UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`MOZIDO CORFIRE-KOREA, LTD.,
`
`Patent Owner
`____________
`
`Case No.: IPR2022-01149
`U.S. Patent No. 10,223,692
`
`Title: METHOD FOR SETTING TEMPORARY PAYMENT CARD
`AND MOBILE DEVICE APPLYING THE SAME
`
`_________________________________
`
`
`
`DECLARATION OF MICHAEL I. SHAMOS, PH.D.
`
`
`
`
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`I.
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`II.
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`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ....................................................................................... 1
`
`QUALIFICATIONS .................................................................................... 2
`
`Page
`
`III. COMPENSATION ...................................................................................... 4
`
`IV. MATERIALS CONSIDERED ..................................................................... 5
`
`V.
`
`SUMMARY OF MY OPINIONS ................................................................ 6
`
`VI. LEGAL PRINCIPLES ................................................................................. 7
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................ 10
`
`VIII. SUMMARY OF THE ’692 PATENT ........................................................ 11
`
`IX. THE ’692 PROSECUTION HISTORY ..................................................... 15
`
`X.
`
`CLAIM CONSTRUCTION ....................................................................... 15
`
`A.
`
`B.
`
`C.
`
`“temporary card”/“temporary payment card”..................................................... 16
`
`“screen” terms ................................................................................................... 16
`
`“moving the mobile payment card a first distance from the first portion of
`the screen towards a second portion of the touch screen” ................................... 23
`
`D.
`
`Printed Matter ................................................................................................... 24
`
`XI. SUMMARY OF THE ASSERTED REFERENCES .................................. 25
`
`XII. GROUND 1: CLAIMS 1-4 AND 11-13 WOULD NOT HAVE BEEN
`OBVIOUS OVER THE COMBINATION OF HERTEL, CHITTI,
`SPODAK, AND TEDESCO ...................................................................... 38
`
`A.
`
`Claim 1 Would Not Have Been Obvious Over Hertel, Chitti, Spodak, and
`Tedesco............................................................................................................. 40
`
`1.
`
`2.
`
`Limitation 1.0: “A method for setting a temporary payment card,
`comprising” ........................................................................................... 40
`
`Limitation 1.5: “displaying a numerical indicator of a payable
`time, wherein the numerical indicator initially indicates a first
`remaining time amount” ........................................................................ 41
`
`
`
`
`
`-i-
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`3.
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`4.
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`5.
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`6.
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`Limitations 1.4.1-1.6.3: [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.......................................................................... 41
`
`Limitation 17.1: “wherein the first distance is proportional to an
`amount of payable time that has passed” ................................................ 51
`
`Limitation 17.2: “wherein … the first difference is proportional to
`the amount of payable time that has passed” .......................................... 51
`
`Limitation 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” ............................................................................. 51
`
`B.
`
`Dependent Claims 2-4 and 11-14 Would Not Have Been Obvious Over
`Hertel, Chitti, Spodak, and Tedesco .................................................................. 52
`
`1.
`
`2.
`
`3.
`
`Limitations 2.1, 2.2: “detecting the user input sliding the mobile
`payment card from the second portion of the touch screen interface
`to an original position within the first portion of touch screen
`interface; based upon the mobile payment card being moved to the
`original position by the user, resetting the setting of the temporary
`payment card.” ...................................................................................... 52
`
`Limitation 4.2: “based upon the determination that the payable
`time has passed, displaying the mobile payment card being moved
`to an original position.” ......................................................................... 55
`
`Limitation 12.1: “The method of claim 11, further comprising,
`when a usable time passes, setting the additional service to be
`disabled.” .............................................................................................. 55
`
`XIII. GROUND 2: CLAIMS 5-6 AND 10 WOULD NOT HAVE BEEN
`OBVIOUS OVER HERTEL IN VIEW OF CHITTI, SPODAK,
`TEDESCO AND BIERBAUM .................................................................. 56
`
`XIV. GROUND 3: CLAIM 7 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`BIERBAUM AND GRIGG ....................................................................... 57
`
`
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`-ii-
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`XV. GROUND 4: CLAIM 8 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ORDING ................................................................................................... 57
`
`XVI. GROUND 5: CLAIM 9 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ROMAN .................................................................................................... 58
`
`XVII. JURAT ...................................................................................................... 58
`
`
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`-iii-
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`I.
`
`INTRODUCTION
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`1. My name is Michael Shamos. I have been retained as an expert
`
`witness by Patent Owner Mozido Corfire-Korea (“Mozido” or “Patent Owner”) for
`
`this Inter Partes Review IPR2022-01149 of U.S. Patent No. 10,223,692 (the “’692
`
`Patent”) filed by Apple Inc. (“Apple” or “Petitioner”). I have been asked to
`
`respond to provide this declaration in conjunction with Patent Owner’s Response.
`
`2.
`
`I previously submitted a declaration in this proceeding entitled
`
`“Declaration Of Michael I. Shamos, Ph.D.,” dated October 7, 2022 (“Initial
`
`Declaration,” Ex. 2001), which I incorporate here by reference.
`
`3.
`
`Petitioner is challenging the validity of Claims 1-13 (the “Challenged
`
`Claims”) of the ’692 Patent (Ex. APPL-1001), constituting all the claims of the
`
`Patent, on the grounds of obviousness.
`
`4.
`
`I have been asked to consider whether the Challenged Claims of the
`
`’692 Patent would have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) as of the date of the invention. I was also asked to review and
`
`comment on several technical statements made by Petitioner in the Petition and by
`
`its expert, Dr. Henry Houh, in the “Declaration of Dr. Henry Houh, Under 37
`
`C.F.R. § 1.68 in Support of Petition for Inter Partes Review,” dated June 16, 2022
`
`(“Houh Declaration,” Ex. APPL-1003).
`
`
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`5.
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`This Declaration contains statements of my opinions formed in this
`
`case to date and the bases and reasons for those opinions. I may offer additional
`
`opinions based on further review of materials in this case, including opinions
`
`and/or testimony of other expert witnesses.
`
`II. QUALIFICATIONS
`
`6.
`
`This section summarizes my educational background, career history,
`
`publications, and other relevant qualifications. My curriculum vitae was provided
`
`as Patent Owner’s Exhibit 2002, which includes my detailed employment
`
`background, professional experience, and list of publications.
`
`7.
`
`I have an A.B. degree from Princeton University in Physics, an M.A.
`
`degree from Vassar College in Physics, an M.S. degree from American University
`
`in Technology of Management, an M.S. degree from Yale University in Computer
`
`Science, an M. Phil. from Yale University in Computer Science, a Ph.D. from Yale
`
`University in Computer Science, and a J.D. degree from Duquesne University.
`
`8.
`
`I currently hold the title of Distinguished Career Professor in the
`
`School of Computer Science at Carnegie Mellon University in Pittsburgh,
`
`Pennsylvania. I am a member of two departments in that School, the Software and
`
`Societal Systems Department1 and the Language Technologies Institute. I was a
`
`
`1 In 2023, the Institute for Software Research was renamed the Software and Societal Systems
`Department.
`
`
`
`2
`
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`founder and Co-Director of the Institute for eCommerce at Carnegie Mellon from
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`1998-2004 and from 2004-2018 have been Director of the eBusiness Technology
`
`graduate program in the Carnegie Mellon University School of Computer Science.
`
`Since 2018, I have been Director of the M.S. in Artificial Intelligence and
`
`Innovation degree program at Carnegie Mellon.
`
`9.
`
`I have taught graduate courses at Carnegie Mellon in Electronic
`
`Commerce, including eCommerce Technology, Electronic Payment Systems,
`
`Electronic Voting, Internet of Things, Ubiquitous Computing, Electronic Payment
`
`Systems and eCommerce Law and Regulation, as well as Analysis of Algorithms.
`
`Since 2007, I have taught an annual course in Law of Computer Technology. I
`
`currently also teach Artificial Intelligence and Future Markets.
`
`10.
`
`I am the author and lecturer in a 24-hour video course on Internet
`
`protocols and have taught computer networking, wireless communication and
`
`Internet architecture since 1999.
`
`11. From 2001-2021, I was a Visiting Professor at the University of Hong
`
`Kong, where I taught an annual course in Electronic Payment Systems. This is one
`
`of only a handful of graduate courses taught on this subject in the world.
`
`12.
`
`I was the Director of Carnegie Mellon’s graduate degree program in
`
`eBusiness Technology from 1999-2018 and am now a faculty member in the
`
`Privacy Engineering degree program at Carnegie Mellon. My course on Law of
`
`
`
`3
`
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`Computer Technology is required for all students in that program. My principal
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`role currently is as Director of the graduate program in Artificial Intelligence and
`
`Innovation.
`
`13. From 1979-1987 I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`14.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have
`
`been asked to render opinions in this declaration as a technical expert. I have not
`
`been asked to offer any opinions on patent law in this proceeding.
`
`15.
`
`I have previously served as an expert in over 350 cases concerning
`
`computer technology. In particular, I have been involved in at least 35 cases
`
`involving electronic payment systems.
`
`III. COMPENSATION
`
`16.
`
`I am being compensated for my work in this case at the rate of $575
`
`per hour. I am also reimbursed for all reasonable expenses that I incur during the
`
`course of this case. My compensation does not depend upon the results of my
`
`analysis or the substance of my testimony, nor does my compensation depend on
`
`the outcome of this or any related proceeding. I have no personal interest in the
`
`outcome of this matter. I have no financial interest in Patent Owner or affiliation
`
`
`
`4
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`with any of the real parties in interest, the Patent Owner or the named inventor of
`
`the ’692 Patent. It is conceivable that I may own mutual funds whose portfolios
`
`include stock in Petitioner. If this is the case, the value of such holding would not
`
`constitute a material part of my net worth.
`
`17. The statements made and opinions provided in this Declaration are
`
`based on my own personal knowledge and, if called as a witness, I could and
`
`would testify in a manner consistent with this Declaration.
`
`18.
`
`In this Declaration, all emphasis in boldface has been added unless
`
`otherwise noted.
`
`IV. MATERIALS CONSIDERED
`
`19.
`
`I have reviewed the following documents in forming the opinions
`
`expressed in this Declaration:
`
`•
`
`•
`
`All materials filed in this IPR to date
`
`U.S. patent application 14/647,859, now U.S. Patent 10,223,692, and
`
`its prosecution history
`
`20.
`
`I have also relied on my education, skill, training, and experience in
`
`the relevant fields of technology in forming my opinions. I have further considered
`
`the viewpoint of a person of ordinary skill in the art (“POSITA”) as of the time of
`
`the inventions of the ’386 Patent. I provide my opinion as to the proper level of
`
`skill of a POSITA in Section VII of this Declaration.
`
`
`
`5
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`21.
`
`I reserve the right to supplement my opinions as expressed in this
`
`Declaration to address any new information obtained in the course of this
`
`proceeding, or based on any new positions taken by Petitioner.
`
`V.
`
`SUMMARY OF MY OPINIONS
`
`22.
`
`It is my understanding that the following table summarizes the
`
`grounds of challenge to the Challenged Claims raised in the Petition:
`
`Ground
`
`Invalidity
`Challenge
`
`References
`
`Challenged
`Claims
`
`1
`
`2
`
`3
`
`4
`
`5
`
`§ 103
`
`Hertel, Chitti, Spodak, and Tedesco
`
`1-4, 11-13
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Hertel, Chitti, Spodak, Tedesco, and
`Bierbaum
`
`5-6, 10
`
`Hertel, Chitti, Spodak, Tedesco,
`Bierbaum, and Grigg
`
`Hertel, Chitti, Spodak, Tedesco, and
`Ording
`
`Hertel, Chitti, Spodak, Tedesco, and
`Roman
`
`7
`
`8
`
`9
`
`
`23. After a review of the alleged prior art asserted by Petitioner and the
`
`Houh Declaration, it is my opinion that Petitioner has not shown that any
`
`Challenged Claim would have been obvious in light of the asserted prior art at the
`
`time of the invention. My opinions, and the bases therefore, are detailed throughout
`
`this Declaration.
`
`
`
`6
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`VI. LEGAL PRINCIPLES
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`24. Counsel for Patent Owner has informed me of the legal principles that
`
`apply in this proceeding.
`
`25.
`
`I have been informed that Petitioner has the burden to prove that the
`
`claims challenged in the Petition are not patentable by a preponderance of the
`
`evidence, which I understand to be just enough evidence to make it more likely
`
`than not that Petitioner’s argument is correct.
`
`26. A claim is invalid as obvious under 35 U.S.C. § 103 if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter of the claim as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the invention
`
`pertains. I have been informed that the following factors are used to determine
`
`whether or not the claimed subject matter would have been obvious: (i) the scope
`
`and content of the prior art; (ii) the differences, if any, between the prior art and the
`
`claimed invention; (iii) the level of ordinary skill in the field of the invention; and
`
`(iv) any relevant objective considerations of non-obviousness.
`
`27. A party asserting obviousness based on a combination of prior art
`
`references must demonstrate that one of ordinary skill in the art would have been
`
`motivated to combine the teachings of those references to achieve the claimed
`
`invention, and that the skilled artisan would have had a reasonable expectation of
`
`
`
`7
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`success in doing so. It is my understanding that it is not enough to show that one
`
`skilled in the art could combine elements of multiple references, but instead there
`
`must be some reason that would have prompted a person of ordinary skill in the art
`
`to combine the elements in the way the claimed invention does. I understand that
`
`there must be some reasoned explanation as to why one of ordinary skill in the art
`
`would combine the references.
`
`28.
`
`I understand that obviousness may be shown by considering more
`
`than one item of prior art and by considering the knowledge of a person of ordinary
`
`skill in the art, and that obviousness may be based on various rationales including:
`
`(i) combining prior art elements according to known methods to yield predictable
`
`results; (ii) simple substitution of one known element for another to obtain
`
`predictable results; (iii) use of known techniques to improve similar devices in the
`
`same way; (iv) applying a known technique to a known device ready for
`
`improvement to yield predictable results; (v) “obvious to try” – choosing from a
`
`finite number of identified, predictable solutions, with a reasonable expectation of
`
`success; (vi) known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to one of ordinary skill in the art; and
`
`(vii) some teaching, suggestion, or motivation in the prior that would have led one
`
`
`
`8
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`of ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`29. A combination of references would not have been obvious if the
`
`alleged modification(s) to be made to the reference(s) would have been
`
`inconsistent with the reference’s stated goals or method of operation or would have
`
`rendered the combination inoperable for its intended purpose. I further understand
`
`that for something to have been obvious, the party asserting obviousness must
`
`explain why a POSITA would have selected components for combination in the
`
`manner claimed.
`
`30.
`
`I further understand that a claim is not obvious over a combination of
`
`prior art references if such references “teach away” from the claimed combination,
`
`if there is no motivation to combine such references, or if the combination would
`
`lead to waste and inefficiencies not present in one or more of the references in
`
`isolation.
`
`31.
`
`It is my further understanding that obviousness cannot be based on a
`
`hindsight combination of components selected from prior art references. For
`
`example, the challenged patent itself cannot be used as a basis for combining prior
`
`art references absent such a teaching in the patent. I also understand that an
`
`invention would not have been obvious simply because all of the elements of the
`
`invention may have been known separately in the prior art.
`
`
`
`9
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`32.
`
`I understand that the hypothetical POSITA is considered to have the
`
`normal skills and knowledge of a person in a certain technical field, as of the time
`
`of the invention at issue. I understand that factors that may be considered in
`
`determining the level of ordinary skill in the art include: (1) the types of problems
`
`encountered in the art; (2) the prior art solutions to those problems; (3) rapidity
`
`with which innovations are made; (4) the sophistication of the technology; and (5)
`
`the education level of active workers in the field. I also understand that “the person
`
`of ordinary skill” is a hypothetical person who is presumed to be aware of the
`
`universe of available prior art. Therefore, no such person actually exists.
`
`33. Petitioner has proposed that a POSITA for the ’692 Patent would have
`
`had “a working knowledge of network-based payment techniques pertinent to the
`
`’692 patent, including software development in the field of mobile payment
`
`techniques. Such POSITA 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. at 7; Ex. APPL-1003,
`
`“Houh Declaration” ¶¶ 20-21.)
`
`34.
`
`I do not agree that this is a proper characterization of the level of
`
`ordinary skill because the phrase “working knowledge of mobile payment
`
`
`
`10
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`techniques pertinent to the ’692 patent” causes the characterization to be circular,
`
`essentially saying that the necessary level of skill is the necessary level of skill,
`
`without addressing the specific skills required.
`
`35.
`
`I believe that the problem can be remedied by adopting this
`
`characterization: “A POSITA 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 mobile payment
`
`techniques. Lack of work experience can be remedied by additional education, and
`
`vice versa.” I believe that this characterization simply restates Petitioner’s
`
`proposed characterization in a cleaner form, and it is the one I have adopted for
`
`purposes of this Declaration.
`
`36. The opinions I express herein are from the viewpoint of such a
`
`POSITA as of November 28, 2012, the priority date assumed by Petitioner. Pet. at
`
`7.
`
`VIII. SUMMARY OF THE ’692 PATENT
`
`37. The ’692 Patent relates to setting a temporary payment card on a
`
`mobile device to make payments using the device. The Patent recognizes that a
`
`user may have access to multiple payment cards on the same device, and may wish
`
`to use a card other than a “main payment card” for a given transaction. Ex. APPL-
`
`1001, 1:24-31. Further, the user may recover the original main payment card after
`
`
`
`11
`
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`making a payment with a temporary card. Ex. APPL-1001, 1:32-35. The Patent
`
`explains that resetting the mobile device to use the main payment card after a
`
`temporary card has been selected may be cumbersome and inconvenient. Ex.
`
`APPL-1001, 1:32-44.
`
`38. The Patent discloses a method for selecting a temporary payment card
`
`by moving a card from a list of available cards. Ex. APPL-1001, 1:61-67. The
`
`concept of a “temporary payment card” is critical to an understanding of the
`
`Patent. A “temporary payment card,” according to the Patent, is one that is only
`
`valid for a “payable time”:
`
`One or more exemplary embodiments provide a method for setting a
`
`temporary payment card, which sets, as a temporary payment card, a
`
`mobile payment card which is moved by a user from among mobile
`
`payment cards listed in a list, and resets the setting of the temporary
`
`payment card when a payable time passes, so that a user can change
`
`the temporary payment card more easily, swiftly, naturally, amusingly,
`
`and intuitively, and a mobile device applying the same.
`
`Ex. APPL-1001, 1:49-57
`
`39. The Patent discloses the concept of a “payable time,” which is a time
`
`period within which the temporary card may be used. If a payment is made during
`
`the payable time, the main payment card is reset. If no payment is made during the
`
`payable time, the main payment card is reset at the expiration of the payable time.
`
`
`
`12
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`Ex. APPL-1001, 2:6-8. Most people possess more than one physical credit card,
`
`and keep several such cards in a physical wallet. In a conventional physical
`
`transaction, the use will manually select a card to be used for a specific payment.
`
`The selected physical card is not a “temporary payment card,” as that term is used
`
`in the Patent for the simple reason that all the cards in the physical wallet are valid,
`
`and any of them can be used for payment at any time. While an electronic wallet
`
`holding payment card credentials emulates a physical wallet in many respects,
`
`there is no physical analogy in a physical wallet corresponding to a “temporary
`
`payment card.” In the Patent, a “temporary payment card” is one whose validity is
`
`limited to a “payable time,” and that payable time is enforced by the electronic
`
`wallet. The cards in a physical wallet do not have a “payable time.”
`
`40. The ’692 Patent discloses a method for selecting a temporary payment
`
`card by choosing from a list of available cards on a display and moving the card to
`
`a different position on the display. Ex. APPL-1001, 1:61-67.
`
`41. The Patent discloses multiple methods for resetting a main payment
`
`card after a temporary card has been selected, including resetting the main payment
`
`card after a passage of time (id., 1:66-67); or having the user move the main
`
`payment card back to its original position (id., 2:1-3).
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`42. The Patent further discloses methods of displaying the remaining
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`payable time to the user, such as by having the device move the main payment card
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`gradually back to its original position or having the temporary payment card
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`gradually disappear. Ex. APPL-1001, 2:12-14, 2:26-28.
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`43.
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`If a payment is made during the payable time, the main payment card
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`is reset. Ex. APPL-1001, 2:6-8. If no payment is made during the payable time, the
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`main payment card is reset at the expiration of the payable time. Id., 1:53-54.
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`44. The Patent also discloses methods by which the user can extend the
`
`payable time. Ex. APPL-1001, 2:14-23.
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`45. The Patent discloses warning the user via an alarm that the payable
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`time is shorter than or equal to a threshold. Ex. APPL-1001, 2:29-31.
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`46. A common theme of these disclosures is that the user designates a
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`temporary payment card to be used in place of a main payment card and the time
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`during which the temporary payment will be used is time-limited or transaction-
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`limited. The user is given an indication that the temporary payment card will no
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`longer be active and the main payment card will be restored.
`
`47. Paragraph 30 of the Houh Declaration is devoted to a discussion of the
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`state of the art prior to the ’692 Patent. It is not entirely accurate. In particular, its
`
`last sentence is misleading. Dr. Houh writes, “The user can then designate a
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`particular payment card as the ‘main’ or default payment card, but can also switch
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`to a ‘temporary’ payment card as the payment instrument for a particular
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`transaction instead of the default payment card,” citing three references, Chitti,
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`Spodak, and Baer in support. None of them contains any such teaching. It was
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`indeed known that one could set a default payment card in a mobile wallet, but
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`then choose a particular different card for a specific transaction. While Spodak
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`uses the term “temporary card,” it does not have the same meaning as “temporary
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`card” in the ’692 Patent, which is a card that is useful only for a given period of
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`time, after which the default card again becomes active. Chitti and Baer do not
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`disclose such a temporary card at all.
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`IX. THE ’692 PROSECUTION HISTORY
`
`48. The ’692 prosecution history is almost 3600 pages long and
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`prosecution took over 5-1/2 years. The Examiner considered over 300 separate
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`references, including Petitioner’s primary reference, Hertel, and three of
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`Petitioner’s secondary references, Spodak, Bierbaum, and Grigg, but did not issue
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`a single prior art rejection. There were two rejections based on § 101, and these
`
`were overcome by minor amendments to the claims.
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`X. CLAIM CONSTRUCTION
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`49.
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`I believe that the plain and ordinary meanings of certain terms used in
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`the Patent need to be construed expressly, as there appears to be a difference of
`
`opinion between Petitioner and Patent Owner as to those plain and ordinary
`
`meanings.
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`A.
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`“temporary card”/“temporary payment card”
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`Claim Phrase
`
`Plain and Ordinary Meaning
`
`“temporary card”
`
`“temporary payment
`card”
`
`(Claims 1-13)
`
`“payment card that can only be used for a payable
`time”
`
`
`50. The Patent uses the terms “temporary card” and “temporary payment
`
`card” synonymously. As explained above, a “temporary payment card” is one that
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`can be used only for a “payable time,” after which the “main payment card” is used
`
`unless another temporary payment card is selected.
`
`51. The Board cited the principle of law that “limitations not appearing in
`
`the claims cannot be relied on for patentability. ID, p. 31. But Patent Owner is not
`
`relying on limitations not appearing in the claims – it is relying on the plain
`
`meaning of “temporary card” as used in the Patent.
`
`B.
`
`“screen” terms
`
`Claim Phrase
`“touch screen
`interface”
`
`“touch screen”
`
`“screen”
`
`(Claims 1-13)
`“first portion of a
`touch screen
`interface”
`
`Plain and Ordinary Meaning
`All three terms are used synonymously in the
`Patent. All refer to the screen of a mobile device.
`
`
`Both terms are used synonymously in the Patent.
`They refer to a first portion of the screen of a
`mobile device.
`
`
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`“first portion of the
`screen”
`
`(Claims 1-13)
`“second portion of the
`touch screen
`interface”
`
`“second portion of the
`touch screen”
`
`(Claims 1-13)
`
`
`
`Both terms are used synonymously in the Patent.
`They refer to a second portion of the screen of a
`mobile device that is different from a first portion
`of the screen.
`
`
`52. The Patent explains what a “touch screen” is:
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`The touch screen 110 functions as a display for displaying screens
`
`shown in FIGS. 1 to 19, and also functions as a user inputting means
`
`for receiving a user operation such as touching, dragging and
`
`dropping, sliding, etc.
`
`EX. APPL-1001, 6:54-57
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`53. That is, the “touch screen” acts as both a display and a user input
`
`means. The user interacts with the touch screen by touching it and making various
`
`gestures while touching it, such as dragging and sliding.
`
`54. The term “touch screen interface” is used only in the claims, and does
`
`not appear in the specification. “Interface” in this context means “user interface” –
`
`the means by which a user interacts with a computer program. On a mobile device
`
`having a touch screen, the user interface is the touch screen itself. As used in the
`
`
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`claims, there is no difference between “screen,” “touch screen” and “touch screen
`
`interface.”
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`55. The specification also uses the term “screen” to refer to content that is
`
`displayed on the touch screen and, consequently, the touch screen interface.
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`However, all the uses of “screen” in the claims refer to the physical touch screen,
`
`and not the content displayed on the touch screen.
`
`56. The relevant portions of the claims are reproduced here, with the
`
`content surrounding “screen” highlighted:
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`[1.1] displaying a list of mobile payment cards at a first portion of a
`
`touch screen interface;
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`[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;
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`[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,
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`57.
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`I observe that the term “the screen,” as used in [1.6.2], has no explicit
`
`antecedent basis because there is no express recitation of “a screen” earlier in the
`
`claim.
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`58.
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`In every instance, the “screen” referred to in the Patent refers to what
`
`is displayed on the touch screen interface, which i