`
`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 RESPONSE
`
`Case No. IPR2022-00412
`
`__________________________________________________________________
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`Page(s)
`
`
`
` I.
`
`B.
`
`C.
`
`INTRODUCTION ........................................................................................... 1
`THE ’787 PATENT ......................................................................................... 1
`II.
`III. THE ALLEGED PRIOR ART ........................................................................ 6
`A. Dua (U.S. Patent App. Pub. No. 2006/0165060) .................................. 6
`B.
`GlobalPlatform ...................................................................................... 9
`C.
`Philips .................................................................................................... 9
`IV. CLAIM CONSTRUCTION ............................................................................ 9
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`VI. GROUND 1: APPLE’S COMBINATION DOES NOT RENDER
`ANY CHALLENGED CLAIM OBVIOUS .................................................. 10
`A.
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 .................................................................................................... 10
`Petitioner has not Shown that Philips is Prior Art to the ’787
`Patent ................................................................................................... 11
`A POSITA Would Not Combine Dua with GlobalPlatform .............. 13
`1.
`Apple Does Not Set Forth a Motivation To Combine .............. 13
`2.
`Apple Identifies No Motivation to Combine Philips
`with Dua (with or without GlobalPlatform) ............................. 22
`The Combination Does Not Render Obvious “an emulator
`[loaded in a smart card module] for storing security values and
`updated transaction logs” .................................................................... 23
`The Combination Does Not Render Obvious “wherein both of
`the emulator and e-purse applet are already personalized…”
`and “personalizing the emulator and the e-purse applet via a
`
`D.
`
`E.
`
`i
`
`

`

`
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`F.
`
`personalization process …” as Required By All Challenged
`Claims .................................................................................................. 25
`The Combination Does Not Render Obvious The Limitations
`“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”/“personalizing the emulator and the e-purse
`applet 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” as required by all Challenged
`Claims .................................................................................................. 27
`1.
`Dua in View of Philips Does Not Disclose or Render
`Obvious the Limitation ............................................................. 28
`Dua in View of GlobalPlatform and Philips Does Not
`Render this Limitation Obvious ................................................ 30
`G. Apple Fails to Show That the Limitation “a second interface
`configured to perform mobile commerce with a payment
`server via an application against the fund stored in the
`emulator” as Required by Claims 1-10 Would Be Obvious ............... 30
`H. Apple Fails to Show That the Limitation “performing mobile
`commerce via a second interface with a payment server via an
`application against the fund stored in the emulator,” as
`Required by Claims 11-19 Would Be Obvious .................................. 32
`Apple’s Combination Does Not Render Obvious Claims 6 and
`16 ......................................................................................................... 33
`1.
`Apple’s Combination Does Not Disclose Or Render
`Obvious “an initial security channel between the smart
`card module and a security authentication module
`(SAM) external to the smart card module to install and
`personalize the e-purse applet, and … a security channel
`on top of the initial security channel to protect
`
`2.
`
`I.
`
`ii
`
`

`

`IPR2022-00412
`PATENT NO. 9,189,787
`
`
`
`subsequent operations of the smart card module with the
`SAM, wherein any subsequent operation is conducted
`over the security channel via the e-purse applet” ..................... 33
`VII. CONCLUSION .............................................................................................. 36
`
`
`
`iii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`Page(s)
`
`
`Cases
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ............................... 22
`
`Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370 (Fed. Cir. July 22,
`2021) ..................................................................................................................... 14
`
`
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) ............................... 10
`
`Hulu LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B.
`Dec. 20, 2019 ) ...................................................................................................... 13
`
`
`In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14
`(P.T.A.B. Sept. 6, 2019) ....................................................................................... 13
`
`
`KSR Intern. Co. v. Telefex Inc., 550 U.S. 398 (2007) .............................................. 10
`
`Lyft, Inc. v. Quartz Auto Techs., LLC, IPR2020-01450, Paper 7 (P.T.A.B. Mar. 4,
`2021) ..................................................................................................................... 17
`
`
`Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) .............. 22
`
`Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008) ........................ 16
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) ................................ 14
`
`Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998) .......... 25
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 10
`
`iv
`
`

`

`IPR2022-00412
`PATENT NO. 9,189,787
`
`LIST OF EXHIBITS
`
`2002
`
`Exhibit No. Description
`2001
`Joint Motion to Stay All Deadlines and Notice of Settlement (Dkt.
`263) in RFCyber Corp. v. Google LLC, Case No. 2:20-cv-00274-
`JRG (Lead Case) (E.D. Tex.), dated February 10, 2022
`
`Order (Dkt. 264) in RFCyber Corp. v. Google LLC, Case No.
`2:20-cv-00274-JRG (Lead Case) (E.D. Tex.), dated February 11,
`2022
`
`EMVCo, LLC, “A Guide to EMV Chip Technology, Version
`2.0”
`RFCyber Corp. v. Apple Inc., No. 6:21-cv-00916-ADA, Dkt. 29
`(W.D. Tex. Jan. 28, 2022)
`Apple’s Preliminary Invalidity Contentions, RFCyber Corp. v.
`Apple Inc., No. 6:21-cv-00916-ADA, dated March 1, 2022
`Exhibit C-2 to Apple’s Preliminary Invalidity Contentions,
`RFCyber Corp. v. Apple Inc., No. 6:21-cv-00916-ADA, dated
`March 1, 2022
`Declaration of Miguel Gomez
`Curriculum Vitae of Miguel Gomez
`Deposition Transcript of Gerald W. Smith, taken November 14,
`2022
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`2009
`
`
`
`
`
`
`
`v
`
`

`

`
`I.
`
`INTRODUCTION
`On January 14, 2022, Apple Inc. (“Apple” or “Petitioner”) filed a petition
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`requesting inter partes review (“IPR”) of U.S. Patent No. 9,189,787 (Ex. 1001, the
`
`“’787 Patent”), challenging claims 1-19 as unpatentable under (pre-AIA) 35 U.S.C.
`
`§ 103(a) (the “challenged claims”). The Declaration of Gerald W. Smith, Ex. 1003,
`
`(“Smith Declaration”) accompanied the Petition. On January 26, 2022, the Board
`
`issued a Notice of Filing Date Accorded for the petition and set the time for filing
`
`patent owner’s preliminary response. Paper 4. The Board instituted trial on July 21,
`
`2022. Paper 11 (“ID”). The Parties stipulated to extend Due Dates 1-3 on September
`
`20, 2022. Paper 13.
`
`The Board should issue a Final Written Decision finding all Challenged
`
`Claims to be not unpatentable. As discussed in detail below, a POSITA would not
`
`be motivated to combine Dua with GlobalPlatform and Philips. Separately, Apple’s
`
`combination, even if it were made, fails to disclose or render obvious numerous
`
`limitations.
`
`II. THE ’787 PATENT
`The ’787 Patent claims methods and systems for providing electronic purses
`
`(e-purses) for use in electronic and mobile commerce. ’787 Patent, 1:17-21. The
`
`inventors of the ’787 Patent realized that existing contactless cards were not effective
`
`for use in electronic or mobile commerce “because stored values and transaction
`
`1
`
`

`

`
`information are stored in data storage of each tag that is protected by a set of keys.”
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`Id., 1:35-37. Those keys “need to be delivered to the card for authentication before
`
`data can be accessed during a transaction.” Id., 1:37-39. “This constraint 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., 1:39-43.
`
`Gomez Decl., ¶ 34.
`
`To solve these problems, the inventors of the ’787 Patent developed a system
`
`for personalizing a card stored in a portable device. Gomez Decl., ¶ 35. The system
`
`makes use of a midlet that facilitates communication between the securely stored
`
`applets and payment servers over a wireless network:
`
`2
`
`

`

`
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`’787 Patent, Fig. 2 (showing midlet (in yellow), and applet (in green)).
`
`
`
`
`
`3
`
`

`

`
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`’787 Patent, Fig. 3B (annotations added).
`
`The midlet facilitates this communication, for example, while the card is being
`
`personalized. Gomez Decl., ¶ 36. The entire process is protected by a three-tier
`
`
`
`4
`
`

`

`
`security
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`model:
`
`’787 Patent, Fig. 1A
`
`
`
`
`
`“The three-tier security model 100 includes physical security 102, e-purse
`
`security 104 and card manager security 106.” ’787 Patent, 3:58-60. The physical
`
`security “refers to a security mechanism provided by a single functional card to
`
`protect data stored on the card. The card may be hardware implemented or software
`
`emulated running on a type of media.” Id., 3:61-64. E-purse security “defines a set
`
`of protocols that enable micro payment transactions to be carried out in both wired
`
`and wireless environments.” Id., 4:4-6. “During a transaction, the purse uses a set
`
`5
`
`

`

`
`of respective keys for encryption and MAC computation in order to secure the
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`message channel between the purse and the SAM or backend servers.” Id., 4:9-13.
`
`“Card Manager Security 106, referring to a general security framework of a preload
`
`operating system in a Smart card, provides a platform for PIN management and
`
`security channels (security domains) for card personalization. This platform via a
`
`card manager can be used to personalize a purse in one embodiment.” Id., 4:19-24.
`
`Gomez Decl., ¶ 36.
`
`
`
`A device that has been personalized using the three-tier security as above can
`
`then perform e-commerce and m-commerce using an emulator, and NFC interface
`
`for e-commerce, and a second interface for m-commerce. Id., 2:36-52, 5:1-15, Fig.
`
`2. Gomez Decl., ¶ 37.
`
`III. THE ALLEGED PRIOR ART
`A. Dua (U.S. Patent App. Pub. No. 2006/0165060)
`U.S. Patent App. Pub. No. 2006/0165060 (Ex. 1004, “Dua”) is directed to a
`
`
`
`system for “managing credentials through a wireless network.” Dua at Title,
`
`Abstract. Dua was filed on January 21, 2005 and published on July 27, 2006. Dua.
`
`Dua sought to solve difficulties with inputting credentials into a wireless device.
`
`Dua at [0019]. To overcome these difficulties, Dua describes a system “through
`
`which credential issuers can securely and rapidly target specific wireless devices for
`
`6
`
`

`

`
`the distribution of the appropriate credentials.” Dua, ¶¶ [0020], [0024]. Gomez
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`IPR2022-00412
`PATENT NO. 9,189,787
`
`Decl., ¶ 39.
`
`
`
`Dua achieves its goals by using the Session Initiation Protocol (SIP). Dua, ¶
`
`[0042]. Using SIP, each device, such as a portable phone, contains a wallet
`
`application and is assigned an “E.164 phone number, Uniform Resource Identifier
`
`(URI) or other type of unique address that can be resolved over the Internet.” Id.
`
`Dua also describes a Wireless Credential Manager (WCM), that “maintains, controls
`
`and distributes credentials.” Id., ¶ [0043]. To provide credentials to the wireless
`
`device, a card issuer sends a personalization file to the WCM, along with the device’s
`
`phone number. Id., ¶ [0057]. The WCM uses the phone number (or other unique
`
`device identifier) to connect to the specific device using SIP. Id., ¶¶ [0061]-[0062],
`
`[0128]-[0182]. The communication may be secured using SIPS/TLS or another
`
`method. Id., ¶¶ [0131], [0180]. The WCM then provides the credentials to the
`
`wireless device. Id., ¶ [0180]. This use of SIP to “establish direct communication”
`
`between the WCM and the device is “an important aspect of” Dua. Id., ¶ [0178].
`
`“The direct connection between the end-points using SIP offers a secure method,
`
`without intermediary servers, by which to transmit confidential information.” Id.
`
`Gomez Decl., ¶ 40.
`
`
`
`Dua also describes “extensions.” Id., ¶ [0289]. Dua’s extensions “‘extend’
`
`the capability of the wallet platform by enabling a new set of features defined by
`
`7
`
`

`

`
`the credential issuer.” Id. Extensions may be preloaded or using the secure SIP
`
`IPR2022-00412
`PATENT NO. 9,189,787
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`provisioning process for credentials. Id., ¶¶ [0295], [0296]. Gomez Decl., ¶ 41.
`
`
`
`Dua further discusses an embodiment where a smart card is used on the
`
`phone, but this smart card is used for storage and contactless communication; it is
`
`not used to run the wallet application, the wallet shell, or the extensions.1 Gomez
`
`Decl., ¶ 42.
`
`
`
`Dua does not teach an e-purse applet on a smart card. Rather, Dua teaches a
`
`system based on a different architecture. In Dua’s system, there is a wallet
`
`application, including a wallet shell, that runs on the phone’s primary processor,
`
`not on a smart card. In Dua’s system, the wallet application is augmented with
`
`“extensions” that perform specific functions, where these extensions of the wallet
`
`application run within the wallet application on the phone’s primary processor.
`
`Dua teaches an embodiment where a smart card is used on the phone, but this
`
`smart card is used for storage and contactless communication; it is not used to run
`
`the wallet application, the wallet shell, or the extensions. Dua’s system teaches a
`
`SIP based, secure communication scheme that is used in multiple aspects of Dua’s
`
`system. Dua’s choice and use of SIP is not merely a case of making one design
`
`choice among many; Dua provides an extensive description of the advantages of
`
`1 Id., ¶ [0295].
`
`
`
`8
`
`

`

`
`SIP as well as details of its use of SIP; for example, Dua indicates an advantage
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`due to SIP’s use in telephony to use phone numbers (aka E.164) as a means of
`
`addressing the mobile phones that are the focus of Dua. Dua’s architecture is
`
`designed to leverage the same SIP-based architecture used for telephony. Dua
`
`teaches that SIP is particularly appropriate for the wallet application. Further
`
`details of Dua are addressed below. Gomez Decl., ¶ 43.
`
`B. GlobalPlatform
`The GlobalPlatform Card Specification version 2.1.1
`
`
`
`(Ex. 1006,
`
`“GlobalPlatform”) describes
`
`the “specifications
`
`to be
`
`implemented on
`
`GlobalPlatform smart cards.” GlobalPlatform at 16. GlobalPlatform describes its
`
`own security architecture and commands for use in installing and personalizing
`
`applications on GlobalPlatform cards. GlobalPlatform at 65-67, 88-90. Gomez
`
`Decl., ¶¶ 44-46.
`
`Philips
`C.
`Philips (Ex. 1012) purports to be a data sheet for a SmartMX P5CT072 Secure
`
`
`
`Dual Interface PKI Smart Card Controller. Ex. 1012 at 1. It bears a revision date of
`
`October 4, 2004. Gomez Decl., ¶¶ 47-48.
`
`
`IV. CLAIM CONSTRUCTION
`Patent Owner believes that claim construction is not required to resolve any
`
`issues.
`
`9
`
`

`

`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art would have a Bachelor’s degree in
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`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. Gomez Decl. ¶¶ 32-33.
`
`VI. GROUND 1: APPLE’S COMBINATION DOES NOT RENDER
`ANY CHALLENGED CLAIM OBVIOUS
`A. Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103
`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 skill
`
`in the art, and (4) where in evidence, so called secondary considerations. Graham
`
`v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). A claim is only
`
`unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter
`
`sought to be patented 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 Intern. Co. v.
`
`Telefex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103).
`
`10
`
`

`

`IPR2022-00412
`PATENT NO. 9,189,787
`
`B.
`
`Petitioner has not Shown that Philips is Prior Art to the
`’787 Patent
`Apple argues that Phillips is a printed publication. Pet. at 14-15. But Apple
`
`
`
`
`
`has not demonstrated that Phillips was published at all, let alone prior to the
`
`September 26, 2006 filing priority date of the ‘787 Patent.
`
`Apple relies primarily on the assertion that Philips is “was released on October
`
`4, 2004, bears a copyright symbol, and states that it was ‘Published in the
`
`Netherlands.’” Pet. at 14. But, as Mr. Gomez notes, Philips is a datasheet of the sort
`
`that were released confidentially or subject to NDAs long before they are published
`
`(if ever). Gomez Decl., ¶ 48. Apple’s own expert acknowledges information
`
`regarding security would have been distributed under an NDA, stating that “any
`
`particular implementation [] you would have to go under NDA because maybe
`
`you’re talking about key values, some security by obscurity or some other weird
`
`thing that’s going to go with a particular implementation.” Ex. 2009 (“Smith Dep.
`
`Tr.”) at 88:15-89:5, Nov. 14, 2022. Apple does not even assert that Philips was
`
`published on October 4, 2004, and the presence of a copyright symbol and the
`
`boilerplate “Published in the Netherlands” statement does not demonstrate that
`
`Philips was actually published before the September 26, 2006 filing priority date of
`
`the ‘787 Patent.
`
`11
`
`

`

`The remainder of Apple’s arguments that Philips is a printed publication rely
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`IPR2022-00412
`PATENT NO. 9,189,787
`
`
`
`on: (1) the presence of a link to www.semiconductors.philips.com in Philips; (2)
`
`references to a P5CT072 controller2 (but not Philips itself) in two patent
`
`applications; and (3) a purported reference to Philips in an IDS filed on August 2,
`
`2007, almost a year after the filing priority date of the ‘787 Patent. None of these
`
`assertions actually suggest that the Philips reference was published prior to
`
`September 26, 2006, and the URL at www.semiconductors.philips.com is neither
`
`accessible nor archived. Indeed, Apple is noticeably silent regarding the manner in
`
`which it acquired the Philips reference; it does not say whether NXP (which is
`
`cooperating with NXP, and with which Apple has asserted the common interest
`
`privilege in the parallel district court proceeding) provided it with the Philips
`
`reference, and does not suggest that it obtained Philips from any publicly available
`
`source at all.
`
`
`
`Given its own expert’s admissions as to the usage of NDAs, RFCyber’s expert
`
`testimony, and the total absence of any evidence beyond the purported creation date
`
`of the Philips data sheet, Apple cannot possibly carry its burden of persuasion to
`
`prove by clear and convincing evidence that Phillips is prior art. It has, at most,
`
`
`2 To the extent that a P5CT072 controller existed before the ’787 Patent’s priority
`
`date, that controller would not be prior art that the Board may consider in an IPR.
`
`12
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`

`

`
`shown that it is possible that Philips is prior art. This is insufficient. Hulu LLC v.
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 19 (P.T.A.B. Dec. 20,
`
`2019 ) (“Further, the Board previously concluded that a conference paper, bearing a
`
`copyright date of 2012 and including a date of September 2012 on its cover, was
`
`insufficient to show that the paper had been disseminated prior to the conference
`
`(November 2012)).” (citing In-Depth Geophysical, Inc. v. Conocophillips Co.,
`
`IPR2019-00849, Paper 14 at 4–13 (P.T.A.B. Sept. 6, 2019)).
`
`
`
`
`
`
`
`C. A POSITA Would Not Combine Dua with GlobalPlatform
`Apple identifies no deficiencies in Dua that would motivate a POSITA to
`
`import GlobalPlatform. Indeed, Dua provides a complete system that already
`
`includes the same functionality Apple borrows from GlobalPlatform.
`
`Apple Does Not Set Forth a Motivation To Combine
`1.
`A POSITA would not combine Dua with GlobalPlatform because including
`
`
`
`GlobalPlatform would defeat the aim of Dua to leverage an already-present channel
`
`(such as SIP) to download SVCEs. Trivascular, Inc. v. Samuels, 812 F.3d 1056,
`
`1068 (Fed. Cir. 2016) (holding that it is not obvious to “destroy the basic objective”
`
`13
`
`

`

`
`of the prior art reference); Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th
`
`IPR2022-00412
`PATENT NO. 9,189,787
`
`1370, 1376-77 (Fed. Cir. July 22, 2021).
`
`
`
`Dua explains that its aim is to leverage the use of existing channels to provide
`
`the capability “through which credential issuers can securely and rapidly target
`
`specific wireless devices for the distribution of the appropriate credentials over
`
`public and private networks.” Dua, ¶ [0020]. Accordingly, “wireless device 200 also
`
`has a Session Initiation Protocol (SIP) Application Programming Interface (API)
`
`framework embedded in or running on top of a resident operating system, which
`
`allows for multiple SIP-based applications, such as the wallet application discussed
`
`herein, to function.” Dua, ¶ [0042]. Gomez Decl., ¶ 51-52.
`
`
`
`Indeed, Dua explains that “The 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.” Dua, ¶ [0051]. Thus, “The use of a SIP architecture to locate a mobile
`
`end-user and to establish direct communication between the end-points (WCM and
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`wallet application) for the purpose of transferring confidential information (e.g.
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`credentials) is an important aspect of the present invention.” (emphasis
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`added). Dua, ¶ [0178]. Gomez Decl., ¶¶ 52-54. Although Dua briefly mentions
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`“While the use of SIP for such purposes is preferred, alternative application
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`protocols may be used in lieu of SIP while still remaining within the spirit and scope
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`of the present invention,”; that passage only states that different existing network
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`protocols may be used to implement Dua’s invention—it is not a suggestion to
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`implement an entirely new system layered onto Dua. Id., ¶[0050]; Gomez Decl. ¶¶
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`55-56. Indeed, the only explicit security disclosed in Dua is SIP with S/MIME and
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`TLS. Smith Dep. Tr. 61:15-62:3. Gomez Decl., ¶¶ 52-56.
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`Apple’s expert admitted that his expertise has nothing to do with networking;
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`accordingly, his declaration is not credible evidence as to what protocols might be
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`used. Smith Dep. Tr. 42:24-25 (“I am not a network protocol expert.”). Mr. Smith
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`further admitted that he does “not have an appreciation for [SIP] other than [] I have
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`an awareness. To me, it’s a way of making a pipe between … the network and the
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`handset.” Smith Dep. Tr. at 43:4-15; see also 43:25-44:5 (“Q: In terms of making a
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`pipe, so to speak, in 3G or 4G over the internet for some kind of communication,
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`that’s not [] your main area of expertise, right? A: That’s correct, Vincent.”); id. at
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`65:2-10 (“Again, this is my -- this is an area that was a little on the edge for me, as
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`I don't know network protocols real well but I do know components and that sort of
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`thing.”).
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`Finally, Apple’s own expert admits that the field at the time of the invention
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`was extremely unpredictable and that no solutions were obvious. Smith Dep. Tr. at
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`93:8-23(“But yeah [] the summary is the handsets were maturing, smart card
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`technology which was always considered a European-founded technology, the
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`French claimed it, although the Japanese claimed it also at the same time … I
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`wouldn’t say that we didn’t have the expertise [] but it wasn’t tempered by the
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`experience needed to really stand up robust saleable solutions. That’s my
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`experience from let’s say the late ‘90s up into 2006.”). See also id. at 96:13-97:13
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`(“Q: At least as of the 2006 timeframe [] things weren’t set in stone for how to do
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`mobile payments just yet, right, in the United States? A: I would have to say that’s
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`true. Because of the evolution of the networks themselves, the inability to act like
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`internet in some cases, certainty 2G, aspects of 3G were I think [] better, … they
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`were not [] very good at efficiencies very good applications as I remember in the
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`day, so it was definitely to answer Vincent [] a maturing evolving situation in 2006
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`is what I recall.” Such an unsettled and unpredictable state of the art weighs against
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`obviousness. Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1088, 1090 (Fed.
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`Cir. 2008).
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`
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`As discussed above, Dua discloses using SIP for all personalization
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`communications because it allows for specific targeting of a wireless device and
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`secures end-to-end communication. Gomez Decl., ¶¶ 56-59. Apple argues that a
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`POSITA would discard all of Dua’s SIP teachings and use Global Platform’s system
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`for personalization instead. Pet. at 18-19; 24-32.
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`
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`However, Dua’s use of SIP architecture to establish communications between
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`the WCM and the device for personalizing its system is key to its invention. Dua,
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`¶ [0178] (“The use of a SIP architecture to locate a mobile end-user and to establish
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`direct communication between the end-points (WCM and wallet application) for the
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`purpose of transferring confidential information (e.g. credentials) is an important
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`aspect of the present invention.” (emphasis added)). Smith Dep. Tr. 61:15-63:20;
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`Gomez Decl., ¶¶ 56-59. All secure communications within Dua, including
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`downloading and installing its extensions, are done by making a SIP connection
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`between the WCM and the mobile device. Dua., ¶¶ [0296], [0311], Figs. 1, 3, 8;
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`Gomez Decl., ¶¶ 56-59. Indeed, Petitioner relies on these exact security features in
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`its arguments. Pet. at 33-35. Petitioner does not explain why a POSITA would
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`discard Dua’s security scheme for GlobalPlatform’s, nor any benefits to doing so.
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`Lyft, Inc. v. Quartz Auto Techs., LLC, IPR2020-01450, Paper 7, at 17-20 (P.T.A.B.
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`Mar. 4, 2021) (“[W]e are left wondering why a person of ordinary skill in the art
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`would modify Douglas only to have the same features as disclosed by Harrison.”).
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`
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`Adding GlobalPlatform to Dua would defeat Dua’s objective to provide a SIP-
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`based system “through which credential issuers can securely and rapidly target
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`specific wireless devices for the distribution of the appropriate credentials over
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`public and private networks.” Dua, ¶ [0020] (emphasis added). Dua’s entire
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`invention is based around using SIP to securely target a particular wireless device
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`by looking up that device’s phone number. Dua, ¶ [0131]; Gomez Decl., ¶¶ 58-59.
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`Indeed, all communications from the Dua device are done via SIP using that exact
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`method. GlobalPlatform does not allow such server-initiated communication.
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`Gomez Decl., ¶¶ 58-59. A POSITA would not be motivated to destroy Dua’s central
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`objective. Trivascular, Inc, 812 F.3d at 1068 (holding that it is not obvious to
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`“destroy the basic objective” of the prior art reference).
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`
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`Moreover, there is no reason that a POSITA would combine GlobalPlatform’s
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`security when Dua already provides security through SIPS/TLS and other encryption
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`methods. See supra III.A; Gomez Decl., ¶ 60. Apple identifies no lack or flaw within
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`Dua that would necessitate replacing Dua’s security with GlobalPlatform’s.
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`
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`Ignoring all this, Apple first argues that a POSITA would combine Dua with
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`GlobalPlatform because of Dua’s statement that “MasterCard and Visa have also
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`been working jointly over the last few years to develop specifications that define a
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`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,
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`or where the card is used.” Pet. at 16 (quoting Dua at [0013]) (emphasis added).3
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`The specifications referred to are the EMV Chip Specifications.4 Gomez Decl., ¶¶
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`61-64. As EMVCo. explains, “The EMV Chip Specifications . . . are global payment
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`industry specifications that describe the requirements for interoperability between
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`chip-based payment applications and acceptance terminals to enable payment.”
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`Ex. 2003 at 5 (emphasis added). Indeed, Dua refers numerous times to EMV for
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`payment applications. E.g., Dua, at ¶¶ [0013] (“American Express, MasterCard, and
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`Visa have agreed on a single contactless payment standard in the United States,
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`ISO/IEC 14443, and are implementing a contactless payment approach that
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`leverages the existing payments infrastructure.”);5 [0398] (“Presently, with various
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`bank card transactions, PINs are verified either online with a bank host computer
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`system, or verified offline against security data onboard the card as in EMV ‘chip &
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`PIN’ transactions.”); [0525] (“EMV-Compliant—The wallet application should
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`meet standards defined by card organizations.”); Gomez Decl., ¶¶ 61-64.
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`A POSITA would understand that GlobalPlatform is not related to
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`interoperability between chip cards and terminals; it purports to provide a “card
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`3 The Petition cites to Dua, ¶ [0014], bu