Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Date: December 27, 2023
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOZIDO CORFIRE-KOREA, LTD.,
`Patent Owner.
`
`
`IPR2022-01149
`Patent 10,223,692 B2
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-01149
`Patent 10,223,692 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–13 of U.S. Patent No. 10,223,692 B2 (Ex. 1001,
`“the ’692 patent”). Paper 2 (“Pet.”). Mozido Corfire-Korea Ltd. (“Patent
`Owner”)1 filed a Preliminary Response opposing institution. Paper 6. We
`instituted an inter partes review of claims 1–13 of the ’692 patent on all
`grounds of unpatentability alleged in the Petition. Paper 7 (“Institution
`Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 9, “PO
`Resp.”), Petitioner filed a Reply (Paper 13, “Reply”), and Patent Owner filed
`a Sur-reply (Paper 14, “Sur-reply”).
`An oral hearing was held on October 3, 2023, and the record contains
`a transcript of this hearing. Paper 23 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–13 of the ’692 patent are unpatentable.
`
`
`A.
`
`II. BACKGROUND
`Related Proceedings
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner and Patent Owner
`identify the judicial or administrative matters that would affect or be affected
`by a decision in this proceeding. Petitioner states it is unaware of any
`related matters. Pet. 1. Patent Owner states the ’692 patent is the subject of
`
`
`1 Patent Owner identifies Fintiv, Inc. as a real party in interest. Paper 4, 1
`(Patent Owner’s Mandatory Notices).
`
`2
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`IPR2022-01149
`Patent 10,223,692 B2
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`Fintiv, Inc. v. Paypal Holdings, Inc., Civil Act. 6:22-cv-00288 (W.D. Tex.
`March 17, 2022). Paper 4, 1.
`B. Overview of the ’692 Patent (Ex. 1001)
`The ’692 patent is titled “Method for Setting Temporary Payment
`Card and Mobile Device Applying the Same.” Ex. 1001, code (54).
`The ’692 patent describes “a method for setting a mobile payment card to be
`used for payment and a mobile device applying the same.” Id. at 1:16–20.
`The ’692 patent states that, “[w]hen the user temporarily uses another
`mobile payment card to make a payment (for example, for one-time
`payment), the user should recover the original main payment card after
`finishing the payment.” Id. at 1:32–35. However, “the operation of
`recovering the original main payment card may be a cumbersome procedure
`and may cause inconvenience to the user” and “changing the main payment
`card to another payment card may also cause inconvenience.” Id. at 1:35–
`43. The ’692 patent’s method sets a temporary payment card so “a user can
`change the temporary payment card more easily, swiftly, naturally,
`amusingly, and intuitively.” Id. at 1:49–57.
`
`3
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`IPR2022-01149
`Patent 10,223,692 B2
`
`
`Figures 10 and 11 of the ’692 patent are reproduced below.
`
`
`
`
`Figure 10 illustrates a mobile device which displays a payment card
`selection screen of a mobile wallet application and a list of mobile payment
`cards. Ex. 1001, 4:36–40. Figure 11 illustrates that the user may select a
`mobile payment card (i.e., “ABC PREMIER”) from the mobile payment
`card list to use as a temporary payment card by sliding up the mobile
`payment card. Id. at 4:41–48.
`The ’692 patent states that the “payment by the temporary payment
`card should be made within a ‘payable time’” and, “when the payable time
`passes, the setting of the temporary payment card is reset and a payment is
`made by a main payment card.” Ex. 1001, 4:62–65.
`
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`4
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`IPR2022-01149
`Patent 10,223,692 B2
`
`
`Figures 15 and 16 of the ’692 patent are reproduced below.
`
`
`
`
`Figure 15 illustrates a payment card selection screen showing when a mobile
`payment card is slid up by the user and is selected/set as a temporary
`payment card, whereas Figure 16 illustrates the same screen after 10 seconds
`pass. Ex. 1001, 3:36–40. In Figure 15, the screen also displays a payable
`time (e.g., 30 seconds) while the temporary card is active. Id. at 4:66–5:2,
`5:42–43. As the time decreases, Figure 16 shows the remaining payable
`time (i.e., 20 seconds) and the temporary card (ABC PREMIER) slowly
`slides down as the payable time passes and returns to the original position.
`Id. at 5:53–58.
`
`
`5
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`IPR2022-01149
`Patent 10,223,692 B2
`
`C.
`
`[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;
`
`Illustrative Claims 1 and 13
`As mentioned above, Petitioner challenges claims 1–13 of the ’692
`patent. Claims 1 and 13 are the two independent claims. Ex. 1001, 7:41–
`8:6, 8:55–9:19. Claim 1 is a method claim and claim 13 is written as an
`apparatus of method claim 13. Claims 1 and 13 are reproduced below with
`similar limitations juxtaposed.2
`[1.0] A method for setting a
`temporary payment card,
`comprising:
`
`
`
`
`[13.0] A mobile device
`comprising:
`[13.1] a touch screen
`configured to display a list of
`mobile payment cards; and a
`processor configured to:
` [13.2] displaying a list of
`mobile payment cards at a
`first portion of a touch screen
`interface;
`[13.3] receive, through the
`touch screen interface, a user
`input selecting a mobile
`payment card from the list of
`mobile payment card;
`[13.4] 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;
`
`
`2 For ease of reference, we use Petitioner’s claim recitation numbering
`scheme as indicated by the bracketed numbers.
`
`6
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`IPR2022-01149
`Patent 10,223,692 B2
`
`
`[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 second portion
`of the screen towards a
`second first portion of the
`touch screen,3 and
`[1.6.3] decrementing the
`numerical indicator a first
`difference to display a
`remaining payable time,
`wherein:
`[1.7.1] the first distance is
`proportional to an amount of
`payable time that has passed,
`and
`
`
`[13.5] 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;
`[13.6] displaying a numerical
`indicator of a payable time,
`wherein the numerical
`indicator initially indicates a
`first remaining time amount;
`[13.7.1] simultaneously:
`[13.7.2] moving the mobile
`payment card a first distance
`from the first second portion
`of the screen towards a
`second first portion of the
`touch screen, and
`[13.7.3] decrementing the
`numerical indicator a first
`difference to display a
`remaining payable time,
`wherein:
`[13.8.1] the first distance is
`proportional to an amount of
`payable time that has passed,
`and
`
`
`
`3 Petitioner and Patent Owner agree that claim limitations 1.6.2 and 13.7.2
`contain an error and should properly recite “moving the mobile payment
`card a first distance from the second portion of the screen towards a first
`portion of the touch screen.” PO Resp. 15; Reply 1–2, 8–10.
`
`7
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`IPR2022-01149
`Patent 10,223,692 B2
`
`
`[1.7.2] the first difference is
`proportional to the amount of
`payable time that has passed:
`and
`[1.8] resetting the setting of
`the temporary payment card
`when the payable time passes
`such that the mobile payment
`card is no longer set as the
`temporary card and payments
`are made through a main
`card.
`
`[13.8.2] the first difference is
`proportional to the amount of
`payable time that has passed:
`and
`[13.9] reset the setting of the
`temporary payment card
`when the payable time
`passes.
`
`
`D.
`
`Evidence and Asserted Grounds
`Petitioner relies upon the following evidence:
`(1) US 2009/0288012 A1, published November 19, 2009 (“Hertel,”
`Ex. 1005);
`(2) US 2009/0037326 A1, published February 5, 2009 (“Chitti,”
`Ex. 1006);
`(3) US 8,296,686 B1, issued October 23, 2012 (“Tedesco,” Ex. 1007);
`(4) US 2012/0123937 A1, published May 17, 2012 (“Spodak,”
`Ex. 1008);
`(5) US 7,967,196 B1, issued June 28, 2011 (“Bierbaum,” Ex. 1010);
`(6) US 2012/0197743 A1, published August 2, 2012 (“Grigg,”
`Ex. 1012);
`(7) US 2009/0183120 A1, published July 16, 2009 (“Ording,”
`Ex. 1016); and
`(8) US 9,116,596 B2, issued August 25, 2015 (“Roman,” Ex. 1017).
`Petitioner submits two declarations from Dr. Henry Houh (Exs. 1003
`(Dr. Houh’s Declaration in support of the Petition), 1020 (Dr. Houh’s
`
`8
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`Declaration in support of Petitioner’s Reply)). Patent Owner submits a
`declaration from Michael I. Shamos, Ph.D in support of the Patent Owner
`Response (Ex. 2004).
`Petitioner challenges the patentability of the ʼ692 patent claims based
`on the following grounds (Pet. 13):
`Ground Claim(s) Challenged 35 U.S.C. §4 Reference(s)/Basis
`1
`1–4, 11–13
`103
`Hertel, Chitti, Spodak,
`Tedesco
`Hertel, Chitti, Spodak,
`Tedesco, Bierbaum
`Hertel, Chitti, Spodak,
`Tedesco, Bierbaum,
`Grigg
`Hertel, Chitti, Spodak,
`Tedesco, Ording
`Hertel, Chitti, Spodak,
`Tedesco, Roman
`
`2
`
`3
`
`4
`
`5
`
`
`
`5, 6, 10
`
`7
`
`8
`
`9
`
`103
`
`103
`
`103
`
`103
`
`III. ANALYSIS
`
`A.
`
`Legal Standards
`Petitioner bears the burden of persuasion to prove unpatentability, by
`a preponderance of the evidence, of the claims challenged in the Petition.
`35 U.S.C. § 316(e). Except in limited circumstances not present here, this
`burden of persuasion does not shift to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`
`4 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’692 patent claims priority to an application filed after
`this date, our citations to 35 U.S.C. § 103 in this Decision are to the post-
`AIA version. Our decision is not impacted, however, by which version of
`the statute applies.
`
`9
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`
`As mentioned above, Petitioner’s challenges are based on
`obviousness. Pet. 13. A claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed invention and the prior art are such that the
`claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the
`art to which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). The question of obviousness is resolved based on
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in the record,
`objective evidence of nonobviousness.5 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” Id.
`
`B.
`
`
`5 During trial, Patent Owner has not directed us to any objective evidence of
`non-obviousness. See PO Resp.
`
`10
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`
`Petitioner states a person of ordinary skill in the art would have had
`a working knowledge of mobile payment techniques pertinent
`to the ’692 Patent, including software development in the field
`of mobile payment techniques. Such [person of ordinary skill
`in the art] would have had a bachelor’s degree in electrical
`engineering, computer science, or equivalent training, and
`approximately two years of work experience in software
`development. Lack of work experience can be remedied by
`additional education, and vice versa.
`Pet. 7 (citing Ex. 1003 ¶¶ 20–22).
`Patent Owner states a person of ordinary skill in the art would have
`
`had
`
`a bachelor’s degree in electrical engineering, computer science,
`or equivalent training, and approximately two years of work
`experience in software development involving network-based
`monetary transaction systems. Lack of work experience can be
`remedied by additional education, and vice versa. Appropriate
`experience could substitute for education.
`PO Resp. 1 (citing Ex. 2004 ¶ 35).
`We do not see any substantive difference between the parties’
`proposals. We adopt Petitioner’s definition of the level of ordinary skill
`because it is consistent with the ’692 patent and the applied prior art, but
`note that our obviousness evaluation would not differ if we were to apply
`Patent Owner’s definition of the level of ordinary skill in the art.
`
`C. Claim Construction
`In an inter partes review, the claims are construed using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021).
`This claim construction standard includes construing the claim in accordance
`
`11
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`with the ordinary and customary meaning of such claims as would have been
`understood by one of ordinary skill in the art. Id.; see Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). In construing claims in
`accordance with their ordinary and customary meaning, we consider
`intrinsic evidence such as the specification and the prosecution history of the
`patent. Phillips, 415 F.3d at 1315–17. Extrinsic evidence, including expert
`and inventor testimony, dictionaries, and treatises, may also be used but is
`less significant than the intrinsic record. Id. at 1315. Usually, the
`specification is dispositive, and it is the single best guide to the meaning of a
`disputed term. Id. Any special definitions for claim terms must be set forth
`in the specification with reasonable clarity, deliberateness, and precision.
`See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Other than the claim terms discussed below, we determine that we do
`not need to expressly construe any other terms to resolve the parties’
`disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`12
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`
`“Screen Terms”
`1.
`Patent Owner and Petitioner agree that certain “screen” terms used
`throughout the claims are synonymous, as shown in the table below.
`
`
`
`PO Resp. 8; Reply 11.
`
`
`2.
`
`“Moving the mobile payment card a first distance from the first
`portion of the screen towards a second portion of the touch
`screen”
`Claim limitations 1.6.2 and 13.7.2 recite “moving the mobile payment
`card a first distance from the first portion of the screen towards a second
`portion of the touch screen.” Ex. 1001, 7:60–62 (claim 1), 9:8–12 (claim 13)
`(emphasis added). Patent Owner explains that there is an obvious error in
`these limitations because “[a]t 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.” PO Resp. 15 (citing Ex. 2004 ¶ 68).
`
`13
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`

`IPR2022-01149
`Patent 10,223,692 B2
`
`Petitioner agrees. Reply 8; see id. at 1–2, 8–10. Thus, these limitations
`should recite “moving the mobile payment card a first distance from the
`second portion of the screen towards a first portion of the touch screen.” PO
`Resp. 15; Reply 1–2, 8–10; Tr. 3:24–4:7 (Petitioner).
`
`
`“Temporary card” and “temporary payment card”
`3.
`Petitioner and Patent Owner agree that the terms “temporary card”
`and “temporary payment card” used throughout the claims are synonymous.
`Reply 2; PO Resp. 7. However, both parties present different definitions for
`these terms.
`Petitioner states that the “plain and ordinary meaning of a ‘temporary
`payment card’ is a payment card that can be used for a limited time.”
`Reply 2 (citing Ex. 1020 ¶ 14 (citing Ex. 1022 (defining “temporary” as
`“lasting for a limited time.”); Ex. 1023 (defining “temporary” as “[l]asting,
`used, or enjoyed for a limited time.”)); Ex. 1020 ¶¶ 13–15, 26).
`Patent Owner states that “temporary card” and “temporary payment
`card” mean a “payment card that can only be used for a payable time.” PO
`Resp. 7–8 (referring to PO Resp. 2–4); see Sur-reply 2–6. Patent Owner
`explains that a temporary payment card “is one that can be used only for a
`‘payable time,’ after which the ‘main payment card’ is used unless another
`temporary payment card is selected.” PO Resp. 7–8 (citing Ex. 2004 ¶ 50).
`Patent Owner bases its construction on two embodiments described in
`column 1, line 24 through column 2, line 31 of the ’692 patent: (1) if
`payment is made with a temporary payment card during a payable time, then
`the main payment card is reset; and (2) if no payment is made with the
`temporary payment card during the payable time, the main payment card is
`
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`IPR2022-01149
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`reset at the expiration of the payable time. Id. at 2–3; Ex. 2004
`¶¶ 38–39 (citing Ex. 1001, 1:49–67, 2:6–8), ¶ 43 (describing two
`conditions); Ex. 1021, 33:23–36:10 (construction based on those two
`conditions); Ex. 1020 ¶ 21.
`We do not agree with Patent Owner because there are several issues
`with its proposed construction. First, the claims do not recite that a
`temporary payment card “can only be used for a payable time” nor does
`Patent Owner direct us to specific claim language suggesting the claims
`should be limited to the two embodiments identified by Patent Owner.
`EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir.
`2014) (“[I]t is improper to read limitations from a preferred embodiment
`described in the specification—even if it is the only embodiment—into the
`claims absent a clear indication in the intrinsic record that the patentee
`intended the claims to be so limited.”). The claim language is not limited to
`the embodiments identified by Patent Owner. SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding
`the claim language may be aided by the explanations contained in the
`written description, it is important not to import into a claim limitations that
`are not a part of the claim. For example, a particular embodiment appearing
`in the written description may not be read into a claim when the claim
`language is broader than the embodiment”). Claim limitation 1.8, for
`example, recites only “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.”
`Ex. 1001, 8:3–6. This limitation broadly relates to embodiment 2 listed
`above (i.e., “if no payment is made with the temporary payment card during
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`IPR2022-01149
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`the payable time, the main payment card is reset at the expiration of the
`payable time”), and is not limited to embodiment 1 listed above.
`Second, Patent Owner’s proposed construction renders superfluous
`portions of limitation 1.8. If “temporary payment card” is construed so that
`it “can only be used for a payable time,” then this construction renders
`superfluous the portion of limitation [1.8] that specifically recites a condition
`on resetting the temporary payment card (“when the payable time passes
`. . . .”). Ex. 1020 ¶ 25.
`Third, Patent Owner’s proposed construction that the temporary
`payment card “can only be used for a payable time” excludes embodiments
`in the ’692 patent. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1320
`(Fed. Cir. 2005) (“A claim construction that does not encompass a disclosed
`embodiment is rarely, if ever, correct.” (alteration omitted)). The ’692
`patent, for example, discloses that a user can reset the temporary payment
`card “even if the payable time remains” by sliding down the temporary
`payment card on the screen. Ex. 1001, 5:16–19 (“When the user
`intentionally slides down the temporary payment card as shown in FIG. 13
`even if the payable time still remains, the setting of the temporary payment
`card is reset.”). Thus, the ’692 patent does not require that the temporary
`payment card can “only be used for a payable time” because a user may
`intentionally remove the card before the payable time expires.
`After Petitioner identified the problems with Patent Owner’s proposed
`construction (see Reply 3–8), Patent Owner raised new arguments that
`“payable time” can (i) expire when the time reaches zero by
`decrementing with the passage of time (Ex. 1001 at 5:3–11),
`when the user manually sets the payable time to zero (id. at
`5:16–19), or a transaction is performed using the temporary
`card (id. at 5:13–14), and (ii) be manually extended by the user
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`
`before the payable time reaches zero (id. at 5:59–62).
`However, once the remaining payable time reaches zero or the
`transaction is performed, the main card is activated, and the
`temporary card is no longer usable. The remaining payable
`time can either reach zero by decrementing with the passage of
`time or the user manually setting payable time to zero.
`Sur-reply 2. But once again, Patent Owner’s arguments in this regard
`improperly reads limitations from preferred embodiments described in the
`specification into the claims. EPOS Techs., 766 F.3d at 1341.
`
`We determine that Petitioner shows by a preponderance of the
`evidence that the plain and ordinary meaning of a “temporary payment card”
`and “temporary card” is “a payment card that can be used for a limited
`time.”
`
`
`Summary
`4.
`We further determine that we do not need to expressly construe any
`other terms to resolve the parties’ disputes. See Nidec Motor, 868 F.3d at
`1017 (“[W]e need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy.’” (quoting Vivid Techs, 200
`F.3d at 803)).
`
`
`Printed Matter
`5.
`Petitioner contends that
`Although Limitations [1.5]-[1.7.2] and [13.6]-[13.8.2]
`would have been obvious (see §VIII.C.5), they lack patentable
`weight under the printed-matter doctrine. Praxair Distribution
`v. Mallinckrodt Hosp. Prod. IP, 890 F.3d 1024, 1033 (Fed. Cir.
`2018) (addressing during claim construction). These
`limitations are “directed to the content of the information
`conveyed” (time remaining) and “merely inform[] people of the
`
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`
`claimed information” rather than “create a new functionality in
`a claimed device or [] cause a specific action in a claimed
`process.” C R Bard Inc. v. AngioDynamics, 979 F.3d 1372,
`1381-82 (Fed. Cir. 2020). Although the temporary card is reset
`when the “payable time” expires (Limitations [1.8]/[13.9]), that
`occurs based on “payable time” expiring and would occur
`regardless of whether or how remaining time is displayed.
`Pet. 11 (alterations in original).
`In response to Petitioner’s argument, Patent Owner contends
`Petitioner argues that limitations [1.5]-[1.7.2] and [13.6]-
`[13.8.2] lack patentable weight under the “printed matter
`doctrine,” citing C R Bard Inc. v. AngioDynamics, 979 F.3d
`1372, 1381-82 (Fed. Cir. 2020) for the proposition that the
`limitation are “‘directed to the content of the information
`conveyed’ (time remaining) and ‘merely inform[] people of the
`claimed information’ rather than ‘create a new functionality in a
`claimed device or [] cause a specific action in a claimed
`process’.” (Pet. at 11.)
`However, printed matter is given patentable weight if the
`printed matter and its associated product are in a “functional
`relationship.” MPEP § 2111.05. (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 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).
`PO Resp. 16–17.
`We determine that, regardless of whether limitations 1.5–1.7.2 and
`13.6–13.8.2 lack patentable weight under the printed matter doctrine,
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`Petitioner demonstrates that the applied prior art teaches these limitations
`(Pet. 37–57, 78–79). See Nidec Motor, 868 F.3d at 1017.
`
`D. Ground 1: Asserted Obviousness of Claims 1–4 and 11–13 Over
`Hertel, Chitti, Spodak, and Tedesco
`Petitioner asserts that claims 1–4 and 11–13 are unpatentable under 35
`U.S.C. § 103 as being obvious over Hertel (Ex. 1005), Chitti (Ex. 1006),
`Spodak (Ex. 1008), and Tedesco (Ex. 1007). Pet. 14–79; Reply 12–30.
`Patent Owner opposes Petitioner’s challenge. PO Resp. 32–50; Sur-reply 6–
`21.
`
`For the reasons discussed below, we determine Petitioner has shown
`by a preponderance of the evidence that claims 1–4 and 11–13 are
`unpatentable.
`Below, we present a brief overview of Hertel, Chitti, Spodak, and
`Tedesco and then we address Petitioner’s and Patent Owner’s contentions.
`Overview of Hertel (Ex. 1005)
`1.
`Hertel is a U.S. patent publication titled “Secured Electronic
`Transaction System.” Ex. 1005, code (54). Hertel describes a payment
`system having a user interface that acts as a visual wallet simulator. Id. at
`code (57).
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`
`Figure 17 of Hertel is reproduced below.
`
`
`Figure 17 illustrates Hertel’s electronic wallet 7 and screen 201 of user
`computer 100 (not shown) for “initiating (or providing) for display and
`execution a payment receptacle.” Id. ¶¶ 33, 206. Transaction authority 102,
`credit card payment gateway 242, and user computer 101 (not shown) are
`communicatively coupled through a network (not shown). Id. ¶ 206.
`Screen 201 of user computer 101 displays a user interface of web
`browser 202 and user interface 282 of electronic wallet 7. Id. Digital
`object 237, which corresponds to a deactivated credit card, is displayed in
`electronic wallet program 282. Id. To activate digital object/credit card 237,
`the user selects credit card 237 and moves it by dragging 238 and dropping it
`on target 239. Id. ¶ 207. Target 239 is payment receptacle module 283
`displayed in electronic wallet 282. Id. When digital object/credit card 237
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`is dropped on drop target 239, payment receptacle program 283 transmits
`through user computer 100 an instruction 702 containing identification
`information of the credit card and activates the credit card. Id.
`After the user is done with digital object/credit card 237, the user
`drags digital object/credit card from payment receptacle module 283 to user
`interface portion 282, where the credit card is deactivated. Ex. 1005 ¶¶ 218,
`288.
`
`
`Overview of Chitti (Ex. 1006)
`2.
`Chitti is a U.S. patent application titled “Virtual Card Selector for a
`Portable Electronic Device.” Ex. 1006, code (54). Chitti describes a mobile
`telephone which is equipped with a virtual card application configured to
`manage a plurality of virtual credit cards. Id. at code (57). Chitti recognizes
`the concept of a “default card,” which is used unless a different card is
`selected. Id. ¶ 26. The default card is the card having the highest “priority”
`among a selection of cards. Id. The priority of a card can be determined
`automatically, according to a schedule/calendar, location, usage history or
`other criteria. Id. The user also may select a specific card to be used in a
`given transaction. Id. ¶ 25. The portable device on which the cards reside
`may detect a payment terminal, and automatically select a payment card
`appropriate for that terminal. Id. ¶ 42.
`
`
`Overview of Spodak (Ex. 1008)
`3.
`Spodak is a U.S. patent application titled “Portable-E-wallet and
`Universal Card.” Ex. 1008, code (54). Spodak generally relates to e-wallets
`with payment cards. Id. at code (57). Spodak discloses a programmable
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`“universal card,” programmed using an e-wallet application, to emulate any
`card in the e-wallet. Id. ¶¶ 28–30. A user may program the universal card in
`a “default card mode[], where the universal card always emulates a specific
`[default] card, unless programmed otherwise.” Id. ¶ 52. In this default
`mode, “the universal card is always configured to emulate the default card,
`unless the user re-programs the universal card to temporarily act as another
`card or to change to a new default card.” Id. A user may program the card
`in a “’temporary card’ mode” to temporarily emulate a nondefault card for a
`time period (e.g., three hours), then have the card “revert back to the default”
`card (e.g., where a certain card is preferred in a particular location or
`context). Id. ¶¶ 52, 90.
`
`
`Overview of Tedesco (Ex. 1007)
`4.
`Tedesco is a U.S. patent titled “Portable Prompting Aid for the
`Developmentally Disabled.” Ex. 1007, code (54). Tedesco discloses an
`application running on a mobile device that aids developmentally disabled
`individuals to follow a schedule by alerting them to upcoming events (e.g.,
`by displaying a timer). Id. at 2:39–45. Tedesco’s graphical timer animation
`could take any form, such as a bar graph (Figure 18), hourglass, car traveling
`down a road, “a sun rising/setting,” or an animation symbolizing “finality.”
`Id. at 8:14–24.
`
`
`Independent Claims 1 and 13
`5.
`Petitioner, relying on Dr. Houh’s testimony, provides a limitation-by-
`limitation comparison of the teachings of Hertel, Chitti, Spodak, and
`Tedesco to independent claims 1 and 13. Pet. 18–59 (claim 1), 73–79
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`(claim 13). As mentioned above in Section II.C, independent claim 1 is a
`method claim and independent claim 13 is written as an apparatus of method
`claim 1. Ex. 1001, 7:41–8:6, 8:55–9:19. We address both claims together
`because of the substantial overlap between the limitations and Petitioner’s
`contentions. See, e.g., Pet. 73–79 (stating Petitioner’s contentions as to
`claim 13 rely on its contentions for claim 1).
`
`
`Preamble 1.0
`a)
`Preamble 1.0 recites a “method for setting a temporary payment card.”
`Petitioner contends that the preamble is not limiti