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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
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`———————
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`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner
`
`
`
`
`———————
`
`IPR2022-00976
`U.S. Patent No. 9,892,386
`
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`
`TABLE OF CONTENTS
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`
`
`I. Introduction ........................................................................................................ 6
`
`II. Patent Owner’s Proposed Claim Constructions Should be Rejected as
`Unduly Narrow and Unsupported… ............................................................. 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`“Committing” a pending transaction should be given its plain and
`ordinary meaning. ...................................................................................... 7
`
`“Auditing Financial Transactions” should be given its plain and
`ordinary meaning. ....................................................................................12
`
`“Handling Errors” should be given its plain and ordinary meaning. ......14
`
`“Logging” platform objects should be given its plain and ordinary
`meaning. ..................................................................................................17
`
`“At least one of executing financial transactions, auditing financial
`transactions, invoking third-party services, handling errors, and
`logging platform objects” should be given its plain and ordinary
`meaning. ..................................................................................................19
`
`III. Grounds 1 and 2 Render Obvious the Challenged Claims. .........................19
`
`A. The Petition demonstrated how the Grounds render obvious the
`challenged claims. ...................................................................................20
`
`1. Dill discloses a subscriber depositing funds into the
`subscriber’s account (limitation [1.10.3]) .......................................20
`
`2. Dill discloses a system that receives a “communication message
`from the mobile device” that “indicat[es] that the subscriber
`desires to deposit a specified amount of funds into the
`subscriber’s account” (limitation [1.10.3]) .....................................22
`
`2
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`3. The combination of Dill and Liao render obvious a system that
`withdraws funds from “an account associated with the
`subscriber” (limitation [2.12.1]) ......................................................23
`
`B. The Grounds Render Obvious the Challenged Claims Under
`Petitioner’s Proposed Constructions .......................................................26
`
`IV. Conclusion .........................................................................................................30
`
`Certificate of Service ..............................................................................................32
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`3
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
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`PETITIONER’S EXHIBIT LIST
`
`APPL-1001 U.S. Patent No. 9,892,386
`APPL-1002 File History of U.S. Patent No. 9,892,386
`APPL-1003 Declaration of Henry Houh, Ph.D.
`APPL-1004 Curriculum Vitae of Henry Houh, Ph.D.
`APPL-1005 U.S. Patent Publication No. 2009/0265272 to Dill et al. (“Dill”)
`APPL-1006 U.S. Patent Publication No. 2010/013334 to Vadhri (“Vadhri”)
`APPL-1007 U.S. Patent Publication No. 2009/0217047 to Akashika et al.
`(“Akashika”)
`APPL-1008 U.S. Patent Publication No. 2004/0230527 to Hansen et al.
`(“Hansen”)
`APPL-1009 U.S. Patent No. 7,865,141 to Liao et al. (“Liao”)
`APPL-1010 Claims Appendix for U.S. Patent No. 9,892,386
`APPL-1011 Comparison chart for claims 1-3 of U.S. Patent No. 9,892,386
`APPL-1012 G. Winfield Treese et al., “Designing Systems for Internet
`Commerce,” Second Edition, Addison-Wesley, 2003 (“Treese”)
`(excerpt)
`APPL-1013 Original Complaint for Patent Infringement, Fintiv, Inc. v. PayPal
`Holdings, Inc., No. 6:22-cv-00288, ECF. No. 1 (W.D. Tex. March
`17, 2022) (Albright)
`APPL-1014 H. Newton, “Newton’s Telecom Dictionary,” 17th Edition, CMP
`Books, 2001 (excerpt)
`APPL-1015 T. Thai et al., “.Net Framework Essentials,” Third Edition,
`O’Reilly & Associates, Inc., 2003 (excerpt)
`United States District Court – National Judicial Caseload Profile
`(June 2022), available at:
`https://www.uscourts.gov/statistics/table/na/federal-court-
`management-statistics/2022/06/30-2
`
`APPL-1016
`
`
`4
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`Supplemental Declaration of Henry Houh, Ph.D.
`
`Deposition of Michael Shamos, Ph.D. (May 9, 2023)
`
`U.S. Patent No. 9,147, 184
`
`APPL-1017
`(NEW)
`APPL-1018
`(NEW)
`APPL-1019
`(NEW)
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`
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`5
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`
`
`I.
`
`INTRODUCTION
`Patent Owner’s Response (“POR”) attempts to overcome the Petition’s two
`
`grounds of unpatentability by proposing narrow constructions of several claim
`
`terms and mischaracterizing disclosures of the Dill reference. Both arguments are
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`flawed and fail to undermine the Petition’s grounds of unpatentability. First, Patent
`
`Owner’s proposed constructions are unduly narrow and unsupported by the
`
`intrinsic or extrinsic record. See Section II, below. Arguments premised on these
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`constructions, therefore, must fail. See Section III.B, below. Second, Patent
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`Owner’s narrow interpretation of the Dill reference is not supported by the
`
`reference itself and is inconsistent with how a POSITA would have understood its
`
`disclosure. See Section III.A, below. As demonstrated in the Petition, and
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`confirmed below, the asserted prior art renders the challenged claims obvious.
`
`II.
`
`PATENT OWNER’S PROPOSED CLAIM CONSTRUCTIONS
`SHOULD BE REJECTED AS UNDULY NARROW AND
`UNSUPPORTED.
`The Petition asserted that all terms in the ’386 patent should be given their
`
`plain and ordinary meaning. Pet. 5.1 Patent Owner, in an attempt to bolster its prior
`
`
`1 Petitioner notes that the term “payment handler” / “payment handler service”
`
`recited in the challenged claims was found to be a means-plus-function limitation
`
`without corresponding structure, and therefore indefinite under 35 U.S.C. § 112(f),
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`6
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`art arguments, proposes constructions of certain terms recited in the challenged
`
`claims. Patent Owner’s constructions should be rejected because they are unduly
`
`narrow, attempt to rewrite the claims to add unsupported limitations, and
`
`incorporate features that are not disclosed by the ’386 patent.
`
`A.
`
`“Committing” a pending transaction should be given its plain and
`ordinary meaning.
`The Board should reject Patent Owner’s proposed construction of
`
`“committing” a pending transaction because it adds limitations that are not recited
`
`in the claims and attempts to import limitations that are not disclosed in the ’386
`
`patent. Patent Owner assumes that every instance of “committing” in the claims “is
`
`a concept from the database art.” POR 16; see also POR 19 n.2 (analogizing the
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`recited “committing” to an SQL commit message). Patent Owner further assumes
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`that the financial transactions of the ’386 patent are performed using “Distributed
`
`Transaction Processing.” POR 16. Patent Owner combines these assumptions to
`
`propose that “committing” a pending transaction be construed as “saving data
`
`permanently after a set of tentative changes, rather than rolling back the tentative
`
`changes.” POR 16. Patent Owner’s construction is wrong for several reasons, and
`
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`by the Western District of Texas in Fintiv, Inc. v. PayPal Holdings, Inc., Case No.
`
`6:22-cv-00288-ADA. Ex.2015, 2. In this IPR, neither party has argued that this
`
`term is a means-plus-function limitation.
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`7
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`the term should be given its plain and ordinary meaning. APPL-1017, ¶11.
`
`First, the claims do not limit “committing” a pending transaction to “saving
`
`data permanently after a set of tentative changes, rather than rolling back the
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`tentative changes.” APPL-1017, ¶12. The terms “committing,” “commit,” and
`
`“commitment” do not appear in the specification, and the phrase “commit
`
`transaction” appears only in several drawings (e.g., Figure 20B)2 without any
`
`corresponding explanation in the specification. See, e.g., APPL-1001, 30:14-23
`
`(brief explanation of Figures 20A-20F); APPL-1017, ¶13. Further, the terms
`
`“permanent” and “tentative” do not appear in the claims, or the specification for
`
`that matter. See APPL-1001; APPL-1017, ¶14.
`
`The “saving data permanently after a set of tentative changes” portion of
`
`Patent Owner’s proposed construction is imported from Ex.2010. POR 16-18;
`
`APPL-1017, ¶15. This extrinsic document, however, is not cited in the ’386 patent
`
`or its file history. APPL-1017, ¶17. Nevertheless, Patent Owner relies on this
`
`document due to its assumption that financial transactions of the ’386 patent are
`
`performed using “Distributed Transaction Processing.” POR 16. But the ’386
`
`
`2 Figs. 20A-20F, 21A-21I, and 22A-22J and the corresponding language in the
`
`specification were added during prosecution of the ’386 Patent presumably in an
`
`attempt to overcome a § 101 rejection. APPL-1002, 1380-1382, 1395-1400.
`
`8
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`patent does not disclose using “Distributed Transaction Processing.” APPL-1017,
`
`¶¶16-17. At best, the ’386 patent states that its embodiments “may also be
`
`practiced in distributed system environments.” APPL-1001, 5:32-40. This passing
`
`mention of a distributed environment does not require or even suggest that the
`
`financial transactions of the ’386 patent are performed using a specific form of
`
`distributed transaction processing described in Ex.2010. APPL-1017, ¶17.
`
`The “rolling back” portion of Patent Owner’s proposed construction appears
`
`to come from Figs. 20C and 20E. POR 19; APPL-1017, ¶18. But these figures
`
`illustrate “embodiments” of communications within a monetary transaction system.
`
`APPL-1001, 3:28-29. They do not support construing the claims to recite “rather
`
`than rolling back” tentative changes. APPL-1017, ¶18.
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`There is no indication that the patentee intended the claims to be limited as
`
`Patent Owner suggests and it is improper to import these additional limitations
`
`from extrinsic documents, such as Ex.2010, and the figures into the claims. APPL-
`
`1017, ¶18; see Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285,
`
`1287 (Fed. Cir. 2021) (“If the meaning of a claim term is clear from the intrinsic
`
`evidence, there is no reason to resort to extrinsic evidence.”); Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]hile 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.’”); EPOS
`
`9
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (“[I]t is
`
`improper to read limitations from a preferred embodiment described in the
`
`specification—even if it is the only embodiment—into the claims absent a clear
`
`indication in the intrinsic record that the patentee intended the claims to be so
`
`limited.”). The term “committing” a pending transaction should be given its plain
`
`and ordinary meaning. APPL-1017, ¶¶11, 18.
`
`Second, the structure of the Challenged Claims also counsels against Patent
`
`Owner’s rigid proposed construction. APPL-1017, ¶19. Limitation [1.10.5], where
`
`the term “committing” is introduced, recites “committing” a pending transaction
`
`through the business process services. The business process services, in limitation
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`[1.10.7], returns a “confirmation…that the pending transaction has been
`
`committed.” At this point, Patent Owner’s construction would require “saving data
`
`permanently after a set of tentative changes.”3 APPL-1017, ¶¶19-20. And,
`
`
`3 On cross-examination, Patent Owner’s expert suggested that “committing” a
`
`pending transaction results in permanently saving data to a disk drive. APPL-1018,
`
`44:18-25. But Patent Owner’s expert could not support this testimony with a
`
`citation to the ’386 patent. APPL-1018, 50:4-10. This is not surprising because the
`
`expert’s testimony is unsupported by the ’386 patent and contradicted by the
`
`structure of the claims themselves. APPL-1017, ¶20 n.1.
`
`10
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`consistent with Patent Owner’s reliance on Ex.2010, limitation [1.10.7] would also
`
`end the transaction because Ex.2010 states that “commitment is the act that ends a
`
`transaction.” APPL-1017, ¶20; Ex.2010, 7. But that is not what happens in the
`
`claim. APPL-1017, ¶20.
`
`Instead, limitations [1.11.1]-[1.11.8] recite how a pending transaction is
`
`committed by the business process services, and limitation [1.10.9] continues to
`
`refer to “the pending transaction.” In other words, the transaction remains pending;
`
`changes made by the transaction are still tentative. APPL-1017, ¶21. These
`
`changes have not yet been permanently saved, as Patent Owner’s construction
`
`would require. APPL-1017, ¶21. The transaction continues to be referred to as a
`
`pending transaction until the end of the claim where, in limitation [1.10.9], the
`
`pending transaction is again committed, this time to the database services. APPL-
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`1017, ¶21. The structure of the claims does not support Patent Owner’s proposed
`
`construction, which is another reason why the term should be given its plain and
`
`ordinary meaning. APPL-1017, ¶21.
`
`Third, the Board should also reject Patent Owner’s implicit construction that
`
`“committing” a pending transaction requires a “staged commitment process, where
`
`the transaction is sequentially committed through various layers of the monetary
`
`transaction system during the processing of the transaction.” POR 9, 33-38.
`
`According to Patent Owner, the pending transaction of Claim 1 is committed
`
`11
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`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`in stages, i.e., sequentially committed through various communication tiers. POR
`
`9-10, 33. The claims, however, do not recite a staged, sequential commitment
`
`process, as Patent Owner suggests. APPL-1017, ¶¶22-23. The claims merely
`
`require “committing” a pending transaction between the business process services
`
`and the database services. Limitations [1.10.5], [1.10.9], [1.11.1]; APPL-1017,
`
`¶23. There is nothing staged or sequential about this process. APPL-1017, ¶23.
`
`Moreover, Patent Owner does not point to the specification to support its
`
`position. It relies instead on Figs. 20, 21, and 22 as providing alleged examples of
`
`the stated commitment process. POR 9-11. The figures, however, do not limit the
`
`claims and the specification contains only a cursory description of the figures
`
`without discussion or support for a staged commitment process. APPL-1017, ¶24.
`
`At best, the figures show the communication of a commitment request through
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`various tiers. Again, there is nothing staged, or sequential about this process.
`
`APPL-1017, ¶24. The figures also do not help Patent Owner’s case.
`
`The term should be given its plain and ordinary meaning. APPL-1017, ¶11.
`
`B.
`
`“Auditing Financial Transactions” should be given its plain and
`ordinary meaning.
`The Board should also reject Patent Owner’s proposed construction of the
`
`phrase “auditing financial transactions.” Neither the claims nor the specification of
`
`the ’386 patent define or describe the phrase aside from repeating it verbatim as
`
`recited in the claims. See APPL-1001, 13:25-29 (“Business process services 104
`
`12
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`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`are configured to implement business workflows, including…auditing financial
`
`transactions….”). As such, Patent Owner relies on an extrinsic document, that is
`
`not cited or referenced in the ’386 patent, to propose construing the phrase to mean
`
`“performing retrospective inspection and verification of financial transactions.”
`
`POR 21-22. But this construction is unsupported by the ’386 patent and the
`
`extrinsic document Patent Owner relies on. The phrase “auditing financial
`
`transactions” should have its plain and ordinary meaning. APPL-1017, ¶25.
`
`The claims do not support Patent Owner’s proposed construction. APPL-
`
`1017, ¶26. The phrase “auditing financial transactions” is recited only once in each
`
`of the Challenged Claims. APPL-1017, ¶26. None of these instances requires or
`
`suggests a “retrospective inspection” or “retrospective…verification.” APPL-1017,
`
`¶26; see also APPL-1018, 96:4-14 (Patent Owner’s expert testifying that the word
`
`“retrospective” modifies both “inspection” and “verification.”). The specification,
`
`short of repeating the phase once (APPL-1001, 13:25-29), does not ascribe any
`
`meaning to it either. APPL-1017, ¶27. In fact, “retrospective,” “inspection,” and
`
`“inspect” do not appear in the specification at all. APPL-1017, ¶27.
`
`Patent Owner therefore improperly relies on an extrinsic document,
`
`Ex.2011, that is not cited or referenced in the patent, to arrive at its proposed
`
`construction. APPL-1017, ¶28; Seabed Geosolutions, 8 F.4th at 1287; Phillips, 415
`
`F.3d at 1317. But Patent Owner’s construction is not even supported by this
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`13
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`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`document. APPL-1017, ¶28. The word “retrospective” does not appear in the
`
`document and none of the document’s cited portions state or suggest that an audit
`
`must be “retrospective.” APPL-1017, ¶28. In addition, Ex.2011 does not even
`
`suggest that “auditing” must include both an “inspection” and a “verification” as
`
`Patent Owner suggests. APPL-1017, ¶28. On the contrary, a POSITA would have
`
`known that an audit of a financial transaction in an electronic payment system may
`
`not be retrospective at all and could be performed as part of a transaction before it
`
`is completed. APPL-1017, ¶¶29-30; see, e.g., APPL-1019 (U.S. Patent No.
`
`9,147,184) at 5:27-34 (“Payment authorization may involve an audit, which
`
`may include comparing data from one or more of a buyer-based audit, seller-based
`
`audit or an audit based upon a third party operating the central/integrated
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`processor. The results of the audit can be provided to the selected networks
`
`and used, for example as indication that the transaction can go forward (e.g.,
`
`validation regarding the transaction amount and source).”).
`
`The term should be given its plain and ordinary meaning. APPL-1017, ¶31.
`
`C.
`
`“Handling Errors”4 should be given its plain and ordinary
`meaning.
`The Board should reject Patent Owner’s proposed construction of the phrase
`
`
`4 Patent Owner’s Response proposes a construction for the phrase “error handling”
`
`but that phrase does not appear in the ’386 patent claims or specification. Petitioner
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`14
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`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`error handling for the same reason discussed above for “auditing financial
`
`transactions.” Neither the claims nor the specification of the ’386 patent ascribe
`
`meaning to the phrase “handling errors,” other than repeating it as the term is
`
`recited in the claims. APPL-1001, 13:25-29 (“Business process services 104 are
`
`configured to implement business workflows, including…handling errors….”).
`
`Patent Owner’s reliance on an uncited extrinsic document to construe the phrase to
`
`mean “procedures for responding to and recovering from errors” (POR 22) is also
`
`unsupported by the’386 patent or the extrinsic document itself. The phrase should
`
`have its plain and ordinary meaning. APPL-1017, ¶32.
`
`The phrase, as recited in the claims, does not indicate or suggest that
`
`handling errors requires “responding” to or “recovering” from errors. APPL-1017,
`
`¶33. The phrase appears only once in the specification (APPL-1001, 13:25-29)
`
`without any explanation, and the words “respond,” “responding,” “recover,” and
`
`“recovering” do not appear in the specification at all. APPL-1017, ¶34.
`
`Patent Owner appears to be analogizing the phrase “handling errors” to the
`
`“rollback process” depicted in Fig. 20C of the ’386 patent. Ex.2009, ¶51; APPL-
`
`1018, 107:18-108:11; APPL-1017, ¶35. But this argument fails for at least two
`
`
`presumes that Patent Owner intended to propose a construction for the phrase
`
`“handling errors” which is recited in the claims.
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`15
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`reasons. First, neither Fig. 20C nor the specification require that the rollback
`
`process must be part of “handling errors” and, even if it did, neither suggests that
`
`“handling errors” must include “recovering” from the errors. APPL-1017, ¶35.
`
`Second, Patent Owner has already argued, without support, that the “rollback
`
`process” is part of the “committing” a pending transaction process. POR 16-19;
`
`Section II.A; APPL-1017, ¶35. It does not explain how or why the same rollback
`
`process might be involved in two separate limitations. APPL-1017, ¶35.
`
`Patent Owner’s reliance on Ex.2012 is similarly unavailing. As an initial
`
`matter, this document is a VBScript Programmer’s Reference which—unlike
`
`technical dictionaries—should not be given much weight in claim construction.
`
`APPL-1017, ¶36; See Seabed Geosolutions, 8 F.4th at 1287 (“If the meaning of a
`
`claim term is clear from the intrinsic evidence, there is no reason to resort to
`
`extrinsic evidence.”); Phillips, 415 F.3d at 1317 (“[W]hile 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.’”). In any
`
`case, the document does not support Patent Owner’s construction because it does
`
`not indicate that handling errors requires “recovering” from the error, as Patent
`
`Owner suggests. APPL-1017, ¶37. Indeed, Patent Owner’s expert acknowledged
`
`that Ex.2012 does not support the “recovering” component of Patent Owner’s
`
`proposed construction. APPL-1018, 108:12-109:2. As a result, his testimony on
`
`16
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`
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`this matter is entitled to little or no weight. 37 C.F.R. §42.65(a); Xerox Corp. v.
`
`Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential)
`
`(expert testimony that does not cite to supporting evidence is “conclusory and
`
`unsupported” and “entitled to little weight.”) (citing 37 C.F.R. 42.65(a)).
`
`The term should be given its plain and ordinary meaning. APPL-1017, ¶38.
`
`D.
`
`“Logging” platform objects should be given its plain and ordinary
`meaning.
`The Board should also reject Patent Owner’s proposed construction of the
`
`phrase “logging” platform objects. The claims and specification do not attribute a
`
`special functionality or meaning to the term “logging,” which is used in the claims
`
`consistent with its plain and ordinary meaning. It is therefore improper for Patent
`
`Owner to go outside the four-corners of the ’386 patent and rely on extrinsic
`
`evidence to construe the term as “storing or recording platform objects in a log.”
`
`Seabed Geosolutions, 8 F.4th at 1287; Phillips, 415 F.3d at 1317. The term should
`
`be given its plain and ordinary meaning. APPL-1017, ¶39.
`
`The claims do not require that platform objects be logged “in a log.” APPL-
`
`1017, ¶40. The specification similarly does not require platform objects to be
`
`stored or recorded “in a log.” APPL-1017, ¶41. Patent Owner’s specification
`
`citations are not dispositive. First, none of these examples are provided in
`
`connection with platform objects; they are made with reference to transactions.
`
`APPL-1017, ¶41. Second, there are numerous instances where the ’386 patent
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`17
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`merely states that one of its components “logs the transaction” without more. See
`
`APPL-1001, 17:1-5, 17:59-62, 18:22-25, 18:50-53, 19:10-13, 19:28-32, 19:66-
`
`20:4, 20:46-50, 21:26-30, 21:44-49, 22:14-19, 22:38-43, 22:56-60, 23:41-44, 24:9-
`
`11, 24:54-47, 25:14-18, 26:20-23; 26:51-56, 27:22-25, 28:3-6 (all describing an
`
`action of “logs the transaction” without specifying that the transaction is logged “in
`
`a log”); APPL-1017, ¶41. Even if one of these cited embodiments were found to
`
`log information “in a log,” it would nevertheless be improper to limit the claims to
`
`that embodiment. EPOS Techs. Ltd., 766 F.3d at 1341.
`
`While logging may involve logging “in a log,” as Patent Owner suggest, it is
`
`certainly not required by the claims or the specification. APPL-1017, ¶42. It is
`
`therefore improper for Patent Owner to rely on an extrinsic document (Ex.2013) to
`
`add unnecessary limitations to its proposed construction especially when that term
`
`is used in the ’386 patent consistent with its plain and ordinary meaning. See
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]hile 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.’”); APPL-1017, ¶43. The Board should reject Patent Owner’s proposed
`
`construction and give the term its plain and ordinary meaning. APPL-1017, ¶43.
`
`18
`
`
`
`E.
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`“At least one of executing financial transactions, auditing
`financial transactions, invoking third-party services, handling
`errors, and logging platform objects” should be given its plain
`and ordinary meaning.
`Patent Owner asserts that the phrase “at least one of” in limitation [1.3]
`
`requires the business process services to perform each of “executing financial
`
`transactions, auditing financial transactions, invoking third-party services, handling
`
`errors, and logging platform objects.” POR 19-20 (citing SuperGuide Corp. v.
`
`DirectTV Enters., 358 F.3d 870 (Fed. Cir. 2004)). It is unclear whether
`
`SuperGuide applies to the Challenged Claims. But, as demonstrated in the Petition,
`
`the Board need not address this issue because Dill discloses the business process
`
`services performing each of the listed functions. Pet. 27-31; APPL-1003, ¶¶96-102.
`
`III. GROUNDS 1 AND 2 RENDER OBVIOUS THE CHALLENGED
`CLAIMS.
`Patent Owner’s Response presents two types of substantive challenges to the
`
`Petition: (1) those based on an unduly restrictive reading of the Dill reference, and
`
`(2) those based exclusively on its improper proposed claim constructions. Patent
`
`Owner’s challenges are wrong for several reasons. First, Patent Owner’s arguments
`
`interpret Dill as only disclosing transactions between two unrelated parties and, on
`
`this incorrect basis, assert that Dill does not disclose that a party conducts deposit
`
`or withdraw transactions to or from her own account. But Dill’s disclosure is much
`
`broader, and a POSITA would have understood, as demonstrated in the Petition,
`
`19
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`that Dill encompasses such single party transactions. Second, Patent Owner’s
`
`challenge to the Petition’s analysis of “committing” a pending transaction,
`
`“auditing financial transactions,” “handling errors,” and “logging” platform objects
`
`is based only on its proposed constructions. These proposed constructions are
`
`improper (Section II) and Patent Owner’s arguments must fail.
`
`A. The Petition demonstrated how the Grounds render obvious the
`challenged claims.
`Dill discloses a subscriber depositing funds into the
`1.
`subscriber’s account (limitation [1.10.3])
`Dill discloses that a subscriber deposits funds into the subscriber’s (her own)
`
`account. Pet. 48, 56-57. Dill’s money transfer facilitation system “deliver[s] funds
`
`to a funds withholding system” and these funds are then transferred to an account.
`
`Pet. 48; APPL-1005, ¶¶3, 101. During this process, the “sender deposits funds in
`
`her account.” Pet. 57; APPL-1005, ¶101. Dill teaches that its system is not limited
`
`to “sender” and “receiver” transactions and, instead, any entity and/or device
`
`associated with that entity “can alternately act as sender or recipient.” Pet. 48;
`
`APPL-1005, ¶52. Patent Owner, nevertheless, incorrectly assumes that Dill has
`
`separate transactions where a “party that acts as a sender in one transaction can
`
`alternatively act as a recipient in another (different) transaction.” POR 28. Then,
`
`based on this incorrect assumption, Patent Owner argues that Dill does not disclose
`
`that “the same party can act as both sender and receiver in the same transaction.”
`
`20
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`POR 28; see APPL-1018, 135:16-136:14 (Patent Owner’s expert testifying that an
`
`entity can only be a sender or a receiver for the entire transaction.). This reading of
`
`Dill is overly narrow and not supported.
`
`Dill discloses that “the names sender and recipient are used only to illustrate
`
`a particular entity’s and/or device’s function at a given time.” Pet. 48; APPL-1005,
`
`¶52. This language expressly relates to “time”; not a “transaction,” contrary to
`
`Patent Owner’s assumption. Moreover, the names sender and recipient in Dill “are
`
`not intended to imply any limitations on the functions that can be performed by a
`
`given entity and/or device.” APPL-1005, ¶52. Any entity and/or device associated
`
`with that entity “can alternately act as sender or recipient.” Pet. 48; APPL-1005,
`
`¶52. Taken together, an entity and/or device associated with that entity may act as
`
`a “sender” at a first time in the transaction and a “recipient” at a second time in
`
`the same transaction.
`
`Patent Owner attempts to support its argument by pointing to Dill’s
`
`paragraph 57 that describes an embodiment where Dill provides a “structured
`
`settlement between unrelated entities.” POR 28. This, according to Patent Owner,
`
`shows that Dill “precludes any interpretation where the ‘sender’ and ‘receiver’ are
`
`‘one and the same.’” POR 28. Patent Owner is wrong. The Petition does not rely
`
`on the embodiment in Dill’s paragraph 57 to disclose limitation [1.9.1]. Pet. 48.
`
`Even so, paragraph 57 provides an example of where the sending mobile wallet
`
`21
`
`
`
`Petitioner’s Reply to Patent Owner’s Response
`IPR2022-00976 (U.S. Patent No. 9,892,386)
`125 and receiving mobile wallet 130 may be unrelated entities. See APPL-1005,
`
`¶57 (“to provide a structured settlement between unrelated entities such as the
`
`sending mobile wallet 125 and receiving mobile wallet 130, or between the
`
`sending cash retail location and receiving mobile wallet 130.”). Paragraph 57 does
`
`not mandate that the sender and the recipient be “unrelated entitles” in every
`
`situation. Nor does paragraph 57 require that all instances of the sending mobile
`
`wallet and receiving mobile wallet be “unrelated entities,” as Patent Owner alleges.
`
`As presented in the Petition, Dill discloses a subscriber depositing funds into
`
`the subscriber’s account.
`
`2.
`
`Dill discloses a system that receives a “communication
`message from the mobile device” that “indicat[es] that the
`subscriber desires to deposit a specified amount of funds
`into the subscriber’s account” (limitation [1.10.3])
`Dill discloses that the sender’s mobile wallet on the sender’s mobile device
`
`initiates a transaction by sending a request to the mobile application. Pet. 56;
`
`APPL-1005, Fig. 5 (step 515), ¶77. This request specifies the amount of the desired
`
`transaction. Pet. 56; APPL-1005, ¶77. During this process, the “sender deposits
`
`funds in her account.” Pet. 57; APPL-1005, ¶101. Patent Owner ignores these
`
`teachings and argues that Dill does not disclose “the claimed communication from
`
`the subscriber’s mobile device” that indicates that the subscriber desires to deposit
`
`funds into their account. POR 30. According t
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