Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: January 4, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOZIDO CORFIRE-KOREA, LTD.,
`Patent Owner.
`
`
`IPR2022-01149
`Patent 10,223,692 B2
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2022-01149
`Patent 10,223,692 B2
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`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–13 of U.S. Patent No. 10,223,692 B2 (Ex. 1001,
`“the ’692 patent”). Paper 2 (“Pet.”). Mozido Corfire-Korea Ltd. (“Patent
`Owner”) filed a Preliminary Response opposing institution. Paper 6
`(“Prelim. Resp.”).
`Under 35 U.S.C. §§ 6(b)(4), 314 and 37 C.F.R. § 42.4(a), we have
`authority to institute an inter partes review if “the information presented in
`the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).
`After considering the Petition, Preliminary Response, and other
`evidence of record, we determine that Petitioner has demonstrated a
`reasonable likelihood of showing the unpatentability of at least one of the
`challenged claims. Thus, we institute an inter partes review on all
`challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a).
`Specifically, we grant Petitioner’s request to institute an inter partes review
`of claims 1–13 of the ’692 patent.
`
`
`A.
`
`II. BACKGROUND
`Real Parties-in-Interest
`As required by 37 C.F.R. § 42.8(b)(1), each party identifies the real
`party-in-interest. Petitioner identifies Apple Inc. as a real party-in-interest.
`Pet. 1. Patent Owner identifies Fintiv, Inc. as a real party-in-interest.
`Paper 4, 1.
`
`
`2
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`IPR2022-01149
`Patent 10,223,692 B2
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`B.
`
`Related Proceedings
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner and Patent Owner
`identify the judicial or administrative matters that would affect or be affected
`by a decision in this proceeding. Petitioner states it is unaware of any
`related matters. Pet. 1. Patent Owner states the ’692 patent is the subject of
`Fintiv, Inc. v. Paypal Holdings, Inc., Civil Act. 6:22-cv-00288 (W.D. Tex.
`March 17, 2022). Paper 4, 1.
`
`C. Overview of the ’692 Patent (Ex. 1001)
`The ’692 patent is titled “Method for Setting Temporary Payment
`Card and Mobile Device Applying the Same.” Ex. 1001, code (54).
`The ’692 patent describes “a method for setting a mobile payment card to be
`used for payment and a mobile device applying the same.” Id. at 1:16–20.
`The ’692 patent states that, “[w]hen the user temporarily uses another
`mobile payment card to make a payment (for example, for one-time
`payment), the user should recover the original main payment card after
`finishing the payment.” Id. at 1:32–35. However, “the operation of
`recovering the original main payment card may be a cumbersome procedure
`and may cause inconvenience to the user” and “changing the main payment
`card to another payment card may also cause inconvenience.” Id. at 1:35–
`43. The ’692 patent’s method sets a temporary payment card so “a user can
`change the temporary payment card more easily, swiftly, naturally,
`amusingly, and intuitively.” Id. at 1:49–57.
`
`3
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`IPR2022-01149
`Patent 10,223,692 B2
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`
`Figures 10 and 11 of the ’692 patent are reproduced below.
`
`
`
`
`Figure 10 illustrates a mobile device which displays a payment card
`selection screen of a mobile wallet application and a list of mobile payment
`cards. Ex. 1001, 4:36–40. Figure 11 illustrates that the user may select a
`mobile payment card (i.e., “ABC PREMIER”) from the mobile payment
`card list to use as a temporary payment card by sliding up the mobile
`payment card. Id. at 4:41–48.
`The ’692 patent states that the “payment by the temporary payment
`card should be made within a ‘payable time’” and, “when the payable time
`passes, the setting of the temporary payment card is reset and a payment is
`made by a main payment card.” Ex. 1001, 4:62–65.
`Figures 15 and 16 of the ’692 patent are reproduced below.
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`Figure 15 illustrates a payment card selection screen showing when a mobile
`payment card is slid up by the user and is selected/set as a temporary
`payment card and Figure 16 illustrates the same screen after 10 seconds
`pass. Ex. 1001, 3:36–40. In Figure 15, the screen also displays a payable
`time (e.g., 30 seconds) while the temporary card is active. Id. at 4:66–5:2,
`5:42–43. As the time decreases, Figure 16 shows the remaining payable
`time (i.e., 20 seconds) and the temporary card (ABC PREMIER) slowly
`slides down as the payable time passes and returns to the original position.
`Id. at 5:53–58.
`
`
`5
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`IPR2022-01149
`Patent 10,223,692 B2
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`D.
`
`Illustrative Claim
`As mentioned above, Petitioner challenges claims 1–13 of the ’692
`patent. Independent claim 1 is reproduced below. 1 Ex. 1001, 7:41–8:6.
`1.
`[1.0] A method for setting a temporary payment card,
`comprising:
`[1.1] displaying a list of mobile payment cards at a first
`portion of a touch screen interface;
`[1.2] receiving, through the touch screen interface, a user
`input selecting a mobile payment card from the list of mobile
`payment card;
`[1.3] detecting the user input sliding the mobile payment
`card from the first portion of the touch screen interface to a
`second portion of the touch screen interface;
`[1.4] based upon the user input sliding the mobile
`payment card, setting, as a temporary card, the mobile payment
`card, wherein while the mobile payment card is set as the
`temporary card, payments will be made by the mobile payment
`card;
`
`[1.5] displaying a numerical indicator of a payable time,
`wherein the numerical indicator initially indicates a first
`remaining time amount;
`[1.6.1] simultaneously:
`[1.6.2] moving the mobile payment card a first
`distance from the first portion of the screen towards a
`second portion of the touch screen, and
`[1.6.3] decrementing the numerical indicator a first
`difference to display a remaining payable time,
`wherein:
`
`
`1 For ease of reference, we use Petitioner’s claim recitation numbering
`scheme as indicated by the bracketed numbers.
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`IPR2022-01149
`Patent 10,223,692 B2
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`
`[1.7.1] the first distance is proportional to an
`amount of payable time that has passed, and
`[1.7.2] the first difference is proportional to
`the amount of payable time that has passed: and
`[1.8] resetting the setting of the temporary payment card
`when the payable time passes such that the mobile payment
`card is no longer set as the temporary card and payments are
`made through a main card.
`
`
`E.
`
`Evidence and Asserted Grounds
`Petitioner relies upon the following evidence:
`(1) US 2009/0288012 A1, published November 19, 2009 (“Hertel,”
`Ex. 1005);
`(2) US 2009/0037326 A1, published February 5, 2009 (“Chitti,”
`Ex. 1006);
`(3) US 8,296,686 B1, issued October 23, 2012 (“Tedesco,” Ex. 1007);
`(4) US 2012/0123937 A1, published May 17, 2012 (“Spodak,”
`Ex. 1008);
`(5) US 7,967,196 B1, issued June 28, 2011 (“Bierbaum,” Ex. 1010);
`(6) US 2012/0197743 A1, published August 2, 2012 (“Grigg,”
`Ex. 1012);
`(7) US 2009/0183120 A1, published July 16, 2009 (“Ording,”
`Ex. 1016); and
`(8) US 9,116,596 B2, issued August 25, 2015 (“Roman,” Ex. 1017).
`Petitioner submits a declaration from Dr. Henry Houh (Ex. 1003).
`Patent Owner submits a declaration from Michael I. Shamos, Ph.D
`(Ex. 2001).
`
`7
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`IPR2022-01149
`Patent 10,223,692 B2
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`
`2
`
`3
`
`4
`
`5
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`5, 6, 10
`
`7
`
`8
`
`9
`
`Petitioner challenges the patentability of the ʼ692 patent claims based
`on the following grounds (Pet. 13):
`Ground Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
`Hertel, Chitti,
`1
`1–4, 11–13
`103
`Spodak, Tedesco
`Hertel, Chitti,
`Spodak, Tedesco,
`Bierbaum
`Hertel, Chitti,
`Spodak, Tedesco,
`Bierbaum, Grigg
`Hertel, Chitti,
`Spodak, Tedesco,
`Ording
`Hertel, Chitti,
`Spodak, Tedesco,
`Roman
`
`103
`
`103
`
`103
`
`103
`
`
`
`III. ANALYSIS
`
`A.
`
`Legal Standards
`Petitioner bears the burden of persuasion to prove unpatentability, by
`a preponderance of the evidence, of the claims challenged in the Petition.
`
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’692 patent claims priority to an application filed after
`this date, our citations to 35 U.S.C. § 103 in this Decision are to the post-
`AIA version. Our decision is not impacted, however, by which version of
`the statute applies.
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`35 U.S.C. § 316(e). Except in limited circumstances not present here, this
`burden of persuasion does not shift to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The
`Board may authorize an inter partes review if we determine that the
`information presented in the Petition and Patent Owner’s Preliminary
`Response shows that there is a reasonable likelihood that Petitioner will
`prevail with respect to at least one of the claims challenged in the Petition.
`35 U.S.C. § 314(a).
`As mentioned above, Petitioner’s challenges are based on
`obviousness. Pet. 13. A claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). The question of obviousness is resolved based on
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in the record,
`objective evidence of nonobviousness. 3 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`
`B.
`
`
`3 At this stage of the proceeding, Patent Owner has not directed us to any
`objective evidence of non-obviousness. See Prelim. Resp.
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`9
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`IPR2022-01149
`Patent 10,223,692 B2
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`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” Id.
`Petitioner states a person of ordinary skill in the art would have had
`a working knowledge of mobile payment techniques pertinent
`to the ’692 Patent, including software development in the field
`of mobile payment techniques. Such [person of ordinary skill
`in the art] would have had a bachelor’s degree in electrical
`engineering, computer science, or equivalent training, and
`approximately two years of work experience in software
`development. Lack of work experience can be remedied by
`additional education, and vice versa.
`Pet. 7 (citing Ex. 1003 ¶¶ 20–22).
`Patent Owner states a person of ordinary skill in the art would have
`
`had
`
`a bachelor’s degree in electrical engineering, computer science,
`or equivalent training, and approximately two years of work
`experience in software development involving network-based
`monetary transaction systems. Lack of work experience can be
`remedied by additional education, and vice versa. Appropriate
`experience could substitute for education.
`Prelim. Resp. 5 (citing Ex. 2001 ¶ 5).
`We do not see any substantive difference between the parties’
`proposals. We adopt Petitioner’s definition of the level of ordinary skill for
`the purposes of institution, but note that our obviousness evaluation at this
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`Patent 10,223,692 B2
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`stage of the proceeding would not differ if we were to apply Patent Owner’s
`definition of the level of ordinary skill in the art.
`
`C. Claim Construction
`In an inter partes review, the claims are construed using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021).
`This claim construction standard includes construing the claim in accordance
`with the ordinary and customary meaning of such claims as would have been
`understood by one of ordinary skill in the art. Id.; see Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). In construing claims in
`accordance with their ordinary and customary meaning, we consider
`intrinsic evidence such as the specification and the prosecution history of the
`patent. Phillips, 415 F.3d at 1315–17. Extrinsic evidence, including expert
`and inventor testimony, dictionaries, and treatises, may also be used but is
`less significant than the intrinsic record. Id. at 1315. Usually, the
`specification is dispositive, and it is the single best guide to the meaning of a
`disputed term. Id. Any special definitions for claim terms must be set forth
`in the specification with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In its Petition, Petitioner states that the “claim terms carry their
`ordinary and accustomed meaning” except for the limitation “from the first
`portion of the screen.” Pet. 7–8. Petitioner also argues that certain
`limitations lack weight under the printed-matter doctrine. Id. at 11.
`
`
`11
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`IPR2022-01149
`Patent 10,223,692 B2
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`
`“from the first portion of the screen”
`1.
`The limitation “the first portion of the screen” is recited in each of
`independent claims 1 and 13. The relevant portions of claim 1 is reproduced
`below, with the relevant language highlighted in color:
`[1.1] displaying a list of mobile payment cards at a first
`portion of a touch screen interface;
`[1.2] receiving, through the touch screen interface, a user
`input selecting a mobile payment card from the list of mobile
`payment card;
`[1.3] detecting the user input sliding the mobile payment card
`from the first portion of the touch screen interface to a
`second portion of the touch screen interface; and
`[1.6.2] moving the mobile payment card a first distance from
`the first portion of the screen towards a second portion of
`the touch screen.
`Ex. 1001, 8:43–50, 8:60–62. Petitioner contends that claim 1 uses the term
`“first portion of the touch screen interface” differently than the term “first
`portion of the screen.” Pet. 8 (citing Ex. 1003 ¶ 44). In contrast, Patent
`Owner contends that (1) the terms “touch screen interface” and “touch
`screen” are “coextensive” and (2) “screen” means “content that is displayed
`on the touch screen.” See Prelim. Resp. 6–7 (citing Ex. 2001 ¶ 49).
`
`12
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`Patent 10,223,692 B2
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`
`Figures 10–11 of the ’692 patent, as annotated by Petitioner, are
`reproduced below.
`
`
`Pet. 9 (citing Ex. 1003 ¶ 45). Figures 10 and 11 of the ’692 patent illustrate
`“a mobile device displaying a payment card selection screen of a mobile
`wallet application” and a payment card selection screen when the user slides
`up a mobile payment card, respectively. Ex. 1001, 3:23–27, 4:36–45.
`Petitioner has annotated Figures 10–11 to illustrate the disputed limitation in
`claim 1.
`
`13
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`IPR2022-01149
`Patent 10,223,692 B2
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`Figures 15 and 16 of the ’692 patent, as annotated by Petitioner, are
`
`reproduced below.
`
`
`Pet. 10 (citing Ex. 1003 ¶ 46). Figures 15 and 16 of the ’692 patent illustrate
`a payment card selection “screen when a mobile payment card is slid up by
`the user and is selected/set as a temporary payment card” and “a view
`showing a payment card selection screen when 10 seconds of a payable time
`pass,” respectively. Ex. 1001, 3:36–40, 5:42–44. Petitioner has annotated
`Figures 15–16 to illustrate the disputed limitation in claim 1.
`According to Petitioner,
`As shown in Figure 10, a list of cards is displayed at a
`first portion of a touch screen interface located towards a lower
`portion of the touch screen interface. Limitation [1.1]. . . .
`Then, as shown in Figure 11, the user “slide[s] the mobile
`payment card from the first portion of the touch screen interface
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`Patent 10,223,692 B2
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`to a second portion of the touch screen interface.” Limitation
`[1.3]. . . . As shown in Figure 11, the “second portion of the
`touch screen interface” is located toward the upper portion of
`the touch screen interface. . . .
`After the user has slid the card up to the second portion
`of the touch screen interface (Figure 11), a different operation is
`performed as the “payable time” passes. . . . . As shown in
`Figures 15-16, below, claims 1 and 13 recite “moving the
`mobile payment card a first distance from [a] first portion of
`the screen towards a second portion of the touch screen,” while
`the “payable time” decrements. Limitation [1.6.2]. . . .
`The term “from the first portion of the screen” in
`Limitation [1.6.2] should thus be construed as “from a first
`portion of the screen” because the card is slid down from the
`“first portion of the screen” (Limitation [1.6.2]) and thus the
`“first portion of the screen” is different than the “first portion of
`the touch screen interface.” . . . . As discussed above, the card
`is slid up from the “first portion of the touch screen interface”
`to the “second portion of the touch screen interface.”
`Limitation [1.3]. The moving of the card “from [a] first portion
`of the screen” in Limitation [1.6.2] occurs after the user has
`“slid[] the mobile payment card from the first portion of the
`touch screen interface to a second portion of the touch screen
`interface” in Limitation [1.3].
`Pet. 8–11 (citing Ex. 1001, 4:36–48; 5:39–47; Ex. 1003 ¶¶ 45–47) (citations
`and internal reference to claim 13 omitted, alterations in original, emphases
`omitted).
`In response to Petitioner’s proposed claim construction, Patent Owner
`contends that Petitioner’s argument that “there must be some intended
`difference between ‘the screen’ and ‘the touch screen’ on which ‘the touch
`screen interface’ is displayed” is erroneous because Petitioner ignores “the
`fact that the ’692 Patent uses the term ‘screen’ to mean content that is
`displayed on the touch screen.” Prelim. Resp. 6–7 (citing Ex. 2001 ¶ 49).
`
`15
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`Patent 10,223,692 B2
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`According to Patent Owner, “[i]n every instance, the ‘screen’ referred to in
`the ’692 Patent refers to what is displayed on the touch screen interface,
`which is coextensive with the ‘touch screen.’” Id.
`As we understand Patent Owner’s argument, Patent Owner contends
`that the recited “touch screen interface” and “touch screen” are used
`interchangeably in the ’692 patent and this touch screen interface/touch
`screen is different from the recited “screen” which is the content displayed
`on the touch screen interface/touch screen. Because the touch screen
`interface/touch screen is different from the touch screen, it follows that the
`recited “first portion of the touch screen interface” is different from the
`“first portion of the screen” as argued by Petitioner. Thus, it appears that
`Patent Owner agrees with Petitioner that independent claims 1 and 13 use
`the “first portion of the touch screen interface” differently from the “first
`portion of the screen.” If Patent Owner contends that the term “first portion
`of the touch screen interface” is the same as the “first portion of the screen,”
`the parties should address this claim construction dispute during trial.
`Based on the present record and for purposes of institution, we adopt
`Petitioner’s construction that the “first portion of the screen” is different
`from the “first portion of the touch screen interface.” We encourage the
`parties to develop a full record on meaning of these two claim terms.
`We further determine that we do not need to expressly construe any
`other terms to resolve the parties’ disputes on the current record. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e 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))).
`
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`Printed Matter
`2.
`Petitioner contends that
`Although Limitations [1.5]-[1.7.2] and [13.6]-[13.8.2]
`would have been obvious (see §VIII.C.5), they lack patentable
`weight under the printed-matter doctrine. Praxair Distribution
`v. Mallinckrodt Hosp. Prod. IP, 890 F.3d 1024, 1033 (Fed. Cir.
`2018) (addressing during claim construction). These
`limitations are “directed to the content of the information
`conveyed” (time remaining) and “merely inform[] people of the
`claimed information” rather than “create a new functionality in
`a claimed device or [] cause a specific action in a claimed
`process.” C R Bard Inc. v. AngioDynamics, 979 F.3d 1372,
`1381-82 (Fed. Cir. 2020). Although the temporary card is reset
`when the “payable time” expires (Limitations [1.8]/[13.9]), that
`occurs based on “payable time” expiring and would occur
`regardless of whether or how remaining time is displayed.
`Pet. 11.
`In response to Petitioner’s argument, Patent Owner contends
`Petitioner argues that limitations [1.5]-[1.7.2] and [13.6]-
`[13.8.2] lack patentable weight under the “printed matter
`doctrine,” citing C R Bard Inc. v. AngioDynamics, 979 F.3d
`1372, 1381-82 (Fed. Cir. 2020) for the proposition that the
`limitation are “‘directed to the content of the information
`conveyed’ (time remaining) and ‘merely inform[] people of the
`claimed information’ rather than ‘create a new functionality in a
`claimed device or [] cause a specific action in a claimed
`process’.” (Pet. at 11.) However, printed matter is given
`patentable weight if the printed matter and its associated
`product are in a “functional relationship.” MPEP § 2111.05.
`([Ex. 2001] ¶ 61.) Such a functional relationship exists in the
`cited limitations, which are drawn to the simultaneous display
`of a moving timer and a numerical indicator of a remaining
`payable time. The “specific action” is the movement of the
`timer, the “functional relationship” is the coordination of the
`numerical indicator along with the moving timer. A moving
`timer is not “printed matter” for the simple reason that the
`underlying software makes it move. A changing numerical
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`indicator is also not “printed matter” for the simple reason that
`it changes as the underlying software determined how much
`payable time remains. If Petitioner’s argument were correct,
`then no display features cold be accorded patentable weight
`because they would constitute no more than “printed matter.”
`([Ex. 2001] ¶ 61.)
`Prelim. Resp. 11.
`For purposes of institution, we determine that we do not need to
`expressly construe these terms to resolve the parties’ disputes on the current
`record, because regardless of whether limitations 1.5–1.7.2 and 13.6–13.8.2
`lack patentable weight under the printed matter doctrine, Petitioner presents
`sufficient evidence at this stage of the proceeding that would support a
`finding that the applied prior art teaches these limitations (Pet. 37–57, 78–
`79). See Nidec Motor, 868 F.3d at 1017.
`
`D. Ground 1: Asserted Obviousness of Claims 1–4 and 11–13 Over
`Hertel, Chitti, Spodak, and Tedesco
`Petitioner asserts that claims 1–4 and 11–13 are unpatentable under 35
`U.S.C. § 103 as being obvious over Hertel (Ex. 1005), Chitti (Ex. 1006),
`Spodak (Ex. 1008), and Tedesco (Ex. 1007). Pet. 14–79. Patent Owner
`filed a Preliminary Response opposing Petitioner’s challenge. Prelim.
`Resp. 25–32. Based on the present record, and for the reasons identified
`below, we determine Petitioner has shown a reasonable likelihood of
`prevailing on its obviousness challenge at least as to claim 1.
`Below, we present a brief overview of Hertel, Chitti, Spodak, and
`Tedesco and then we address Petitioner’s and Patent Owner’s contentions.
`
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`
`Overview of Hertel (Ex. 1005)
`1.
`Hertel is a U.S. patent publication titled “Secured Electronic
`Transaction System.” Ex. 1005, code (54). Hertel describes a payment
`system having a user interface that acts as a visual wallet simulator. Id. at
`code (57). Figure 17 of Hertel is reproduced below.
`
`
`Figure 17 illustrates Hertel’s electronic wallet 7 and screen 201 of user
`computer 100 (not shown) for “initiating (or providing) for display and
`execution a payment receptacle.” Id. ¶¶ 33, 206. Transaction authority 102,
`credit card payment gateway 242, and user computer 101 (not shown) are
`communicatively coupled through a network (not shown). Id. ¶ 206.
`Screen 201 of user computer 101 displays a user interface of web
`browser 202 and user interface 282 of electronic wallet 7. Id. Digital
`object 237, which corresponds to a deactivated credit card, is displayed in
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`electronic wallet program 282. Id. To activate digital object/credit card 237,
`the user selects credit card 237 and moves it by dragging 238 and dropping it
`on target 239. Id. ¶ 207. Target 239 is payment receptacle module 283
`displayed in electronic wallet 282. Id. When digital object/credit card 237
`is dropped on drop target 239, payment receptacle program 283 transmits
`through user computer 100 an instruction 702 containing identification
`information of the credit card and activates the credit card. Id.
`After the user is done with the digital object/credit card 237, the user
`drags digital object/credit card from payment receptacle module 283 to the
`user interface portion 282, where the credit cart is deactivated. Ex. 1005
`¶¶ 218, 288.
`
`
`Overview of Chitti (Ex. 1006)
`2.
`Chitti is a U.S. patent application titled “Virtual Card Selector for a
`Portable Electronic Device.” Ex. 1006, code (54). Chitti describes a mobile
`telephone which is equipped with a virtual card application configured to
`manage a plurality of virtual credit cards. Id. at code (57). Chitti recognizes
`the concept of a “default card,” which is used unless a different card is
`selected. Id. ¶ 26. The default card is the card having the highest “priority”
`among a selection of cards. Id. The priority of a card can be determined
`automatically, according to a schedule/calendar, location, usage history or
`other criteria. Id. The user also may select a specific card to be used in a
`given transaction. Id. ¶ 25. The portable device on which the cards reside
`may detect a payment terminal, and automatically select a payment card
`appropriate for that terminal. Id. ¶ 42.
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`Overview of Spodak (Ex. 1008)
`3.
`Spodak is a U.S. patent application titled “Portable-E-wallet and
`Universal Card.” Ex. 1008, code (54). Spodak generally relates to e-wallets
`with payment cards. Id. at code (57). Spodak discloses a programmable
`“universal card,” programmed using an e-wallet application, to emulate any
`card in the e-wallet. Id. ¶¶ 28–30. A user may program the universal card in
`a “default card mode, where the universal card always emulates a specific
`[default] card, unless programmed otherwise.” Id. ¶ 52. In this default
`mode, “the universal card is always configured to emulate the default card,
`unless the user re-programs the universal card to temporarily act as another
`card or to change to a new default card.” Id. A user may program the card
`in a “temporary card mode” to temporarily emulate a nondefault card for a
`time period (e.g., three hours), then have the card “revert back to the default”
`card (e.g., where a certain card is preferred in a particular location or
`context). Id. ¶¶ 52, 90.
`
`Overview of Tedesco (Ex. 1007)
`4.
`Tedesco is a U.S. patent titled “Portable Prompting Aid for the
`Developmentally Disabled.” Ex. 1007, code (54). Tedesco discloses an
`application running on a mobile device that aids developmentally disabled
`individuals to follow a schedule by alerting them to upcoming events (e.g.,
`by displaying a timer). Id. at 2:39–45. Tedesco’s graphical timer animation
`could take any form, such as a bar graph (Figure 18), hourglass, car traveling
`down a road, “a sun rising/setting,” or an animation symbolizing “finality.”
`Id. at 8:14–24.
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`Claim 1
`5.
`Petitioner, relying on Dr. Houh’s testimony, provides a limitation-by-
`limitation comparison of Hertel, Chitti, Spodak, and Tedesco to independent
`claim 1. Pet. 18–59.
`[1.0] A method for setting a temporary payment card
`a)
`Petitioner contends that the preamble is not limiting but,
`
`regardless, Hertel teaches this preamble because it describes “a
`
`method for setting a card to use for a particular transaction (a
`
`method for setting a temporary payment card).” Pet. 18. Petitioner
`
`explains that, in Hertel, a user sets a payment instrument (e.g., a
`
`particular card) to use for a transaction by dragging and dropping
`
`that card from its location (drag origin) in the e-wallet into a target
`
`payment receptacle. Id. (citing Ex. 1005 ¶¶ 203–204, 216, 230,
`330 (drag-and-drop selection); Ex. 1005 ¶¶ 177–179, 347–350
`
`(how drag-and drop animation works); Ex. 1003 ¶¶ 73–74).
`
`Petitioner argues that, to the extent Patent Owner contends
`
`Hertel does not explicitly disclose a temporary payment card,
`
`using a temporary payment card was well-known, as shown in
`
`Chitti. Pet. 20 (citing
`
`Pet. 35–37 (Section VIII.C.5[1.4]); Ex. 1003 ¶ 78). Alternatively,
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`Petitioner contends that Hertel in view of Chitti teaches this
`
`preamble. Id.
`
`
`
`(1) Patent Owner’s Argument
`Patent Owner contends that Hertel does not disclose a “temporary”
`
`payment card because the “fact that a user ma[y] select a given card from a
`wallet for use in a specific transaction does not make it a
`
`‘temporary card,’ for the simple reason that the card can be used for the
`
`next transaction, and the next, ad infinitum.” Prelim. Resp. 27 (citing Ex.
`2001 ¶ 103). Patent Owner argues it “is not in any sense temporary, in the
`same way that a user would not consider the use of a particular Visa card
`‘temporary’ just because it was being used to make a current payment,” and
`it “is further not ‘temporary’ because the payment application on the mobile
`device never reverts to a main (default) payment card.” Id. at 28.
`Based on the present record, we do not agree with Patent Owner’s
`argument for several reasons. First, we understand Petitioner to contend that
`Hertel discloses more than one card so that the user may select and
`temporarily activate a first card and, when the transactions are completed,
`the user may deselect and deactivate the first card and subsequently, use a
`second card. In this situation, the first card is temporarily used for the first
`transactions and the second card is used for the second transactions. Pet. 18.
`Second, we understand Hertel to disclose that one card may be temporarily
`used for certain time period. Ex. 1005 ¶ 167 (if an electronic wallet
`“remains unused for too long a period of time, it can lock itself, requiring the
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`user to re-authenticate in order to open it”). Third, Patent Owner does not
`address Petitioner’s contention that the combined teachings of Hertel and
`Chitti disclose a temporary payment card. Pet. 20, 35–37.
`We encourage the parties to address whether the preamble should be
`treated as limiting.