`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2022-00413
`U.S. Patent No. 9,240,009
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,240,009
`
`

`

`TABLE OF CONTENTS
`
`I. BACKGROUND ............................................................................................ 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) FOR INTER
`PARTES REVIEW ................................................................................................ 2
`A. Real Party in Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 2
`C. Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) and Service
`Information under 37 C.F.R. § 42.8(b)(4) ........................................................... 4
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15 .......................................... 5
`IV. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D) ......... 5
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................. 6
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ..................................... 6
`B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested ........................................................................................................... 6
`VI. THE ’009 PATENT ........................................................................................ 6
`A. Overview ..................................................................................................... 6
`B. Effective Filing Date .................................................................................... 7
`C. ’009 Patent’s Prosecution ............................................................................. 7
`VII. PETITIONER’S GROUNDS ARE NEW AND DISCRETIONARY DENIAL
`IS UNWARRANTED UNDER GENERAL PLASTIC & FINTIV ........................ 8
`A. General Plastic ............................................. Error! Bookmark not defined.
`B. Fintiv ........................................................................................................... 8
`VIII. ........................ PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`
`9
`IX. CLAIM CONSTRUCTION ............................................................................ 9
`X. OVERVIEW OF PRIOR ART .......................................................................10
`A. Dua .............................................................................................................10
`B. GlobalPlatform ...........................................................................................11
`C. Smart Card Handbook .................................................................................12
`D. Thibadeau ...................................................................................................13
`XI. DETAILED ANALYSIS ...............................................................................14
`
`ii
`
`

`

`A. Ground 1: Dua in view of GlobalPlatform render obvious claims 1-6 and
`13-17 .................................................................................................................14
`B. Ground 2: Dua in view of GlobalPlatform and Smart Card Handbook
`render obvious claims 7-10 ................................................................................52
`C. Ground 3: Dua in view of GlobalPlatform, Smart Card Handbook, and
`Thibadeau renders obvious claims 11 and 12 .....................................................61
`XII. CONCLUSION ..............................................................................................64
`
`iii
`
`

`

`CLAIM LISTING
`
`CLAIM 1:
`
`[1.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[1a] a network interface;
`
`[1b] an interface to receive a secure element;
`
`[1c] a memory space for storing at least a module and an application downloaded from
`
`the network;
`
`[1d] a processor coupled to the memory space and configured to execute the module
`
`to perform operations including:
`
`[1di] sending to a server via the network interface an identifier identifying the
`
`application together with device information of a secure element,
`
`[1dii] wherein the application is downloaded from the network in the mobile
`
`device;
`
`[1diii] establishing a secured channel between the secure element and the server
`
`using a key set installed on the secure element,
`
`[1div] wherein the server is configured to prepare data necessary for the
`
`application to function as designed on the mobile device; and
`
`iv
`
`

`

`[1dv] receiving the data from the server to associate the application with the
`
`secure element,
`
`[1dvi] wherein the application subsequently functions in conjunction with the
`
`secure element.
`
`CLAIM 2:
`
`The mobile device as recited in claim 1, wherein the data received in the mobile device
`
`includes an application key set for the application, and a user interface specifically
`
`designed for the mobile device.
`
`CLAIM 3:
`
`The mobile device as recited in claim 2, wherein the mobile device is a near field
`
`communication (NFC) enabled mobile phone, and the application is an electronic
`
`purse (e-purse), the mobile device is used to exchange secured data with another
`
`device within a near distance to conduct a transaction.
`
`CLAIM 4:
`
`The mobile device as recited in claim 3, wherein the secured data is being exchanged
`
`over a secured channel between the mobile device and the another device established
`
`by the application key set.
`
`CLAIM 5:
`
`The mobile device as recited in claim 4, wherein the transaction is conducted without
`
`the mobile device communicating with a transaction server.
`
`v
`
`

`

`CLAIM 6:
`
`[6.PREAMBLE] The mobile device as recited in claim 1, [6a] wherein said sending
`
`to a server via the network interface an identifier identifying the application together
`
`with device information of a secure element comprises:
`
`[6bi] determining whether the secure element has been personalized with a
`
`Trusted Service Management (TSM) system,
`
`[6bii] wherein the TSM system is a collection of services configured to
`
`distribute and manage contactless services for customers signed up with the
`
`TSM, and provide data exchanges among different parties to make electronic
`
`commerce possible over a wireless network; and
`
`[6ci] performing a personalization process for the secure element when the
`
`secure element has not been personalized with the Trusted Service Management
`
`(TSM) system,
`
`[6cii] wherein the secure element when personalized establishes a security
`
`platform for the application to run on the mobile device.
`
`CLAIM 7:
`
`[7.PREAMBLE] The mobile device as recited in claim 6, wherein the personalization
`
`process comprises:
`
`vi
`
`

`

`[7a] causing the mobile device to initiate data communication with a server in
`
`the TSM system;
`
`[7bi] retrieving device information of the secure element in responding to a
`
`request from the TSM server after the TSM server determines that the secure
`
`element is registered therewith,
`
`[7bii] wherein the device information is a sequence of characters uniquely
`
`identifying the secure element;
`
`[7ci] receiving at least a set of keys from the TSM server,
`
`[7cii] wherein the keys are generated in the TSM server in accordance with the
`
`device information of the secure element; and
`
`[7d] storing the set of keys in the secure element to facilitate a subsequent
`
`transaction with the secure element in the computing device.
`
`CLAIM 8:
`
`The mobile device as recited in claim 7, wherein the device information includes an
`
`identifier of the secure element, manufacturer information and a batch number.
`
`CLAIM 9:
`
`The method as recited in claim 8, wherein part of the data is used to facilitate the server
`
`to remotely manage the application.
`
`vii
`
`

`

`CLAIM 10:
`
`The mobile device as recited in claim 7, wherein the secure element is embedded in
`
`the mobile device and integrated with the mobile device via the interface.
`
`CLAIM 11:
`
`The mobile device as recited in claim 7, wherein the secure element is a software
`
`module installed in a secure memory space only accessible by a distributor of the
`
`secure element.
`
`CLAIM 12:
`
`The mobile device as recited in claim 11, wherein some components are updated when
`
`the secure element is upgraded by the distributor.
`
`CLAIM 13:
`
`[13.PREAMBLE] The mobile device as recited in claim 1, wherein the operations
`
`further comprises:
`
`[13a] receiving a message from a distributor of the application, the message
`
`including an identifier identifying the application;
`
`[13b] verifying that the message is indeed from the distributor;
`
`[13c] disassociating the application with the secure element in responding to a
`
`confirmation from the distributor after the message has been verified and was
`
`indeed from the distributor; and
`
`viii
`
`

`

`[13d] notifying the distributor that the application installed in the mobile
`
`device is no longer active.
`
`CLAIM 14:
`
`[14.PREAMBLE] A mobile device for conducting a secured transaction over a
`
`network, the mobile device comprising:
`
`[14a] a network interface;
`
`[14b] a secure element;
`
`[14c] a memory space for storing various modules downloaded from the network, each
`
`of the modules configured to provide an application or a service to a user of the mobile
`
`device;
`
`[14d] a processor coupled to the memory space and configured to execute an
`
`embedded module to perform operations including:
`
`[14di] provisioning each of the modules, wherein said provisioning each of the
`
`modules with a distributor comprises:
`
`[14dii] sending to a server via the network interface an identifier identifying the
`
`each of the modules together with device information of the secure element,
`
`[14diii] wherein the each of the modules is downloaded from the network in the
`
`mobile device;
`
`ix
`
`

`

`[14div] establishing a secured channel between the secure element and the
`
`server using a key set installed on the secure element, wherein the server is
`
`configured to prepare data necessary for the each of the modules to function as
`
`designed on the mobile device; and
`
`[14dv] receiving the data from the server to associate the each of the modules
`
`with the secure element, wherein the data includes a set of keys generated for
`
`the each of the modules, wherein the each of the modules subsequently
`
`functions in conjunction with the secure element.
`
`CLAIM 15:
`
`[15.PREAMBLE] The mobile device as recited claim 14, wherein the operations
`
`further comprise:
`
`[15a] receiving a message from a distributor of one of the modules, the
`
`message including an identifier identifying the one of the modules;
`
`[15b] verifying that the message is authenticated;
`
`[15c] disassociating the one of the modules with the secure element in
`
`responding to a confirmation from the distributor after the message has been
`
`verified and was indeed from the distributor; and
`
`[15d] notifying the distributor that the one of the modules installed in the mobile
`
`device is no longer active.
`
`x
`
`

`

`CLAIM 16:
`
`The mobile device as recited claim 14, wherein the mobile device includes a display
`
`configured to display a user interface showing some of the modules that are still
`
`provisioned and active, each of the modules is configured to show another user
`
`interface particularly designed for the display of the mobile device when the each of
`
`the modules is activated by a user.
`
`CLAIM 17:
`
`The mobile device as recited claim 16, wherein the secure element must be
`
`personalized before each of the modules is provisioned, each of the provisioned
`
`modules is associated with the personalized secure element and a key set generated in
`
`accordance with a key set of the secure element.
`
`
`
`
`
`xi
`
`

`

`PETITIONER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 9,240,009 (the “’009 patent”)
`
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`
`Declaration of Gerald Smith Regarding Invalidity of U.S. Patent
`No. 8,118,218
`
`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
`
`Defendants’ Contingent Election Regarding Invalidity Defenses,
`RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-
`00335 (E.D. Tex.) (Dkt. 60) (filed June 8, 2021).
`
`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
`
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`
`Common Electronic Purse Specifications, Technical
`Specification Version 2.3 (March 2001)
`
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October
`2004)
`
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
`
`xii
`
`

`

`Exhibit No. Description
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote
`APDU structure for UICC based applications (Release 6)”
`
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
`
`RESERVED
`
`Excerpt from Cambridge Business English Dictionary
`
`U.S. Patent No. 6,983,882
`
`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
`
`RESERVED
`
`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
`
`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
`
`“Here Comes The Wallet Phone,” IEEE Spectrum, November
`2005
`
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`
`RESERVED
`
`RFC 3261, SIP: Session Initiation Protocol, The Internet Society
`(June 2002).
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`xiii
`
`

`

`Exhibit No. Description
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`U.S. Patent Application Publication No. 2006/0196931
`
`Declaration of Sylvia Hall-Ellis, Ph.D.
`
`U.S. Patent Application Publication No. 2006/0174352
`(“Thibadeau”)
`
`File history of U.S. Patent No. 9,240,009 (“’009 FH”)
`
`U.S. Patent No. 9,189,787
`
`xiv
`
`

`

`Apple Inc. hereby seeks inter partes review of claims 1-17 (“the Challenged
`
`Claims”) of U.S. Patent No. 9,240,009. Ex. 1001 (the “’009 patent”).
`
`I.
`
`BACKGROUND
`
`The ’009 patent proclaims that “the present invention is related to techniques
`
`for personalizing a secure element and provisioning an application such as an
`
`electronic purse that can be advantageously used in portable devices” for use in
`
`conducting commercial transactions. Ex. 1001, 1:18-24. One concern that the ’009
`
`patent purportedly addressed was “concerns in the NFC mobile ecosystem” about
`
`security. Id., 2:9-10. The patent states that “there is a need to provide techniques to
`
`personalize a secure element in a contactless smart card or an NFC enabled mobile
`
`device so that such a device is so secured and personalized when it comes to financial
`
`applications or secure transactions.” Id., 2:10-14. The “secure element” (SE) in the
`
`patent “may be in form of a smart card.” Id., 6:45, 6:58-62. Processes for installing,
`
`personalizing, and removing applications from “secure elements” are claimed. Ex.
`
`1001, cl.1, 6 (personalizing application), 13 (removing application); Ex. 1003, ¶¶30-
`
`37.
`
`The problem is that the examiner was unaware of Dua, which discloses
`
`“embedded smart card[s]” in wireless devices that can have “mini-programs” called
`
`“extensions” stored on the card for performing a variety of financial transactions,
`
`like paying for subway fare. Ex. 1004, ¶¶[0289]-[0295]. The examiner was also not
`
`1
`
`

`

`presented with an industry standard for performing operations on smart cards called
`
`“GlobalPlatform” which describes how to do what the patent alleges was the
`
`invention: personalizing and securing a smart card. Ex. 1006, pp. 51-103 (§§6-8)
`
`(describing “Card Manager,” “Security Domains” including use of same for
`
`“Personalization Support,” and “Secure Communication”); Ex. 1003, ¶¶46-50. As
`
`shown below, the challenged claims would not have issued had the examiner known
`
`of the references applied herein.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) FOR INTER
`PARTES REVIEW
`A.
`Real Party in Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest in this petition are Samsung Electronics
`
`America, Inc. and Samsung Electronics Co., Ltd.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related matters:
`
`• RFCyber Corp. v. Apple Inc., 6:21-cv-00916 (W.D. Tex.) (the
`
`“Apple case”);
`
`• RFCyber Corp. v. Google LLC et al., 2:20-cv-00274 (E.D. Tex.)
`
`(the “Google case”);
`
`• RFCyber Corp v. LG Electronics, Inc., 2:20-cv-00336 (E.D. Tex.);
`
`• RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-
`
`00335 (E.D. Tex.) (the “Samsung case”);
`
`2
`
`

`

`• Google LLC v. RFCyber Corp., PGR2021-00028 and 00029
`
`concerning U.S. Patent No. 10,600,046;
`
`• Google LLC v. RFCyber Corp., IPR2021-00954 concerning U.S.
`
`Patent No. 8,448,855;
`
`• Google LLC v. RFCyber Corp., IPR2021-00955 concerning U.S.
`
`Patent No. 9,189,787
`
`• Google LLC v. RFCyber Corp., IPR2021-00956 concerning U.S.
`
`Patent No. 9,240,009;
`
`• Google LLC v. RFCyber Corp., IPR2021-00957 concerning U.S.
`
`Patent No. 8,118,218;
`
`• Google LLC v. RFCyber Corp., IPR2021-00978 concerning U.S.
`
`Patent No. 8,448,855;
`
`• Google LLC v. RFCyber Corp., IPR2021-00979 concerning U.S.
`
`Patent No. 8,118,218;
`
`• Google LLC v. RFCyber Corp., IPR2021-00980 concerning U.S.
`
`Patent No. 9,189,787;
`
`• Apple Inc. v. RFCyber Corp., PGR2022-00003 concerning U.S.
`
`Patent No. 10,600,046;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp.,
`
`IPR2021-00981 concerning U.S. Patent No. 9,240,009;
`
`3
`
`

`

`• Samsung Electronics America, Inc., et al. v. RFCyber Corp.,
`
`IPR2021-00979 concerning U.S. Patent No. 8,118,218;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp.,
`
`IPR2021-00980 concerning U.S. Patent No. 9,189,787;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp.,
`
`IPR2021-00978 concerning U.S. Patent No. 8,448,855.
`
`Petitioner is a party to the Apple case, which is in its earliest stages: no
`
`scheduling conference has occurred, and Apple has not yet answered the amended
`
`complaint, which was filed on December 2, 2021.
`
`The instant petition is substantively identical to Samsung’s petition in
`
`IPR2021-00981. That proceeding was instituted on December 15, 2021, and
`
`Petitioner has filed a motion to join IPR2021-00981.
`
`In addition to joining IPR2021-00981, Petitioner is filing a substantively
`
`identical petition and motion to join Samsung’s IPR2021-00980. That proceeding
`
`was also instituted on December 15, 2021.
`
`The undersigned is unaware of any other judicial or administrative matter that
`
`would affect, or be affected by, a decision in the proceeding.
`
`C.
`
`Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) and Service
`Information under 37 C.F.R. § 42.8(b)(4)
`
`Petitioner designates the following lead and backup counsel:
`
`4
`
`

`

`Lead Counsel
`Adam P. Seitz (Reg. No. 52,206)
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`Back-Up Counsel
`Paul R. Hart (Reg. No. 59,646)
`Paul.Hart@eriseip.com
`
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`5299 DTC Blvd., Ste. 1340
`Greenwood Village, Colorado 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`Service on Petitioner may be made by mail or hand delivery to: Erise IP, P.A., 7015
`
`College Boulevard, Suite 700, Overland Park, Kansas 66211. Petitioner also
`
`consents to and prefers electronic service by emailing PTAB@eriseip.com and
`
`counsel of record (shown above).
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15
`Petitioner authorizes the U.S. Patent & Trademark Office to charge Deposit
`
`Account No. 50-6159 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes for any additional fees to be charged to this Deposit Account.
`
`IV. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D)
`Petitioner certifies that the word count in this Petition is 13,363 words,
`
`as counted by the word-processing program Microsoft Word used to generate this
`
`Petition, where such word count excludes the table of contents, table of authorities,
`
`mandatory notices, certificate of service, appendix of exhibits, and this certificate
`
`5
`
`

`

`of word count. This Petition is in compliance with the 14,000 word limit set forth
`
`in 37 C.F.R. § 42.24(a)(1)(i).
`
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’009 patent is available for inter partes review,
`
`and that Petitioner is not barred or estopped from requesting an IPR on the
`
`grounds identified herein.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner presents the following grounds and requests that the challenged
`
`claims be canceled:
`
`Ground Challenged Claim(s) Prior Art
`
`1
`
`2
`
`3
`
`1-6, 13-17
`
`7-10
`
`11-12
`
`Dua (Ex. 1004) and
`GlobalPlatform (Ex. 1006)
`
`Dua, GlobalPlatform, and Smart
`Card Handbook (Ex. 1008)
`
`Dua, GlobalPlatform, Smart Card
`Handbook, and Thibadeau (Ex.
`1041)
`
`VI. THE ’009 PATENT
`
`A. Overview
`
`An overview of the ’009 patent is given in Section I.
`
`Basis
`
`§103
`
`§103
`
`§103
`
`6
`
`

`

`B.
`
`Effective Filing Date
`
`To resolve Petitioner’s challenge, the Board may presume that the effective
`
`filing date of the ’009 patent is September 24, 2006. Petitioner reserves its right
`
`to challenge priority in this or any other proceeding.
`
`C.
`
`’009 Patent’s Prosecution
`
`The ’009 patent is a continuation-in-part of two earlier-filed applications. Ex.
`
`1001, cover. The references cited by the examiner during prosecution of the earlier-
`
`filed applications and the application leading to the ’009 patent are not used herein.
`
`While the ’009 patent briefly references “a global platform,” and “a Global Platform
`
`(GP) card manager,” Ex. 1001, 15:39-40, 18:20, it cribs numerous concepts from the
`
`prior art GlobalPlatform standards and fails to add non-obvious modifications to the
`
`cribbed material. Although Applicants drew heavily from GlobalPlatform, they
`
`never provided a copy to the Patent Office.
`
`A significant issue during prosecution was whether the claims were entitled
`
`to either parent applications’ filing date. Ex. 1044, pp. 140-142, 168-170, 179-182,
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`205-208. The examiner ultimately agreed with Applicant that the claims were
`
`entitled to a filing date of April 23, 2007. Ex. 1044, p. 214. The examiner then
`
`rejected the claims as being obvious over publications to Labrou and Rackley. Id.,
`
`pp. 215-222. Applicants distinguished Labrou because Labrou’s use of a phone
`
`number to conduct a secure transaction was not the same as using “multiple
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`identifiers” to identify “multiple applications . . . running on the mobile device” and
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`because Labrou was “silent about a secure element in a mobile device.” Ex. 1044,
`
`pp. 239-240. Applicants also argued that Rackley did not disclose “provisioning an
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`installed application with a secure element.” Ex. 1044, p. 240. This led to allowance
`
`of the claims. Id., pp. 252-254.
`
`VII. PETITIONER’S GROUNDS ARE NEW AND DISCRETIONARY
`DENIAL IS UNWARRANTED UNDER FINTIV
`
`Applicants’ prosecution arguments focused on how the prior art failed to
`
`disclose a secure element that was personalized and the identification of applications
`
`using application identifiers (as opposed to phone numbers). Supra §VI.C.3. These
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`features—as well as the other features of the Challenged Claims—are obvious over
`
`Dua and GlobalPlatform, neither of which have been considered by the Office in the
`
`context of the ’009 patent claims before. Dua discloses an “embedded smart card”
`
`in a wireless device and GlobalPlatform describes a standardized process for
`
`securing a smart card that includes identifying applications by Application
`
`Identifiers (AIDs) on the smart card. Ex. 1004, ¶¶[0295], [0309]; Ex. 1006, p. 20
`
`(§1.4) (AID is “Application Identifier”). These teachings are relevant to Applicant’s
`
`distinctions over the prior art and the allowance of the claims.
`
`Fintiv
`
`A.
`Petitioners submit the Fintiv factors weigh against exercising authority to
`
`deny. Specifically, Petitioner is seeking to join an already instituted proceeding,
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`which will conclude with a final written decision by December 15, 2022. The
`
`District Court proceedings are at the earliest stage: no scheduling conference has
`
`occurred, and Apple has not yet answered the amended complaint, which was just
`
`filed on December 2, 2021. Based on the expected schedule that will govern the
`
`district court litigation, the final written decision will issue long before any district
`
`court trial.
`
`VIII. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`A POSITA in the field of the ’009 patent at the time of the effective filing date
`
`would have been knowledgeable regarding mobile payment methods and systems
`
`pertinent to the ’009 patent. A POSITA would have had at least a bachelor’s
`
`degree in computer science, computer engineering, electrical engineering or an
`
`equivalent, and about one year of professional experience relating to mobile
`
`payment
`
`technology, which would have exposed
`
`them
`
`to concepts
`
`like
`
`GlobalPlatform and smart cards. Lack of professional experience could be remedied
`
`by additional education, and vice versa. Ex. 1003, ¶¶28-29.
`
`IX. CLAIM CONSTRUCTION
`Under Phillips v. AWH Corp., 415 F.3d 1303, 1312-16 (Fed. Cir. 2005) (en
`
`banc), claim terms are typically given their ordinary and customary meanings, as
`
`would have been understood by a POSITA, at the time of the invention, having taken
`
`into consideration the language of the claims, the specification, and the prosecution
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`history of record.1 Petitioner applies the plain and ordinary meaning to the claims as
`
`no specific constructions are required to resolve the grounds presented in this
`
`Petition.
`
`X. OVERVIEW OF PRIOR ART
`A. Dua
`
`Dua was filed January 21, 2005 and published on July 27, 2006 making it
`
`§§102(a), (e) prior art.2 Ex. 1004, cover. Dua is analogous art to the ’009 patent
`
`because it discloses e-purses in a smart card on a mobile device to pay for things like
`
`subway fare. Id., ¶¶[0288]-[0289], [0293]-[0295], [0368].
`
`Dua discloses a “system and methodology for conducting financial and other
`
`transactions using a wireless device.” Id., Abstract. Dua’s wireless device includes
`
`a “wallet application” that receives, stores, manages, and transmits multiple
`
`payment, identification, and other confidential information electronically. Id.,
`
`¶[0041]. 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., ¶¶[0289], [0295]. One example of an extension is a stored-value card extension
`
`for paying subway fare. Id., ¶¶[0290], [0293]. The stored value card extension
`
`
`1 The claims may be invalid for reasons not raised herein, including reasons based
`
`on statutory grounds unavailable in an IPR.
`
`2 All references to §102 are to pre-AIA §102.
`
`10
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`“need[s] to be programmed” to support “over-the-air reload,” i.e., wireless funding
`
`of the e-purse. Id., ¶[0293]; Ex. 1003, ¶¶78-82.
`
`B. GlobalPlatform
`
`GlobalPlatform is a printed publication under §102(b) because it was printed,
`
`distributed, and publicly accessible by April 2003. Ex. 1003, ¶¶43-45. Mr. Smith,
`
`former Board Member of GlobalPlatform, knows that Ex. 1003 was released in
`
`March 2003 and was publicly available by April 2003 for free download on
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`GlobalPlatform’s website. Id., ¶¶13, 44. Those interested in smart cards knew of
`
`GlobalPlatform’s activities and how to access Ex. 1003. Ex. 1003, ¶¶44-45; Ex.
`
`1008, pp.290, 9943; Ex. 1022, pp.29 n.16, 33; Ex. 1014, pp.5, 11, 12; Ex. 1039,
`
`¶[0063]. GlobalPlatform is analogous to the ’009 patent because it discloses
`
`creating secure channels for personalization of smart cards and subsequent secure
`
`communications. Ex. 1001, 15:39-44, 18:19-20, 18:52-57.
`
`GlobalPlatform is a “hardware-neutral,” “vendor-neutral,” and “Application-
`
`independent” “chip card standard” which “provides a common security and card
`
`management architecture.” Ex. 1006, p.16; Ex. 1008, p. 290. “GlobalPlatform is
`
`intended to run on top of any secure, multi-application card runtime environment”
`
`including Java Card. Ex. 1006, pp. 16 (§1), 29 (§3.1). GlobalPlatform specifies the
`
`card architecture, security architecture, Life Cycle models for smart cards and their
`
`
`3 Citations to Ex. 1008 are to actual page numbers of the book.
`
`11
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`

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`Applications, the Card Manager, Security Domains for key management and
`
`establishing Secure Channels.4 Ex. 1003, ¶¶51-63. GlobalPlatform describes
`
`sequences of commands for installing, personalizing, and deleting applications on
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`multi-application smart cards. Ex. 1006, pp. 65-67, 88-90.
`
`Smart Card Handbook
`
`C.
`The Third Edition of Smart Card Handbook was published by reputable
`
`publisher John Wiley & Sons, Ltd. in 2003 and is a printed publication under
`
`§102(b). Ex. 1008, p. 7 (proceeding number); Ex. 1040, ¶¶39-44. This book was
`
`distributed and accessible to members of the public interested in the subject matter
`
`of smart cards on or shortly after August 22, 2003. Ex. 1040, ¶44. It has been
`
`available at the Linda Hall Library and was cataloged by subject matter at the Library
`
`of Congress in 2003. Ex. 1040, ¶¶42-44. Smart Card Handbook is analogous to the
`
`’009 patent because both relate to smart cards. Ex. 1001, 6:58-59 (“SE may be in
`
`form of a smart card”).
`
`Smart Card Handbook describes well-known techniques used in smart cards
`
`and smart card management. Ex. 1003, ¶¶84-92. For instance, it describes card
`
`management systems that employ databases for holding data related to unique smart
`
`cards and data on the cards themselves. Ex. 1041, pp. 251, 301, 600. Moreover,
`
`Smart Card Handbook discusses managing security keys on smart cards. Ex. 1041,
`
`
`4 Petitioner capitalizes terms defined in GlobalPlatform just as GlobalPlatform does.
`
`12
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`

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`pp. 202-208. The book explains that one technique for generating keys during
`
`personalization includes the use of a “card number” or “chip number” to generate an
`
`encryption key by a security module to secure the personalization data transmitted
`
`to the card.
`
`
`
`Ex. 1008, p. 645.
`D.
`
`Thibadeau
`
`Thibadeau is prior art to the ’009 patent under at least §§102(a), (e) because
`
`it was filed January 31, 2006 and published August 3, 2006. Ex. 1041, cover.
`
`Thibadeau describes a way of storing “virtual smart cards” managed by “Card
`
`Operating System,” software “needed to
`
`interface
`
`into” standardized card
`
`environments such as GlobalPlatform-based smart cards. Ex. 1041, ¶¶[0091],
`
`[0099]; Ex. 1003, ¶¶94-96. Thibadeau is analogous to the ’009 patent because both
`
`13
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`

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`relate to smart cards, and even mention Java Card and the ISO 7816 smart card
`
`standards. Ex. 1001, 13:15-19; Ex. 1041, ¶¶[0099]-[0100].
`
`XI. DETAILED ANALYSIS
`A. Ground 1: Dua in view of GlobalPlatform render obvious claims 1-6
`and 13-17
`1.
`
`The scope and content of the prior art
`
`For Ground 1, the prior art consists of Dua and GlobalPlatform.
`2. Motivation/Rationale for Combining the Prior Art
`
`Dua discloses “a novel system and methodology