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
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`TABLE OF CONTENTS
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` Page(s)
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`PATENT OWNER’S EXHIBIT LIST .................................................................... vi
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`THE ’692 PATENT AND THE CHALLENGED CLAIMS .......................... 3
`
`A. Overview of the ’692 Patent .................................................................. 3
`
`B.
`
`C.
`
`The ’692 Prosecution History ............................................................... 4
`
`Challenged Claims of the ’692 Patent ................................................... 5
`
`III. A PERSON HAVING ORDINARY SKILL IN THE ART ........................... 5
`
`IV. CLAIM CONSTRUCTION ............................................................................ 5
`
`A.
`
`“from the first portion of the screen” ........................................... 6
`
`B.
`
`Printed Matter .............................................................................11
`
`V. OVERVIEW OF THE ALLEGED PRIOR ART ..........................................12
`
`A. Hertel et al. U.S. 2009/0288012, Ex. APPL-1005
`(“Hertel”) ....................................................................................12
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Chitti at al. U.S. 2009/0037326, Ex. APPL-1006
`(“Chitti”) .....................................................................................14
`
`Spodak U.S. 2012/0123937, Ex. APPL-10078
`(“Spodak”) ..................................................................................15
`
`Tedesco et al. U.S. 8,296,686, Ex. APPL-1007
`(“Tedesco”) ................................................................................18
`
`Bierbaum et al. U.S. 7,967,196, Ex. APPL-1010
`(“Bierbaum”) ..............................................................................19
`
`Grigg et al. U.S. 2012/0197743, Ex. APPL-1012
`(“Grigg”) ....................................................................................20
`
`i
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`

`

`G. Ording et al. U.S. 2009/0183120, Ex. APPL-1016
`(“Ording”) ..................................................................................20
`
`H. Roman et al. U.S. 9,116,596, Ex. APPL-1017 (“Roman”) .............22
`
`VI. RESPONSE TO PETITION GROUNDS 1-5 ...............................................23
`
`A.
`
`Legal Standard .....................................................................................23
`
`B. Hertel, in Combination with Chitti, Spodak, AND Tedsco
`Fails to Teach or Suggest Every Limitation Recited in the
`Challenged Claims ..............................................................................25
`
`C.
`
`Claim 1 Would Not Have Been Obvious in View of Hertel,
`Chitti, Spodak, and Tedesco (Ground 1) .............................................27
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Limitation 1.1.1: “A method for setting a temporary
`payment card, comprising” .......................................................27
`
`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” ....................................................28
`
`Limitation 1.5: “displaying a numerical indicator of a
`payable time, wherein the numerical indicator initially
`indicates a first remaining time amount” ..................................29
`
`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” .............................................................................29
`
`Limitations 1.6.1, 1.6.3: “simultaneously: … decrementing
`the numerical indicator a first difference to display a
`remaining payable time” ...........................................................30
`
`Limitation 1.7.1: “wherein the first distance is proportional
`to an amount of payable time that has passed” .........................31
`
`ii
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`

`

`7.
`
`8.
`
`Limitation 1.7.2: “wherein … the first difference is
`proportional to the amount of payable time that has
`passed” ......................................................................................31
`
`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” ..................32
`
`D.
`
`Claim 2 Would Not Have Been Obvious Hertel, Chitti, Spodak,
`and Tedesco (Ground 1) ......................................................................32
`
`1.
`
`2.
`
`Limitation 2.0: “The method of claim 1, further
`comprising:” ..............................................................................32
`
`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.” .........................................................33
`
`E. Claim 3 ................................................................................................35
`
`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.” ..........................................................................35
`
`F.
`
`Claim 4 ................................................................................................36
`
`1.
`
`2.
`
`Limitation 4.0: “The method of claim 1, further
`comprising:” ..............................................................................36
`
`Limitation 4.2: “based upon the determination that the
`payable time has passed, displaying the mobile payment
`card being moved to an original position.” ...............................36
`
`G.
`
`Claim 11 ..............................................................................................37
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`1.
`
`Limitation 11.0: “The method of claim 1, further
`comprising:” ..............................................................................37
`
`iii
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`

`

`H.
`
`Claim 12 ..............................................................................................37
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`1.
`
`Limitation 12.1: “The method of claim 11, further
`comprising, when a usable time passes, setting the
`additional service to be disabled.” ............................................37
`
`I.
`
`Claim 13 ..............................................................................................38
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`VII. GROUND 2: CLAIMS 5-6 AND 10 WOULD NOT HAVE BEEN
`OBVIOUS OVER HERTEL IN VIEW OF CHITTI, SPODAK,
`TEDESCO AND BIERBAUM .....................................................................39
`
`A.
`
`Claim 5 ................................................................................................40
`
`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.” ......................................40
`
`B.
`
`Claim 6 ................................................................................................42
`
`1.
`
`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.” ........................................42
`
`C.
`
`Claim 10 ..............................................................................................43
`
`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.” ...................43
`
`VIII. GROUND 3: CLAIM 7 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`BIERBAUM AND GRIGG ...........................................................................43
`
`A.
`
`Claim 7 ................................................................................................44
`
`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.” ...........................................................................44
`
`iv
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`

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`IX. GROUND 4: CLAIM 8 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`AND ORDING ..............................................................................................45
`
`A.
`
`Claim 8 ................................................................................................45
`
`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.” .........45
`
`X. GROUND 5: CLAIM 9 WOULD NOT HAVE BEEN OBVIOUS
`OVER HERTEL IN VIEW OF CHITTI, SPODAK, TEDESCO,
`AND ROMAN ...............................................................................................46
`
`A.
`
`Claim 9 ................................................................................................46
`
`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.” ...........................................................................46
`
`XI. CONCLUSION ..............................................................................................47
`
`
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`
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`v
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`

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`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Declaration of Dr. Michael I. Shamos, Ph.D., dated October 7,
`2022 (“Shamos”)
`Resume of Michael Ian Shamos
`U.S. Patent No. 10,223,692 Claims Appendix
`
`Exhibit
`2001
`
`2002
`2003
`
`
`
`
`
`
`vi
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`

`

`I.
`
`INTRODUCTION
`
`The Petition challenges claims 1-13 (“Challenged Claims”) of U.S. Patent
`
`No. 10,233,692
`
`(“’692 Patent,” Ex. APPL-1001) under one ground of
`
`unpatentability. The Board should deny the institution of Inter Partes Review of the
`
`’692 Patent at least because the Petitioner has not met its burden of showing that the
`
`cited references disclose or render obvious each and every element of any
`
`Challenged Claim for at least the following reasons:
`
`(1) The proposed combination of U.S. Patent Application Publication
`
`No. 2009/0288012 (“Hertel,” Ex. 1005), U.S. Patent Application Publication
`
`No. 2009/0037326 (“Chitti,” Ex. 1006), U.S. Patent Application Publication
`
`No. 8,296,686 (“Tedesco,” Ex. 1007), and U.S. Patent Application Publication
`
`No. 2012/0123937 (“Spodak,” Ex. 1008) in Ground 1 does not disclose a method
`
`that includes a “method for setting a temporary payment card,” as claimed.
`
`(2) The proposed combination of Hertel, Chitti, Spodak, and Tedesco
`
`further in view of U.S. Patent No. 7,967,196 (“Bierbaum,” Ex. 1010), in Ground 2
`
`does not cure the deficiencies of Hertel, Chitti, Spodak, and Tedesco. Like Hertel,
`
`Chitti, Spodak, and Tedesco, Bierbaum either alone or in combination, does not
`
`teach setting a temporary payment card, as claimed.
`
`(3) The proposed combination of Hertel, Chitti, Spodak, Tedesco, and
`
`Bierbaum further in view of U.S. Patent Application Publication No. 2012/0197743
`
`
`
`

`

`(“Grigg,” Ex. 1012), in Ground 3 in the Petition does not cure the deficiencies of
`
`Hertel, Chitti, Spodak, and Tedesco. Like Hertel, Chitti, Spodak, Tedesco, and
`
`Bierbaum, Grigg, either alone or in combination, does not teach setting a temporary
`
`payment card, as claimed.
`
`(4) The proposed combination of Hertel, Chitti, Spodak, and Tedesco,
`
`further in view of U.S. Patent Application Publication No. 2009/0183120 (“Ording,”
`
`Ex. 1016), in Ground 4 in the Petition does not cure the deficiencies of Hertel, Chitti,
`
`Spodak, and Tedesco. Like Hertel, Chitti, Spodak, and Tedesco, Ording, either alone
`
`or in combination, does not teach setting a temporary payment card, as claimed.
`
`(5) The proposed combination of Hertel, Chitti, Spodak, and Tedesco
`
`further in view of U.S. Patent No. 9,116,596 (“Roman,” Ex. 1017), in Ground 5 in
`
`the Petition does not cure the deficiencies of Hertel, Chitti, Spodak, and Tedesco.
`
`Like Hertel, Chitti, Spodak, and Tedesco, Roman, either alone or in combination,
`
`does not teach setting a temporary payment card, as claimed.
`
`For these reasons and, as discussed more fully herein, institution should be
`
`denied because Petitioner has not met its burden of showing that the cited references
`
`disclose or render obvious as a whole any Challenged Claim.
`
`2
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`

`

`II. THE ’692 PATENT AND THE CHALLENGED CLAIMS
`
`A. Overview of the ’692 Patent
`
`The ’692 Patent relates to a setting a temporary payment card on a mobile
`
`device. (Ex. 2001, Declaration of Dr. Michael I. Shamos, Ph.D. (“Shamos”) at ¶ 38.)
`
`Agents register subscribers and deposit funds into, and withdraw funds from, the
`
`system under direction from subscribers. (Ex. APPL-1001, 1:49-56.) The
`
`’692 Patent recognizes that a user may have access to multiple payment cards via
`
`the same device, and the user may wish to use a card other than a “main payment
`
`card” for a given transaction. (Ex. APPL-1001, 1:24-31.) The ’692 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.)
`
`The ’692 Patent discloses a method for selecting a temporary payment card
`
`by moving a card on a display from a list of available cards. (Shamos at ¶ 39; and
`
`Ex. APPL-1001, 1:61-67.) The ’692 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).
`
`The ’692 Patent discloses the concept of a “payable time,” which is a time
`
`period within which the temporary card may be used. (Shamos at ¶ 40.) If a payment
`
`3
`
`

`

`is made during the payable time, the main payment card is reset. (Id.) If no payment
`
`is made during the payable time, the main payment card is reset at the expiration of
`
`the payable time. (Id., and Ex. APPL-1001, 2:6-8.)
`
`The ’692 Patent further discloses methods of displaying the remaining
`
`payable time to the user, such as by having the device move the main payment card
`
`gradually back to its original position (Shamos at ¶ 41; Ex. APPL-1001, 2:12-14) or
`
`having the temporary payment card gradually disappear (Id., 2:26-28).
`
`The ’692 Patent also discloses methods by which the user can extend the
`
`payable time. (Shamos at ¶ 42; Ex. APPL-1001, 2:14-23.)
`
`The ’692 Patent discloses warning the user via an alarm that the payable time
`
`is shorter than or equal to a threshold. (Shamos at ¶ 43; Ex. APPL-1001, 2:29-31.)
`
`A common theme of these disclosures is that the user designates a temporary
`
`payment card to be used in place of a main payment card and the time during which
`
`the temporary payment will be used is time-limited or transaction-limited. (Shamos
`
`at ¶ 44.) The user is given an indication that the temporary payment card will no
`
`longer be active and the main payment card will be restored. (Id.)
`
`B.
`
`The ’692 Prosecution History
`
`The ’692 prosecution history is almost 3600 pages long and prosecution took
`
`over 5-1/2 years. (Shamos at ¶ 45). The Examiner considered over 300 separate
`
`references, including Petitioner’s primary reference, Hertel, and three of Petitioner’s
`
`4
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`

`

`secondary references, Spodak, Bierbaum, and Grigg, but did not issue a single prior
`
`art rejection. (Id.) There were two rejections based on § 101, and these were
`
`overcome by minor amendments to the claims. (Id.)
`
`C. Challenged Claims of the ’692 Patent
`
`Petitioner challenges Claims 1-13. (Ex. 2003, Claims Appendix).
`
`III. A PERSON HAVING ORDINARY SKILL IN THE ART
`
`A POSITA as of the effective filing date of the ’692 Patent would have had a
`
`bachelor’s degree in electrical engineering, computer science, or equivalent training,
`
`and approximately two years of work experience in software development involving
`
`network-based monetary transaction systems. (Shamos at ¶ 35). Lack of work
`
`experience can be remedied by additional education, and vice versa. (Id.)
`
`Appropriate experience could substitute for education.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner argues that the claim term “from the first portion of the screen”
`
`requires construction. Petitioner refers to limitations [1.6.2] and [13.7.2], which are
`
`identical. (Pet. at 8.) Petitioner further argues that limitations [1.5]-[1.7.2] and
`
`[13.6]-[13.8.2] lack patentable weight under the “printed matter doctrine.”
`
`(Pet.at 11.) Petitioner’s proposed claim construction is wrong and alleged lack of
`
`patentable weight is also wrong for the reasons set forth below:
`
`5
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`

`

`A.
`
`“from the first portion of the screen”
`
`The Board should not adopt Petitioner’s proposed construction of the term
`
`“from the first portion of the screen.” (Shamos at ¶ 60.)
`
`The relevant portions of claim are reproduced here, with the content
`
`surrounding “screen” highlighted:
`
`[1.1] displaying a list of mobile payment cards at a first portion of a
`
`touch screen interface;
`
`[1.2] receiving, through the touch screen interface, a user input
`
`selecting a mobile payment card from the list of mobile payment card;
`
`[1.3] detecting the user input sliding the mobile payment card from the
`
`first portion of the touch screen interface to a second portion of the
`
`touch screen interface;
`
`[1.6.2] moving the mobile payment card a first distance from the first
`
`portion of the screen towards a second portion of the touch screen,
`
`As shown above, the term “the screen,” as used in limitation [1.6.2], has no
`
`explicit antecedent basis because there is no express recitation of “a screen” earlier
`
`in the claim. (Shamos at ¶ 48.)
`
`Petitioner leaps on this apparent gap to argue that there must be some intended
`
`difference between “the screen” and “the touch screen” on which “the touch screen
`
`interface” is displayed. (Shamos at ¶ 49.) Petitioner and its expert completely ignore
`
`the fact that the ’692 Patent uses the term “screen” to mean content that is displayed
`
`6
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`

`

`on the touch screen. (Id.) In every instance, the “screen” referred to in the ’692 Patent
`
`refers to what is displayed on the touch screen interface, which is coextensive with
`
`the “touch screen.” (Id.)
`
`Further, the term “screen” appears in the specification (outside the claims)
`
`45 times. (Shamos at ¶ 50.) It appears as part of the larger phrase “touch screen”
`
`seven times, including five appearances in the term “touch screen 110.” (Id.) That
`
`leaves 38 uses of “screen” without the modifier “touch.” (Id.)
`
`The first such usage of “screen” without “touch” is at 2:66-67, which states,
`
`“FIG. 1 is a view showing a mobile device which displays a mobile payment card
`
`management screen.” (Shamos at ¶ 51.) FIG. 1 of the ’692 Patent is reproduced here,
`
`with the touch screen interface outlined in red:
`
`7
`
`

`

`
`
`The disclosure in the ’692 Patent that FIG. 1 is displaying a “mobile payment
`
`card management screen” means that the red rectangle is the “mobile payment card
`
`management screen.” (Shamos at ¶ 52.)
`
`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 ¶ 53.)
`
`Furthermore, at 3:3-4, the ’692 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
`
`8
`
`

`

`list.” (Shamos at ¶ 54.) FIG. 3 of the ’692 Patent is reproduced below, with the
`
`“screen” outlined in red:
`
`
`
`As before, the ’692 Patent uses “screen,” “touch screen” and “touch screen
`
`interface” interchangeably. (Shamos at ¶ 55.) Similar uses appear at 3:5-7, 3:8-11,
`
`3:18-19, 3:20-22, 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 describing various “screens” that are displayed to the user. (Id.)
`
`In the remainder of the specification, no distinction is made between “screen,”
`
`“touch screen” and “touch screen interface.” (Shamos at ¶ 56.)
`
`9
`
`

`

`In limitations 1.6.2 and 13.17.2, “moving the mobile payment card a first
`
`distance from the first portion of the screen towards a second portion of the touch
`
`screen,” a POSITA would have understood that a user cannot move the mobile
`
`payment card beyond the “touch screen” and the payment card cannot be displayed
`
`beyond the “touch screen,” because no application program can display anything
`
`outside the “touch screen.” (Shamos at ¶ 57.) Therefore, a POSITA would have
`
`understood that “moving the mobile payment card a first distance from the first
`
`portion of the screen towards a second portion of the touch screen” means “moving
`
`the mobile payment card a first distance from the first portion of the touch screen
`
`towards a second portion of the touch screen.” (Id.)
`
`Therefore, a POSITA would have understood “from the first portion of the
`
`screen” to mean “from the first portion of the touch screen.” (Shamos at ¶ 58.) Under
`
`such a construction, there is no lack of antecedent basis. (Id.)
`
`Petitioner, on the other hand, proposes a construction that itself suffers from
`
`lack of antecedent basis. (Shamos at ¶ 59.) The Petition proposes that “from the first
`
`portion of the screen” means “from a first portion of the screen.” (Pet. at 10.)
`
`However, there is no prior recitation of “a screen” in the claims, so “the screen”
`
`would lack antecedent basis. (Id.)
`
`Further, Petitioner does not show why construction of the term is necessary
`
`for resolving any issue in this proceeding. (Shamos at ¶ 60.)
`
`10
`
`

`

`B.
`
`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 ¶ 61.) Such a functional relationship exists in the cited
`
`limitations, which are drawn to the simultaneous display of a moving timer and a
`
`numerical indicator of a remaining payable time. The “specific action” is the
`
`movement of the timer, the “functional relationship” is the coordination of the
`
`numerical indicator along with the moving timer. A moving timer is not “printed
`
`matter” for the simple reason that the underlying software makes it move. A changing
`
`numerical indicator is also not “printed matter” for the simple reason that it changes
`
`as the underlying software determined how much payable time remains. If Petitioner’s
`
`argument were correct, then no display features cold be accorded patentable weight
`
`because they would constitute no more than “printed matter.” (Shamos at ¶ 61.)
`
`11
`
`

`

`V. OVERVIEW 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. (Shamos at ¶ 62.) The ’692 Patent does not claim such a
`
`thing, 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.” (APPL-1005.) 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:
`
`12
`
`

`

`
`
`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
`
`¶ 64.) Hertel mimics a conventional physical wallet, but simplifies the selection of a
`
`card using a drag-and-drop scheme. (Id.) Each time the user wants to purchase
`
`something, a drag-and-drop is required. (Id.) There is no “main payment card” that
`
`will be used by default in the absence of a drag-and-drop. (Id.) The selected card is
`
`not a “temporary payment card” any more than the user’s American Express card
`
`becomes a “temporary payment card” just because the user uses it for a particular
`
`13
`
`

`

`transaction. (Id.) “Temporary” implies the existence of something permanent, which
`
`does not exist in Hertel. (Id.)
`
`On the contrary, central to the ’692 Patent is the notion of a main (default)
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`payment card, which is overridden temporarily by a “temporary payment card.”
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`(Shamos at ¶ 65.) Neither of these elements is taught by Hertel. (Id.)
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`Hertel is a primary reference, as it is used in an obviousness combination in
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`each Ground of the Petition. (Shamos at ¶ 66.) Hertel was considered by the
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`Examiner during prosecution of the ’692 Patent. (Id.)
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`However, Petitioner never shows how Hertel discloses a “temporary card” as
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`claimed in the ’692 Patent. (Shamos at ¶ 67.)
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`B. Chitti at al. U.S. 2009/0037326, Ex. APPL-1006 (“Chitti”)
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`Chitti is entitled “Virtual Card Selector for a Portable Electronic Device.” (Ex.
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`APPL-1006.) Unlike Hertel, Chitti recognizes the concept of a “default card,” which
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`is card having the highest “priority” among a selection of cards. (Id., [00267].) The
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`default card is used unless a different card is selected. (Id., [0026].) The priority of
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`a card can be determined automatically, according to a predetermined schedule
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`(calendar), location, usage history or other criteria. (Id., [0026].) The portable device
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`on which the cards reside may detect a payment terminal, and automatically select a
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`payment card appropriate for that terminal. (Id., [0042].) As is usual with electronic
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`wallets, the user may select a specific card to be used in a given transaction. (Id.,
`
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`[0025].) While other methods of determining priority are disclosed, the concept of a
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`“temporary payment” card is entirely absent from Chitti. (Shamos at ¶ 68.) The
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`method of Chitti uses either (1) the default card; (2) the card having highest
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`determined priority; or (3) a card selected by the user. (Id.) There is no notion of a
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`time duration during which any “temporary card” will be used, after which usage
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`will return to the default card. (Id.) Yet, Chitti is a primary reference, as it is used in
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`an obviousness combination in each Ground of the Petition.
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`However, Petitioner never shows how Chitti discloses a “temporary card” as
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`claimed in the ’692 Patent. (Shamos at ¶ 70.)
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`C.
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`Spodak U.S. 2012/0123937, Ex. APPL-1008 (“Spodak”)
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`Spodak is entitled “Portable-E-wallet and Universal Card.” (Ex. APPL-1008.)
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`Spodak’s idea is to replace the collection of cards ordinarily carried by a user with a
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`single, physical “universal card” that can emulate any card in the collection.
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`(Id., [0007].) The universal card 110 operates in conjunction with a mobile device
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`100, which may be a cell phone, as shown in Fig. 1 of Spodak:
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`15
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`As shown in FIG. 1, universal card 110 communicates via short-range radio
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`between its transceiver 116 and transceiver 106 of the mobile device. (Shamos at ¶
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`
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`71.)
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`The universal card is programmed to store data associated with each of the
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`cards it will be used to emulate. (Ex. APPL-1008, [0054].)
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`Spodak discloses a “default card” mode, in which the universal card “always
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`emulates a specific card, unless programmed otherwise.” (Id., [0052].) Spodak
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`emphasizes the need to reprogram as follows: “In this [default card] mode, the
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`information of the default card is saved in the universal card and the universal card
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`is always configured to emulate the default card, unless the user re-programs the
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`universal card to temporarily act as another card or to change to a new default card.”
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`(Id., [0052].)
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`16
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`Spodak also discloses what it refers to as “temporary card” mode, in which
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`the universal card stores “only one set of information required for emulation.”
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`(Id., [0052].) Spodak discloses that the universal card in “temporary card” mode can
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`be programmed “to emulate a specific card either for a set amount of time or number
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`of transactions. However, “If the user wanted to change the universal card to emulate
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`a different card, the user would need to reconnect the mobile device to reprogram
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`the card.” (Id., [0052].) Spodak discloses that it is possible to program the universal
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`card to emulate one card for a period of time, and then revert back to a different card
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`at the end of that time. None of this is done through the mobile device, however,
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`which is required by the Challenged Claims. (Shamos at ¶ 74.) The temporary card
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`can be selected at the mobile device. (Id.) This arrangement of Spodak differs
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`radically from that of the ’692 Patent, which does not require any physical “universal
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`card” at all, and does not require any reprogramming. (Id.)
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`Spodak is a primary reference, as it is used in an obviousness combination in
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`each Ground of the Petition. (Shamos at ¶ 75.)
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`However, Petitioner never shows how Spodak discloses a “temporary card”
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`as claimed in the ’692 Patent. (Shamos at ¶ 76.) Instead, Spodak discloses
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`reprogramming the same universal card each time the user desires it to simulate a
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`different payment card. (Id.) It may appear cumbersome for Spodak to require a user
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`to employ both a mobile device and a universal card, but Spodak teaches a need for
`
`17
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`security; that is, someone who finds (or steals) either the card or the phone cannot
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`make payment without both together. (Id. and Ex. APPL-1008, [0048].) Spodak also
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`provides a third security mechanism, in that the card itself may require a biometric
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`input. (Ex. APPL-1008, [0049].)
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`Also, Spodak was considered by the Examiner during prosecution of the
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`’692 Patent. (Shamos at ¶ 77.)
`
`D. Tedesco et al. U.S. 8,296,686, Ex. APPL-1007 (“Tedesco”)
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`Tedesco is entitled “Portable Prompting Aid for the Developmentally
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`Disabled.” (Ex. APPL-1007.) It discloses an application running on a mobile device
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`that aids developmentally disabled individuals to follow a schedule by alerting them
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`to upcoming events, e.g., by displaying a timer. (Id., 2:39-45). Tedesco discloses
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`that a developmentally disabled individual may be prompted to speak a word upon
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`choosing an image of “Ice Cream” by having the mobile device utter the prompt,
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`“Say ‘Ice Cream’”).
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`However, Tedesco is not analogous art to the ’692 Patent, contrary to
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`Petitioner’s allegation. (Shamos at ¶ 79.) Tedesco is devoid of any disclosure of
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`payment instruments, default cards, temporary cards, or selection of cards. (Id.) A
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`POSITA looking to develop a process for selecting a temporary payment card would
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`not look to unrelated disclosures of interfaces for developmentally disabled
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`individuals that have nothing to do with making payments. (Id.)
`
`18
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`Tedesco is a primary reference, as it is used in an obviousness combination in
`
`each Ground of the Petition. (Shamos at ¶ 80.)
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`However, Petitioner never shows how Tedesco discloses or suggests any sort
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`of payment card at all, or how a developmentally disabled individual would use
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`Tedesco to make a payment. (Shamos at ¶ 81.)
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`E.
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`Bierbaum et al. U.S. 7,967,196, Ex. APPL-1010 (“Bierbaum”)
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`Bierbaum is en