`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`
`Patent Owner.
`
`
`
`
`Patent No. 9,189,787
`Filing Date: May 28, 2013
`Issue Date: November 17, 2015
`
`Inventors: Liang Seng Koh, Futong Cho, Hsin Pan, and Fuliang Cho
`Title: METHOD AND APPARATUS FOR CONDUCTING
`E-COMMENCE AND M-COMMENCE
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY
`
`Case No. IPR2022-00412
`__________________________________________________________________
`
`
`
`
`
`
`
`

`

`
`
`I.
`II.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`B.
`C.
`
`Page(s)
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 2
`A.
`Patent Owner’s Proposal for the Ordinary Level of Skill is
`Correct, and Patent Owner’s Expert is Qualified .................................. 2
`Apple Fails to Show that Philips is Prior Art ........................................ 5
`A POSITA Would Not Combine Dua with GlobalPlatform
`and/or Philips ......................................................................................... 6
`The Asserted References Do Not Disclose or Render Obvious
`“an emulator [loaded in a smart card module] for storing
`security values and updated transaction logs” (claims 1 and
`11) ........................................................................................................14
`The Asserted References Do Not Disclose or Render Obvious
`any “personalized” emulator (claims 1 and 11) ..................................16
`The Asserted References Do Not Disclose or Render Obvious
`Performing M-Commerce “against a fund stored in the
`emulator” (Claims 1 and 11) ...............................................................17
`The Asserted References Do Not Disclose or Render Obvious
`a personalization process “built on a first security channel so
`that . . . the e-purse applet is configured to conduct a
`transaction with a network server over a second security
`channel” (claims 1 and 11) ..................................................................18
`The Asserted References Do Not Disclose or Render Obvious
`security channels between a smart card module “and a security
`authentication module (SAM) external to the smart card
`module” (Claims 6 and 16) .................................................................20
`III. CONCLUSION ..............................................................................................21
`
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`TABLE OF CONTENTS
`
`i
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`

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`
`
`TABLE OF AUTHORITIES
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`IPR2022-00412
`PATENT NO. 9,189,787
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` Page(s)
`
`Cases
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 14
`Chemours Co. FC, LLC v. Daikin Indus., Ltd.,
`4 F.4th 1370 (Fed. Cir. 2021) ............................................................................... 6
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ........................................... 5
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 13
`Samsung Elecs. Am., Inc. v. RFCyber Corp.,
`IPR2021-00979, Paper 10 (P.T.A.B. Dec. 14, 2021) ......................................... 20
`Sandbox Logistics LLC v. Proppant Express Invs. LLC,
`813 Fed. Appx. 548 (Fed. Cir. 2020) .................................................................... 8
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 13
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 6
`Statutes
`35 U.S.C. 324 ............................................................................................................. 4
`35 U.S.C. § 311 (b) .................................................................................................. 14
`Other Authorities
`37 C.F.R. § 42.207 ..................................................................................................... 4
`
`
`
`
`

`

`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner” or “Apple”) has failed to show that claims 1-19
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`IPR2022-00412
`PATENT NO. 9,189,787
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`(“challenged claims”) of the ’787 Patent are invalid and, on Reply, fails to rebut
`
`Patent Owner’s arguments. The Board should issue a Final Written Decision finding
`
`all of the challenged claims not unpatentable for the reasons set forth below and in
`
`Patent Owner’s Response (the “POR”).
`
`First, Apple fails to show that a POSITA would have any reason or motivation
`
`to combine Dua with GlobalPlatform. Apple does not substantively address its own
`
`expert’s admissions that he lacks expertise in network protocols, a central feature of
`
`his alleged motivation to combine, that the field of the invention was unpredictable,
`
`and that there were no obvious solutions. Nor does Apple identify any deficiencies
`
`in Dua, or any benefit that would supply a reason and/or motivation to replace or
`
`modify Dua’s SIP-based protocols with GlobalPlatform. Instead, Apple introduces
`
`a supplemental declaration and raises new arguments alleging that it is (somehow)
`
`possible to add GlobalPlatform without entirely replacing SIP. This is inconsistent
`
`with Apple’s own Petition and does not cure Apple’s failure to provide a justification
`
`defeating Dua’s aim of leveraging existing channels (such as SIP) by importing
`
`GlobalPlatform. Finally, Apple resorts to baseless mudslinging against the
`
`qualifications of Patent Owner’s expert, Mr. Gomez. But as discussed below infra
`
`Section II.A., Apple’s arguments are premised on an unduly narrow formulation of
`
`1
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`

`

`
`the level of ordinary skill in the art and Mr. Gomez is qualified under both parties’
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`IPR2022-00412
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`proposals. Apple’s combination fails on this basis.
`
`Second, despite raising a slew of new arguments, Apple both fails to show
`
`disclosure of the claim limitations discussed in detail below and does not
`
`substantively address many of the arguments raised in Patent Owner’s Response.
`
`Apple instead falls back on a supplemental declaration from its expert in an attempt
`
`to read missing disclosures into the asserted references on the basis of unsupported
`
`conjecture. But as discussed in detail below, Apple fails to remedy these and other
`
`deficiencies. The Board should further find that the challenged claims are not
`
`unpatentable on this basis.
`
`II. ARGUMENT
`Patent Owner’s Proposal for the Ordinary Level of Skill is
`A.
`Correct, and Patent Owner’s Expert is Qualified
`Patent Owner’s proposed level of ordinary skill in the art is correct, and its
`
`expert is qualified, irrespective of which proposed level of skill in the art is applied.
`
`Petitioner’s Reply argues from the false premise that Patent Owner’s expert is
`
`somehow unqualified and repeatedly relies on this assertion. To reach this
`
`conclusion, Petitioner (1) wrongly suggests that a POSITA need have direct
`
`experience with “payments” (without exception) and (2) wrongly asserts that
`
`Mr. Gomez does not have relevant experience.
`
`First, Patent Owner’s proposed level of ordinary skill is correct. Patent Owner
`
`2
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`

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`proposes that “[a] person of ordinary skill in the art would have a Bachelor’s degree
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`in Computer Science, Computer Engineering, or Applied Mathematics, with 2 or
`
`more years of academic or industry experience in computer security, network
`
`security or mobile payment technology.” POR at 10. (emphasis added). Petitioner
`
`proposed that “a POSITA would have had at least a bachelor’s degree in computer
`
`science, computer engineering, electrical engineering or an equivalent, and one year
`
`of professional experience relating to mobile payment technology.” Pet. at 11.
`
`(emphasis added). Patent Owner’s proposal, unlike Petitioner’s proposal, addresses
`
`that the claimed arrangement of security features, such as “storing security values,”
`
`“security channel[s]” and “a set of keys for data access and authentication.” among
`
`others. The ’787 Patent also highlights “a mechanism . . . to enable a portable device
`
`to conduct transactions . . . without compromising security” (Ex. 1001 at Abstract)
`
`and teaches “three-tier security model based on which the present invention is
`
`contemplated.” Id. at 3:1-3. Petitioner’s own expert acknowledges that education
`
`related to “secure communications, secure memory devices, and potentially smart
`
`cards” is relevant to the level of ordinary skill. Ex. 1003, ¶ 28. Patent Owner’s
`
`proposal acknowledging that a range of experience related to security computer and
`
`network security is relevant to the invention is therefore correct.
`
`Without identifying any support in the ‘787 Patent, Petitioner seeks to limit
`
`the field of relevant experience exclusively to “mobile payment technology.” Reply
`
`3
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`

`

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`at 2-3. This unduly narrow formulation ignores both the majority of the claimed
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`limitations (which relate to computer or network security) and its own expert’s
`
`admissions, as noted above. The fact that the invention of the ‘787 Patent is generally
`
`related to “commerce over networks” is not a basis for limiting the level of ordinary
`
`skill to “professional experience in mobile payments.” Ex. 1001 at 1:18-21. Indeed,
`
`Petitioner does not substantively address the ’787 Patent’s “technical field” or
`
`“description of the related art.” Instead, Petitioner wrongly asserts that “removes a
`
`requirement” relies on the fact that Patent Owner did not dispute the level of
`
`ordinary skill of the art solely for purposes of its POPR, baselessly suggesting that
`
`Patent Owner is now required to provide justification for any departure from that
`
`formulation. Reply at 2-3. This boils down to an incorrect assertion that Patent
`
`Owner agreed to any argument not disputed in its POPR. A patent owner’s
`
`preliminary response is “limited to setting forth the reasons why no post-grant
`
`review should be instituted under 35 U.S.C. 324.” Patent Owner’s Response is not
`
`limited to the arguments presented in its preliminary response, and a decision not to
`
`contest an argument solely for the purposes of a preliminary response is not an
`
`agreement. 37 C.F.R. § 42.207.
`
`Second, Mr. Gomez is well qualified under both proposed levels of ordinary
`
`skill. Petitioner does not dispute that Mr. Gomez is qualified in computer and
`
`network security. Instead, Petitioner conclusorily asserts that he lacks experience in
`
`4
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`“mobile payments,” by citing to deposition questions regarding whether he “worked
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`on any e-purses specifically” and other similarly narrow questions. Reply at 3. But
`
`Mr. Gomez has extensive experience with online and mobile commerce based on his
`
`professional experience developing hardware, software, and protocols used in online
`
`and mobile commerce. See e.g. Ex. 1041 at 14:1-6 (“I’ve worked on all of the
`
`systems that the mobile commerce leans on in order to be able to communicate the
`
`– you know, secure elements – secure data across a network.”). As just one example,
`
`Mr. Gomez worked with Philips Semiconductors developing early smart cards. See
`
`Id. at 14:7-24. This, along with Mr. Gomez’s other work with communications
`
`protocols, is “professional experience relating to mobile payment technology.”
`
`Petitioner’s suggestion that Mr. Gomez needs direct experience working on
`
`“financial transactions” or “specifically” working on an e-purse to have experience
`
`with “mobile payments” is baseless.
`
`B. Apple Fails to Show that Philips is Prior Art
`Apple bears the burden of showing that Philips is prior art to the ’787 Patent.
`
`Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 16
`
`(P.T.A.B. Dec. 20, 2019) (precedential) (“[T]he burden is on the petitioner to
`
`identify with particularity evidence sufficient to establish a reasonable likelihood
`
`that the reference was publicly accessible before the critical date of the challenged
`
`patent, and therefore that there is a reasonable likelihood that it qualifies as a printed
`
`5
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`

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`publication.”) Apple failed to do so. Apple now raises entirely new arguments
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`outside the scope of its Petition, relying on previously unidentified file histories and
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`web archive screenshots which were not of record when Patent Owner deposed
`
`Apple’s expert. These new arguments should be rejected as improper and untimely.
`
`C. A POSITA Would Not Combine Dua with GlobalPlatform and/or
`Philips
`Apple’s Petition does not identify any deficiencies in Dua that would motivate
`
`a POSITA to import GlobalPlatform. To the contrary, importing GlobalPlatform
`
`would defeat Dua’s aim to leverage an existing channel (such as SIP) to download
`
`SVCEs. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)
`
`(holding that it is not obvious to “destroy the basic objective” of the prior art
`
`reference); Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370, 1376-77
`
`(Fed. Cir. 2021). On Reply, Apple fails to remedy these and other deficiencies.
`
`First, rather than address the substance of Patent Owner’s arguments now
`
`before the Board, Apple merely restates cherry-picked portions of the Board’s
`
`institution decision in the Samsung IPR based on which Apple filed a copy-cat
`
`Petition. Apple’s straw man argument miscasts both the record, and Patent Owner’s
`
`arguments, as identical to the preliminary record in the Samsung IPR. Apple ignores
`
`that those findings were based on the preliminary record before the Board in the
`
`Samsung IPR, and based on (among other things) the then-uncontroverted testimony
`
`6
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`

`

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`of Mr. Smith. But Mr. Smith’s admissions, and Mr. Gomez’s considered opinions,
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`IPR2022-00412
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`weigh against those findings, as do the totality of Dua and GlobalPlatform’s
`
`teachings.
`
`As set forth in the POR at length, Dua explains that “[t]he use of SIP for
`
`transmitting and managing credentials on wireless device 200 is preferred as mobile
`
`operators and fixed line operators are moving towards a SIP-based architecture for
`
`voice and other multimedia services. It is envisioned that the use of SIP for
`
`communication between a credential issuer and a wallet application resident on
`
`wireless device 200 could leverage the same SIP registrar, proxy, and presence
`
`servers used to deliver real-time interactive converged communication services
`
`within a mobile operator's network.” Ex. 1004, Dua, ¶ [0051]. Thus, “[t]he use of a
`
`SIP architecture to locate a mobile end-user and to establish direct communication
`
`between the end-points (WCM and wallet application) for the purpose of transferring
`
`confidential information (e.g. credentials) is an important aspect of the present
`
`invention.” (emphasis added). Dua, ¶ [0178]. Mr. Gomez explains at length that a
`
`POSITA would understand that Dua aims to leverage a SIP API framework to “allow
`
`for multiple SIP-based applications, such as a wallet application.” Ex. 2007, Gomez
`
`Decl., ¶¶ 50-53 (citing Dua, [0042], [0050]-[0051], and [0178]. While Dua’s
`
`specification includes boilerplate language that different existing network protocols
`
`may be used to implement Dua’s invention, that is not a suggestion to implement
`
`7
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`

`

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`an entirely new system layered on Dua as Apple argues. See Sandbox Logistics LLC
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`IPR2022-00412
`PATENT NO. 9,189,787
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`v. Proppant Express Invs. LLC, 813 Fed. Appx. 548, 553 n.8 (Fed. Cir. 2020) (non-
`
`precedential) (“[B]oilerplate language, without more, is not sufficient to overcome
`
`the explicit description of the ‘present invention.’”).
`
`Moreover, Apple relies extensively on Mr. Smith’s declaration in arguing for
`
`the addition of GlobalPlatform to Dua’s network protocols. But Mr. Smith himself
`
`now admits his expertise has nothing to do with network protocols, and his
`
`declaration is not credible evidence to support Apple’s argument that Dua’s SIP-
`
`based S/MIME and TLS security could be supplanted with GlobalPlatform. Ex.
`
`2009, Smith Dep. Tr. at 42:21-43:3 (“I am not a network protocol expert.”). Mr.
`
`Smith further admitted that he does “not have an appreciation for [SIP] other than []
`
`I have an awareness. To me, it’s a way of making a pipe . . . between . . . the network
`
`and handset.” Id. at 43:4-15; see also 43:25-44:13 (“Q: In terms of making a pipe,
`
`so to speak, in 3G or 4G over the internet for some kind of communication, that’s
`
`not [] your main area of expertise, right? A: That’s correct, Vincent.”). Mr. Smith
`
`also admitted that the field at the time of the invention was extremely unpredictable
`
`and that no solutions were obvious. Id. at 93:8-23 (“But yeah [] the summary is the
`
`handsets were maturing, smart card technology which was always considered a
`
`European-founded technology, the French claimed it, although the Japanese claimed
`
`it also at the same time . . . I wouldn’t say that we didn’t have the expertise [] but it
`
`8
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`wasn’t tempered by the experience needed to really stand up robust saleable
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`PATENT NO. 9,189,787
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`solutions. That’s my experience from let’s say the late ‘90s up into 2006.”)
`
`(emphasis added). Apple’s cherry-picked citations to the Samsung IPR (before Mr.
`
`Smith’s admissions entered the record) do nothing to address this evidence.
`
`Second, Apple fails to substantively address that a POSITA would not see any
`
`advantage in adding GlobalPlatform to Dua. Rather than address these arguments,
`
`Apple attempts to mischaracterize them as solely demanding a “flaw” in Dua. Reply
`
`at 6-7. But as Mr. Gomez explains, “a POSITA would not be motivated to combine
`
`GlobalPlatform with Dua because Dua already provides security through its use of
`
`SIP, TLS, and S/MIME. In my opinion, a POSITA would not seek to include
`
`GlobalPlatform’s functionality that would duplicate that already in Dua.” Ex. 2007,
`
`¶ 60. Apple bears the burden to identify some reason or motivation for a POSITA to
`
`overlay GlobalPlatform onto Dua, which would involve the wholesale replacement
`
`of many network protocols in Dua. It cannot.
`
`Apple also raises new arguments wrongly suggesting that its combination
`
`replacing Dua’s SIP-based network protocol with GlobalPlatform would somehow
`
`not involve discarding SIP. Reply at 9. Apple relies on a supplemental declaration
`
`from Mr. Smith, who is admittedly not an expert in this area, to suggest that
`
`GlobalPlatform’s personalization techniques would somehow not replace the
`
`entirety of the SIP network protocol contemplated in Dua. Reply at 11 As an initial
`
`9
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`

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`matter, Apple does not even dispute that the combination would involve replacing
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`the entirety of the SIP-based personalization contemplated in Dua with that of
`
`GlobalPlatform, instead pointing to ancillary portions of Dua’s SIP sessions which
`
`it says would remain. Id. The remainder of Apple’s argument does nothing more
`
`than pay lip service to Dua’s SIP-based connections based on phone numbers (which
`
`Apple now refers to as “pipes”), ignoring that its own Petition already relied on
`
`distinct and incompatible GlobalPlatform security domains to form those
`
`connections. See Pet. at 23-25 (relying on Global Platform “issuer security domain”
`
`and “application provider security domain” to for first and second security channel
`
`limitations). Apple cannot have it both ways; a channel is either established with a
`
`GlobalPlatform security domain and key set, or Dua’s SIP sessions based on a user’s
`
`phone number. Apple’s attorney argument that a GlobalPlatform receipt may
`
`(somehow) be transmitted “via the wireless SIP session” does nothing to remedy this
`
`incompatibility, nor to identify any manner in which a POSITA would understand
`
`that they could both be used simultaneously.
`
`Fourth, Apple’s reliance on Dua’s statement that “MasterCard and Visa have
`
`also been working jointly over the last few years to develop specifications that define
`
`a set of requirements for security and interoperability between chip cards and
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`terminals on a global basis, regardless of the manufacturer, the financial institution,
`
`or where the card is used” remains misplaced. The specifications referred to are the
`
`10
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`

`

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`EMV Chip Specifications which, as EMVco explains, “are global payment industry
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`specifications that describe the requirements for interoperability between chip-
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`based payment applications and acceptance terminals to enable payment.” Ex.
`
`2003 at 5 (emphasis added and footnote omitted). Dua refers to such EMVco
`
`specifications
`
`repeatedly. Moreover, a POSITA would understand
`
`that
`
`GlobalPlatform purports to provide a card management architecture. Pet. at 11
`
`(quoting Ex. 1006, p. 13). It does not relate to interoperability between chip cards
`
`and terminals, or even to payments, at all. Ex. 2007, ¶¶ 59-65.
`
`Apple fails to identify any disclosure within GlobalPlatform related to
`
`payments, or interoperability between chip cards and terminals; it cannot, because
`
`none exists. Instead, Apple argues that GlobalPlatform is somehow a “payments
`
`organization” based on the fact that its founders are companies within the payments
`
`space. But whether or not GlobalPlatform was founded by payments companies is
`
`irrelevant to the scope of the standard and does not somehow render that standard
`
`relevant to “security and interoperability between chip cards and terminals.” Apple
`
`notably fails to identify any content of GlobalPlatform relevant to interoperability
`
`between chip cards and terminals, or to payments at all.
`
`Apple also relies on Dua’s statement that a “wallet application should meet
`
`standards defined by card organizations.” Pet., 16-17 (quoting Dua, ¶ [0525]). Apple
`
`does not substantively address that it selectively quoted this sentence out of context,
`
`11
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`

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`as the full statement is “EMV-Compliant—The wallet application should meet
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`standards defined by card organizations.” Dua, ¶ [0525] (emphasis added). Apple
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`instead takes issue with the semantics of the statement that GlobalPlatform is not a
`
`“card organization” while
`
`ignoring the substance of the distinction that
`
`GlobalPlatform is a security architecture for smart card management, unlike EMV
`
`which describes requirements for chip cards themselves. A POSITA, reading Dua,
`
`would not look to GlobalPlatform based on Dua’s general reference to “card
`
`organizations,” when Dua specifies that it means EMV. Ex. 2007, ¶¶ 59-65.
`
`Finally, Apple resorts to mudslinging against Patent Owner’s expert in an
`
`apparent attempt to compensate for Mr. Smith’s admissions that he does not have
`
`any expertise in network protocols. Reply at 10-12. But as discussed supra Section
`
`II.A, Mr. Gomez is well qualified under either party’s proposed level of skill in the
`
`art. Apple also attempts to explain away Mr. Smith’s clear testimony that (1) he is
`
`“not a network protocol expert,” does “not have an appreciation for [SIP] other than
`
`[] I have an awareness. To me, it’s a way of making a pipe . . . between . . . the
`
`network and handset,” and that “[a]gain, this is my -- this is an area that was a little
`
`on the edge for me, as I don’t know network protocols real well but I do know
`
`components and that sort of thing,” (Ex. 2009 at 42:24-25, 43:4-15, 65:2-10); and
`
`(2) that the relevant field at the time of the invention was extremely unpredictable
`
`and that no solutions were obvious (Id. at 93:8-23, “But yeah [] the summary is the
`
`12
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`handsets were maturing, smart card technology which was always considered a
`
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`European-founded technology, the French claimed it, although the Japanese claimed
`
`it also at the same time . . . I wouldn’t say that we didn’t have the expertise [] but it
`
`wasn’t tempered by the experience needed to really stand up robust saleable
`
`solutions. That’s my experience from let’s say the late ‘90s up into 2006.” (emphasis
`
`added); see also id. at 96:13-97:13, “Q: At least as of the 2006 timeframe [] things
`
`weren’t set in stone for how to do mobile payments just yet, right, in the United
`
`States? A: I would have to say that’s true . . .”. (emphasis added)). Apple cannot
`
`plausibly dispute that a POSITA’s expertise in network protocols is relevant to
`
`whether they would attempt to replace or modify one protocol (such as SIP) with
`
`another (such as GlobalPlatform). Nor can Apple plausibly dispute that Mr. Smith’s
`
`testimony establishes that the field was unsettled and unpredictable, weighing
`
`against obviousness. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1088, 1090
`
`(Fed. Cir. 2008).
`
`In sum, Petitioner has not shown a motivation to combine Dua with
`
`GlobalPlatform. At most, Petitioner has shown that GlobalPlatform existed at the
`
`time; but the mere existence of a reference is not a motivation to combine. Personal
`
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017) (holding that
`
`testimony that references could be combined was “not enough: it does not imply a
`
`motivation to pick out those two references and combine them to arrive at the
`
`13
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`claimed invention”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
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`2015) (“[O]bviousness concerns whether a skilled artisan not only could have made
`
`but would have been motivated to make the combinations or modifications of prior
`
`art to arrive at the claimed invention.”)
`
`D. The Asserted References Do Not Disclose or Render Obvious “an
`emulator [loaded in a smart card module] for storing security
`values and updated transaction logs” (claims 1 and 11)
`Apple and its expert acknowledge that no reference within its combination
`
`discloses an emulator that stores updated transaction logs. Pet. at 20-21; Ex. 2009,
`
`83:11-23. Indeed, Philips and Dua are silent as to transaction logs. See generally Ex.
`
`1004, 1012; Ex. 2007, ¶¶ 75-77. Apple instead relies on another reference, the
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`“Smart Card Handbook,” which it does not assert as part of its combination, does
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`not assert was publicly available or is otherwise prior art, and does not assert a
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`POSITA would have any reason or motivation to use in combination with the other
`
`asserted references.
`
`Apple fails to address its own expert’s admission that he did not use any
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`reference to meet this limitation, instead relying on his own experience. Ex. 2009,
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`87:6-92:6. Apple fails to show any basis for its reliance on Mr. Smith’s memory,
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`which is not “prior art” consisting of a patent or printed publication. See 35 U.S.C.
`
`§ 311 (b). Nor does Apple even show Mr. Smith’s memory is reliable in view of his
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`testimony. See id., 10:16-11:5, 93:8-13. Instead, Apple raises a new argument that
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`this functionality is somehow “mandatory of e-purses in general.” Reply at 15-16.
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`But Apple makes no showing that this feature is inherent in any e-purse, let alone
`
`that the alleged prior art of record shows inherency. Without any legal support,
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`Apple also nonsensically suggests that it is somehow Patent Owner’s burden to show
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`that this limitation is not inherent, despite raising entirely new arguments in Mr.
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`Smith’s supplemental declaration on Reply. Reply at 16. It is not; Petitioner has
`
`failed to meet its burden to show that the asserted prior art discloses this limitation.
`
`Apple also fails to rebut that none of the asserted references disclose this
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`limitation, instead doubling down on its use of the Smart Card Handbook. Instead,
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`Apple attempts to muddy this issue by asserting that the “Petition argues that Philips
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`’discloses to a POSITA that its emulator was ‘for storing . . . updated transaction
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`logs’ and cites to Ex. 1008 in support.’” Reply at 16 (citing Pet. at 21). The language
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`that Apple misleadingly quotes from page 21 of the Petition is from the ’787 Patent
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`itself, not Philips. Philips makes no mention of any “transaction log,” nor does it
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`ever refer to the Smart Card Handbook. Indeed, in the preceding sentence of the
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`Petition, Apple expressly relies on the Smart Card Handbook (Ex. 1008) for the
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`statements that it attempts to import into the Philips reference. Apple’s broadside
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`assertion that the Smart Card Handbook “discloses to a POSITA” information about
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`an emulator does not cure its failure to even assert that the Smart Card Handbook
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`was publicly available or that a POSITA would have included it in Apple’s asserted
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`15
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`combination, let alone its failure to include the Smart Card Handbook in any alleged
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`ground for invalidity.
`
`Finally, Apple also fails to address that the documents which Philips actually
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`holds out as describing MIFARE do not include the Smart Card Handbook, and that
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`none of those references shows that MIFARE included a transaction log.
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`Accordingly, Apple has failed to show that the asserted references, alone or
`
`in combination, disclose this limitation or render it obvious.
`
`E.
`
`The Asserted References Do Not Disclose or Render Obvious any
`“personalized” emulator (claims 1 and 11)
`Apple’s Petition does not even assert that its combination discloses
`
`personalizing the emulator. See Pet. at 23-34. Apple attempts to cure this deficiency
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`by raising a slew of new arguments for the first time on Reply.
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`Apple relies on the alleged MiFare emulator of its combination for this
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`limitation, but still fails to show that the emulator itself is personalized. Apple’s
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`arguments boil down to an assertion that (1) Philips includes a triple key DES-3 co-
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`processor which could be used with an emulator or (2) that a MiFare emulator
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`“includes its own key set for accessing secure MiFare memory structures,” a
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`completely new argument for which Apple cites Mr. Smith’s supplemental
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`declaration. Reply at 17-18. However, Apple fails to advance any evidence that
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`existence of keys in a triple key DES-3 co-processor constitute personalization of
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`16
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`an emulator, merely because they exist on the same chip. Indeed, the presence of
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`those keys on a separate co-processor (and not in a MiFare data structure) suggests
`
`that any alleged MiFare emulator is not personalized with those keys. Apple likewise
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`advances no evidence of any MiFare emulator that “includes its own key set,”
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`instead relying on Mr. Smith’s conclusory assertions. Reply at 18. While Apple
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`attempts to buttress this deficiency with a supplemental declaration, it notably cannot
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`identify any disclosure of a MiFare emulator with its own key set in the Philips
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`reference itself.
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`Apple fails to show that the asserted references, alone or in combination, disclose
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`this limitation or render it obvious.
`
`F.
`
`The Asserted References Do Not Disclose or Render Obvious
`Performing M-Commerce “against a fund stored in the emulator”
`(Claims 1 and 11)
`None of the asserted references, alone or in combination, disclose performing
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`m-commerce “against a fund stored in the emulator.” On Reply, Apple attempts to
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`expand on its arguments that this limitation is somehow satisfied by an over-the-air
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`reload transaction or some SIP-based stored value transaction. But Apple still fails
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`to advance any evidence that any fund related to such a transaction is stored in the
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`emulator, and also fails to show that any transaction is performed against the fund.
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`On reply, Apple focuses on what it means to perform a transaction “against”
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`a fund but does not address whether any fund is stored in the emulator at all. At
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`17
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`most Apple suggests that Dua or Philips contemplate a stored value implementation
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`IPR2022-00412
`PATENT NO. 9,189