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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`
`
`APPLE INC.,
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`Petitioner,
`
`v.
`MOZIDO CORFIRE - KOREA, LTD.,
`
`Patent Owner.
`
`
`
`
`
`Case No. IPR2022-01149
`U.S. Patent No 10,223,692
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`
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`
`
`PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................... 1
`I.
`II. A PERSON HAVING ORDINARY SKILL IN THE ART ........................... 1
`III. SUMMARY OF THE '692 PATENT.............................................................. 1
`IV. THE ’692 PROSECUTION HISTORY .......................................................... 5
`V.
`CLAIM CONSTRUCTION ............................................................................ 6
`A.
`"temporary card” and “temporary payment card”................................. 7
`B.
`“Screen” Terms ..................................................................................... 8
`C.
`“moving the mobile payment card a first distance from the first
`portion of the screen towards a second portion of the touch
`screen” .................................................................................................15
`Printed Matter ......................................................................................16
`D.
`VI. DESCRIPTION OF THE Alleged PRIOR ART ...........................................18
`A. Hertel et al. U.S. 2009/0288012, Ex. APPL-1005 (“Hertel”) .............18
`B.
`Chitti at al. U.S. 2009/0037326, Ex. APPL-1006 (“Chitti”) ...............21
`C.
`Spodak U.S. 2012/0123937, Ex. APPL-10078 (“Spodak”) ................23
`D.
`Tedesco et al. U.S. 8,296,686, Ex. APPL-1007 (“Tedesco”) .............27
`E.
`Bierbaum et al. U.S. 7,967,196, Ex. APPL-1010 (“Bierbaum”) ........28
`F.
`Grigg et al. U.S. 2012/0197743, Ex. APPL-1012 (“Grigg”) ..............29
`G. Ording et al. U.S. 2009/0183120, Ex. APPL-1016 (“Ording”) ..........29
`H.
`Roman et al. U.S. 9,116,596, Ex. APPL-1017 (“Roman”) .................31
`VII. THE PETITION HAS NOT MET ITS BURDEN FOR GROUND 1 ..........32
`Claim 1 Would Not Have Been Obvious Over Hertel, Chitti,
`A.
`Spodak, and Tedesco ...........................................................................34
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`i
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Limitation 1.0: “A method for setting a temporary payment card,
`comprising” 34
`Limitation 1.5: “displaying a numerical indicator of a payable time,
`wherein the numerical indicator initially indicates a first remaining
`time amount” ..................................................................................................... 35
`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 ............................ 36
`Limitation 1.7.1: “wherein the first distance is proportional to an
`amount of payable time that has passed” ................................................... 44
`Limitation 1.7.2: “wherein … the first difference is proportional to the
`amount of payable time that has passed” ................................................... 45
`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”
`....................................................................................................... 45
`B. Dependent Claims 2-4 and 11-14 Would Not Have Been
`Obvious Over Hertel, Chitti, Spodak, and Tedesco ............................46
`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.”
`....................................................................................................... 46
`Limitation 4.2: “based upon the determination that the payable time
`has passed, displaying the mobile payment card being moved to an
`original position.” ............................................................................................. 48
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`1.
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`2.
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`ii
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`3.
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`Limitation 12.1: “The method of claim 11, further comprising, when a
`usable time passes, setting the additional service to be disabled.” ...... 49
`VIII. GROUND 3: CLAIM 7 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`BIERBAUM AND GRIGG ...........................................................................51
`IX. GROUND 4: CLAIM 8 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ORDING ........................................................................................................51
`X. GROUND 5: CLAIM 9 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ROMAN.........................................................................................................51
`XI. CONCLUSION ..............................................................................................52
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`iii
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................. 6
`Renishaw Pub. Ltd. Co. v. Marposs Societa' Per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ............................................................. 6
`Other Authorities
`37 C.F.R. § 42.6(e) ..................................................................................... 1
`37 C.F.R. § 42.24(a) ................................................................................. 53
`37 C.F.R. § 42.24(b)(1) ............................................................................. 53
`37 C.F.R. § 42.24(d), I .............................................................................. 53
`37 C.F.R. § 42.108(c) .................................................................................. 6
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`iv
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`PATENT OWNER’S EXHIBIT LIST
`PATENT OWNER’S EXHIBIT LIST
`
`
`Ex. 2001 Declaration of Dr. Michael I. Shamos, Ph.D., dated October 7, 2022
`Ex. 2001 Declaration of Dr. Michael I. Shamos, Ph.D., dated October 7, 2022
`
`Ex. 2002 Resume of Michael Ian Shamos
`
`Ex. 2003 U.S. Patent No. 10,223,692 Claims Appendix
`U.S. Patent No. 10,223,692 Claims Appendix
`Ex. 2003
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`Ex. 2004 Declaration of Dr. Michael I. Shamos, Ph.D., dated March 30, 2023
`Ex. 2004
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` Ex. 2002Ex. 2005 Resume of Michael Ian Shamos
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`
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`Declaration of Dr. Michael I. Shamos, Ph.D., dated March 30, 2023
`
`Ex. 2005 B. Myers, “Why are Human-Computer Interfaces Difficult to Design
`B. Myers, “Why are Human-Computer Interfaces Difficult to Design
`and Implement,"” July 1993
`and Implement,"” July 1993
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`v
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`I.
`
`INTRODUCTION
`The Petition challenges claims 1-13 (“Challenged Claims”) of U.S. Patent No.
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`10,233,692 (“‘692 Patent,” Ex. 1001) under five grounds of unpatentability. The
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`Board should find that Petitioner has failed to meet its burden of proving the
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`unpatentability of the Challenged Claims. As discussed below, the mappings in the
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`Petition fail to disclose multiple aspects of each of the Challenged Claims. Patent
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`Owner’s explanations herein are supported by a further Declaration of Dr. Michael
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`I. Shamos, an expert in the field. Ex. 2004.
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`II. A PERSON HAVING ORDINARY SKILL IN THE ART
`A POSITA as of the effective filing date of the ’692 Patent would have had a
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`bachelor’s degree in electrical engineering, computer science, or equivalent training,
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`and approximately two years of work experience in software development involving
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`mobile payment techniques. (Ex. 2004, Declaration of Dr. Michael I. Shamos, Ph.D.
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`(“Shamos”) at ¶ 35.) Lack of work experience can be remedied by additional
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`education, and vice versa. (Id.) Appropriate experience could substitute for
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`education.
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`III. SUMMARY OF THE ՚692 PATENT
`The ’692 Patent relates to setting a temporary payment card on a mobile
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`device to make payments using the device. (Shamos at ¶ 37.) The ’692 Patent
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`recognizes that a user may have access to multiple payment cards on the same
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`device, and may wish to use a card other than a “main payment card” for a given
`1
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`

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`transaction. (Shamos at ¶ 37; Ex. APPL-1001, 1:24-31.) Further, the user may
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`recover the original main payment card after making a payment with a temporary
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`card. (Shamos at ¶ 37; Ex. APPL-1001, 1:32-35.) The Patent explains that resetting
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`the mobile device to use the main payment card after a temporary card has been
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`selected may be cumbersome and inconvenient. (Shamos at ¶ 37; Ex. APPL-1001,
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`1:32-44.)
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`The Patent discloses a method for selecting a temporary payment card by
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`moving a card from a list of available cards. (Shamos at ¶ 38; Ex. APPL-1001, 1:61-
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`67.) The concept of a “temporary payment card” is critical to an understanding of
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`the Patent. (Shamos at ¶ 38.) A “temporary payment card,” according to the Patent,
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`is one that is only valid for a “payable time”:
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`One or more exemplary embodiments provide a method for setting a
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`temporary payment card, which sets, as a temporary payment card, a mobile
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`payment card which is moved by a user from among mobile payment cards listed in
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`a list, and resets the setting of the temporary payment card when a payable time
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`passes, so that a user can change the temporary payment card more easily, swiftly,
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`naturally, amusingly, and intuitively, and a mobile device applying the same.
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`(Shamos at ¶ 38; Ex. APPL-1001, 1:49-57.)
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`The Patent discloses the concept of a “payable time,” which is a time period
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`within which the temporary card may be used. (Shamos at ¶ 39.) If a payment is
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`2
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`

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`made during the payable time, the main payment card is reset. (Id.) If no payment
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`is made during the payable time, the main payment card is reset at the expiration of
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`the payable time. (Shamos at ¶ 39; Ex. APPL-1001, 2:6-8.) Most people possess
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`more than one physical credit card, and keep several such cards in a physical wallet.
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`(Shamos at ¶ 39.) In a conventional physical transaction, the use will manually select
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`a card to be used for a specific payment. (Id.) The selected physical card is not a
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`“temporary payment card,” as that term is used in the ’692 Patent for the simple
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`reason that all the cards in the physical wallet are valid, and any of them can be used
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`for payment at any time. (Id.) While an electronic wallet holding payment card
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`credentials emulates a physical wallet in many respects, there is no physical analogy
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`in a physical wallet corresponding to a “temporary payment card.” (Id.) In the ’692
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`Patent, a “temporary payment card” is one whose validity is limited to a “payable
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`time,” and that payable time is enforced by the electronic wallet. (Id.) The cards in
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`a physical wallet do not have a “payable time.” (Id.)
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`The ’692 Patent discloses a method for selecting a temporary payment card
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`by choosing from a list of available cards on a display and moving the card to a
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`different position on the display. (Shamos at ¶ 40; Ex. APPL-1001, 1:61-67.)
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`The ’692 Patent discloses multiple methods for resetting a main payment card
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`after a temporary card has been selected, including resetting the main payment card
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`after a passage of time (Shamos at ¶ 41; Ex. APPL-1001, 1:66-67); or having the
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`3
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`

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`user move the main payment card back to its original position (Shamos at ¶ 41; Ex.
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`APPL-1001, 2:1-3).
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`The ’692 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. (Shamos at ¶ 42; Ex. APPL-1001, 2:12-14, 2:26-28.)
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`If a payment is made during the payable time, the main payment card is reset.
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`(Shamos at ¶ 43; Ex. APPL-1001, 2:6-8.) If no payment is made during the payable
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`time, the main payment card is reset at the expiration of the payable time. (Shamos
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`at ¶ 43; Ex. APPL-1001, 1:53-54.)
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`The ’692 Patent also discloses methods by which the user can extend the
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`payable time. Shamos at ¶ 44; Ex. APPL-1001, 2:14-23.)
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`The ’692 Patent discloses warning the user via an alarm that the payable time
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`is shorter than or equal to a threshold. (Shamos at ¶ 45; Ex. APPL-1001, 2:29-31.)
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`A common theme of these disclosures is that the user designates a temporary
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`payment card to be used in place of a main payment card and the time during which
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`the temporary payment will be used is time-limited or transaction-limited. (Shamos
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`at ¶ 46.) 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. (Id.)
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`4
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`

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`In the Petitioner, the discussion of the state of the art prior to the ’692 Patent
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`is not entirely accurate. (Shamos at ¶ 47.) In particular, it is misleading to assert that
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`“The user can then designate a particular payment card as the ‘main’ or default
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`payment card, but can also switch to a ‘temporary’ payment card as the payment
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`instrument for a particular transaction instead of the default payment card,” citing
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`three references, Chitti, Spodak, and Baer in support. (Id.) None of them contains
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`any such teaching. (Id.) It was indeed known that one could set a default payment
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`card in a mobile wallet, but then choose a particular different card for a specific
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`transaction. (Id.) While Spodak uses the term “temporary card,” it does not have the
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`same meaning as “temporary card” in the ’692 Patent, which is a card that is useful
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`only for a given period of time, after which the default card again becomes active.
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`(Id.) Chitti and Baer do not disclose such a temporary card at all. (Id.)
`
`IV. THE ’692 PROSECUTION HISTORY
`The ’692 prosecution history is almost 3600 pages long and prosecution took
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`over 5-1/2 years. (Shamos at ¶ 48.) The Examiner considered over 300 separate
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`references, including Petitioner’s primary reference, Hertel, and three of petitioner’s
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`secondary references, Spodak, Bierbaum, and Grigg, but did not issue a single prior
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`art rejection. (Id.) There were two rejections based on § 101, and these were
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`overcome by minor amendments to the claims. (Id.)
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`5
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`V. CLAIM CONSTRUCTION
`In IPR proceedings, claims must be construed under Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005). “The construction that stays true to the claim
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`language and most naturally aligns with the patent's description of the invention will
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`be, in the end, the correct construction.” Renishaw Pub. Ltd. Co. v. Marposs Societa'
`
`Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
`
`The Petition alleges that “claim terms carry their ordinary and accustomed
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`meaning as understood by a POSITA” and therefore require no specific construction
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`for the instant proceeding except for the limitation “from the first portion of the
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`screen” and limitations alleged as printed matter. (Pet. 7-8 and 11).
`
`However, the Petition fails to articulate the specifics of the “ordinary and
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`accustomed meaning” to be ascribed to other claim terms. Absent proposing a
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`specific definition articulating the ordinary and customary meaning to be ascribed
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`to a claim term, simply submitting that “terms not addressed . . . require no specific
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`construction” does little to establish the metes and bounds of the claim term. Where
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`the meanings of terms are potentially subject to dispute, it is incumbent that the
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`Petition set forth its construction of the metes and bounds of each such term. Here,
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`the Petition failed to meet its burden to set forth the required claim construction
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`analysis. See, e.g., 37 C.F.R. § 42.108(c).
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`6
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`

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`Specifically, a POSITA upon reading the ’692 Patent would understand the
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`following terms to have specific meanings.
`
`A.
`
`“temporary card” and “temporary payment card”
`Claim Phrase
`Plain and Ordinary Meaning
`"temporary card”
`“payment card that can only be used
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`for a payable time”
`“temporary payment card”
`
`(Claims 1-13)
`
`
`Claim 1 recites:
`
`“A method for setting a temporary payment card, comprising:”
`. . .
`“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;”
`. . .
`“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.”
`
`Claim 13 recites:
`
`. . .
`“based upon the user input sliding the mobile payment card, set as
`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;”
`. . .
`“reset the setting of the temporary payment card when the payable time
`passes.”
`The ’692 Patent uses the terms “temporary card” and “temporary payment
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`card” synonymously. (Shamos at ¶ 50.) As explained above, a “temporary payment
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`7
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`card” is one that can be used only for a “payable time,” after which the “main
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`payment card” is used unless another temporary payment card is selected. (Id.)
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`The Board cited the principle of law that “limitations not appearing in the
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`claims cannot be relied on for patentability.” (Id., p. 31.) But Patent Owner is not
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`relying on limitations not appearing in the claims – it is relying on the plain meaning
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`of “temporary card” as used in the Patent. (Shamos at ¶ 51.)
`
`B.
`
`“Screen” Terms
`Claim Phrase
`“touch screen interface”
`
`“touch screen”
`
`“screen”
`
`Plain and Ordinary Meaning
`three
`terms
`are
`used
`All
`synonymously in the Patent. All refer
`to the screen of a mobile device.
`
`
`Claims 1-13)
`“first portion of a touch screen
`interface”
`
`“first portion of the screen”
`
` (Claims 1-13)
`“second portion of the touch screen
`interface”
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`“second portion of the touch screen”
`
` (Claims 1-13)
`
`
`
`Both terms are used synonymously in
`the Patent. They refer to a first
`portion of the screen of a mobile
`device.
`
`
`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.
`
`
`Claim 1 recites:
`
`. . .
`
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`8
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`

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`“displaying a list of mobile payment cards at a first portion of a touch
`screen interface;
`receiving, through the touch screen interface, a user input selecting a
`mobile payment card from the list of mobile payment card;
`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;” . . .
`“moving the mobile payment card a first distance from the first portion
`of the screen towards a second portion of the touch screen, and” . . .
`
`Claim 13 recites:
`
`. . .
`
`“a touch screen configured to display a list of mobile payment cards;
`and a processor configured to:
`displaying a list of mobile payment cards at a first portion of a touch
`screen interface;
`receive, through the touch screen interface, a user input selecting a
`mobile payment card from the list of mobile payment card;
`detect 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;” . . .
`“moving the mobile payment card a first distance from the first portion
`of the screen towards a second portion of the touch screen, and” . . .
`
`The ’692 Patent explains what a “touch screen” is:
`
`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.
`
`(Shamos at ¶ 52; EX. APPL-1001, 6:54-57.)
`
`
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`9
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`

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`That is, the “touch screen” acts as both a display and a user input means.
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`(Shamos at ¶ 53.) The user interacts with the touch screen by touching it and making
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`various gestures while touching it, such as dragging and sliding. (Id.)
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`The term “touch screen interface” is used only in the claims, and does not
`
`appear in the specification. (Shamos at ¶ 54.) “Interface” in this context means “user
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`interface” – the means by which a user interacts with a computer program. (Id.) On
`
`a mobile device having a touch screen, the user interface is the touch screen itself.
`
`(Id.) As used in the claims, there is no difference between “screen,” “touch screen”
`
`and “touch screen interface.” (Id.)
`
`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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`(Shamos at ¶ 55.) However, all the uses of “screen” in the claims refer to the physical
`
`touch screen, and not the content displayed on the touch screen. (Id.)
`
`The relevant portions of the claims are reproduced here, with the content
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`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;
`
`[1.2] receiving, through the touch screen interface, a user input
`selecting a mobile payment card from the list of mobile payment card;
`
`
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`10
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`[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;
`
`[1.6.2] moving the mobile payment card a first distance from the first
`portion of the screen towards a second portion of the touch screen,
`
`(Shamos at ¶ 56.)
`
`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. (Shamos at
`
`¶ 57.)
`
`In every instance, the “screen” referred to in the Patent refers to what is
`
`displayed on the touch screen interface, which is coextensive with the “touch
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`screen.” (Shamos at ¶ 58.)
`
`The term “screen” appears in the specification (outside the claims) 45 times.
`
`It appears as part of the larger phrase “touch screen” seven times, including five
`
`appearances in the term “touch screen 110.” That leaves 38 uses of “screen” without
`
`the modifier “touch.”
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`The first usage of “screen” without “touch” is at 2:66-67, which states, “FIG.
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`1 is a view showing a mobile device which displays a mobile payment card
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`management screen.” (Shamos at ¶ 59.) FIG. 1 is reproduced here, with the touch
`
`screen interface outlined in red:
`
`
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`11
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`

`

`
`
`The disclosure that FIG. 1 is displaying a “mobile payment card management
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`screen” means that the red rectangle is the “mobile payment card management
`
`screen.” (Shamos at ¶ 61.)
`
`While there are objects on the device that are touchable, such as the ellipse at
`
`the top, those are not part of the “touch screen interface,” as nothing outside the red
`
`rectangle can be modified by an application program. (Shamos at ¶ 62.)
`
`
`
`12
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`

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`At 3:3-4, the Patent states, “FIG. 3 is a view showing a screen when a user
`
`drags a mobile payment card to add to a mobile payment card list.” (Shamos at ¶
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`63.) FIG. 3 is reproduced below, with the “screen” outlined in red:
`
`
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`As before, the Patent uses “screen,” “touch screen” and “touch screen
`
`interface” interchangeably. Similar uses appear at 3:5-7, 3:8-11, 3:18-19, 3:20-22,
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`3:23-25, 3:26-27, 3:28-30, 3:31-32, 3:3:33-35, 3:36-38, 3:39-40, and 3:41-42, all
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`describing various “screens” that are displayed to the user. (Shamos at ¶ 64.)
`
`
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`13
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`

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`In the remainder of the specification, no distinction is made between “screen,”
`
`“touch screen” and “touch screen interface.” They are therefore synonymous.
`
`(Shamos at ¶ 65.)
`
`Claim 1 contains the limitation, “moving the mobile payment card a first
`
`distance from the first portion of the screen towards a second portion of the touch
`
`screen.” (Shamos at ¶ 66.) There is no direct antecedent basis for “the screen,” but
`
`there is a prior recitation of “displaying a list of mobile payment cards at a first
`
`portion of a touch screen interface.” (Id.) It is clear that “touch screen” and “touch
`
`screen interface” are used synonymously for these reasons: (1) the only “first
`
`portion” that could provide antecedent basis for “the first portion of the screen” is
`
`“first portion of a touch screen interface”; (2) there is recitation of “a second portion
`
`of the touch screen,” which only makes sense if “first portion of the screen” means
`
`“first portion of the touch screen”; and (3) the cards are displayed at “a first portion
`
`of a touch screen interface.” (Id.) If a card is to be moved, it must be from that “first
`
`portion of a touch screen interface.” (Id.)
`
`Because “screen,” “touch screen” and “touch screen interface” are used
`
`synonymously, it follows that “first portion of a touch screen interface” and “first
`
`portion of the screen” are synonymous. (Shamos at ¶ 67.) For the same reason,
`
`“second portion of the touch screen interface” and “second portion of the touch
`
`screen” are also synonymous. (Id.)
`
`
`
`14
`
`

`

`C.
`
`“moving the mobile payment card a first distance from the first
`portion of the screen towards a second portion of the touch screen”
`Claim Phrase
`Plain and Ordinary Meaning
`
`“moving the mobile payment card a first distance
`from the second portion of the screen towards the
`first portion of the touch screen”
`
`
`the mobile
`“moving
`payment card a first
`distance from the first
`portion of the screen
`towards
`a
`second
`portion of the touch
`screen”
`
`
`(Claims 1-13)
`
`
`There is an obvious error in limitations 1.6.2 and 13.7.2, which are identical
`
`and read: “moving the mobile payment card a first distance from the first portion of
`
`the screen towards a second portion of the touch screen.” (Shamos at ¶ 68.) At the
`
`time this step is performed, the mobile payment card is already at the second portion
`
`of the touch screen and is actually moved towards the first portion of the touch screen
`
`(its “original position”), not the other way around. (Id.) This is explained in the
`
`specification:
`
`The method may further include, when the payable time passes, moving
`the mobile payment card moved by the user to an original position.
`
`The method may further include gradually moving the mobile payment
`card moved by the user to an original position according to a remaining
`payable time.
`
`
`
`15
`
`

`

`(Id.; Ex. APPL-1001, 2:9-14.)
`
`Referring to FIGS. 15 to 17, the mobile payment card slid up by the user,
`that is, the mobile payment card selected/set as the temporary payment
`card is slowly slid down as the payable time passes and moves to the
`original position.
`
`(Id.; Ex. APPL-1001, 5:53-56.)
`
`It is so clear that the second movement is the reverse of the first (and not in
`
`the same direction, as claimed), that apparently neither Petitioner nor Patent Owner
`
`noticed the error in their previous filings. (Shamos at ¶ 69.)
`
`D.
`Printed Matter
`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. (Shamos
`
`at ¶ 70.) In evaluating the existence of a functional relationship, the court considers
`
`whether the alleged printed matter instead “interacts with the other elements of the
`
`
`
`16
`
`

`

`claim to create a new functionality in a claimed device or to cause a specific action
`
`in a claimed process.” (C R Bard Inc. v. AngioDynamics, 979 F.3d 1372, 1381-82
`
`(Fed. Cir. 2020)). Here, contrary to Petitioner has alleged in the Petition, the alleged
`
`printed matter (time remaining) does not merely inform people of the claimed
`
`invention but rather create a new functionality in the claimed device (e.g., as recited
`
`in Claim 13) and/or causes a specific action in the claimed process (e.g., Claim 1).
`
`In particular, Claim 1 is directed to a method for setting a temporary payment
`
`card associated with a payable time on a mobile device such that the temporary
`
`payment card can be utilized to make payments within the payable time; as well as
`
`resetting the setting of the temporary payment card when the payable time passes.
`
`Accordingly, a POSITA would understand that the claimed invention encompasses
`
`a multitude of aspects beyond the one recited in the alleged limitations [1.5]-[1.7.2].
`
`In other words, merely displaying or conveying how much payable time is remaining
`
`in connection to the temporary card to the user is not the claimed invention. In fact,
`
`the amount of remaining payable time functions to causes the starting of the
`
`animation of the temporary card to “sink,” (when the value of the amount of the
`
`remaining payable time equals to a pre-determined amount), as well as causes the
`
`resetting of the setting of a temporary card such that a main card becomes the
`
`payment instrument on the mobile device (when the value of the remaining payable
`
`time equals zero). In other words, the “specific action” is the movement of the timer,
`
`
`
`17
`
`

`

`the “functional relationship” is the coordination of the numerical indicator along
`
`with the moving timer. (Shamos at ¶ 70.) A moving timer is not “printed matter”
`
`for the simple reason that the underlying software makes it move. (Id.) A changing
`
`numerical indicator is also not “printed matter” for the simple reason that it changes
`
`as the underlying software determined how much payable time remains. (Id.) If
`
`Petitioner’s argument were correct, then no display features could be accorded
`
`patentable weight because they would constitute no more than “printed matter.” (Id.)
`
`VI. DESCRIPTION OF THE ALLEGED PRIOR ART
`Petitioner’s prior art argument seems to be based on the fact, which is correct,
`
`that the prior art taught selecting a particular card from the interface of a mobile
`
`device to make a payment in a manner similar to a user selecting a physical card
`
`from a physical wallet to make a given payment. (Shamos at ¶ 71.) However, as
`
`explained below, the Patent does not claim that process, but is drawn instead to
`
`overriding a main (default) payment card for a particular transaction. (Id.)
`
`A. Hertel et al. U.S. 2009/0288012, Ex. APPL-1005 (“Hertel”)
`Hertel is entitled “Secured Electronic Transaction System.” (Shamos at ¶ 72.)
`
`It discloses a mobile payment transaction system in which a user selects a payment
`
`card to be used for a particular transaction and uses it for payment by dragging an
`
`icon representing the selected card (“representative digital object 237”) into a user’s
`
`web browser 202, as shown in Hertel FIG. 17:
`
`
`
`18
`
`

`

`
`
`Completely absent from Hertel is any notion of a “main payment card” or a
`
`“temporary payment card,” which will be active for a given time period. (Shamos
`
`at ¶ 73.) Hertel mimics a conventional physical wallet, but simplifies the selection
`
`of a card using a drag-and-drop scheme. (Shamos at ¶ 73; Ex. APPL-1005, [0104].)
`
`Each time the user wants to purchase something, a manual drag-and-drop action is
`
`required. (Shamos at ¶ 73; Ex. APPL-1005, [0347].) Hertel explains that “the drag
`
`can operate in the way customary on touch screens” such that “the drag is initiated
`
`when the user presses on the drag origin with the user finger or