`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2022-00412
`U.S. Patent No. 9,189,787
`
`_________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
`
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`
`
`
`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................. 1
`I.
`II. ARGUMENT ..................................................................................................... 2
`A. Person of Ordinary Skill in the Art ................................................................. 2
`B. Philips is Prior Art to the ’787 Patent ............................................................. 3
`C. PO’s Motivation to Combine Critiques Rehash Twice Rejected Arguments 6
`D. Limitation [1a]: The Combination Discloses an Emulator That Stores
`Updated Transaction Logs .................................................................................. 15
`E. Limitation [1c]: The Combination Discloses Personalizing the Emulator in
`Two Ways ........................................................................................................... 17
`F. Limitation [1c]: The Combination Discloses Two-Channel Personalization
`in Two Ways ....................................................................................................... 18
`G. Limitation [1e]: The Combination Discloses a Second Interface Which
`Performs Mobile Commerce Against the Fund Stored in the Emulator ............. 20
`H. Claims 6 and 16: The Combination Discloses a SAM External to the Smart
`Card Module ........................................................................................................ 23
`III. CONCLUSION ............................................................................................ 25
`
`
`
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`I.
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
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`INTRODUCTION
`The Challenged Claims relate to securely funding an e-purse in a portable
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`device. A focus of the parties’ disputes is the claimed “security,” which is
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`accomplished by personalizing an e-purse with security keys. This key-based
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`personalization process was well known in the prior art, having been standardized
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`by GlobalPlatform. Indeed, even the ’787 Patent points to GlobalPlatform in support
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`of the claimed security. Ex. 1001, 4:24-32 (noting an embodiment of the alleged
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`invention uses “a global platform security . . . to personalize a smart card”).
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`The Petition’s base reference—Dua—teaches a smart card e-purse loaded on
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`a mobile device. Dua acknowledges the importance of complying with then-
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`governing smart card standards, but does not describe these standards in any detail.
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`Nor does Dua describe basic smart card implementation details, focusing instead on
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`smart card agnostic communication protocols. The Petition proposes that a POSITA
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`would have looked to well-known smart card teachings to realize Dua’s goal of
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`implementing its smart card-equipped mobile device in compliance with governing
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`standards. Specifically, the Petition proposes that a POSITA would have looked to
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`GlobalPlatform for its card architecture, security, life cycle models, and command
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`teachings, and to the commercial Philips SmartMX controller specification for its e-
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`purse specific emulator—another claimed concept well established in commercial
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`prior art smart cards.
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
` Patent Owner’ (“PO”) Response (“POR”) focuses largely on the motivations
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`underlying Petitioner’s proposal to supplement Dua’s limited smart card teachings
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`with the then-dominant smart card standards. These arguments mirror those in PO’s
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`Preliminary Response (“POPR”), which were correctly rejected at institution both
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`in the now-terminated Samsung proceeding (IPR2021-00980, “Samsung IPR”) and
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`the instant proceeding. Seeking a different outcome with its rehashed arguments, PO
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`supplements the record with testimony of a declarant. But PO’s declarant not only
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`lacks experience with smart card standards, he has no mobile commerce experience
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`at all. Accordingly, his testimony should be accorded little to no weight.
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`II. ARGUMENT
`A.
`Person of Ordinary Skill in the Art
`The Parties and the Board unanimously agree that the focus of the ’787 Patent
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`is mobile payments. Petition, 1-2; POR, 1-6; Institution Decision (“ID”), 4-7.
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`Accordingly, the Board adopted Petitioner’s POSITA definition which it
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`preliminarily held is “consistent with the ’787 patent and the asserted prior art.” That
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`definition requires knowledge of “mobile payment methods and systems[,]” and at
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`least “one year of professional experience relating to mobile payment technology.”
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`ID, 10-11; Petition, 11.
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`Although PO did not dispute this definition in its POPR, the POR quietly
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`removes a requirement for mobile payment experience. POR, 10. The POR does not
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`U.S. Patent No. 9,189,787
`acknowledge this definition shift, nor does it provide any justification for removing
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`this key requirement. PO’s strategy is transparent. It seeks to rely on an unqualified
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`declarant who admitted he has no specific mobile payment technology experience,
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`no experience with e-purses, no experience with the relevant protocols, and no
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`educational experience to remedy his professional deficiencies. Ex. 1041 (Gomez
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`Tr.), 8:11-19, 9:7-20:4, 37:8-39:9, 50:15-51:18. To do so, PO must redefine a
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`POSITA’s qualifications. Yet PO makes no attempt to justify this significant shift.
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`As the Board correctly found at institution and as Petitioner’s expert explains
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`in a supplemental declaration, experience with mobile payments is required. Ex.
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`1042 (Supp. Dec.), ¶¶4-10. Accordingly, the Board should make its preliminary
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`findings on the requisite level of skill final and accord Mr. Gomez’s unqualified
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`testimony little to no weight. Best Med. Int.’l, Inc. v. Elekta Inc., 46 F.4th 1346,
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`1353-54 (Fed. Cir. 2022) (affirming Board’s decision to discount testimony where
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`the declarant failed to satisfy POSITA definition).
`
`B.
`Philips is Prior Art to the ’787 Patent
`PO misapplies the law and mischaracterizes the record, contesting that Philips
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`was published and available prior to the purported September 26, 2006 effective
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`filing date of the ’787 Patent. POR, 11-13.
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`“Whether a reference qualifies as a ‘printed publication’ is a legal conclusion
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`based on underlying factual findings[.]” Nobel Biocare Servs. AG v. Instradent USA,
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` 3
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`U.S. Patent No. 9,189,787
`Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018). A petitioner need only show that such
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`document has been “disseminated or otherwise made available to the extent that
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`persons interested and ordinarily skilled in the subject matter or art exercising
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`reasonable diligence can locate it.” Id.
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`Despite this low bar, PO contends that “Apple cannot possibly carry its burden
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`of persuasion to prove by clear and convincing evidence that Phillips [sic] is prior
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`art[,]” suggesting Apple has only shown it is “possible.” POR, 12-13 (emphasis
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`omitted). As an initial matter, the standard of proof in this proceeding requires a
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`preponderance of the evidence, not clear and convincing evidence. Hulu, LLC v.
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`Sound View Innovations, LLC, IPR2018-01039, Paper 66, *22 (PTAB Oct. 5, 2021)
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`(citing 35 U.S.C. § 316(e)). As set forth below, Petitioner has well-satisfied this
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`burden.
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`Directly refuting PO’s challenge, Philips was submitted to the USPTO in a
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`September 12, 2005 IDS during prosecution of U.S. Patent No. 7,213,766.1 Ex.
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`1043.2 While a petitioner need not establish that “specific persons actually accessed
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`1 A “Petitioner is permitted to file additional evidence in response to [PO]’s
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`arguments[.]” Hulu, LLC, IPR2018-01039, Paper 66, *26.
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`2 Petitioner has attempted to secure a certified copy of the ’766 file history including
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`the non-patent literature, but due to the COVID restrictions still in place, Petitioner’s
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`or received a work to show that the work was publicly accessible[,]” Ex. 1043
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`conclusively shows that a third-party company actually did have access to Philips
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`no later than September 2005 when it submitted Philips with the IDS. See Samsung
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`Elec.’s Co., Ltd. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1374 (Fed. Cir. 2019). Once
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`the ’766 Patent published on May 26, 2005, the file history would have been open
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`to the general public. 37 C.F.R. § 1.11; see also Bruckelmyer v. Ground Heaters,
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`Inc., 445 F.3d 1374, 1377-78 (Fed. Cir. 2006) (finding content in file history publicly
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`available prior art). Like Bruckelmyer, Philips was “laid open for public inspection”
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`in the patent file and was thus publicly accessible. Id. at 1378-79.
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`The sole affirmative evidence PO submits to dispute Philips’s public
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`accessibility is its expert’s unsupported contention that Philips “is a datasheet of the
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`sort that were released confidentially or subject to NDAs…” POR, 11 (citing Mr.
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`Gomez’s declaration). But Mr. Gomez conceded he has no personal knowledge that
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`Philips was subject to an NDA or that Philips was chained with confidentiality
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`restrictions. Ex. 1041 (Gomez Tr.), 20:21-22:20. Such unsupported speculation is
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`entitled no weight. Nobel Biocare Servs. AG, 903 F.3d at 1382. PO also cites the
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`vendor has been unable to personally make copies and despite several attempts, has
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`been unable to otherwise secure a copy, to date. Petitioner will provide this certified
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`file history, if requested, once Petitioner obtains it.
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`testimony of Petitioner’s expert, Mr. Smith, out of context to suggest Philips would
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`be under an NDA. POR, 11 (citing Ex. 2009, 88:15-89:5). But Mr. Smith never
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`opined that Philips was or would have been subject to an NDA.3
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`Additional evidence refutes PO’s contention that Philips was under NDA or
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`was not publicly accessible prior to September 26, 2006:
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`• Ex. 1050 – (Web Archive declaration for prior art Web Archive capture
`of www.nxp.com that includes a link to Philips with a filename,
`sfs085513)
`• Ex. 1044 - https://www.win.tue.nl/pinpasjc/docs/cards-docs/jcop41/
`(link to Philips on University website with last modified date of August
`16, 2006 and same “sfs085513” filename as shown in archived nxp.com
`link above)
`• Ex. 1045 - https://www.cs.ru.nl/E.Poll/papers/evaluationBasis.pdf
`(article also listing 2004 date for Philips at note 16 including same
`“sfs085513” filename)
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`Additionally, Philips itself provides strong indicia that it was publicly
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`accessible prior to September 26, 2006. Petition, 14-15.
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`C.
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`PO’s Motivation to Combine Critiques Rehash Twice Rejected
`Arguments
`PO advances the same motivation to combine critiques that the Board soundly
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`rejected twice at institution. Namely, the POPR argued (1) that Dua’s security
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`renders GlobalPlatform redundant, (2) that there is no flaw in Dua necessitating
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`3 PO also criticizes Petitioner for not discussing in the Petition how it acquired
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`Philips. POR, 12. But PO fails to point to any authority requiring Petitioner to do so.
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`U.S. Patent No. 9,189,787
`GlobalPlatform, and (3) that the combination would destroy Dua’s allegedly
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`“important” SIP-based wireless device targeting. POPR, 16-20.
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`Instituting the Samsung IPR, the Board first rejected [PO]’s redundancy
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`arguments, finding “Petitioner has identified a concrete benefit from combining Dua
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`with GlobalPlatform—namely, compatibility of Dua’s wallet application with the
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`‘most important international specification’ for Smart Cards.” Samsung IPR ID, 36.
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`The Board also disagreed “that the use of SIP is an essential aspect of Dua’s
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`invention” such that replacing SIP would destroy some contrived central objective
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`for server-side targeting of devices—a purported “objective” not found in the claims.
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`Id., 35.
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`Similarly, the Board here found that that “SIP is not an essential aspect of
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`Dua’s invention[,]” that the plethora of express motivations in Dua’s disclosures
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`motivate combination with GlobalPlatform, and that Petitioner established a
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`sufficient rationale for its combination by identifying a “concrete benefit” of
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`improved interoperability. ID, 25-29. Here, the POR simply reasserts the same
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`arguments (POR, 13-22), supplementing the record with the testimony of a declarant
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`with no relevant mobile payment experience that would inform the motivation at
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`issue (supra, Sec. II.A) who simply parrots the positions in PO’s brief. Xerox Corp.
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`v. Bytemark, Inc., IPR2022-00624, Paper 9, *15 (PTAB Aug. 24, 2022)
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`(precedential) (affording little weight to expert’s opinions which restate attorney
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`arguments without additional supporting evidence or reasoning).
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`At the outset, the law does not demand a “flaw” in a reference to make a
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`combination. Petitioner must show only that “there is something in the prior art as a
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`whole to suggest the desirability…of making the combination[.]” Intel Corp. v.
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`Qualcomm Inc., No. 2020-2092, WL 880681, *4 (Fed. Cir. Mar. 24, 2022) (internal
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`citations omitted); see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed.
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`Cir. 2019) (describing exemplary means to find motivation to combine). At
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`institution, the Board correctly reasoned that Petitioner identified a “concrete
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`benefit” from combining Dua with GlobalPlatform. ID, 29. As outlined in the
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`Petition, while Dua discloses its wireless device includes “an embedded smart card”
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`where its extensions reside (Dua, [0295]), “Dua does not describe conventional
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`smart card details.” Petition, 16; Ex. 2009 (Smith Tr., 45:10-11 (“[Dua] was very
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`light, almost non-existent on smart card detail”)); Ex. 1041 (Gomez Tr.), 23:23-
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`28:10, 64:21-65:7. To provide this implementation detail, a POSITA would look to
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`GlobalPlatform—the dominant standard at the time. Petition, 15-18. GlobalPlatform
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`“specifically facilitates loading and installing of issuer specific Applications, such
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`as Dua’s extensions,” logically leading a POSITA to apply GlobalPlatform’s
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`functionalities when implementing Dua’s extensions. Id.; Realtime Data, LLC, 912
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`F.3d at 1374 (affirming motivation to look to well-known text to better understand
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`or interpret base reference).
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`Neither PO nor its expert rebut this framework. Instead, PO doubles down on
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`its previously rejected position that incorporating GlobalPlatform into Dua would
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`“destroy” the allegedly critical feature of using SIP to securely target a particular
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`wireless device, creating an endpoint-to-endpoint connection. POR, 16-18. But PO’s
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`argument is premised on a critical misunderstanding of Petitioner’s combination—
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`that Petitioner’s combination “discard[s]” SIP entirely. Id. The Petition never
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`advanced this theory. It did not address the specific mechanisms used to construct
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`endpoint-to-endpoint connections because the claims do not require this.
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`Contrary to POR’s criticism regarding unclaimed aspects of the proposed
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`combination, a POSITA would indeed be motivated to rely on Dua’s SIP
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`architecture to establish an initial connection between endpoints (e.g., between
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`Dua’s WCM server and smart card). Ex. 1042 (Supp. Dec.), ¶¶11-26. In Dua, the
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`WCM server uses SIP to create a “pipe” (i.e., connection) between endpoints. Ex.
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`1042 (Supp. Dec.), ¶¶12-15; Ex. 2009, 43:4-15, 46:2-47:17. In Dua’s native system
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`and in the proposed combination, security can be established over this SIP “pipe.”
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`Pursuant to Dua’s native teachings, the SIP connection is secured with TLS (secure
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`channel 1), and the communications within this TLS-secured SIP “pipe” are further
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`secured with S/MIME (secure channel 2). But both TLS and S/MIME are generic
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`encryption and security protocols. Ex. 1041 (Gomez Tr.), 31:5-32:14 (Mr. Gomez
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`admits he has not seen SIP, TLS, or S/MIME used for financial transactions outside
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`of Dua). The Petition established that a POSITA would be motivated to employ
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`GlobalPlatform for an improved two-channel, smart card-specific, mechanism to
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`secure the communications. Petition, 15-18; Ex. 1042 (Supp. Dec.), ¶¶12-15. This
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`smart card-specific security could be implemented—like Dua’s expressly discussed
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`security mechanisms—over the SIP “pipe.” Ex. 1042 (Supp. Dec.), ¶¶12-20. As Dua
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`expressly teaches, “all security mechanisms available for HTTP (RFC 2617) can
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`also be applied to SIP sessions.” Ex. 1004 (Dua), [0201]. And it was well known
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`that GlobalPlatform-secured
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`transactions were
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`compatible with HTTP
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`communications sessions. Ex. 1042 (Supp. Dec.), ¶¶12-20. Tellingly, neither PO nor
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`its declarant identify any evidence disputing that GlobalPlatform could be used to
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`secure a transaction over Dua’s SIP “pipe.”
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`PO also criticizes Petitioner’s expert, arguing that Mr. Smith’s expertise
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`purportedly “has nothing to do with networking.” POR, 15. But this case is not about
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`networking. PO’s own expert, Mr. Gomez, characterizes the ’787 Patent as targeting
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`“methods and system for providing electronic purses (e-purses) for use in electronic
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`and mobile commerce[,]” rather than generic networking. Ex. 2007, ¶34; Ex. 1041
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`(Gomez Tr.), 7:4-8:3. PO’s criticisms are a transparent attempt to misdirect the focus
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`of this case from smart-card transactions to generic networking in an effort to distract
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`from Mr. Gomez’s lack of relevant experience. Ex. 1041 (Gomez Tr.), 9:7-20:4,
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`37:8-39:9, 50:15-51:18. This sleight of hand should be rejected.
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`In stark contrast to PO’s declarant who has no relevant smart card experience,
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`Petitioner’s expert, Mr. Smith, testified that he spent most of his life at the low level
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`of contact and contactless smart cards and protocols and was even on the board of
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`GlobalPlatform around the effective filing date of the ’787 patent. Compare Ex.
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`1041 (Gomez Tr.), 9:7-20:4, 37:8-39:9, 50:15-51:18 with Ex. 2009, 43:20-24, 87:10-
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`88:11; Ex. 1003 at ¶59 (Mr. Smith was “part of the GlobalPlatform organization
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`during the relevant time-frame”). Thus, Mr. Smith is the only expert with relevant
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`smart card and mobile payment technology expertise and his testimony supporting
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`the proposed combination should be accorded significant weight.4
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`4 PO also mischaracterizes Mr. Smith’s testimony to infer that “the field of the
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`invention” was unpredictable and no solutions were obvious. POR, 16 (citing Ex.
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`2009 at 93:8-23, 96:13-97:13). Read in context with his surrounding testimony, Mr.
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`Smith simply testified that, by 2006, mobile payments in the United States were less
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`developed than in Europe. Ex. 2009, 91:13-97:13. This does not take away from the
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`proposed combination, which relies on GlobalPlatform—the “most important
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`international specification” for smart cards (Ex. 1003, ¶59)—and Philips—a “very
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`Finally, PO disputes that Dua expressly motivates a POSITA to implement
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`known standards like GlobalPlatform. POR, 18-22. As detailed in the Petition, Dua
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`expressly acknowledges the value of ensuring compatibility with card organization
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`standards. Petition, 16-17 (citing Dua, [0525] (“[EMV-Compliant—The] wallet
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`application should meet standards defined by card organizations”). As further
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`detailed in the Petition, modifying Dua pursuant to GlobalPlatform and Philips
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`furthers this goal, enabling Dua’s payment methods to comply with then governing
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`standards. Petition, 16-17. None of PO’s arguments disputing this straightforward
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`motivation have merit.
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`Relying on its expert, an individual with no smart card or mobile payment
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`technology experience, PO first argues that Dua does not motivate the combination
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`because GlobalPlatform “is not a card organization” and even suggests that
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`GlobalPlatform “is not payment-related” at all. POR, 21. PO and its expert are
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`wrong. GlobalPlatform’s opening line explains that it is “an organization that has
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`been established by leading companies from the payments and communications
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`industries.” Ex. 1006, 16 (emphasis added). Indeed, GlobalPlatform traces its
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`history to one of the most widely recognized card organizations, Visa, originally
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`popular smart card platform” (Ex. 2009, 38:5-7). Both were well-settled during the
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`relevant time-period.
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`referred to as Visa Open Platform, then renamed Open Platform, and finally taking
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`the name GlobalPlatform. Ex. 1003, ¶¶58-59, 107. Further, Petitioner’s declarant,
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`Gerald Smith, served as a Board Member of the GlobalPlatform governance body
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`from 2000-2002 on behalf of American Express—another of the world’s most
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`widely recognized card organizations. GlobalPlatform also explains that its goal is
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`interoperability across industries and card organizations. Ex. 1006, 16 (explaining
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`the “goal is to reduce barriers hindering the growth of cross-industry” smarts cards).
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`Because GlobalPlatform is an organization established by card organizations with
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`the specific mission of ensuring smart card interoperability, a POSITA would have
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`understood GlobalPlatform precisely aligns with Dua’s express interoperability goal
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`that its “wallet application should meet standards defined by card organizations.”
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`Ex. 1042 (Supp. Dec.), ¶¶21-26; Ex. 1003, 116.
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`Second, PO argues paragraph [0525] in Dua should be read to narrowly
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`suggest only that its “wallet application should meet the EMV standard,” and not
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`more broadly to encourage interoperability with standards like GlobalPlatform.
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`POR, 20-21. As an initial matter, PO relies entirely on the unqualified testimony of
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`Mr. Gomez for this interpretation, which should be accorded little to no weight.
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`However, even if Dua was specifically referencing EMV, PO fails to acknowledge
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`that
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`the EMV standard
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`itself expressly
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`recommends complying with
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`GlobalPlatform. Ex. 2003, 16 (noting EMV “cannot be considered in isolation” and
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`importance of “[a]lign[ing] with standards bodies such as
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`stressing
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`the
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`GlobalPlatform”). This is not surprising. A POSITA would have been well aware
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`that the “smart card industry encouraged interoperability in many respects and across
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`many complementary standards.” Ex. 1042 (Supp. Dec.), ¶¶23-25.
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`Relatedly, Dua encourages compatibility with the Java platform and Java
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`applets—encouragement
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`that would have motivated a POSITA
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`to use
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`GlobalPlatform for personalization because “GlobalPlatform ‘has primarily become
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`the de facto standard for loading and managing Java-based applications[.]” Petition,
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`17. PO suggests that Dua’s references to Java have nothing to do with Dua’s smart
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`card and instead merely propose Java as an operating system for Dua’s mobile
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`phone. POR, 21-22. Critically, PO does not identify what operating system would
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`have run Dua’s smart card if not Java and does not identify any technical reason why
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`Dua’s smart card would not implement Java Card. PO’s observation does not take
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`away from the motivation to combine. Indeed, that Dua fails to describe the
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`implementation details of its smart card is one of the fundamental premises
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`underlying the proposed combination—because Dua does not describe how its smart
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`card would be implemented, a POSITA would have been motivated to rely on then-
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`governing smart card standards. Petition, 16. A POSITA would have known that
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`Dua’s smart card requires an operating system and would have known Java Card
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`was a dominant option at the time. Ex. 1042 (Supp. Dec.), ¶26. Given its silence on
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`the smart card implementation specifics, a POSITA would have interpreted Dua’s
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`repeated references to Java more broadly than PO contends, recognizing Dua would
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`be compatible with a Java smart card. Ex. 1042 (Supp. Dec.), ¶26.
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`Accordingly, none of PO’s rehashed arguments give the Board reason to
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`modify its initial findings and the Board should make these findings final.5
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`D. Limitation [1a]: The Combination Discloses an Emulator That
`Stores Updated Transaction Logs
`PO, relying only on attorney argument and unsupported expert testimony,
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`argues that the Petition fails to disclose “an emulator that stores updated transaction
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`logs.” POR, 23. Not so. The Petition clearly articulates that Philips discloses a
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`“MIFARE®
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`emulator”
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`for
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`conducting
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`“standard
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`(classic) MIFARE®
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`transaction[s]” and that such classic MIFARE transactions “involved…updating a
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`transaction log.” Petition, 20. Even further, Mr. Smith established, unrebutted, that
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`“[s]uch basic functionality is mandatory of e-purses in general, not just MIFARE®.”
`
`Ex. 1003, ¶¶135-136 (citing Ex. 1008, 289-290, 487–488, 547, 689, 692-693, 706-
`
`707; Ex. 1019, 199, 201; Ex. 1029, [0020]; Ex. 1030, 43-44; Ex. 1031, 32:23-36;
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`Ex. 1038, 4:63-66, 8:53-66). Mr. Smith also indicated that the ’787 Patent itself
`
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`5 PO’s argument against a motivation to combine Philips with Dua (see POR, 22-23)
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`is premised on its arguments against combining Dua and GlobalPlatform. For the
`
`reasons above, PO’s arguments are misplaced.
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
`admits that “a Mifare emulator 208” is a “single functional card” “for storing
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`values[,]” leading Mr. Smith to conclude that Philips’s Mifare emulator would store
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`updated transaction logs. Ex. 1003, ¶¶135-136.
`
`PO does not dispute that transaction logs are mandatory functionality in e-
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`purses and Mifare, and its declarant was unable to identify any e-purses that lack
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`such basic functionality. Ex. 1041 (Gomez Tr.), 33:17-34:19, 35:22-39:9.
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`Accordingly, Petitioner’s expert alone has addressed this critical issue. Ex. 1003,
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`¶135; Ex.1042 (Supp. Dec.), ¶¶27-30 (explaining that a Philips Mifare transaction
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`would mandate a transaction log). PO instead challenges the propriety of Mr.
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`Smith’s heavily corroborated opinions. POR, 23-25; Ex. 2007, ¶¶75-83. Initially, PO
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`mischaracterizes Petitioner’s grounds as relying only on Ex. 1008, the Smart Card
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`Handbook, to teach this limitation. POR, 23. Instead, the Petition argues that Philips
`
`“discloses to a POSITA that its emulator was ‘for storing…updated transaction logs”
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`and cites to Ex. 1008 in support. Petition at 21 (emphasis added).
`
`Petitioner’s obviousness analysis, relying on what Philips discloses to a
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`POSITA, is sound. It is well-settled that an obviousness inquiry “turns not only on
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`the prior art, but whether…the claimed invention as a whole would have been
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`obvious…to a person having ordinary skill in the art[.]” See Koninklijke Philips N.V.
`
`v. Google LLC, 948 F.3d 1330, 1337-38 (Fed. Cir. 2020) (internal citations omitted).
`
`An obviousness “analysis requires an assessment of the ‘…background knowledge
`
` 16
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
`possessed by a [POSITA][.]” Id. (emphasis in original); see also Arendi S.A.R.L. v.
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`Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016); Randall Mfg. v. Rea, 733 F.3d
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`1355, 1362–63 (Fed. Cir. 2013).
`
`Accordingly, PO’s critiques are legally unfounded and should be rejected.
`
`E.
`
`Limitation [1c]: The Combination Discloses Personalizing the
`Emulator in Two Ways
`PO begins with a blatant mischaracterization of the Petition—contending that
`
`the “Petition does not even assert that its combination discloses personalizing the
`
`emulator.” POR, 25. The Petition advances (as PO later admits) that the Mifare
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`emulator may be personalized in one of two ways: the updated keys are stored in the
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`Mifare emulator pursuant to either GlobalPlatform’s personalization processes or
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`Dua’s personalization processes. Petition, 26, 34.
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`Regarding
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`the first way, Petitioner’s evidence establishes (1)
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`that
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`GlobalPlatform uses triple DES keys for cryptographic communications over its
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`Secure Channels, (2) that Philips’s Mifare emulator uses a triple key DES-3 co-
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`processor with these same triple DES keys for cryptographic communications, and
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`(3) that these keys are personalized into the Mifare emulator to allow the emulator
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`to operate. Petition, 26 (citing Ex. 1003, ¶¶149-150; Ex. 1012 at 1, 5, 7; Ex. 1019 at
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`199, 201). PO asserts that Philips “says nothing” about the Mifare emulator using
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`DES keys such that “personalizing keys does not equate with personalizing the
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`emulator.” Ex. 1042 (Supp. Dec.), ¶¶31-33 (annotated figure from Philips). PO is
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
`wrong. The Mifare emulator includes its own key set for accessing secure Mifare
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`memory structures. Petition at 26 (citing Ex. 1003, ¶150); Ex. 1042 (Supp. Dec.),
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`¶¶31-37. Dua’s SVCE then includes a derived set of keys for Secure Channel
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`establishment. Petition at 25-31 (describing Secure Channels); Ex. 1003, ¶¶151 (“the
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`Application uses its own key set…to create a Secure Channel), 203-206. Thus,
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`despite PO’s contentions, separate personalized keys are stored in both the Mifare
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`emulator and Dua’s SVCE (e-purse) to effectuate encrypted communications over a
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`Secure Channel. Petition, 49-51 (discussing claim 3’s “transformed passwords” for
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`the application based on keys stored in the emulator).
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`Regarding the second way, PO advances the same tenuous arguments as
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`above, i.e., that the emulator itself is not personalized with keys. POR, 27. As
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`explained above, the Petition establishes that both the Mifare emulator and Dua’s
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`SVCE are personalized with their own respective keys. Petition, 34 (citing Ex. 1003,
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`¶164; Ex. 1012, 1-3; Ex. 1019, 199, 201).
`
`F.
`
`[1c]: The Combination Discloses Two-Channel
`Limitation
`Personalization in Two Ways
`PO admits the Petition also addresses this limitation “in two ways: i) via Dua
`
`in view of GlobalPlatform and Philips (Pet. at 25-32); and ii) via Dua in view of
`
`Philips (Pet. at 32-35).” POR, 28. In its POPR, regarding the “first way,” PO argued
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`that there is purportedly no motivation to combine Dua and Philips with
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`GlobalPlatform’s personalization teachings. POPR, 16-20. At institution, the Board
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` 18
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
`twice rejected PO’s arguments concerning the “first way” and found sufficient
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`motivation for the reasons detailed above. Samsung IPR ID, 34-36, 38; ID, 25-29.
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`The POR re-hashes these same arguments, failing to engage the Board’s preliminary
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`holding and predicating its entire position on the incorrect assumption that a
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`POSITA would not combine Dua with GlobalPlatform. Id. As set forth above and as
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`the Board has repeatedly held, Petitioner has sufficiently demonstrated a motivation
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`to combine. Supra, Sec. II.C.
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`Regarding the “second way,” PO disputes that Dua’s extensions conduct
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`transactions with network servers over a second channel via S/MIME. POR, 28-29.
`
`First, PO does not dispute that Dua’s TLS teachings disclose the claimed first secure
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`channel. POR, 28-29. PO focuses its criticisms on whether Dua’s S/MIME teachings
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`form a second secure channel where transactions can be conducted. Id. (arguing
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`“S/MIME and TLS form at most a single secure channel” because they use the same
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`certificates and that the extension would not “conduct transactions with network
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`servers via S/MIME”). As Mr. Smith explains, this “shared certificates” argument is
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`a red herring. TLS and S/MIME “are security used for different purposes.” Ex. 1042
`
`(Supp. Dec.), ¶¶38-41. TLS is security at the “channel level” whereas S/MIME is
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`security at the “message level.” Ex. 1042 (Supp. Dec.), ¶¶38-41. TLS secures the
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`SIP connection between endpoints (TLS-protected SIP is channel 1), and S/MIME
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` 19
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`Inter Partes Review No. IPR2022-00412
`U.S. Patent No. 9,189,787
`forms a secure channel on top of TLS-protected SIP to
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