`
`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.
`
`
`
`
`IPR2022-01149
`Fintiv Ex. 2001 | Page 1 of 59
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`
`
`I.
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .......................................................................................... 1
`
`II. QUALIFICATIONS ....................................................................................... 2
`
`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. BACKGROUND .......................................................................................... 11
`
`IX. SUMMARY OF THE ’692 PATENT .......................................................... 12
`
`X.
`
`THE ’692 PROSECUTION HISTORY ....................................................... 14
`
`XI. CLAIM CONSTRUCTION ......................................................................... 14
`
`A.
`
`B.
`
`“from the first portion of the screen” ................................................. 14
`
`Printed Matter ..................................................................................... 19
`
`XII. SUMMARY OF THE ASSERTED REFERENCES ................................... 20
`
`A. Hertel et al. U.S. 2009/0288012, Ex. APPL-1005 (“Hertel”) ............ 20
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Chitti at al. U.S. 2009/0037326, Ex. APPL-1006 (“Chitti”) .............. 22
`
`Spodak U.S. 2012/0123937, Ex. APPL-10078 (“Spodak”) ............... 23
`
`Tedesco et al. U.S. 8,296,686, Ex. APPL-1007 (“Tedesco”) ............ 26
`
`Bierbaum et al. U.S. 7,967,196, Ex. APPL-1010 (“Bierbaum”) ....... 27
`
`Grigg et al. U.S. 2012/0197743, Ex. APPL-1012 (“Grigg”) ............. 28
`
`G. Ording et al. U.S. 2009/0183120, Ex. APPL-1016 (“Ording”) ......... 28
`
`H.
`
`Roman et al. U.S. 9,116,596, Ex. APPL-1017 (“Roman”) ................ 30
`
`XIII. GROUND 1: CLAIMS 1-4 AND 11-13 WOULD NOT HAVE BEEN
`OBVIOUS OVER THE COMBINATION OF HERTEL, CHITTI,
`SPODAK, AND TEDESCO......................................................................... 31
`
`A.
`
`Claim 1 Would Not Have Been Obvious in View of Hertel,
`Chitti, Spodak, and Tedesco ............................................................... 33
`
`
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`
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`-i-
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`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Limitation 1.0: “A method for setting a temporary
`payment card, comprising” ...................................................... 33
`
`Limitation 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” ................................................... 34
`
`Limitation 1.5: “displaying a numerical indicator of a
`payable time, wherein the numerical indicator initially
`indicates a first remaining time amount” ................................. 34
`
`Limitations 1.6.1, 1.6.2: “simultaneously: moving the
`mobile payment card a first distance from the first
`portion of the screen towards a second portion of the
`touch screen” ............................................................................ 35
`
`Limitations 1.6.1, 1.6.3: “simultaneously: …
`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” ..................................................................................... 36
`
`Limitation 1.7.2: “wherein … the first difference is
`proportional to the amount of payable time that has
`passed” ..................................................................................... 37
`
`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” ................. 37
`
`B.
`
`Claim 2 ............................................................................................... 38
`
`1.
`
`Limitation 2.0: “The method of claim 1, further
`comprising:” ............................................................................. 38
`
`
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`
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`-ii-
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`2.
`
`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.” ......................................................................... 38
`
`C.
`
`Claim 3 ............................................................................................... 41
`
`1.
`
`Limitation 3.1: “The method of claim 1, further
`comprising, when a payment is made within the payable
`time, resetting the setting of the temporary payment
`card.” ........................................................................................ 41
`
`D.
`
`Claim 4 ............................................................................................... 41
`
`1.
`
`2.
`
`Limitation 4.0: “The method of claim 1, further
`comprising:” ............................................................................. 41
`
`Limitation 4.2: “based upon the determination that the
`payable time has passed, displaying the mobile payment
`card being moved to an original position.” .............................. 41
`
`E.
`
`Claim 11 ............................................................................................. 42
`
`1.
`
`Limitation 11.0: “The method of claim 1, further
`comprising:” ............................................................................. 42
`
`F.
`
`Claim 12 ............................................................................................. 43
`
`1.
`
`Limitation 12.1: “The method of claim 11, further
`comprising, when a usable time passes, setting the
`additional service to be disabled.” ........................................... 43
`
`G.
`
`Claim 13 ............................................................................................. 44
`
`XIV. GROUND 2: CLAIMS 5-6 AND 10 WOULD NOT HAVE BEEN
`OBVIOUS OVER HERTEL IN VIEW OF CHITTI, SPODAK,
`TEDESCO AND BIERBAUM .................................................................... 44
`
`A.
`
`Claim 5 ............................................................................................... 45
`
`1.
`
`Limitation 5.1: “The method of claim 1, further
`comprising, when the mobile payment card set as the
`temporary payment card is moved again by the user prior
`to the payable time passing, extending the payable time.” ...... 45
`
`B.
`
`Claim 6 ............................................................................................... 47
`
`
`
`
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`-iii-
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`1.
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`Limitation 6.1: “The method of claim 5, wherein the
`movement by the user in the setting operation is
`performed in the same method as the movement by the
`user in the extending operation.” ............................................. 47
`
`C.
`
`Claim 10 ............................................................................................. 48
`
`1.
`
`Limitation 10.1: “The method of claim 1, further
`comprising, when the remaining payable time is shorter
`than or equal to a threshold, outputting an alarm.” .................. 48
`
`XV. GROUND 3: CLAIM 7 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`BIERBAUM AND GRIGG .......................................................................... 48
`
`A.
`
`Claim 7 ............................................................................................... 48
`
`1.
`
`Limitation 7.1: “The method of claim 1, further
`comprising, when the mobile payment card set as the
`temporary payment card is moved again by the user prior
`to the payable time passing, extending the payable time.” ...... 48
`
`XVI. GROUND 4: CLAIM 8 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ORDING ....................................................................................................... 50
`
`A.
`
`Claim 8 ............................................................................................... 50
`
`1.
`
`Limitation 8.1: “The method of claim 1, further
`comprising, when the payable time passes, making the
`mobile payment card moved by the user disappear.” .............. 50
`
`XVII. GROUND 5: CLAIM 9 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO, AND
`ROMAN........................................................................................................ 51
`
`A.
`
`Claim 9 ............................................................................................... 51
`
`1.
`
`Limitation 9.1: “The method of claim 1, further
`comprising making the mobile payment card moved by
`the user gradually disappear according to a remaining
`payable time.” .......................................................................... 51
`
`XVIII.
`
`CONCLUSIONS ................................................................................ 52
`
`
`
`
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`-iv-
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`I.
`
`INTRODUCTION
`
`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
`
`Petition for Inter Partes Review (“IPR2022-01149” or “Pet.”) of U.S. Patent No.
`
`10,223,692 (the “’692 Patent”) filed by Apple Inc. (“Apple” or “Petitioner”).
`
`2.
`
`In the Petition, I understand that Petitioner is challenging the validity
`
`of Claims 1-13 (the “Challenged Claims”) of the ’692 Patent (Ex. APPL-1001),
`
`constituting all the claims of Patent, on the grounds of obviousness.
`
`3.
`
`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).
`
`4.
`
`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.
`
`
`
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`II. QUALIFICATIONS
`
`5.
`
`This section summarizes my educational background, career history,
`
`publications, and other relevant qualifications. My curriculum vitae is attached as
`
`Patent Owner’s Exhibit 2002, which includes my detailed employment background,
`
`professional experience, and list of publications.
`
`6.
`
`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.
`
`7.
`
`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 Institute for
`
`Software Research and the Language Technologies Institute. I was a founder and
`
`Co-Director of the Institute for eCommerce at Carnegie Mellon from 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.
`
`2
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`8.
`
`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.
`
`9.
`
`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.
`
`10. Since 2001, I have been a Visiting Professor at the University of Hong
`
`Kong, where I teach an annual course in Electronic Payment Systems. This is one
`
`of only a handful of graduate courses taught on this subject in the world.
`
`11.
`
`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
`
`Computer Technology is required for all students in that program. My principal
`
`role currently is as Director of the graduate program in Artificial Intelligence and
`
`Innovation.
`
`3
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`12.
`
`I am a named inventor on the following six issued patents relating to
`
`electronic commerce: U.S. Patent Nos. 7,330,839; 7,421,278; 7,747,465;
`
`8,195,197; 8,280,773; and 9.465,299.
`
`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 330 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 ’692 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; Houh Declaration at
`
`¶¶ 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 network-based 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 network-based 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
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`POSITA as of November 28, 2012, the priority date assumed by Petitioner. Pet.
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`at 7.
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`VIII. BACKGROUND
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`37. 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
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`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 transaction
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`instead of the default payment card,” citing three references, Chitti, Spodak, and
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`Baer in support. None of them contains any such teaching. It was indeed known
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`that one could set a default payment card in a mobile wallet, but then choose a
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`particular different card for a specific transaction. While Spodak uses the term
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`“temporary card,” it does not have the same meaning as “temporary card” in the
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`’692 Patent, which is a card that is useful only for a given period of time, after which
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`the default card again becomes active. Chitti and Baer do not disclose such a
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`temporary card at all.
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`IX. SUMMARY OF THE ’692 PATENT
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`38. The ’692 Patent relates to a setting a temporary payment card on a
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`mobile device. Agents register subscribers and deposit funds into, and withdraw
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`funds from, the system under direction from subscribers. Ex. APPL-1001, 1:49-56.
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`The Patent recognizes that a user may have access to multiple payment card via the
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`same device, and my wish to use a card other than a “main payment card” for a
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`given transaction. Ex. APPL-1001, 1:24-31. The Patent explains that resetting the
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`mobile device to use the main payment card after a temporary card has been selected
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`may be cumbersome and inconvenient. Ex. APPL-1001, 1:32-44.
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`39. The Patent discloses a method for selecting a temporary payment card
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`by moving a card from a list of available cards. Ex. APPL-1001, 1:61-67. The
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`Patent discloses multiple methods for resetting a main payment card after a
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`temporary card has been selected, including resetting the main payment card after
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`a passage of time (Id., 1:66-67); or having the user move the main payment card
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`back to its original position (Id., 2:1-3).
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`40. The Patent discloses the concept of a “payable time,” which is a time
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`period within which the temporary card may be used. If a payment is made during
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`the payable time, the main payment card is reset. If no payment is made during the
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`payable time, the main payment card is reset at the expiration of the payable time.
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`Ex. APPL-1001, 2:6-8.
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`41. 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 (Ex. APPL-1001, 2:12-14) or having the
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`temporary payment card gradually disappear (Id., 2:26-28).
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`42. The Patent also discloses methods by which the user can extend the
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`payable time. Ex. APPL-1001, 2:14-23.
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`43. 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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`44. 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.
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`X. THE ’692 PROSECUTION HISTORY
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`45. 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
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`were overcome by minor amendments to the claims.
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`XI. CLAIM CONSTRUCTION
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`A.
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`“from the first portion of the screen”
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`46. Petitioner asserts that the claim term “from the first portion of the
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`screen” requires construction. Petitioner refers to limitations [1.6.2] and [13.7.2],
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`which are identical. Pet. at 8.
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`47. The relevant portions of claim 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
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`of a touch screen interface;
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`[1.2] receiving, through the touch screen interface, a user input
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`selecting a mobile payment card from the list of mobile payment
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`card;
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`[1.3] detecting the user input sliding the mobile payment card
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`from the first portion of the touch screen interface to a second
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`portion of the touch screen interface;
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`[1.6.2] moving the mobile payment card a first distance from the
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`first portion of the screen towards a second portion of the touch
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`screen,
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`48.
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`I observe that the term “the screen,” as used in [1.6.2], has no explicit
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`antecedent basis because there is no express recitation of “a screen” earlier in the
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`claim.
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`49. Petitioner leaps on this apparent gap to argue that there must be some
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`intended difference between “the screen” and “the touch screen” on which “the
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`touch screen interface” is displayed. Petitioner and its expert completely ignore the
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`fact that the Patent use the term “screen” to mean content that is displayed on the
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`touch screen. In every instance, the “screen” referred to in the Patent refers to what
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`is displayed on the touch screen interface, which is coextensive with the “touch
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`screen.”
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`50. The term “screen” appears in the specification (outside the claims) 45
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`times. It appears as part of the larger phrase “touch screen” seven times, including
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`five appearances in the term “touch screen 110.” That leaves 38 uses of “screen”
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`without the modifier “touch.”
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`51. The first such usage of “screen” without “touch” is at 2:66-67, which
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`states, “FIG. 1 is a view showing a mobile device which displays a mobile payment
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`card management screen.” FIG. 1 is reproduced here, with the touch screen
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`interface outlined in red:
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`52. The disclosure that FIG. 1 is displaying a “mobile payment card
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`management screen” means that the red rectangle is the “mobile payment card
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`management screen.”
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`53. While there are objects on the device that are touchable, such as the
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`ellipse at the top, those are not part of the “touch screen interface,” as nothing
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`outside the red rectangle can be modified by an application program.
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`54. At 3:3-4, the Patent states, “FIG. 3 is a view showing a screen when a
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`user drags a mobile payment card to add to a mobile payment card list.” FIG. 3 is
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`reproduced below, with the “screen” outlined in red:
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`55. As before, the Patent uses “screen,” “touch screen” and “touch screen
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`interface” inte