`
` 
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`
`Patent Owner.
`
`
`Patent No. 9,240,009
`Filing Date: January 16, 2012
`Issue Date: January 19, 2016
`
`Inventors: Liang Seng Koh, Hsin Pan, and Xiangzhen Xie
`Title: MOBILE DEVICES FOR COMMERCE OVER UNSECURERD
`NETWORKS
`
`
`__________________________________________________________________
`
`RFCYBER CORP.’S
`PRELIMINARY RESPONSE
`
`Case No. IPR2022-00413
`
`__________________________________________________________________
`
`
`
`
` 
`
`

`

`
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
`
`TABLE OF CONTENTS
`
`
`
` 
`
`Page(s)
`
`I. 
`INTRODUCTION ............................................................................................ 1 
`II.  THE ’009 PATENT .......................................................................................... 2 
`III.  THE ALLEGED PRIOR ART ......................................................................... 7 
`A.  Dua (U.S. Patent App. Pub. No. 2006/0165060) .................................. 7 
`B. 
`GlobalPlatform ...................................................................................... 8 
`C. 
`Smart Card Handbook ........................................................................... 9 
`D. 
`Thibadeau .............................................................................................. 9 
`IV.  CLAIM CONSTRUCTION .............................................................................. 9 
`V.  LEVEL OF ORDINARY SKILL IN THE ART .............................................. 9 
`VI.  THE BOARD HAS TERMINATED THE SAMSUNG IPR THUS
`THERE IS NO INSTITUTED PROCEEDING FOR APPLE TO
`JOIN ............................................................................................................... 10 
`VII.  PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM........................................................................................................... 10 
`A. 
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 .................................................................................................... 11 
`Apple’s Combination Fails to Disclose or Render Obvious a
`“Secure Element” or “an Interface to Receive a Secure
`Element” as Required by Claims 1 and 14 .......................................... 11 
`A POSA Would Not Combine Dua with Global Platform ................. 12 
`C. 
`VIII. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF
`THE DIRECTOR UNDER 35 U.S.C. § 314(A) ........................................... 17 
`A.  No Stay of the Parallel District Court Litigation ................................ 19 
`
`B. 
`
`i
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`

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` 
`
`B. 
`
`C. 
`
`E. 
`
`D. 
`
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date ............................................................................. 19 
`Significant Investment by the Time of Institution Favors
`Discretionary Denial............................................................................ 20 
`The District Court Litigation Involves the Same Claims and
`the Same Arguments ........................................................................... 21 
`The Parallel District Court Litigation and the Petition Involve
`the Same Parties .................................................................................. 22 
`Other Circumstances Favor Denial of Institution ............................... 22 
`F. 
`IX.  CONCLUSION ............................................................................................... 23 
`
`
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`IPR2022-00413
`PATENT NO. 9,240,009
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`
`
`TABLE OF AUTHORITIES
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
`
` Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................... 17, 22
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 15
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (P.T.A.B. May 15, 2020) ......................................... 20
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ........................................... 19
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 11
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 11
`LG Elecs., Inc. v. Bell N. Research, LLC,
`IPR2020-00108, Paper 14 (P.T.A.B. May 20, 2020) ......................................... 10
`Lyft, Inc. v. Quartz Auto Techs., LLC,
`IPR2020-01450, Paper 7 (P.T.A.B. Mar. 4, 2021) ............................................. 16
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962 ...................................................................................... 19
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018) ........................................... 19
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 15
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .............................................. 19
`
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`IPR2022-00413
`PATENT NO. 9,240,009
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`Samsung Elecs. Co. v. RFCyber Corp.,
`IPR2021-00981, Paper No. 18 (P.T.A.B. Apr. 11, 2022) .................................. 10
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ......................................... 21
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 11
`35 U.S.C. § 314(A) ...................................................................................... 17, 18, 22
`35 U.S.C. § 314(b) ................................................................................................... 20
`35 U.S.C. § 316(a)(11) ............................................................................................. 19
` 
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`IPR2022-00413
`PATENT NO. 9,240,009
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`
`EXHIBIT LIST
`
`2002
`
`Exhibit No. Description
`2001
`RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG-
`RSP, Dkt. 263 (E.D. Tex. Feb. 10, 2022)
`RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG-
`RSP, Dkt. 264 (E.D. Tex. Feb. 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 D-2 to Apple’s Preliminary Invalidity Contentions,
`RFCyber Corp. v. Apple Inc., No. 6:21-cv-00916-ADA, dated
`March 1, 2022
`
`2003
`
`2004
`
`2005
`
`2006
`
`
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` 
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`v
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`I.
`
`
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`IPR2022-00413
`PATENT NO. 9,240,009
` 
`
`INTRODUCTION
`On January 14, 2022, Apple Inc. (“Petitioner” or “Apple”) filed a petition
`
`requesting inter partes review of claims 1-17 (“challenged claims”) of U.S. Patent
`
`No. 9,240,009 (Ex. 1001, “’009 Patent”). Paper 1. (“Petition” or “Pet.”). The
`
`Declaration of Gerald W. Smith, Ex. 1003, (“Smith Declaration”) accompanied the
`
`Petition. Apple simultaneously filed a Motion for Joinder with then-pending
`
`IPR2021-00981. Paper No. 3 (“Motion”). 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. On April 11, 2022, the Board terminated
`
`IPR2021-00981 (the “Samsung IPR”) pursuant to a joint motion between the parties
`
`to that proceeding. Apple is also a party to the district court case captioned as
`
`RFCyber Corp. v. Apple, Inc., Case No. 2:21-cv-00916-ADA (W.D. Tex.)
`
`(hereinafter, the “District Court Litigation” or “Texas Action”), filed on September
`
`7, 2021.
`
`The Board should deny Apple’s Petition. At the outset, the Samsung IPR has
`
`been terminated; thus there is no proceeding that Apple can join. And, as shown
`
`below, Apple’s Petition cannot show a reasonable likelihood of success with respect
`
`to any claim.
`
`In particular, Apple fails to show that its proposed combination discloses or
`
`renders obvious the key limitations of “a secure element” and “an interface to receive
`
`1
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`IPR2022-00413
`PATENT NO. 9,240,009
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`a secure element.” Moreover, Apple fails to show that a person of skill in the art
`
`
`
`would have combined its references to arrive at Apple’s proposed combination.
`
`Second, the Fintiv factors all favor denying this Petition in the discretion of
`
`the Director under 35 U.S.C. § 314(a). The District Court in the pending litigation
`
`between Petitioner and Patent Owner has set trial for June 2023, before this
`
`proceeding will reach the projected statutory deadline for a Final Written Decision.
`
`Moreover, the parties have begun the claim construction process, and they and the
`
`District Court will have invested substantial resources in the overlapping issues
`
`before an institution decision. Indeed, the Court’s schedule will see claim
`
`construction completed before the institution decision.
`
`Accordingly, the Board should deny institution.
`
`II. THE ’009 PATENT
`The invention of the ’009 Patent “is generally related to commerce over
`
`networks,” particularly “techniques for personalizing a secure element and
`
`provisioning an application such as an electronic purse 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). ’009 Patent at 1:18-24.
`
`The inventors of the ’009 Patent realized that “[o]ne of the concerns in the NFC
`
`mobile ecosystem is its security in an open network. Thus there is a need to provide
`
`techniques to personalize a secure element in a contactless smart card or an NFC-
`
`2
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`IPR2022-00413
`PATENT NO. 9,240,009
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`enabled mobile device so that such a device is so secured and personalized when it
`
`
`
`comes to financial applications or secure transactions.” Id. at 2:9-14.
`
`To solve these problems, the inventors of the ’009 Patent developed
`
`“techniques for personalizing secure elements in NFC devices to enable various
`
`secure transactions over a network.” ’009 Patent at 2:31-34. For example, “security
`
`keys (either symmetric or asymmetric) are personalized so as to personalize an e-
`
`purse and perform a secured transaction with a payment server.” Id. at 2:53-56.
`
`“According to one embodiment of the present invention, FIG.1D illustrates data
`
`flows among a user for an NFC device (e.g., an NFC mobile phone), the NFC device
`
`itself, a TSM server, a corresponding SE manufacturer and an SE issuer.” Id. at 9:58-
`
`61.
`
`3
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`PATENT NO. 9,240,009
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`’009 Patent, Fig. 1D.
`
`For example, the system makes use of an e-purse manager midlet that
`
`facilitates communication between securely stored applets and payment servers over
`
`a wireless network:
`
`4
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`IPR2022-00413
`PATENT NO. 9,240,009
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`’009 Patent, Fig. 2F (showing midlet (in yellow), and applet (in green)).
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`5
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`IPR2022-00413
`PATENT NO. 9,240,009
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`’009 Patent, Fig. 3B (annotations added)
`
`For example, in a data flow among three entities (e.g., a SAM, an e-purse
`
`manager, and a single function tag), an e-purse manager may act as a gatekeeper “to
`
`ensure only secured and authorized data transactions could happen.” ’009 Patent,
`
`10:28-29.”
`
`6
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`IPR2022-00413
`PATENT NO. 9,240,009
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`’009 Patent, Fig. 1E.
`
`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
`
`the distribution of the appropriate credentials.” Id. at [0020], [0024].
`
`
`
`Dua achieves its goals by using the Session Initiation Protocol (SIP). Id. at
`
`[0042]. Using SIP, each device, such as a portable phone, contains a wallet
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`7
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`PATENT NO. 9,240,009
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`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. at [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. at [0057]. The WCM uses the phone number (or another unique
`
`device identifier) to connect to the specific device using SIP. Id. at [0061]-[0062],
`
`[0128]-[0182]. The communication may be secured using SIPS/TLS or another
`
`method. Id. at [0131], [0180]. The WCM then provides the credentials to the
`
`wireless device. Id. at [0180]. This use of SIP to “establish direct communication”
`
`between the WCM and the device is “an important aspect of” Dua. Id. at [0178].
`
`“The direct connection between the end-points using SIP offers a secure method,
`
`without intermediary servers, by which to transmit confidential information.” Id.
`
`
`
`Dua also describes “extensions.” Id. at [0289]. Dua’s extensions “‘extend’
`
`the capability of the wallet platform by enabling a new set of features defined by the
`
`credential issuer.” Id. Extensions may be preloaded or using the secure SIP
`
`provisioning process for credentials. Id. at [0295], [0296].
`
`B. GlobalPlatform
`The GlobalPlatform Card Specification Version 2.1.1
`
`
`
`(Ex. 1006,
`
`“GlobalPlatform”) describes the “specifications that shall be implemented on
`
`8
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`IPR2022-00413
`PATENT NO. 9,240,009
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`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.
`
`C.
`Smart Card Handbook
`The Smart Card Handbook (Ex. 1008) purports to have been published in
`
`2003. Ex. 1008 at 7. It states that it seeks “to provide the reader with a general
`
`understanding of the fundamentals and the current state of the technology.” Id. at 36.
`
`D. Thibadeau
`U.S. Patent App. Pub. No. 2006/0174352 (Ex. 1041, “Thibadeau”) was filed
`
`on January 31, 2006 and bears a publication date of August 3, 2006. Ex. 1041.
`
`Thibadeau concerns a “data storage device including a plurality of virtual smart
`
`cards in a plurality of security partitions, and a controller including a card operating
`
`system for controlling access to the smart cards.” Id. at Abstract.
`
`IV. CLAIM CONSTRUCTION
`For the purposes of Preliminary Response only, Patent Owner believes that
`
`claim construction is not required to resolve any issues.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`
`For the purposes of this Preliminary Response only, Patent Owner utilizes
`
`Petitioner’s proposed level of skill in the art— “bachelor’s degree in computer
`
`science, computer engineering, electrical engineering or an equivalent, and about
`
`9
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`IPR2022-00413
`PATENT NO. 9,240,009
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`one year of professional experience relating to mobile payment technology.” Pet. at
`
`
`
`9.
`
`VI. THE BOARD HAS TERMINATED THE SAMSUNG IPR THUS
`THERE IS NO INSTITUTED PROCEEDING FOR APPLE TO
`JOIN
`On April 11, 2022, the Board terminated the Samsung IPR. Samsung Elecs.
`
`Co. v. RFCyber Corp., IPR2021-00981, Paper No. 18 (P.T.A.B. Apr. 11, 2022).
`
`With no active proceeding, Apple’s motion for joinder should be denied. See, e.g.,
`
`LG Elecs., Inc. v. Bell N. Research, LLC, IPR2020-00108, Paper 14 (P.T.A.B. May
`
`20, 2020) (denying motion for joinder after original proceeding was terminated).
`
`VII. PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD OF SUCCESS AS TO ANY CHALLENGED
`CLAIM
`Apple submits three supposed grounds of obviousness. Pet. at 6. Ground 1
`
`
`
`challenges claims 1-6 and 13-17, which includes all independent claims of the ’009
`
`Patent. Grounds 2 and 3 only challenge dependent claims 7-12 and explicitly rely
`
`on the arguments from Ground 1 as to claims 1-6. Id. at 52-64. As discussed below,
`
`Apple cannot show a reasonable likelihood that any claims are rendered obvious
`
`under Ground 1, therefore Apple has not shown a reasonable likelihood that any
`
`claims are rendered obvious under Grounds 2 and 3. Accordingly, the Board should
`
`deny the Petition.
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`10
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`IPR2022-00413
`
`PATENT NO. 9,240,009
` 
`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 the subject matter pertains.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103).
`
`B. Apple’s Combination Fails to Disclose or Render Obvious a
`“Secure Element” or “an Interface to Receive a Secure
`Element” as Required by Claims 1 and 14
`Apple fails to show that its combination discloses or renders obvious “an
`
`interface to receive a secure element” as required by claim 1 and its dependent claims
`
`or “a secure element” as required by claim 14 and its dependent claims.
`
`Neither Dua nor GlobalPlatform make any mention of a “secure element.”
`
`Indeed, the word appears in neither reference. See generally Ex. 1004, 1006.
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`11
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`IPR2022-00413
`PATENT NO. 9,240,009
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`Instead, Apple relies on Dua’s discussion of smart cards, and then argues that
`
`
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`“it would have been obvious to implement Dua’s smart card as a ‘secure element’
`
`using GlobalPlatform to secure the ‘embedded smart card.’” Pet. at 17. Apple makes
`
`no showing that all smart cards are “secure elements.” See id. And Apple cites no
`
`support—not even its expert’s declaration—for the proposition that a smart card
`
`with GlobalPlatform would be a secure element. See id. Indeed, Apple’s expert
`
`does not opine that a smart card using GlobalPlatform would be a secure element
`
`and provides no analysis as to how such a smart card could be a secure element. See
`
`Ex. 1003, ¶¶ 112-116.
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`Accordingly, Apple has failed to show that its combination discloses or
`
`renders obvious “an interface to receive a secure element” or “a secure element.”
`
`Every Challenged Claim requires one of these limitations. The Board should,
`
`therefore, deny the Petition.
`
`C. A POSA Would Not Combine Dua with Global Platform
`Each of Apple’s combinations requires combining Dua with at least
`
`GlobalPlatform. Pet. at 14-61. Apple supports its combination by arguing that a
`
`POSA would replace Dua’s SIP-based provisioning process with GlobalPlatform’s.
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`A POSA would not make such a replacement because there is no reason for a POSA
`
`to implement GlobalPlatform’s security when Dua already provides security through
`
`SIPS/TLS and other encryption methods. See supra III.A. Apple identifies no lack
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`or flaw within Dua that would necessitate replacing Dua’s security with
`
`
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`GlobalPlatform’s.
`
`To manufacture a motivation to combine GlobalPlatform with Dua, Apple
`
`relies on statements in Dua relating to compliance with payment standards, not card
`
`management systems like GlobalPlatform. For example, Apple cites general
`
`statements in Dua 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 terminals on a global basis,
`
`regardless of the manufacturer, [the] financial institution, or where the card was
`
`used.” Pet. at 15 (quoting Dua at [0013]) (emphasis added).1 The specifications
`
`referred to are the EMV Chip Specifications.2 As EMVCo. explains, “The EMV
`
`Chip Specifications . . . are global payment industry specifications that describe the
`
`requirements for interoperability between chip-based payment applications and
`
`acceptance terminals to enable payment.” Ex. 2003 at 5. GlobalPlatform is not
`
`related to interoperability between chip cards and terminals; it purports to provide a
`
`“card management architecture.” Pet. at 11 (quoting Ex. 1006, p. 16). Accordingly,
`
` 
`1 The Petition cites to Dua, [0014], but that paragraph relates to smart cards
`becoming the “dominant technology for conducting financial transactions. Dua,
`[0014]. It does not discuss “credit card organizations ‘working jointly.’” See Pet. at
`15.
`2 EMV stands for Europay, Mastercard and Visa (Ex. 2003 at 5.)
`
`13
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`a POSA would look to EMV, not GlobalPlatform, when considering the
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`
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`specifications to which Dua refers.
`
`Apple further argues that a POSA would combine GlobalPlatform with Dua
`
`based on an out-of-context quote: “[The] wallet application should meet standards
`
`defined by card organizations.” Pet. at 15 (quoting Dua, [0525]). But the relevant
`
`sentence from Dua reads, in full, “EMV-Compliant—The wallet application should
`
`meet standards defined by card organizations.” As explained above, Dua
`
`specifically explains that the wallet application should be compliant with EMV
`
`specifications to process payments. See also Dua, [0398] (noting “EMV ‘chip &
`
`PIN’” transactions.
`
`Apple finally argues that Dua’s reference to JAVA would lead a POSA to
`
`combine Dua with GlobalPlatform. First, Apple states, with no supporting evidence,
`
`that references to Java means that Dua is discussing JavaCard. Pet. at 15-16. Dua
`
`never mentions “JavaCard.” Apple’s expert also does not support the notion that a
`
`POSA would look to a JavaCard upon reviewing Dua; instead, Mr. Smith avers that
`
`Dua uses the “Java 2 Platform, Mobile Edition (J2ME)” as the operating system for
`
`the “mobile phone.” Ex. 1003 ¶ 102. But Dua never states that the smart card would
`
`have a J2ME operating system, or any operating system at all. See generally Dua.
`
`Instead, Dua states that J2ME may be used to create the wallet application—it says
`
`nothing about any smart card operating system. Dua, [0500]. Indeed, Dua mentions
`
`14
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`PATENT NO. 9,240,009
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`another alternate operating system and API. Dua, [0501] (discussing the use of
`
`
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`Symbia OS v7.0s). In sum, Apple does not provide a motivation to combine Dua
`
`with GlobalPlatform. The mere existence of GlobalPlatform is not enough to
`
`provide a motivation; Apple needs to show a reason for a POSA to actually choose
`
`to use GlobalPlatform. 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 claimed invention”); Belden Inc. v. Berk-Tek LLC, 805
`
`F.3d 1064, 1073 (Fed. Cir. 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.”).
`
`Indeed, Dua already discloses its own methods for the functionality Apple
`
`borrows from GlobalPlatform: installing and provisioning extensions. See Pet. at 16,
`
`18-30. And Dua already explains that its extensions can be loaded using its SIP-
`
`based provisioning process. Dua, ¶¶ [0295] (“Extensions may reside . . . on a remote
`
`server, securely accessible through the wallet application protocols”), [0296] (“The
`
`provisioning of such an extension to a wireless device using a valid E.164 number
`
`of URI is also possible.”). Apple provides no reason that a POSA would seek to use
`
`GlobalPlatform’s different provisioning system when Dua already provides a
`
`mechanism to provision the extensions. Lyft, Inc. v. Quartz Auto Techs., LLC,
`
`15
`
`

`

`
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
` 
`IPR2020-01450, Paper 7, at 17-20 (P.T.A.B. Mar. 4, 2021) (“[W]e are left
`
`
`
`wondering why a person of ordinary skill in the art would modify Douglas only to
`
`have the same features as disclosed by Harrison.”).
`
`Moreover, Dua’s use of SIP architecture to establish communications between
`
`the WCM and the device for personalizing its system is key to its invention. Dua,
`
`¶ [0178] (“The 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)). All secure communications
`
`within Dua, including downloading and installing its extensions, are done by making
`
`a SIP connection between the WCM and the mobile device. Id., ¶¶ [0296], [0311],
`
`Figs. 1, 3, 8.
`
`Apple provides no reason that a POSA would further add GlobalPlatform to
`
`Dua’s already complete security scheme. Although Dua briefly mentions that
`
`“While the use of SIP for such purposes is preferred, alternative application
`
`protocols may be used in lieu of SIP while still remaining within the spirit and scope
`
`of the present invention,”3 that passage only states that different protocols may be
`
`used to implement Dua’s invention—it is not a suggestion to implement an entirely
`
`3 Dua, [0050].
`
` 
`
`16
`
`

`

`
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
` 
`new system layered onto Dua. See, e.g., Dua, [0103] (comparing SIP to other
`
`
`
`protocols, such as WAP, SMS, and MMS).
`
`Accordingly, Apple has failed to show that it would be obvious to combine
`
`GlobalPlatform with Dua and thus has failed to show that Dua in view of
`
`GlobalPlatform and Philips renders this limitation obvious.
`
`VIII. THE PETITION SHOULD BE DENIED IN THE DISCRETION
`OF THE DIRECTOR UNDER 35 U.S.C. § 314(A)
`The circumstances of the parallel District Court Litigation in Texas (RFCyber
`
`Corp. v. Apple, Inc., No. 6:21-cv-00916-ADA (W.D. Tex.) necessitate denial of the
`
`Petition under the Board’s precedent, as every factor considered in relation to
`
`efficiency, fairness, and the merits supports denial. See Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, at 6 (P.T.A.B. Mar. 20, 2020) (precedential) (considering
`
`(a) “whether the court granted a stay or evidence exists that one may be granted if a
`
`proceeding is instituted;” (b) “proximity of the court’s trial date to the Board’s
`
`projected statutory deadline for a final written decision;” (c) “investment in the
`
`parallel proceeding by the court and the parties;” (d) “overlap between issues raised
`
`in the petition and in the parallel proceeding;” (e) “whether the petitioner and the
`
`defendant in the parallel proceeding are the same party;” and (f) “other
`
`circumstances that impact the Board’s exercise of discretion, including the merits.”).
`
`17
`
`

`

`
`
` 
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
`As set forth below, every Fintiv factor demonstrates that efficiency and
`
`
`
`integrity of the AIA are best served by denying review. First, the Court has not
`
`granted a stay and there exists no evidence that it will grant one. See infra Section
`
`VII.A. Second, trial (set for June 2023) will be complete before the projected
`
`statutory deadline for a Final Written Decision in July 2023. See infra Section VII.B.
`
`Third, the parties have already invested massive resources developing legal and
`
`factual issues of validity, and the claim construction process will have completed
`
`before the institution decision on this petition. See infra Section VII.C. Fourth,
`
`there is complete overlap between the challenged claims and prior art and those at
`
`issue in the parallel proceedings. See infra Section VII.D. Fifth, Petitioner and
`
`Patent Owner will have completed claim construction before the Board issues an
`
`institution decision and will complete trial, and receive a judgment on the merits,
`
`before the projected statutory deadline for a final written decision. See infra Section
`
`VII.E. Finally, as shown above, Apple’s obviousness combination lacks a
`
`motivation to combine and fails to disclose important limitations of the claims.
`
`Accordingly, the Board should exercise its discretion under § 314(a) and deny
`
`the Petition because institution of this proceeding would not be consistent with the
`
`objective of the AIA to “provide an effective and efficient alternative to district court
`
`litigation.” NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, at
`
`20 (P.T.A.B. Sept. 12, 2018) (quoting Gen. Plastic Indus. Co. v. Canon Kabushiki
`
`18
`
`

`

`
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
` 
`Kaisha, IPR2016-01357, Paper 19, at 16–17 (P.T.A.B. Sept. 6, 2017)
`
`
`
`(precedential)).
`
`A. No Stay of the Parallel District Court Litigation
`Petitioner has not moved to stay the District Court litigation; moreover, there
`
`is no evidence that the District Court would grant such a motion in view of the fact
`
`that many of the asserted patents in the Texas Action are not subject to any post-
`
`grant proceedings in the PTAB. Accordingly, this factor weighs in favor of
`
`discretionary denial.
`
`B.
`
`The Board’s Written Decision Deadline Will Come Long
`After the Trial Date
`The Texas Court issued its Scheduling Order on January 28, 2022, setting trial
`
`for June 2023. Ex. 2004. Pursuant to 35 U.S.C. § 316(a)(11), the projected statutory
`
`deadline for a final written decision is in July 2023, one month later.
`
`Accordingly, this factor weighs in favor of denying institution. See Samsung
`
`Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218, Paper 7, at 7-10 (P.T.A.B.
`
`Jan. 7, 2020) (denying institution where jury selection was scheduled for
`
`approximately six months before trial in the Board proceeding would conclude);
`
`Next Caller Inc. v. TrustID, Inc., IPR2019-00961, -00962, Paper 10, at 8-16
`
`(P.T.A.B. Oct. 16, 2019) (denying institution where trial was scheduled to conclude
`
`“several months,” before a final decision would be due); Cisco Sys., Inc. v. Ramot
`
`19
`
`

`

`
`
`IPR2022-00413
`PATENT NO. 9,240,009
` 
` 
`at Tel Aviv Univ. Ltd., IPR2020-00122, Paper 15 at 8 (P.T.A.B. May 15, 2020)
`
`
`
`(“Because the trial date is substantially earlier than the projected statutory deadline
`
`for the Board’s final decision, this factor weighs in favor of discretionary denial.”).
`
`Apple does not substantively address that the Texas Action will reach trial
`
`before the Final Written Decision in this case, and incorrectly asserts that the Final
`
`Written Decision will be issued before trial. Pet. at 8-9.
`
`Thus, this factor weighs strongly in favor of discretionary denial.
`
`C.
`
`Significant Investment by the Time of Institution Favors
`Discretionary Denial
`The parties’ investment in the parallel proceeding weighs in favor of
`
`discretionary denial. Significant work in the District Court Litigation has already
`
`taken place and claim construction will be complete by the Board’s institution
`
`decision in July 2022.
`
`Pursuant to 35 U.S.C. § 314(b), the Board will issue an institution decision in
`
`July 2022. The parties have already served bot