate that the user’s identity has
`
`been verified. Id. at 2:21-29. If the third-party determines that the code is
`
`authentic, access is granted to the user to a secure resource. Id. at 2:17-20. The
`
`’989 patent purports to solve the problem of users having to “memorize or
`
`otherwise keep track of the[ir] credentials,” id. at 1:47-49, while providing security
`
`from illegitimate users “us[ing] a stolen access object to enter a secured location
`
`because the user’s identity is never checked.” Id. at 1:60-62.
`
`A.
`
`Prosecution History
`
`The ’989 Patent was filed on February 20, 2016 and claims benefit of
`
`60/637,538 filed 12/20/2004. Ex. 1002 at 1901.
`
`On April 8, 2016 the U.S. Patent & Trademark Office (hereinafter “Patent
`
`Office”) issued the first non-final Office Action rejecting claim 1 under 35 U.S.C.
`
`103 in light of Hsu et al. (US 6,041,410) in view of Saito et all (US 20040129787)
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`and non-statutory double patenting in light of US Patent Nos. 8,886,954,
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`8,352,7302, and Pending Application 14/521,9823. Ex. 1002 at 1882-1890.
`
`
`2 Also subject to an IPR petition by Petitioner.
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`3 The application later resulted in US 9,298,905 also subject an IPR petition
`by Petitioner.
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`U.S. Patent No. 10,698,989
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`On December 30, 2016 the Patent Office issued a final Office Action
`
`rejecting the amended claims 1-20 under 35 U.S.C. 103 in light of Hsu in view of
`
`Shreve. The Patent Office relied on Shreve to disclose only “an ID code is
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`persistently stored on a device.” Id. At 1813; see also id. at 1758.
`
`After a series of amendments, further rejections, additionally citing Flores
`
`(US 2004/0022384), Kenneth (WO 01/35334) and Wheeler et al. (US
`
`2002/0023217), and a final examiner initiated interview suggesting final
`
`amendments, the Patent Office issued a Notice of Allowance on February 24,
`
`2020. See id. at 49, 61, and 1130.
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`V. CLAIM CONSTRUCTION4
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`Petitioner submits that express interpretations of the challenged claims are
`
`not required to resolve this petition. Because no constructions are necessary to
`
`resolve this petition, Petitioner proposes that the claim terms should be given their
`
`
`4 Petitioners reserve the right to pursue different claim constructions,
`
`including that certain claim terms are indefinite, during this and related
`
`proceedings as well as in any district court litigation concerning the ’989 Patent.
`
`See Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1350 (Fed.
`
`Cir. 2020) (“[T]he Board may not cancel claims for indefiniteness in an IPR
`
`proceeding.”).
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`plain and ordinary meaning. Petitioner reserves its right to respond to any claim
`
`constructions raised by the Patent Owner or the Board in the future.
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`VI. CITED ART
`
`A.
`
`Scott (WO1999056429)
`
`Scott discloses a method for verifying a user during authentication of an
`
`integrated device (e.g., personal identification device (“PID”) 6), in order to, for
`
`example, provide secure access to protected resources such as a hotel room or a
`
`point-of-sale transaction. Ex. 1005 at Abstract, 2:5-23, 4:22-5:9, 7:24-8:12; see
`
`claims [1A]-[1I] infra.
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`
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`Ex. 1005 at Fig. 1. 5
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`5 Annotations are added to figures unless indicated otherwise.
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`U.S. Patent No. 10,698,989
`Petition for Inter Partes Review
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`B.
`
`Lapsley (US2001/0000535)
`
`Lapsley discloses a
`
`third-party authentication system to validate a
`
`transaction initiated at a biometric device (i.e., Party Identification Apparatus
`
`(PIA)). Ex. 1007 at Abstract, ¶54. The PIA includes a biometric sensor that
`
`receives a user’s biometric input accompanying an electronic payment. Id. at ¶167.
`
`The PIA transmits the biometric data and a PIA hardware identification code to a
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`trusted third-party Data Processing Center (DPC). Id. at ¶168. The DPC includes
`
`a list of hardware identification codes for PIAs, wherein each respective code
`
`“makes the PIA uniquely identifiable to the DPC in all transmissions from that
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`device.” Id. at ¶¶85, 161. Using this list, the DPC identifies the PIA by its PIA
`
`hardware identification code. Id. at ¶¶85, 103, 104, 158, 166. Lapsley also
`
`discloses that communication security is achieved using an encryption scheme that
`
`uses public/private keys and admits doing so is “well known in the industry.” Id.
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`at ¶82.
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`C. Berardi (US7239226)
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`Berardi discloses a method for verifying a user during authentication of an
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`integrated device (e.g., portable electronic Fob 102) that engages with RFID reader
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`104 to, for example, facilitate a point-of-sale transaction. Ex. 1010 at Abstract,
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`3:45-4:3, 12:36-48, Fig. 2. Berardi further discloses the conventional encryption
`
`techniques may be used, such as those described in the text “Applied
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`Cryptography: Protocols, Algorithms, and Source Code in C,” written by Bruce
`
`Schneier (second edition, 1996)6, which Berardi incorporates by reference. Id. at
`
`7:19-27. The fob 102 is thus useful for completing a contactless transaction and
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`would ordinarily be carried by a user for verification. Ex. 1010 at 1:15-18, 1:32-
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`36.
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`D. Shreve (US2002/0109580)
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`Shreve discloses a transceiver/fob device 12, which is “a remote keyless
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`entry-based transceiver device,” capable of two-way wireless communications with
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`domain system 14 for secure access authorization based on biometrics. Ex. 1012 at
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`Fig. 2a, ¶¶33, 35. Shreve discloses a service provider 24 with a secured database
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`31 that provides authentication of a transaction initiated by a fob device 12. Id. at
`
`¶39. For authentication, the database 31 contains cross-references between “the
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`key fob ID and other user specific information (e.g., accounts, access privileges,
`
`biometrics, etc) that can be used by the authentication algorithm 23 to further
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`facilitate the authentication process.” Id. at ¶39, claim 47.
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`E. Kinoshita (US2003/0055792)
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`Kinoshita discloses a portable device 14 that authenticates a user before
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`transmitting a user ID to a POS terminal 11, which forwards the user ID to a third-
`
`
`6 Schneier was publicly available before the filing of the patent at issue. Ex.
`1015.
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`U.S. Patent No. 10,698,989
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`party payment gateway 15 to authorize a payment transaction. Ex. 1013 at ¶¶168-
`
`69, Fig. 1. Specifically, the payment gateway 15 confirms the authenticity of the
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`portable device 14 by comparing the device ID of the portable device 14 to stored
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`device ID in a user table 154a. Id. at ¶171. After the payment gateway 15 receives
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`a user ID and a request for transaction, the payment gateway 15 sends an e-mail
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`message that includes commands for direction of payment to be executed by the
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`portable device 14. ¶¶168-69. Upon receiving the e-mail message, the portable
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`device 14 “executes an application for payment according to the commands
`
`included in the e-mail.” Id. at ¶¶168-69, 179-83.
`
`F. Enablement
`
`The above described reference both individually and in the combinations
`
`explained below enable the systems and methods they are cited for. See Ex. 1003.
`
`None of the above-mentioned references describe an aspirational or otherwise
`
`unachievable system or method. Id. To the extent Patent Owner argues that any of
`
`the above described references are not self-enabled or otherwise do not satisfy
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`Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374 (Fed. Cir. 2021), a
`
`POSITA would have understood how to combine the references to achieve at least
`
`the challenged claims. Id.
`
`VII. DISCRETIONARY FACTORS
`
`A.
`
`35 U.S.C. § 325(d) Does Not Favor Denial
`
`The Board uses a two-part framework to analyze denial under 325(d):
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`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and
`
`(2) if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in a
`manner material to the patentability of challenged claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, Paper 6 at
`
`7 (PTAB Feb. 13, 2020). When considering the first prong, the PTAB considers
`
`the prosecution of the patent, and any post-issuance proceedings like ex parte
`
`reexams. Id. at 7-8. As to the second prong, the PTAB provided examples of
`
`“material errors,” including whether the office overlooked a specific teaching of
`
`the relevant prior art or an error of law, such as misconstruing a claim term. Id. at
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`n. 9. In Advanced Bionics the Board explained that the Becton Dickinson factors
`
`are used within this framework to provide useful insight into how to apply each
`
`prong. Id. at 9.
`
`With respect to the first prong, the ’989 patent was issued over rejections in
`
`view of Hsu, Shreve, Flores, Kenneth, and Wheeler. None of the prior art in this
`
`petition but Shreve were cited or addressed by either the Examiner or Applicant.
`
`This weighs in favor of institution. See, e.g., Digital Check Corp. d/b/a ST
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`Imaging v. E-Imagedata Corp., IPR2017-00178, Paper 6 at 12-13 (PTAB. April
`
`25, 2017) (instituting where: “[T]here is no indication in the record that the
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`Examiner rejected any claims based on either reference or that the Examiner or
`
`applicant substantively discussed either reference during prosecution[.]”).
`
`While Shreve was cited during prosecution, it was cited only for a limited
`
`disclosure of “an ID code is persistently stored on a device.” Ex. 1002 at 1813; see
`
`also id. at 1758. As described below, petitioner cites Shreve for a different
`
`limitation and in a different combination, as such petitioner is presenting new
`
`arguments and a discretionary denial under §325(d) is not supported. Oticon
`
`Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at 20 (Oct. 16, 2019)
`
`(introduction of new art, even in combination with art previously considered,
`
`counsels against discretionary denial under §325(d)).
`
`As discussed below, Scott, Lapsley, Berardi, Shreve, and Kinoshita teach
`
`each and every element of the asserted claims. Accordingly, these references are
`
`also not cumulative of the art the Examiner considered.
`
`B.
`
`35 U.S.C. § 314(a) Does Not Favor Denial
`
`The purpose of § 314(a) is to prevent serial petitions against the same patent,
`
`resulting in unnecessary harassment and wasted resources. Celltrion, Inc. v.
`
`Genentech, Inc., IPR2018-01019, Paper 11 at 13 (PTAB Oct. 30, 2018) (“Celltrion
`
`filed a concurrent motion to join the Pfizer IPR, effectively obviating any
`
`concerns of serial harassment and unnecessary expenditure of resources.”). No
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`other post-grant proceeding has ever been filed against the ’989 patent.
`
`Accordingly, § 314(a) does not apply.
`
`1.
`
`The Fintiv Factors Weigh in Favor of Institution
`
`Likewise, the Fintiv Factors weigh in favor of institution:
`
`A. Fintiv Factor 1: Whether the court granted a stay or
`evidence exists that one may be granted if a
`proceeding is instituted
`
`The Court has not granted a stay, nor has a request for a stay been filed and
`
`it is unclear whether the Court would grant a stay in view of institution.
`
`Accordingly, this factor weighs in favor of institution.
`
`B. Fintiv Factor 2: Proximity of the court’s trial date to the
`Board’s projected statutory deadline for a final
`written decision
`
`The Court has not set a trial date. Based on recent cases that have gone to
`
`trial in front of Judge Albright, a trial date will likely be set 21-26 months from the
`
`filing of PO’s complaint, i.e., between December 2022 - May 2023:
`
`• In MV3 Partners LLC v. Roku, Inc., Case No. 18-cv-00308, a
`
`complaint was filed on October 16, 2018, and trial began October 5,
`
`2020, with the Court entering a final judgment on December 21, 2020.
`
`• In ESW Holdings, Inc. v. Roku, Inc., Case No 19-cv-00044, the
`
`complaint was filed February 8, 2019, with trial beginning April 5,
`
`2021. The final judgment has not issued to date.
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`• In VLSI Technology LLC v. Intel Corporation, Case No. 21-cv-
`
`00299, the complaint was filed April 11, 2019, with trial beginning
`
`April 12, 2021. The final judgment has not issued to date.
`
`• In CloudofChange, LLC v. NCR Corporation, Case No. 19-cv-00513,
`
`the complaint was filed August 30, 2019, with trial beginning May 17,
`
`2021. The final judgment has not issued to date.
`
`
`
`This petition is being filed on August 26, 2021. Thus, the approximate date
`
`of the PTAB hearing is February 2023. Accordingly, the PTAB trial will likely
`
`pre-date the district court trial, perhaps by several months. Accordingly, this factor
`
`weighs in favor of institution.
`
`Even if the trial occurs shortly before the PTAB hearing, the PTAB has held
`
`that such close proximity of a district court trial date weighs in favor of institution.
`
`See, e.g., MediaTek Inc. et al. v. Nippon Telegraph and Telephone Corp.,
`
`IPR2020-01607, Paper 12 at 14 (PTAB April 2, 2021) (“MediaTek”) (finding that
`
`Factor 2 weighed in favor of institution when that PTAB’s decision was due within
`
`three months of the WDTX trial), Western Digital Corp. et al. v. Martin Kuster,
`
`IPR2020-01391, Paper 10 at 9 (PTAB February 16, 2021) (“Western Digital”)
`
`(finding Factor 2 weighed in favor of institution where “only a three-and-a-half
`
`month difference between the [WDTX] trial date and the due date for the final
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`written decision”); see also Facebook, Inc. v. USC IP Partnership, L.P., IPR2021-
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`00034, Paper 13 at 11 (PTAB April 30, 2021) (“USC IP”) (instituting IPR where
`
`the WDTX trial dat