UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`RFCYBER CORP.,
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`Patent Owner
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`Case IPR2022-00412
`Patent 9,189,787 B1
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`PETITIONER’S NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`RFCYBER CORP.,
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`Patent Owner
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`Case IPR2022-00412
`Patent 9,189,787 B1
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`PETITIONER’S NOTICE OF APPEAL
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`IPR2022-00412
`Patent No. 9,189,787 B1
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Petitioner Apple Inc. appeals to the United States Court
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`of Appeals for the Federal Circuit from the Final Written Decision of the Patent Trial
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`and Appeal Board (“Board”) entered on July 18, 2023 in IPR2022-00412 (Paper 30),
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`and from all underlying orders, decisions, rulings, and opinions regarding these inter
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`partes reviews of U.S. Patent No. 9,189,787 B1 (“’787 patent”). A copy of the Final
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`Written Decision is attached.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
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`the issues on appeal include, but are not limited to, the following: (1) the Board’s
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`determination that claims 1-19 of U.S. Patent No. 9,189,787 have not been shown to
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`be unpatentable; (2) the Board’s determination that Petitioner has not demonstrated
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`by a preponderance of the evidence that claims 1-19 of the ’787 patent are
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`unpatentable under 35 U.S.C. § 103 as obvious over U.S. 2006/0165060 (“Dua”) in
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`view of GlobalPlatform, Card Specification Version 2.1.1, March 2003
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`(“GlobalPlatform”) and Philips Semiconductors SmartMX, P5CT072, Secure Dual
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`Interface PKI Smart Card Controller, Rev. 1.3, Oct. 4, 2004 (“Philips”); (3) the
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`Board’s construction and application of the claim language; (4) the Board’s
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`Patent No. 9,189,787 B1
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`consideration of the expert testimony, prior art, and other evidence in the record; (5)
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`the Board’s factual findings, conclusions of law or other determinations supporting
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`or related to those issues; as well as (6) all other issues decided adversely to
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`Petitioner in any orders, decisions, rulings, and opinions.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the PTAB through the P-TACTS System. In addition, copies of the Notice
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`of Appeal, along with the required docketing fee, are being filed with the Clerk’s
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`office for the United States Court of Appeals for the Federal Circuit.
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`Dated: September 12, 2023
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
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`COUNSEL FOR PETITIONER.
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`IPR2022-00412
`Patent No. 9,189,787 B1
`CERTIFICATE OF SERVICE
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`The undersigned certifies that, on September 12, 2023, the foregoing
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`PETITIONER’S NOTICE OF APPEAL was:
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`(1) electronically filed through Patent Trial and Appeal Case Tracking System
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`(P-TACTS)
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`(2) filed via Priority Mail Express® with the Director of the United States
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`Patent and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`(3) filed in the U.S. Court of Appeals for the Federal Circuit using the Court’s
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`CM/ECF filing system and pay.gov to pay the filing fee electronically
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`(4) provided as a courtesy copy via electronic mail to the following attorneys
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`of record for the Patent Owner listed below:
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`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Alfred R. Fabricant (ffabricant@fabricantllp.com)
`Richard Cowell (rcowell@fabricantllp.com)
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`FABRICANT LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, New York 10580
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`Dated: September 12, 2023
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`IPR2022-00412
`Patent No. 9,189,787 B1
`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
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`COUNSEL FOR PETITIONER
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`5
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`Trials@uspto.gov
`571-272-7822
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`Paper 30
`Entered: July 18, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
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`IPR2022-00412
`Patent 9,189,787 B1
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`Before KEVIN F. TURNER, PATRICK R. SCANLON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-00412
`Patent 9,189,787 B1
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) challenges claims 1–19 of U.S. Patent
`No. 9,189,787 B1 (Ex. 1001, “the ’787 patent”). We have jurisdiction under
`35 U.S.C. § 6, and this Final Written Decision is issued pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we
`determine that Petitioner has not shown by a preponderance of the evidence
`that claims 1–19 of the ’787 patent are unpatentable.
`A. Procedural History
`Apple Inc. filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`review of the challenged claims. Petitioner also filed a Motion for Joinder to
`IPR2021-00980. Paper 3. Petitioner indicated that its Petition is
`substantially identical to the petition in IPR2021-00980.1 Pet. 5. RFCyber
`Corp. (“Patent Owner”) filed a Preliminary Response. Paper 9.
`We instituted a trial as to all challenged claims. Paper 11 (“Decision
`on Institution” or “Dec. Inst.”). Because IPR2021-00980 had been
`terminated prior to our Decision on Institution, we dismissed Petitioner’s
`motion to join that proceeding as moot. Dec. Inst. 2 n.1.
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 15, “PO Resp.”), Petitioner filed a Reply (Paper 18, “Reply”), and
`Patent Owner filed a Sur-reply (Paper 23, “Sur-reply”).
`Petitioner relies on the Declaration of Gerald W. Smith (Ex. 1003)
`and the Supplemental Declaration of Gerald W. Smith (Ex. 1042) in support
`of its contentions. Patent Owner relies on the Declaration of Miguel Gomez
`(Ex. 2007) in support of its contentions.
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`1 The Petition actually refers to the petition in IPR2021-00981, but this
`appears to be a typographical error.
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`2
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`Patent 9,189,787 B1
`An oral hearing was held on April 21, 2023. A transcript of the
`hearing is included in the record. Paper 29 (“Tr.”).
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 2. Patent
`Owner identifies itself as its real party in interest. Paper 6, 1.
`C. Related Matters
`The parties identify the following district-court proceedings as related
`matters involving the ’787 patent: RFCyber Corp. v. Apple, Inc., No. 6:21-
`cv-00916 (W.D. Tex.); RFCyber Corp. v. Google LLC, No. 2:20-cv-00274
`(EDTX); RFCyber Corp. v. LG Electronics, Inc., No. 2:20-cv-00336
`(EDTX); and RFCyber Corp. v. Samsung Electronics Co., 2:20-cv-00335
`(EDTX). Pet. 3; Paper 6, 1 (Patent Owner’s Mandatory Notices).
`Petitioner also identifies the following Board proceeding involving the
`same parties and a related patent: PGR2022-00003 (U.S. Patent No.
`10,600,046 B2 (“the ’046 patent”)) (institution denied March 24, 2022).
`Pet. 4. The parties also identify the following Board proceedings involving
`the ’787 patent or related patents, filed by Samsung Electronics America,
`Inc. et al.: IPR2021-00978 (U.S. Patent No. 8,448,855 B1 (“the ’855
`patent”)) (institution denied December 14, 2021); IPR2021-00979
`(U.S. Patent No. 8,118,218 B2 (“the ’218 patent”)) (institution denied
`December 14, 2021); IPR2021-00980 (the ’787 patent) (terminated April 11,
`2022); and IPR2021-00981 (U.S. Patent No. 9,240,009 B2 (“the ’009
`patent”)) (terminated April 11, 2022). Pet. 4; Paper 6, 1. Petitioner also
`identifies the following Board proceedings involving the ’787 patent or
`related patents, filed by Google LLC: IPR2021-00954 (the ’855 patent)
`(terminated October 20, 2021); IPR2021-00955 (the ’787 patent) (terminated
`October 20, 2021); IPR2021-00956 (the ’009 patent) (terminated October
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`Patent 9,189,787 B1
`20, 2021); IPR2021-00957 (the ’218 patent) (terminated October 20, 2021);
`PGR2021-00028 (the ’046 patent) (terminated March 25, 2022); and
`PGR2021-00029 (the ’046 patent) (terminated November 16, 2021). Pet. 3.
`D. The ’787 Patent
`The ’787 patent relates to commerce over networks, and more
`specifically, to a method and apparatus for funding an electronic purse (“e-
`purse”) for use in portable devices configured for both electronic commerce
`(“e-commerce”) and mobile commerce (“m-commerce”). Ex. 1001, code
`(57), 1:15–19.
`The ’787 patent states that there is a “need for a mechanism in
`devices, especially portable devices, functioning as an electronic purse (e-
`purse) to be able to conduct transactions over an open network with a
`payment server without compromising security.” Id. at 1:44–48. Although
`closed systems—such as smart card technology—existed, they were
`“difficult to be expanded into other areas such as e-commerce and
`m-commerce” because “stored values and transaction information are stored
`in data storage of each tag that is protected by a set of keys,” which keys
`must be “delivered to the card for authentication before data can be accessed
`during a transaction.” Id. at 1:33–39. According to the ’787 patent, this
`required delivery of keys “makes systems using such technology difficult to
`be expanded to an open environment such as the Internet for e-commerce
`and cellular networks for m-commerce as the key delivery over a public
`domain network causes security concerns.” Id. at 1:39–43. The ’787 patent
`purports to overcome the limitations of the prior art by providing a system
`for funding an e-purse stored on a portable device. The e-purse allows for
`transactions “over an open network with a payment server without
`compromising security.” Id. at 1:60–64.
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`Patent 9,189,787 B1
`Figure 2, reproduced below, provides a schematic view of one
`embodiment of the ’787 patent.
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`Figure 2 shows an exemplary architecture diagram 200 according to one
`embodiment of the ’787 patent. Ex. 1001, 3:6–7.
`As shown in Figure 2, a portable device is pre-loaded with smart card
`module 202 comprising emulator 208, e-purse applet 206, and purse
`manager midlet 204. Id. at 5:1–48. The portable device may be a cellphone
`that is “near field communication (NFC) enabled” and includes an RFID
`interface “that allows the cellphone to act as a tag.” Id. at 5:4–10.
`Purse management midlet 204 “is a software component” that “acts as
`an agent to facilitate communications between an e-purse applet 206 and one
`or more payment network and servers 210 to conduct transactions.” Id. at
`5:16–20. E-purse applet 206 is built on a global platform and “acts as a
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`Patent 9,189,787 B1
`gatekeeper to regulate or control the data exchange.” Id. at 4:55–57, 5:11–
`13. Emulator 208 is “a hardware device or a program that pretends to be
`another particular device or program that other components expect to
`interact with.” Id. at 4:47–50.
`In one embodiment of the ’787 patent, a user may fund the e-purse
`from a bank account by a process conducted via the m-commerce path
`shown in Figure 2. Id. at 7:22–30. Figure 4C, reproduced below, “shows an
`exemplary block diagram 450 of related blocks interacting with each other to
`achieve the process” of funding the e-purse. Id. at 7:26–28.
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`Figure 4C “shows an exemplary block diagram of related blocks interacting
`with each other to achieve the process” of financing an e-purse according to
`one embodiment of the ’787 patent. Ex. 1001, 3:21–23.
`End user 432 enters a personal identification number (PIN), which, if
`valid, activates purse manager midlet 434. Id. at 7:34–37. The purse
`manager midlet “communicates with the e-purse applet 436 for a response
`that is then sent to the payment network and server 440.” Id. at 7:44–47.
`Payment network and server 440 “verifies that the response is from an
`authorized e-purse originally issued therefrom with a SAM module 444.”
`Id. at 8:1–4. “After the response is verified, the payment network and server
`440 sends a request to the [user’s] financing bank 442.” Id. at 8:4–7. Upon
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`Patent 9,189,787 B1
`receiving authorization from the financing bank, “the server 440 will either
`reject the request or form a network response to be sent to the midlet 434.”
`Id. at 8:9–12. “The e-purse verifies the authenticity (e.g., in APDU format)
`and sends commands to the emulator 438 and updates the transaction logs.”
`Id. at 8:13–15. According to the ’787 patent, “[b]y now, the e-purse finishes
`the necessary steps and returns a response to the midlet 434 that forwards an
`(APDU) response in a network request to the payment server 440.” Id. at
`8:15–18.
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`E. Challenged Claims
`As noted above, Petitioner challenges claims 1–19 of the ’787 patent.
`Pet. 6–7. Of the challenged claims, claims 1 and 11 are independent.
`Ex. 1001, 8:49–9:4, 9:49–10:14. Claim 1, reproduced below, is illustrative
`of the subject matter recited in the challenged claims (bracketing added).
`1. [PREAMBLE] A portable device for commerce, the
`portable device comprising:
`[1a] an emulator loaded in a smart card module for storing
`security values and updated transaction logs, and [1b] an
`e-purse applet to cause the portable device to function as
`an electronic purse (e-purse), [1c] wherein both of the
`emulator and e-purse applet are already personalized via
`a personalization process built on a first security channel
`so that the emulator is set to store a set of keys for
`subsequent data access authentication and the e-purse
`applet is configured to conduct a transaction with a
`network server over a second security channel;
`[1d] a first interface configured to perform field communication
`(NFC) with a reader to perform electronic commerce
`with the e-purse applet against a fund stored in the
`emulator;
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`Patent 9,189,787 B1
`[1e] a second interface configured to perform mobile commerce
`with a payment server via an application against the fund
`stored in the emulator, and
`[1f] a purse manager midlet being executed in the portable
`device to act as an agent to facilitate communications
`between the e-purse applet and a payment server to
`conduct transactions therebetween.
`Ex. 1001, 8:49–9:4.
`F. Instituted Ground of Unpatentability
`We instituted inter partes review of the challenged claims based on
`the following ground of unpatentability asserted by Petitioner:
`Claims Challenged
`35 U.S.C. §
`References
`Dua, 3 GlobalPlatform, 4
`1–19
`1032
`Philips5
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`Dec. Inst. 35; Pet. 6–7.
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`II. ANALYSIS
`A. Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d) (2020). “In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
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`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. The ’787 patent claims benefit
`of a September 24, 2006, filing date, which is before the effective date of the
`applicable AIA amendments. Ex. 1001, code (63). Petitioner does not
`contest the ’787 patent’s priority date. Pet. 7. Thus, we refer to the pre-AIA
`version of 35 U.S.C. § 103.
`3 US 2006/0165060 A1, published July 27, 2006 (Ex. 1004).
`4 GlobalPlatform, Card Specification, Version 2.1.1, March 2003,
`(Ex. 1006).
`5 Philips Semiconductors SmartMX, P5CT072, Secure Dual Interface PKI
`Smart Card Controller, Rev. 1.3, Oct. 4, 2004 (Ex. 1012).
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`Patent 9,189,787 B1
`is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of non-obviousness (also called secondary considerations), such as
`commercial success, long-felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze grounds
`based on obviousness in accordance with the above-stated principles. 6
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the effective filing date of the
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`6 The record does not include any evidence of objective indicia of non-
`obviousness.
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`claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in
`the art is a hypothetical person who is presumed to have known the relevant
`art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that
`may be considered in determining the level of ordinary skill in the art
`include, but are not limited to, the types of problems encountered in the art,
`the sophistication of the technology, and educational level of active workers
`in the field. Id. In a given case, one or more factors may predominate. Id.
`Petitioner contends that an ordinarily skilled artisan for the ’787
`patent “would have been knowledgeable regarding mobile payment methods
`and systems pertinent to the ’787 patent.” Pet. 11 (citing Ex. 1003 ¶¶ 27–
`28). Petitioner also contends that an ordinarily skilled artisan “would have
`had at least a bachelor’s degrees [sic] in computer science, computer
`engineering, electrical engineering or an equivalent, and one year of
`professional experience relating to mobile payment technology,” and that
`“[l]ack of professional experience could be remedied by additional
`education, and vice versa.” Id. (citing Ex. 1003 ¶¶ 27–28).
`Patent Owner argues that “[a] person of ordinary skill in the art would
`have had a Bachelor’s degree 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.” PO Resp. 10 (citing Ex. 2007 ¶¶ 32–33).
`In its Reply, Petitioner argues that, although Patent Owner did not
`dispute Petitioner’s proposed level of ordinary skill in its Preliminary
`Response, the Patent Owner Response “quietly removes a requirement for
`mobile payment experience,” but “does not acknowledge this definition
`shift, nor does it provide any justification for removing this key
`requirement.” Reply 2–3 (citing PO Resp. 10). Relying on the declaration
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`Patent 9,189,787 B1
`testimony of Mr. Smith, Petitioner contends that mobile payment experience
`is required. Id. at 3 (citing Ex. 1042 ¶¶ 4–10). According to Petitioner,
`Patent Owner is seeking to redefine the ordinary skill in the art because its
`expert, Mr. Gomez, is “an unqualified declarant who [has] admitted he has
`no specific mobile payment technology experience, no experience with e-
`purses, no experience with the relevant protocols, and no educational
`experience to remedy his professional deficiencies.” Id. (citing Ex. 1041,
`8:11–19, 9:7–20:4, 37:8–39:9, 50:15–51:18). Petitioner also contends that
`the Board should accord Mr. Gomez’s unqualified testimony little to no
`weight. Id. (citing Best Med. Int.’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353–
`54 (Fed. Cir. 2022)).
`The fact that Patent Owner did not dispute Petitioner’s proposed level
`of ordinary skill in its Preliminary Response does not preclude Patent Owner
`from disputing the proposed definition at trial. Nevertheless, we agree with
`Petitioner that the Patent Owner Response fails to provide a sufficient basis
`for the proposed level of ordinary skill. See Reply 2–3. Indeed, the Patent
`Owner Response provides no explanation in support of the proposed
`definition. See PO Resp. 10. Nor does Mr. Gomez adequately support his
`opinion, which merely repeats the proposed level of ordinary skill from the
`Patent Owner Response, without objective evidence or analysis. See
`Ex. 2007 ¶¶ 32–33.
`Patent Owner, however, argues in its Sur-reply that its proposed level
`of ordinary skill is correct because, unlike Petitioner’s proposal, it addresses
`claimed features such as “storing security values,” “security channel[s],” and
`“a set of keys.” Sur-reply 3. Patent Owner also argues that the ’787 patent
`“highlights ‘a mechanism . . . to enable a portable device to conduct
`transactions . . . without compromising security’” and shows a “three-tier
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`security model based on which the present invention is contemplated.” Id.
`(citing Ex. 1001, code (57), 3:1–3) (alterations in original). In contrast,
`Patent Owner argues that “Petitioner seeks to limit the field of relevant
`experience exclusively to ‘mobile payment technology,’” and ignores claim
`limitations relating to computer or network security. Id. at 3–4 (citing
`Reply 2–3); see also Tr. 34:2–4 (arguing that Petitioner’s proposed level of
`ordinary skill “ignores security and requires only mobile payments”).
`On the full record before us, we agree with Petitioner that a person of
`ordinary skill in the art should have some level of experience relating to
`mobile payment technology. For example, the title of the ’787 patent,
`“Method and Apparatus for Conducting E-commerce and M-commerce,”
`provides a strong indication that mobile payments are a key aspect of the
`disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its
`technical field as: “The present invention is generally related to commerce
`over networks. Particularly, the present invention is related to electronic
`purses that can be advantageously used in portable devices configured for
`both electronic commerce (a.k.a., e-commerce) and mobile commerce
`(a.k.a., m-commerce),” which reinforces that mobile payment technology is
`a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s
`uncontroverted testimony that mobile payment experience is required, which
`we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10.
`On the other hand, we agree with Patent Owner that network security
`is an important aspect of the ’787 patent’s invention. But to the extent that
`Patent Owner is asserting that mobile payment technology and computer or
`network security are distinct concepts such that the proper level of ordinary
`skill would include experience in one or the other but not both, we disagree.
`Rather, we view the ’787 patent as relating to methods and apparatuses for
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`Patent 9,189,787 B1
`conducting e-commerce and m-commerce (see, e.g., Ex. 1001, code (54),
`1:17–21) and describing security as being an aspect of the commerce (see id.
`at code (57) (“[A] mechanism is provided to enable a portable device to
`conduct transactions over an open network with a payment server without
`compromising security.”), 2:16–19 (“During a transaction, the security keys
`are used to establish a secured channel between an embedded e-purse and an
`SAM (Security Authentication Module) or backend server.”)).
`For the above reasons, we find Petitioner’s contentions on this issue
`more persuasive on the full record before us. In order to avoid any doubt
`that we consider computer or network security to be an element of mobile
`payment technology, we determine for the purposes of this Decision that one
`of ordinary skill in the art would have 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, including computer or network security. In addition, a
`lack of professional experience could be remedied by additional education,
`and vice versa.
`Regarding Petitioner’s assertion that Mr. Gomez’s testimony should
`be given little to no weight, Patent Owner argues that Mr. Gomez is well
`qualified under both proposed levels of ordinary skill. Sur-reply 4–5.
`During the hearing, Petitioner modified its position somewhat, arguing that
`Mr. Gomez’s “testimony should be accorded little to no weight, particularly
`where he weighs in on issues specific to financial transactions and smart
`cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that
`“[w]e’re simply asking the Board to take into the account each individual
`expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2.
`Based on the full record, we disagree that all of Mr. Gomez’s testimony
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`Patent 9,189,787 B1
`should be given little to no weight. When considering any expert testimony,
`we take into account the declarant’s background knowledge on a per issue
`basis.
`
`C. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that
`standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner contends that all claim terms, except “emulator” and
`“midlet,” should have their plain and ordinary meaning. Pet. 12. As to the
`claim terms “emulator” and “midlet,” Petitioner contends that the ’787
`patent expressly defines those terms “so those definitions are controlling.”
`Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim
`construction is not required to resolve any issues” in this proceeding. PO
`Resp. 9.
`We determine that we need not expressly construe any claim term to
`resolve the parties’ disputes because doing so would have no effect on the
`analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Realtime Data, LLC v.
`Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to
`construe ‘only those terms that . . . are in controversy, and only to the extent
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`IPR2022-00412
`Patent 9,189,787 B1
`necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`D. Asserted Obviousness Based on Dua, GlobalPlatform, and Philips
`Petitioner asserts that claims 1–19 of the ’787 patent are unpatentable
`under 35 U.S.C. § 103(a) based on Dua, GlobalPlatform, and Philips.
`Pet. 15–57. Patent Owner provides arguments addressing this asserted
`ground of unpatentability. PO Resp. 10–35. We first summarize the
`references and then address the parties’ contentions.
`1. Dua (Ex. 1004)
`Dua is a published U.S. patent application entitled “Method and
`Apparatus for Managing Credentials Through a Wireless Network.”
`Ex. 1004, code (54). Dua discloses a “system and methodology for
`conducting financial and other transactions using a wireless device.” Id. at
`code (57). Dua’s wireless device includes a “wallet application” that
`receives, stores, manages, and transmits multiple payment, identification,
`and other confidential information electronically. Id. ¶ 41. Card issuers like
`banks or merchants can develop custom “extensions” which are installed in
`the wallet application and stored in an embedded smart card. Id. ¶¶ 289,
`295. One example of an extension is a stored-value card extension for
`paying subway fare. Id. ¶¶ 290, 293. The stored value card extension
`“need[s] to be programmed” to support “over-the-air reload,” i.e., wireless
`funding of the e-purse. Id. ¶ 293.
`2. GlobalPlatform (Ex. 1006)
`GlobalPlatform Card Specification version 2.1.1 describes the
`“[s]pecifications that shall be implemented on GlobalPlatform smart cards.”
`Ex. 1006, 16. GlobalPlatform describes its own security architecture and
`commands for use in installing and personalizing applications on
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`Patent 9,189,787 B1
`GlobalPlatform cards. Ex. 1006, 65–67, 88–90. GlobalPlatform is a
`“hardware-neutral,” “vendor-neutral,” and “Application independent” “chip
`card standard,” which “provides a common security and card management
`architecture.” Ex. 1006, 16; Ex. 1008, 290. “GlobalPlatform is intended to
`run on top of any secure, multi-application card runtime environment”
`including Java Card. Ex. 1006, 16 (§1), 29 (§3.1). GlobalPlatform specifies
`the card architecture, security architecture, Life Cycle models for smart
`cards and their Applications, the Card Manager, Security Domains for key
`management, and establishing Secure Channels. Ex. 1003 ¶¶ 66–78.
`GlobalPlatform describes sequences of commands for installing,
`personalizing, and deleting applications on multi-application smart cards.
`Ex. 1006, 65–67, 88–90.
`
`3. Philips (Ex. 1012)
`Philips is a short form specification describing a Secure PKI Smart
`Card Controller for the SmartMX (Memory eXtension) multiple interface
`option platform, which is identified as the P5CT072 device. Ex. 1012, 1.
`The Smart Card Controller can be used as data memory and program
`memory. Id. The interface technology is well established in all products of
`the MIFARE interface platform. Id. at 2. “Compatibility with existing
`MIFARE® reader infrastructure and the optional free of charge emulation
`modes of MIFARE® 1K and MIFARE® 4K enable fast system integration
`and backward compatibility of standard MIFARE® and ProX family based
`cards.” Id.
`
`4. Independent Claims 1 and 11
`Petitioner contends that the combination of Dua, GlobalPlatform, and
`Philips discloses each limitation of independent claims 1 and 11. Pet. 19–
`46. To support its arguments, Petitioner identifies certain passages in the
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`Patent 9,189,787 B1
`cited references and explains the significance of each passage with respect to
`the corresponding claim limitation. Id. At a high level, Petitioner maps
`Dua’s wireless devices to the portable device of claim 1, Dua’s “wallet
`application” to the midlet, Dua’s secure value card extension (“SVCE”) to
`the e-purse applet, Dua’s Wireless Credential Manager (“WCM”) to the e-
`purse SAM, and Philips’s MIFARE emulator to the claimed emulator. Id. at
`19. Petitioner also articulates reasons to combine the relied-upon aspects of
`Dua, GlobalPlatform, and Philips. Id. at 15–19. Specifically, Petitioner
`asserts that it would have been obvious to one of ordinary skill in the art “to
`use GlobalPlatform with Dua’s smart cards, wallet application, and
`extensions” (id. at 17 (citing Ex. 1003 ¶ 17)), and “to use a Philips smart
`card in Dua’s wireless device” (id. at 18–19 (citing Ex. 1003 ¶¶ 108–112,
`122–125)).
`Claim 1 recites the limitation (limitation [1c]):
`wherein both of the emulator and e-purse applet are already
`personalized via a personalization process built on a first
`s
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