UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
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`v.
`FINTIV, INC.,
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`Patent Owner.
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`Case No. IPR2022-00976
`U.S. Patent No 9,892,386
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`PATENT OWNER’S NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
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`v.
`FINTIV, INC.,
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`Patent Owner.
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`
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`Case No. IPR2022-00976
`U.S. Patent No 9,892,386
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`PATENT OWNER’S NOTICE OF APPEAL
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`Case No. IPR2022-00976
`U.S. Patent No. 9,892,386
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. §§
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`141(c), 142, and 319, that Patent Owner, Fintiv, Inc., appeals to the United States
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`Court of Appeals for the Federal Circuit from the Final Written Decision of the
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`Patent Trial and Appeal Board (“PTAB”) in Case No. IPR2022-00976, entered
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`November 8, 2023 (Paper No. 27). For the limited purpose of providing the Director
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`with the information specified in 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner indicates
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`that the issues on appeal may include, but are not limited to, the following: (1)
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`whether the PTAB erred in finding that Petitioner has shown by a preponderance of
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`the evidence that Claims 1-3 of U.S. Patent No. 9,892,386 (“the ’386 patent”) are
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`unpatentable; (2) whether the PTAB erred in finding that Petitioner has shown by a
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`preponderance of the evidence that Claims 1 and 3 are unpatentable under 35 U.S.C.
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`§ 103 as obvious in view of U.S. Patent Publication No. 2009/0265272 A1 (“Dill”),
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`U.S. Patent Publication No. 2010/0133334 A1 (“Vahhri”), and U.S. Patent
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`Publication No. 2009/02117047 A1 (“Akashika”); (3) whether the PTAB erred in
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`finding that Petitioner has shown by a preponderance of the evidence that Claim 2
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`is unpatentable under 35 U.S.C. § 103 as obvious in view of Dill, Vadhri, Akashika,
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`U.S. Patent Publication No. 2004/0230527, and U.S. Patent No. 7,865,141; and (4)
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`whether the PTAB erred in any further findings or determinations by the Director or
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`the Board supporting or relating to the issues above, including the Board’s
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`consideration and/or interpretation of the expert testimony, prior art, and other
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`evidence in the record; the Board’s claim constructions; and the Board’s factual
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`Case No. IPR2022-00976
`U.S. Patent No. 9,892,386
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`findings, conclusions of law, or other determinations supporting or related to the
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`issues above. Simultaneous with this submission and in accordance with 37 C.F.R.
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`§ 90.2(a), a copy of this Notice of Appeal is being filed with the Director of the
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`United States Patent and Trademark Office, filed with the PTAB, and served upon
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`Petitioner in accordance with 37 C.F.R. § 42.6(e). In addition, this Notice of Appeal,
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`along with the required docketing fees, is being filed with the Clerk’s Office for the
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`United States Court of Appeal for the Federal Circuit in accordance with Fed. Cir.
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`R. 15(a)(1).
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`Dated: January 5, 2024
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`Respectfully submitted,
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`By: /s/ Jonathan K. Waldrop
`Name: Jonathan K. Waldrop
`Registration No.: 50,334
`Kasowitz Benson Torres LLP
`333 Twin Dolphin Drive, suite 200
`Redwood Shores, CA 94065
`Telephone: (650) 453-5170
`Title: Attorney at Law
`For Patent Owner
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`CERTIFICATE OF FILING
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`The undersigned hereby certifies that, in addition to being electronically filed
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`through E2E, a true and correct copy of the above-captioned PATENT OWNER’S
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`NOTICE OF APPEAL is being filed with the Director of the U.S. Patent and
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`Trademark office, via Priority Mail, on January 5, 2024, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314-5793
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`The undersigned also hereby certifies that a true and correct copy of the
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`above-captioned PATENT OWNER’S NOTICE OF APPEAL is being filed and the
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`filing fee paid via electronic filing system, CM/ECF, with the Clerk’s Office of the
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`U.S. Court of Appeals for the Federal Circuit on January 5, 2024.
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`Case No. IPR2022-00976
`U.S. Patent No. 9,892,386
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL was served via email (as
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`consented to by counsel) on January 5, 2024 to lead and backup counsel of record
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`for Petitioner as follows:
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`Respectfully submitted,
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`Dated: January 5, 2024
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`By: /s/ Jonathan K. Waldrop
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`Jonathan K. Waldrop
`Registration No.: 50,334
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`**************************************************
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`EXHIBIT A
`EXHIBIT A
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`
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`Trials@uspto.gov
`571.272.7822
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`
` Paper 27
`Date: November 8, 2023
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2022-00976
`Patent 9,892,386 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
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`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-00976
`Patent 9,892,386 B2
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`
`I. INTRODUCTION
`Petitioner, Apple Inc. (“Apple”), filed a Petition requesting an inter
`partes review (“IPR”) of claims 1–3 of U.S. Patent No. 9,892,386 B2
`(Ex. 1001, “the ’386 patent”). Paper 2 (“Pet.”). Patent Owner, Fintiv, Inc.
`(“Fintiv”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking
`into account the arguments presented in Fintiv’s Preliminary Response, we
`determined that the information presented in the Petition established that
`there was a reasonable likelihood that Apple would prevail with respect to
`challenging at least one of claims 1–3 of the ’386 patent as unpatentable.
`Pursuant to 35 U.S.C. § 314, we instituted this IPR on November 15, 2022,
`as to all challenged claims and all grounds raised in the Petition. Paper 9
`(“Dec. on Inst.”).
`During trial, Fintiv filed a Patent Owner Response (Paper 11,
`“PO Resp.”), Apple filed a Reply to the Patent Owner Response (Paper 17,
`“Pet. Reply”), and Fintiv filed a Sur-reply to the Reply (Paper 19, “PO Sur-
`reply”). In addition, an oral argument was held on August 23, 2023, and a
`transcript of the hearing is included in the record. Paper 25 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims
`1–3 of the ’386 patent. For the reasons we identify below, we hold that
`Apple has demonstrated by a preponderance of the evidence that all
`challenged claims are unpatentable.
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`A. Real Party in Interest (“RPI”)
`Apple identifies itself as the only RPI. Pet. 1. Fintiv identifies itself as
`the only RPI. Paper 4 (Fintiv’s Mandatory Notices), 2.1
`B. Related Matters
`The parties indicate that the ’386 patent is the subject of the district
`court case captioned Fintiv, Inc. v. PayPal Holdings, Inc., No. 6:22-cv-
`00288 (W.D. Tex.) (complaint filed Mar. 17, 2022). Pet. 1; Paper 4, 2.
`C. The ’386 Patent
`The ’386 patent, titled “Monetary Transaction System,” issued from
`U.S. Patent Application No. 15/201,152 (“the ’152 application”), filed on
`July 1, 2016. Ex. 1001, codes (54), (21), (22). The ’152 application
`includes an extensive chain of priority that ultimately results in it claiming
`the benefit of U.S. Provisional Patent Application No. 61/493,064 (“the ’064
`application”), filed on June 3, 2011. Id. at code (60), 1:6–19.
`The ’386 patent generally relates to a “monetary transaction system
`for conducting monetary transactions between transaction system
`subscribers and other entities.” Ex. 1001, 1:37–38. Figure 2 of the ’386
`patent, reproduced below, illustrates one embodiment of a monetary
`transaction system. Id. at 2:37–38.
`
`
`1 Fintiv’s Mandatory Notices, filed in accordance with 37 C.F.R. § 42.8, do
`not include page numbers. Paper 4. We consider the Title page as page 1
`and then proceed from there in numerical order.
`3
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`Figure 2 illustrates monetary transaction system 200 that includes first
`subscriber 205 using mobile device 206 that runs mobile wallet application
`207 to conduct indicated transaction 208 with entity 222 or 223, which may
`be a second subscriber, a retail store, or an agent company. Id. at 14:27–64.
`Using mobile device 206 that runs mobile wallet application 207, first
`subscriber 205 sends indicated transaction 208 to transaction processor 216
`in mobile wallet platform 210, which, in turn, may access subscriber profile
`information 211 about the first subscriber, and consult rules engine 220 to
`determine whether the indicated transaction is permissible. Id.
`D. Challenged Claims
`Claims 1–3 are independent claims. Each independent claim is
`directed to “[a] monetary transaction system for conducting monetary
`transactions between subscribers and other entities.” Ex. 1001, 30:54–55,
`32:3–4, 33:34–35. The parties, however, agree that these three independent
`claims differ in how the monetary transaction is conducted (i.e., depositing
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`funds in independent claim 1, withdrawing funds in independent claim 2,
`and transferring funds in independent claim 3). Compare Pet. 6, with
`Prelim. Resp. 7. Independent claim 1 is illustrative of the challenged claims
`and is reproduced below:
`1. A monetary transaction system for conducting
`monetary transactions between subscribers and other entities,
`the system comprising one or more of:
`an integration tier operable to manage mobile wallet
`sessions, the integration tier also including a communication
`application programming interface (API) and other
`communication mechanisms to accept messages from channels;
`notification services operable to send notifications
`through different notification channels including one or more of
`short message peer-to-peer, short-message services and simple
`mail transfer protocol emails;
`business process services operable to implement business
`workflows, including at least one of executing financial
`transactions, auditing financial transactions, invoking third-
`party services, handling errors, and logging platform objects;
`database services operable to store financial transaction
`details, store customer profiles, and manage money containers;
`a payment handler service operable to use APIs of
`different payment processors including one or more APIs of
`banks, credit and debit cards processors, bill payment
`processors;
`a rules engine operable to gather financial transaction
`statistics and use the gathered financial transaction statistics to
`enforce constraints including transaction constraints;
`a security service operable to perform subscriber
`authentication;
`at least one entity that is to be involved in the specified
`transaction, the at least one entity having a profile with the
`monetary transaction system: wherein the at least one entity is
`the agent;
`wherein the monetary transaction system is implemented
`to deposit funds at an agent branch, the funds being deposited
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`by a subscriber at the agent branch using a mobile device
`configured to run a monetary transaction system application,
`the monetary transaction system performing the following
`steps:
`
`receiving a communication message from the
`mobile device over one of a plurality of channels
`connected to the monetary transaction system, the
`communication message being received by an API
`associated with the integration tier of the monetary
`transaction system, the communication message
`indicating that the subscriber desires to deposit a
`specified amount of funds into the subscriber’s account;
`validating the status of the subscriber’s account,
`wherein validating the status of the subscriber’s account
`comprises communicating from the integration tier to the
`database services to query attributes of the subscriber’s
`account;
`committing a pending transaction through the
`business process services, wherein the integration tier
`communicates a transaction commitment request to the
`business process services;
`receiving a confirmation from the business process
`services that the pending transaction has been committed;
`sending, through the notification services, a receipt
`notification to the mobile device; and
`upon receiving a confirmation of commitment
`from the business process services, committing the
`pending transaction to the database services; and
`wherein committing the pending transaction further
`comprises the following steps as orchestrated by the business
`process services:
`ensuring, via the database services, that the
`subscriber has an active account;
`validating, through communication with the
`security services, one or more of a PIN number and an
`access control list;
`applying with the rules engine, velocity rules;
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`creating with the database services a new pending
`transaction history record;
`holding funds from the agent account balance
`using the payment handler,
`loading the funds to the subscriber account using
`the payment handler; and
`updating, using the database services, a pending
`transaction history record to reflect the funds.
`Id. at 30:54–32:2.
`
`E. Asserted Prior Art References
`Apple relies on the prior art references set forth in the table below.
`Exhibit
`No.
`1005
`
`Name2
`
`Dill
`
`Dates
`Reference
`US 2009/0265272 A1 published Oct. 22, 2009;
`filed June 3, 2009
`US 2010/0133334 A1 published June 3, 2010;
`Vadhri
`filed Dec. 3, 2008
`Akashika US 2009/0217047 A1 published Aug. 27, 2009;
`filed Nov. 18, 2008
`Hansen US 2004/0230527 A1 published Nov. 18, 2004;
`filed Apr. 26, 2004
`issued Jan. 4, 2011;
`filed June 7, 2007
`
`Liao
`
`US 7,865,141 B2
`
`1006
`
`1007
`
`1008
`
`1009
`
`
`
`
`F. Asserted Grounds of Unpatentability
`Apple asserts that claims 1–3 of the ’386 patent would have been
`unpatentable based on the grounds set forth in the table below. Pet. 6, 8–
`109.
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
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`7
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`Claims Challenged 35 U.S.C. §
`1, 3
`103(a)3
`2
`103(a)
`
`Reference(s)
`Dill, Vadhri, Akashika, Hansen
`Dill, Vadhri, Akashika, Hansen, Liao
`
`Apple supports its arguments in the Petition with the testimony of Dr. Henry
`Houh. Ex. 1003 (Declaration of Dr. Houh in support of Petition). Apple
`supports its arguments in the Reply with the testimony of Dr. Houh.
`Ex. 1017 (Supplemental Declaration of Dr. Houh in support of Petitioner’s
`Reply). Fintiv supports its arguments in the Patent Owner Response with
`the testimony of Dr. Michael I. Shamos. Ex. 2009 (Declaration of
`Dr. Shamos in support of Patent Owner’s Response).
`
`II. ANALYSIS
`A. Claim Construction
`In this IPR, claim terms are construed using the same claim
`construction standard as in a civil action under 35 U.S.C. § 282(b). See 37
`C.F.R. § 42.100(b) (2021). That is, claim terms generally are construed in
`accordance with their ordinary and customary meaning, as would have been
`understood by a person of ordinary skill in the art, in view of the
`specification and the prosecution history pertaining to the patent at issue.
`See id. The ordinary and customary meaning of a claim term “is its meaning
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’386 patent claims the benefit of the ’064 application,
`which was filed before March 16, 2013, and neither party has argued that the
`provisions of the AIA apply, we apply the pre-AIA version of 35 U.S.C.
`§ 103. See Ex. 1001, codes (21), (22), (60), (63).
`8
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`Patent 9,892,386 B2
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`to the ordinary artisan after reading the entire patent,” and “as of the
`effective filing date of the patent application.” Phillips v. AWH Corp.,
`415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc).
`In its Petition, Apple contends that “no claim term requires
`construction beyond its ordinary and customary meaning.” Pet. 5. Relying
`on the testimony of Dr. Houh, Apple asserts that “[a person of ordinary skill
`in the art] would apply the ordinary and customary meaning to all terms in
`[independent claims 1–3].” Id. (citing Ex. 1003 ¶ 43). In its Patent Owner
`Response, Fintiv contends that, after reading the ’386 patent, a person of
`ordinary skill in the art would have understood that the following claim
`terms have specific meanings: (1) “committing a pending transaction”;
`(2) “at least one of executing financial transactions, auditing financial
`transactions, invoking third-party services, handling errors, and logging
`platform object”; (3) “auditing financial transactions”; (4) “handling
`errors”;4 and (5) “logging platform objects.” PO Resp. 15–24. We address
`each claim term below.
`1. “committing a pending transaction” (independent claims 1–3)
`In its Patent Owner Response, Fintiv proposes that we construe the
`claim term “‘committing’ a pending transaction” as “saving data
`permanently after a set of tentative changes, rather than rolling back the
`tentative changes.” PO Resp. 16, 19 (citing Ex. 2009 ¶ 43). To support its
`
`
`4 Fintiv actually proposes a construction for “error handling,” but that term
`does not appear in the ’386 patent. See PO Resp. 22. Instead, we assume
`that Fintiv intended to propose a construction for “handling errors,” which is
`a term explicitly recited in each of independent claims 1–3. See Pet. Reply
`14–15 n.4 (assuming the same).
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`proposed construction, Fintiv argues that “‘[c]ommitting’ is a concept from
`the database art.” Id. at 16. According to Fintiv, “[committing] does not
`refer to entering into a legal commitment (as in a contract),” but “refers
`instead to finalizing data so that it can be saved permanently.” Id. (citing
`Ex. 2009 ¶ 39).
`Fintiv further contends that the ’386 patent discloses performing
`financial transactions using “Distributed Transaction Processing.” PO Resp.
`16. Relying on extrinsic evidence, Fintiv argues that distributed transaction
`processing such as that disclosed in the ’386 patent requires a transaction
`that includes certain properties, one of which is “[a]tomicity” requiring that
`“[t]he results of the transaction’s execution are either all committed or all
`rolled back.” Id. at 16–17 (quoting Ex. 2010, 3) (citing Ex. 2010, 1;
`Ex. 2009 ¶ 40). Fintiv further argues that “[c]ommitment” in the context of
`distributed transaction processing “is the act that ends a transaction and
`makes permanent all changes to resources specified during that transaction.”
`Id. at 18 (quoting Ex. 2010, 4) (citing Ex. 2009 ¶ 40). Fintiv then asserts
`that the ’386 patent “achieves atomicity through its series of staged
`commitments,” but “[i]f committed data is found to be erroneous,” “the data
`is ‘rolled back.’” Id. at 18–19 (citing Ex. 2009 ¶ 41).
`In its Reply, Apple maintains that the claim term “‘committing’ a
`pending transaction” should be accorded its ordinary and customary
`meaning. Pet. Reply 7–8, 10 (citing Ex. 1017 ¶¶ 11, 18), 12 (citing Ex. 1017
`¶ 11). Apple contends that Fintiv’s proposed construction of “‘committing’
`a pending transaction” is incorrect for the following reasons: (1) apart from
`using the phrase “commit transaction” in a few figures, the terms
`“committing,” “commit,” and “commitment” do not appear in the
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`specification of the ’386 patent outside the claims, and the extrinsic evidence
`relied upon by Fintiv to support its proposed construction is divorced from
`the ’386 patent and its prosecution history; (2) the structure of the
`challenged claims counsels against Fintiv’s proposed construction because
`these claims continually refer to “‘committing’ a pending transaction”
`through the business process services and the database services, without any
`reference to “saving data permanently after a set of tentative changes”; and
`(3) the challenged claims do not require a staged, sequential commitment
`process, but rather merely require “‘committing’ a pending transaction”
`through the business process services and the database services. Id. at 8–12
`(citing Ex. 1001, 3:28–29, 5:32–40, 30:14–23, Figs. 20A–20F; Ex. 2010, 7;
`Ex. 1017 ¶¶ 13–24). At bottom, Apple asserts that it would be improper to
`limit the claim term “‘committing’ a pending transaction” by importing
`additional limitations from the extrinsic evidence introduced by Fintiv. See
`id. at 9.
`In its Sur-reply, Fintiv asserts that Apple fails to meet its burden under
`37 C.F.R. § 42.104(b)(3) by setting forth in the Petition how the claim term
`“committing a pending transaction” should be construed in the context of the
`’386 patent. See PO Sur-reply 10–12. Fintiv does not otherwise address
`Apple’s counter arguments presented in the Reply regarding the proper
`construction of this claim term. See id.
`As an initial matter, we do not agree with Fintiv’s argument that
`Apple was required to propose a construction for the claim term
`“committing a pending transaction” in the Petition, itself. See PO Sur-reply
`10–12. Although 37 C.F.R. §§ 42.104(b)(3)–(4) requires Apple to explain
`how the challenged claims are to be construed and how the construed claims
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`are unpatentable over the asserted prior art references, not all claim terms are
`required to be construed in a petition. This holds true here because it
`appears Apple did not have notice that Fintiv intended to dispute the claim
`term “committing a pending transaction” until Fintiv filed its Patent Owner
`Response in this proceeding. Indeed, the claim term “committing a pending
`transaction” was not at issue during the preliminary phase of this
`proceeding, nor does this claim term appear to be one of the claim terms
`disputed in the related district court case involving the ’386 patent. See Dec.
`on Inst. 16–17; Ex. 2015 (Final Claim Constructions of the Court); cf.
`PO Resp. 24 n.3 (confirming that “[n]one of the claim terms addressed in the
`Claim Construction section of [its] Patent Owner Response were addressed
`in that Order”). Moreover, the U.S. Court of Appeals for the Federal Circuit
`recently stated that, when a new claim construction is advanced by the patent
`owner or the Board after institution, “the petitioner must be afforded a
`reasonable opportunity in reply to present argument and evidence under that
`new construction.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1383
`(Fed. Cir. 2023). Consequently, Apple’s counter arguments in the Reply
`were both timely and proper because they are responsive to Fintiv’s claim
`construction arguments presented for the first time in the Patent Owner
`Response.
`Apple argues that the plain language of the challenged claims is
`controlling as to the ordinary and customary meaning of the claim term
`“committing a pending transaction.” See Pet. Reply 7–12. We agree.
`Independent claim 1 recites, in relevant part, “committing a pending
`transaction through the business process services,” and “upon receiving a
`confirmation of commitment from the business process services, committing
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`the pending transaction to the database services.” Ex. 1001, 31:41–42,
`31:50–52. Independent claim 1 further recites “wherein committing the
`pending transaction further comprises the following [seven] steps as
`orchestrated by the business process services:” (1) “ensuring” step; (2)
`“validating” step; (3) “applying” step; (4) “creating” step; (5) “holding”
`step; (6) “loading” step; and (7) “updating” step. Id. at 31:53–32:2.
`Independent claims 2 and 3 include similar limitations. Id. 33:4–5, 33:13–
`33, 34:31–32, 34:40–59. Based on the plain language of independent claims
`1–3, “committing a pending transaction” includes processing/carrying out a
`transaction through the business process services and the database services
`by performing the aforementioned seven steps. Stated differently, the
`asserted combinations of prior art references would account for “committing
`a pending transaction” as required by each of independent claims 1–3 if they
`collectively teach processing/carrying out a transaction through the business
`process services and the database services by performing the aforementioned
`seven steps. Nothing more is required.
`As Apple correctly notes in its Reply, apart from using the phrase
`“commit transaction” in a few figures, the terms “committing,” “commit,”
`and “commitment” do not appear in the specification of the ’386 patent
`outside the claims. Pet. Reply 8. Although the phrase “commit transaction”
`is used to describe the relationship between the various components
`illustrated in Figures 20B, 20E, and 20F, there is no guidance in the
`corresponding description of these figures as to scope and meaning of this
`phrase. Ex. 1001, 30:14–23. Consequently, we are left with the plain
`language of the challenged claims to ascertain the scope and meaning of
`“committing a pending transaction.”
`
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`
`Although we take into account Exhibit 2010, which is a guide for
`Distributed Transaction Processing, in determining the proper construction
`of the claim term “committing a pending transaction,” we must consider the
`significance of that extrinsic evidence relied on by Fintiv. See PO Resp. 16–
`19. The Federal Circuit has cautioned that, “while extrinsic evidence ‘can
`shed useful light on the relevant art,’ . . . it is less significant than the
`intrinsic record in determining the legally operative meaning of claim
`language.” See Phillips, 415 F.3d at 1317 (quotations omitted). Extrinsic
`evidence is less reliable because, among other reasons, “there is a virtually
`unbounded universe of potential extrinsic evidence of some marginal
`relevance that could be brought to bear on any claim construction question.”
`Id. at 1318. Based on the particular circumstances presented here, we
`determine that Exhibit 2010 is less significant than the intrinsic record and it
`has marginal, if any, relevance that could be brought to bear on the proper
`construction of the claim term “committing a pending transaction.”
`Fintiv’s reliance on Exhibit 2010 is predicated on the notion that
`“committing” is a concept from the database art. See PO Resp. 16. We
`disagree. The ’386 patent is titled “Monetary Transaction System,” and it
`generally relates to a “monetary transaction system for conducting monetary
`transactions between transaction system subscribers and other entities.”
`Ex. 1001, code (54), 1:37–39. Although the challenged claims require
`“committing the pending transaction to the database services” and
`“updating, using the database services, a pending transaction history record
`to reflect the funds,” these limitations, without more, are not enough to
`confine “committing” to the database art. See, e.g., id. at 31:51–52, 32:1–2
`(relevant limitations of independent claim 1). Instead, when considering the
`
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`IPR2022-00976
`Patent 9,892,386 B2
`
`challenged claims as a whole, we view the concept of “committing” as being
`more applicable to art directed to conducting monetary transactions. See Tr.
`9:21–10:4 (Apple’s counsel arguing that “[t]he relevant field of endeavor . . .
`is financial transactions”).
`In addition, Fintiv inextricably links the concept of “committing” in
`the database art to distributed transaction processing. See PO Resp. 16.
`The specification of the ’386 patent, however, makes clear that only some
`embodiments may be practiced in distributed system environments.
`Ex. 1001, 5:24–40. Consequently, we decline to limit the claim term
`“committing a pending transaction” to these embodiments, especially
`without a clear indication in the intrinsic record that the challenged claims
`were meant to be so limiting. See SuperGuide Corp. v. DirecTV Enters.,
`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment
`appearing in the written description may not be read into a claim when the
`claim language is broader than the embodiment.”).
`In summary, upon weighing all the evidence bearing on the
`construction of the claim term “committing a pending transaction,” we apply
`the ordinary and customary meaning of this claim term as dictated by plain
`language of the challenged claims, which is not limited to the database art.
`2. “at least one of executing financial transactions, auditing financial
`transactions, invoking third-party services, handling errors, and
`logging platform object” (independent claims 1–3)
`In the Patent Owner Response, Fintiv contends that the claim term “at
`least one of” together with the use of the word “and” requires “at least one
`instance from each category in the list [to] be present.” PO Resp. 19.
`Consequently, Fintiv asserts that the claim term “at least one of executing
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`IPR2022-00976
`Patent 9,892,386 B2
`
`financial transactions, auditing financial transactions, invoking third-party
`services, handling errors, and logging platform object” requires that the
`business process services be operable to implement “at least one financial
`transaction, handling at least one error, and logging at least one platform
`object.” Id. at 20. In its Reply, Apple contends that we need not address
`Fintiv’s proposed claim construction for this claim term “because Dill
`discloses the business process services performing each of the listed
`functions.” Pet. Reply 19 (citing Pet. 27–31; Ex. 1003 ¶¶ 96–102).
`Based on the fully developed trial record, we need not address Fintiv’s
`proposed construction for the claim term “at least one of executing financial
`transactions, auditing financial transactions, invoking third-party services,
`handling errors, and logging platform object.” See, e.g., Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (noting that “we need only construe terms ‘that are in controversy, and
`only to the extent necessary to resolve the controversy’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Even if we were to agree with Fintiv that this claim term requires the
`business process services to perform at least one financial transaction,
`handle at least one error, and log at least one platform object, Apple provides
`arguments and evidence explaining how the combined teachings of Dill,
`Vadhri, Akashika, and Hansen (with or without the teachings of Liao)
`accounts for each of the claimed functions. Pet. 27–31, 85; Ex. 1003 ¶¶ 96–
`102, 201; see infra Sections II.B.7, 7.e, and 7.f.
`3. “auditing financial transactions” (independent claims 1–3)
`In its Patent Owner Response, Fintiv proposes that we construe the
`claim term “auditing financial transactions” as “performing retrospective
`
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`inspection and verification of financial transactions.” PO Resp. 21–22
`(citing Ex. 2009 ¶¶ 46–48). To support is proposed construction, Fintiv
`introduces a textbook that purportedly sets forth the ordinary and customary
`meaning of auditing as, among other things, an “official examination of
`accounts.” Id. at 21 (quoting Ex. 2011, 35).
`In its Reply, Apple maintains that the claim term “auditing financial
`transactions” should be accorded its ordinary and customary meaning.
`Pet. Reply 13 (citing Ex. 1017 ¶ 25). Apple contends that Fintiv’s proposed
`construction of the claim term “auditing financial transactions” is incorrect
`because this term appears once in the specification of the ’386 patent outside
`the challenged claims, but it is only repeated verbatim without being
`ascribed a specific meaning. Id. at 12–13 (citing Ex. 1001, 13:25–29).
`Apple also argues that Fintiv improperly relies on extrinsic evidence to
`arrive at its proposed construction. Id. at 13. Apple asserts that the word
`“retrospective” does not appear anywhere within the four corners of the
`document that is Exhibit 2011, nor does this document suggest that
`“auditing” must include both “inspection” and “verification.” Id. at 13–14
`(citing Ex. 1017 ¶ 28). Contrary to Fintiv’s proposed construction, Apple
`argues that a person of ordinary skill in the art would have known that
`auditing a financial transaction in an electronic p
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