Trials@uspto.gov
`571-272-7822
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`Paper No. 23
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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.
`____________
`
`IPR2022-01150
`Patent 9,189,785 B2
`____________
`
`Record of Oral Hearing
`Held: October 3, 2023
`____________
`
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
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`
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`IPR2022-01150
`Patent 9,189,785 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ANDREW S. EHMKE, ESQUIRE
`JONATHAN BOWSER, ESQUIRE
`EUGENE GORYUNOV, ESQUIRE
`
`CALMANN CLEMENTS, ESQUIRE
`Haynes and Boone, LLP
`2801 N. Harwood Street
`Suite 2300
`Dallas, Texas 75201
`(214) 651-5000
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JONATHAN K. WALDROP, ESQUIRE
`JOHN W. DOWNING, ESQUIRE
`Kasowitz Benson Torres, LLP
`1633 Broadway
`New York, New York 10019
`(212) 506-1700
`
`BRANDON THEISS, ESQUIRE
`DANIEL GOLUB, ESQUIRE
`Volpe Koenig, PC
`30 S 17th Street, 18th Floor
`Philadelphia, Pennsylvania 19103
`(215) 568-6400
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, October 3,
`2023, commencing at 12:55 p.m., in hearing room D at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2022-01150
`Patent 9,189,785 B2
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE DROESCH: All right, good afternoon. It is 12:55, so we’re
`ready to begin for IPR2022-01150. My name is Judge Droesch. Joining me
`for this hearing are Judge Zecher and Judge Korniczky. We’re here for the
`oral hearing of IPR2022-01150 challenging claims 1 through 21 of patent
`9,189,785. Similar to our earlier hearing today, Petitioner has 45 minutes
`for its presentation and Patent Owner will have 45 minutes for its
`presentation as well. Both parties may reserve time for rebuttal or sur-
`rebuttal.
`Before we begin, I just wanted to give you a couple quick reminders
`as far as reminding you to please identify the slide that you’re talking about
`or the demonstrative -- I’m sorry, the exhibit numbers or paper numbers or
`whatever you’re making your reference to. And so at this point in time, we
`can take your appearances. Counsel for the Petitioner, will you please make
`your appearances?
`MR. EHMKE: Thank you, your Honor. This is Andrew Ehmke. I
`am lead Counsel for Petitioner Apple. Joining me today are my colleagues,
`Eugene Goryunov, Jonathan Bowser, and Calmann Clements. For this
`proceeding, Mr. Goryunov will be presenting on behalf of Petitioner.
`JUDGE DROESCH: Okay, thank you very much. Counsel for Patent
`Owner, will you please make your appearances?
`MR. THEISS: Hi, I’m Brandon Theiss, lead counsel for the Patent
`Owner. With me is Dan Golub. Dan will be arguing this case.
`JUDGE DROESCH: Okay. Thank you, Mr. Theiss. And Mr. Golub,
`as we mentioned earlier in the earlier hearing, I’m not sure that we have a
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`IPR2022-01150
`Patent 9,189,785 B2
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`power of attorney for both of you in the record of this proceeding. If you
`could take care of that and get that filed as soon as possible, we would
`greatly appreciate it.
`MR. THEISS: We will.
`JUDGE DROESCH: All right. Counsel for Petitioner, would you
`like to reserve some of your time for rebuttal?
`MR. GORYUNOV: Yes, your Honor. I would like to tentatively put
`aside 20 minutes. However, obviously, I would like the opportunity to eat
`into that time if I so need to.
`JUDGE DROESCH: Okay. I will let you know.
`MR. GORYUNOV: Thank you. Can you hear me well?
`JUDGE DROESCH: Yes.
`MR. GORYUNOV: All right. I’m trying out a new microphone
`which is right here, so I’m not sure 100 percent how well it’s picking up my
`voice.
`JUDGE DROESCH: It sounds perfectly clear to me.
`MR. GORYUNOV: Excellent, thank you. All right, do I have your
`permission to share our demonstratives on the screen?
`JUDGE DROESCH: Yes.
`MR. GORYUNOV: One moment.
`JUDGE DROESCH: And you may begin whenever you are ready.
`MR. GORYUNOV: Can everybody see my slide deck?
`JUDGE DROESCH: Yes.
`MR. GORYUNOV: All right. Well, I guess, good morning and
`afternoon to everyone today. My name is Eugene Goryunov here on behalf
`of Petitioner. Let’s go to slide 2 of our demonstratives. The ’785 patent, it
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`IPR2022-01150
`Patent 9,189,785 B2
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`covers a system that facilitates mobile payments using debit networks. The
`system collects, among other things, information about a user’s preferred
`debit network, a provider, in other words, a merchant’s preferred debit
`networks. Then it selects one of these networks, generates a QR code that
`contains this and a lot of other information, that bar code is displayed on the
`screen of a mobile device. That bar code is then scanned by a merchant at a
`point of sale, in other words, at a register. And that QR code is intended to
`accelerate that checkout process.
`But mobile payment systems, they’re not new. Systems that use debit
`networks, they’re not new. And as I expect our IPR has shown, generating a
`bar code that contains all sorts of payment information including those that
`are recited in the challenged claims for use with a mobile payment system is
`also not new.
`JUDGE ZECHER: Mr. Goryunov, this is Judge Zecher. Looking at
`Figure 5, does the ’785 patent ever contemplate that selected network 510 is
`different or distinct from the user’s preferred debit network 503 or the
`provider’s preferred debit network 504?
`MR. GORYUNOV: Your Honor, I believe you’re asking me whether
`or not three distinct pieces of information must be provided in that bar code,
`and the answer is yes. Three pieces of information, among other things, of
`course, but specifically the ones that you’re referring to. The user’s
`preferred, the merchant’s, or I guess, provider’s preferred network, and the
`selected network are three individual components that need to be identified
`in the bar code of the ’785 patent. And I believe that --
`JUDGE DROESCH: Counsel, this is Judge Droesch. I believe Judge
`Zecher was trying to ask whether there was any disclosure that that selected
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`IPR2022-01150
`Patent 9,189,785 B2
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`network can be the same as the user preferred or the same as the provider’s
`preferred network. Does it always have to be something distinct from the
`user’s preferred debit network or the provider’s preferred debit network?
`MR. GORYUNOV: Okay, I understand. So the selected network is
`going to be selected from the choices, from either from the user’s preferred
`network or the provider’s preferred network. That’s how we understand the
`’785 patent. So in other words, you have a choice -- sorry. You have the
`user identifying their preference. You have the merchant identifying their
`preference. And then one of these two networks will be selected as the
`selected network. So the selected network will be either the user’s preferred
`network or it will be the provider’s preferred network.
`JUDGE ZECHER: So there’s never a scenario where, for example,
`the user’s preferred debit network is Network A, the provider’s preferred
`debit network is Network C, and then for whatever reason, the selected
`network is Network B? I know that didn’t -- I meant to say provider’s
`preferred network as B. My point is it’s never going to be different than 504
`and 503. It’s always going to be one of those as the choices that you’ve
`selected. It’s never going to be some third network outside of those
`preferences, right?
`MR. GORYUNOV: I understand your question better. My apologies.
`Let me just clarify. Using your example, A, B, C, users that were, let’s say.
`Merchant is going to be B. Selected network -- I don’t recall there being a
`specific limitation in the patent as to, well, it doesn’t have to be A or B or
`can it be C, but it is very clear that the selected network can be either A or B.
`JUDGE ZECHER: Okay, thank you.
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`IPR2022-01150
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`
`MR. GORYUNOV: Does that answer your question? And I
`apologize for misunderstanding earlier.
`JUDGE ZECHER: Yeah, I was just trying to drill down on that
`because I know this is a point of contention here.
`MR. GORYUNOV: Absolutely. And I’m happy to address all of that
`in detail.
`As a first point, I’d kind of like to set the stage, talk about the Easterly
`reference, which is what we’re relying on here. So the Board instituted
`review on Easterly and Luz combination. Easterly by itself discloses or
`renders obvious the majority of limitations in claim 1, which is where most
`of our conversation, I expect, will take place. Luz is being brought in for
`additional pieces of information that could encoded, in other words,
`encompassed within the bar code that Easterly generates. Specifically, the
`total price and the number of items. But generally speaking, all of our
`discussion will be regarding Easterly.
`Now, very briefly, Easterly has a system -- it’s called eCache -- which
`kind of creates a link between the user’s device and the retailer’s point of
`sale system and then the corresponding network that will be used to process
`payments. Now, these additional links, this eCache system, the additional
`link, it allows cards such as debit cards to be used to process payments
`using, for example, debit EFT networks. And this is in our Petition page 15
`citing from Easterly paragraph 13. Now, one thing to remember in all our
`discussions is Easterly is very clear in its discussion that the bar code that it
`generates includes all the information that it needs to authenticate, authorize,
`clear, and settle a transaction. That’s Easterly paragraph 20. And this
`includes information about particular accounts that may be used and specific
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`IPR2022-01150
`Patent 9,189,785 B2
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`routes to settle the transaction. Now, we’ll be talking quite a bit about this
`specific route, I expect, shortly.
`The first limitation that there is some dispute about here is limitation
`1.4.4, and that is that this bar code that we’re talking about has embedded
`payment information which includes an indication of which debit network is
`to be used to process the payment. As an initial point, I’d like to take us
`forward to slide 9 in our deck. This is a conversation that we had with
`Patent Owner’s expert where he basically clarified what we, I believe,
`already knew, that there is no definition in the claim of what is an indication.
`When we asked him, well, what is an indication? He said, well, it could
`numbers. It could be a string. Claim doesn’t specify, okay. So we’re not
`looking for anything specific here to indicate which debit network will be
`used.
`
`So if I can scooch us back up to our slide 5, in Easterly, Easterly’s bar
`code contains information about the specific route to settle the transaction.
`That is the route that will be used to actually complete the transaction. So
`that is the indication of which debit network will be used. Now, Easterly, if
`we go forward to our slide 6, talks about these additional links that we talked
`about briefly momentarily ago, can include debit networks. And I don’t
`think Patent Owner actually disputes that a debit network can be used with
`Easterly. So there’s really no question that debit networks can be specified
`here.
`The question that has come up between the parties, if I can take us
`forward to our slide 7, is whether the route that Easterly talks about is
`limited to a payment type, as Patent Owner contends, versus a particular
`route, as in a particular network, as we contend. More specifically, Patent
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`IPR2022-01150
`Patent 9,189,785 B2
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`Owner argues that when Easterly talks about a route to settle the transaction,
`it’s merely saying, well, you’re selecting between credit, a debit card -- I’m
`sorry, a credit transaction, a debit transaction, or a ACH account-to-account
`transfer. Their position is that it excludes the more granular specificity of
`which network you’re going to use, be it Star, Nice, the Maestro network
`from MasterCard, what have you. We believe that that is an unduly narrow
`reading of Easterly. Easterly talks about routes including external debit or
`credit networks and we’re talking about multiple networks here. If it was
`limited to a particular type, it wouldn’t have to say that you’re limited to a
`network -- I’m sorry. It wouldn’t say that you’re selecting between external
`debit or credit networks. It would be more specific and say a transaction.
`Here, it’s clear, at least to us, that the transaction can be selecting which
`network it will use. And that we have on slide 7, your Honors.
`Now, as we will discuss momentarily in our discussion of limitation
`1.4.6, Easterly’s bar code contains all of the information that is necessary to
`actually process this transaction. So unless you have questions about 1.4.4, I
`will move forward.
`Let’s go forward, please, to -- okay, thank you -- slide 12. Slide 12 is
`the next limitation where there’s a dispute between the parties. And that is
`this indication of which debit network is to be used, the one that we just
`talked about in connection with 1.4.4, includes three pieces of information:
`a user preferred network, a provider preferred network, and a selected
`network. And please bear with me with all of the color coding on slide 12. I
`tried to take that color scheme forward through the slides just to aid in our
`conversation. I am certainly not trying to do a rainbow motif here.
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`IPR2022-01150
`Patent 9,189,785 B2
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`
`Anyway, so we don’t dispute that three pieces of information need to
`be included, all right? So if we move forward to our slide 13, and we’ll start
`talking about the user’s preferred network.
`JUDGE ZECHER: Mr. Goryunov, now, I get what you’re saying.
`You don’t dispute the three pieces of information are required here. But as
`we just discussed with respect to the description of the ’785 patent, the
`selected network is going to be either the user preferred debit network or the
`provider preferred debit network, correct?
`MR. GORYUNOV: That is certainly the way that we understand the
`’785 patent, yes, your Honor.
`JUDGE ZECHER: Although the claim requires you to make this
`selection, that network effectively or essentially would be the same as
`whatever the user preferred network or provide preferred network,
`depending on which one you select. So it would be the same information.
`MR. GORYUNOV: So the answer is yes, it would be the same as
`either the user or the merchant or provider preferred network, but we’re not
`saying that it is the same piece of data that would be pointed to multiple
`times. In other words, Easterly’s bar code, if you think about this in bucket
`term, will have three -- no, bucket’s the wrong term. Sorry. Three fields.
`There will be three fields in Easterly’s bar code which will contain this
`information. There will be a field for the user, a field for the provider, and a
`field for the selected. Now, I will say again that selected, that third field,
`could be either the user preferred or the merchant preferred, but there will be
`three pieces of information included.
`JUDGE ZECHER: So in other words, you have the two options and
`then you have an affirmative selection.
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`IPR2022-01150
`Patent 9,189,785 B2
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`
`MR. GORYUNOV: Yes, sir, your Honor, yes.
`JUDGE ZECHER: Okay. Thank you.
`MR. GORYUNOV: So on slide 13, let’s just begin with user
`preferred network. I included a couple excerpts here from Easterly
`paragraph 124, 95, and 14, but I think most of the information will be for us
`on the left-hand side, paragraph 124 from Easterly. So Easterly system has a
`customer profile. It also refers to sometimes a user profile. And this profile
`includes a number of user preferences. And these preferences include
`information like loyalty programs, coupon codes. I think one of the
`examples is, let’s say, you’re on a flight program and then you have a
`frequent flyer number, for example. It also specifies the route that the user
`wants to use to settle their transaction. And this bar code, the 2-D bar code,
`is generated, which includes the information from the user’s profile. You
`can see that at the very last highlights on the left-hand side of the screen.
`Okay. And also again, it would have been obvious that the route that the
`user specifies would include a debit card network, as we’ve discussed in our
`Petition and in the expert’s Declaration.
`If we move forward to our slide 14, this is a discussion of provider’s
`preferred network. So Easterly is not limited by any means to only user’s
`information. Paragraph 96 of Easterly says just that. We’re not limiting to
`customer’s preferences. Merchants also establish a profile and incorporate
`preferences. What are these preferences? Well, they include, for example,
`information that would advantageously clear a transaction through the least
`expensive or fastest route. All this is specified in the merchant’s profile.
`Now, why is that important? As I think will become more obvious later on
`but I’ll address it now, it is our understanding that if a merchant wants to get
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`IPR2022-01150
`Patent 9,189,785 B2
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`their money super quickly, they’re going to pay a higher processing fee.
`However, if a merchant is okay with getting their money later that day or
`maybe a couple of days later after the transaction has been processed, I
`guess, at the point-of-sale terminal, they will pay a much lower fee and
`therefore obviously get more of their money. So this basically allows
`merchants to specify this information.
`Now, if we look the right-hand side of slide 14, that’s a further
`excerpt from paragraph 124 of Easterly. Again, I try to maintain the color
`coding as we saw earlier on our slide 12. The 2-D bar code is generated. It
`includes information from the user’s profile. The bar code may also include
`instructions from the merchant as well with regard to settling the transaction.
`The way we understand this language is that both information from the user
`and information from the merchant are pulled together and embedded in
`Easterly’s bar code. Now --
`JUDGE ZECHER: Counsel, can I ask you a question about paragraph
`96? Because I think that’s where Patent Owner bases a lot of its arguments.
`It appears that they latch onto -- I don’t know. Let’s see. One, two, three,
`four, five, six lines down, where a customer has expressed no preference for
`possible clearance routes, the merchant can indicate preferences of its own
`that could be used to advantageously clear a transaction. So my
`understanding is that they latch onto that sentence and then they say, well,
`you could have a bar code with the customer’s preferences or the user’s
`preferences and you can have another bar code that says, well, if the user
`doesn’t actually identify a preference, you can incorporate the merchant’s
`preferences, but you can’t have both. So how shall we address that
`disclosure there?
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`IPR2022-01150
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`
`MR. GORYUNOV: Your Honor, so you’re absolutely right. I was
`going to just address that now. That is their primary argument. They are
`saying, sure, the bar code could include either the user’s information or the
`merchant’s, but never both. Okay. We disagree, of course. And the reason
`for that is, as you noted and as we explained in our Reply pages 8 and 9,
`now, of course, it is an instance in Easterly where if a user does not express
`a preference for a debit network, then Easterly will default to whatever the
`merchant’s network preference is. But as we explained in our Petition page
`40, no preference is still a preference. I just preferred not to. So if you’re
`thinking about a field, three fields in this bar code, one field can be blank.
`There’s nothing that mandates that that field have data in it. And think on
`our Petition page 40, kind of the middle of the first paragraph. Now, the
`disclosure in paragraph 124 of --
`JUDGE ZECHER: So you’re actually saying that if a user doesn’t
`actually specifically identify a preferred network they want to use, that by
`leaving that selection blank, that’s still an indication that they don’t want
`anything? I guess I’m confused a little bit. Not taking action is not a
`selection. Is that what you’re saying? Or not taking action is a selection, I
`think, it what you’re saying.
`MR. GORYUNOV: If it’s all right with you, may I rephrase that?
`JUDGE ZECHER: You can rephrase it however you want. I’m just
`trying to understand your position.
`MR. GORYUNOV: Understood. All right, so the way we’re saying
`it is, as we saw on slide 13, a user makes a selection, okay, about specific
`networks. Now, a user may not have a specific preference because they may
`not know the difference or they may not care is the being processed by
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`IPR2022-01150
`Patent 9,189,785 B2
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`MasterCard’s Maestro network or is it being processed by Interlink from
`VISA or -- I apologize, the name of the Discover network escapes me. But
`the user may not have that preference. So the user could specify a
`preference but they could also say no preference is required. And the fact of
`not specifying a preference is itself a preference. Like I prefer not to have
`one. I as a user don’t care. I’m not responsible for the fees, so I don’t really
`care if it’s being processed through one network or another. But that is still
`a preference of which network I prefer to use in other words.
`JUDGE ZECHER: No, I think I follow you now. So you’re saying
`that’s one scenario contemplated by Easterly. Is there a scenario where the
`user actually selects a preferred network and then a provider also selects a
`preferred network and then there’s a subsequent selection between those
`two?
`
`MR. GORYUNOV: So if you take a look, again, at slide 14, the
`right-hand side, the excerpt from paragraph 124, we believe that that has
`actually shown just that. The bar code is generated and includes information
`from the user’s profile, which includes the user’s selection and as well, it
`includes information from the merchant’s profile, including their selection.
`The way that we read the line that’s in purple there in the middle is that both
`pieces of information are included. Now, I understand that the Patent Owner
`disagrees, but this is our interpretation of the language.
`JUDGE ZECHER: And then is there any indication of -- I guess it’s
`presumed that there’s a subsequent selection of one or the other? Because I
`don’t think paragraph 124 actually gets into that, right?
`MR. GORYUNOV: No, no, so this is again -- right now, I’m still
`focused on the provider preferred network. If I may move us forward to
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`IPR2022-01150
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`slide 50, I think that’ll start our discussion addressing your point, your
`Honor. And that is look, Easterly teaches that the bar code includes this
`specific route to settle a transaction, which is what we identified in the
`Petition as being the selected network. Okay. So the bar code includes
`encoded details about the information concerning particular accounts
`through which the transaction may be settled and it also includes the specific
`route the settle the transaction. In other words, how will this transaction
`actually get processed? That is what Easterly talks about. It’s not enough
`just to say I have a preference as a user, I have a preference as a merchant.
`Easterly actually encodes the specific route to process that transaction in its
`bar code.
`Now, we argued in our Petition, if I may move us forward to slide 16,
`that a POSITA would have found it obvious based on Easterly’s disclosures
`to include all those three pieces of information in Easterly’s bar code. Now,
`of course, as you pointed out, your Honor, earlier, there may be multiple
`instances of selections or no selections, but we explained, or our expert
`testimony explained, that it would have been beneficial and preferential in
`fact to include multiple networks in the bar code. Why is that? Well, what
`if you start -- what if you pick an initial network. Let’s say you pick the
`user’s network first. You try to process it and it just fails. Either it’s
`unavailable or it’s some kind of a connection issue or what have you. Well,
`if you don’t also specify the merchant’s network, well, you’re back to square
`one, whereas if you specify the merchant’s network preference in the bar
`code as well, well, if one fails, you fail over to the other one. And that
`becomes your selected network and you process the payment that way. And
`this makes perfect sense because Easterly, as you can see on slide 16 at the
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`IPR2022-01150
`Patent 9,189,785 B2
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`bottom, I believe that’s Easterly paragraph 20, talks about that this final bar
`code contains all the information necessary to authenticate, authorize, clear,
`and settle a transaction. And this includes the situation of a failed
`transaction.
`Now, if we move forward, for example, I tried to put everything
`together on one slide. I appreciate it’s a little busy. We’re on slide 17. But
`I wanted to make sure we had all this information in front of us that the bar
`code includes information from the user’s profile including their selected
`route. Our view is that it also includes information from the merchant
`because it talks about including the information as well. And that includes
`information about the specific route. Now, this is important because
`Easterly says that this final bar code that you generate includes all such
`preferences and instructions. That’s paragraph 95 still on slide 17. And
`again, it includes a comprehensive set of transactional instructions. In other
`words, everything that you need to process the transaction. Otherwise, the
`system would just not be able to process the transaction and it wouldn’t be
`able to handle the case of the failed or otherwise unavailable network
`situation that we just talked about on slide 16.
`Now, if you have any questions, I’m happy to address, or I can move
`forward to the discussion of claim 4, which is the next claim that Patent
`Owner has assumed.
`JUDGE ZECHER: So I guess there’s not one spot where we can grab
`all this, but what you’re saying is you’re really under the umbrella of an
`obviousness argument, saying that, well, I know it includes the user’s profile
`and the selection of that user’s network. It could also include the preferred
`merchant’s network. And then I know that it needs to have a selection of
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`IPR2022-01150
`Patent 9,189,785 B2
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`one of those two because the reference tells us the bar code includes all the
`information necessary to complete the transaction. Is that fair?
`MR. GORYUNOV: That perfectly encompasses our position.
`JUDGE ZECHER: Okay.
`MR. GORYUNOV: And at least in our position, paragraph 124
`regarding the merchant’s profile, it’s very clear that information is included
`from the merchant’s profile as well. So again, the way that we read as well
`means it’s in addition to and not to the exclusion of.
`If we move forward to our slide 19, before I start talking about claim
`4, I should note that as we identified in the beginning, there’s a lot of
`different claims that are in dispute here. Patent Owner has made arguments
`about three claims. Now, of course, there are dependent claims that
`correspond to claim 4 and claim 5, which is the other one that’s in dispute,
`but with your indulgence, I’ll just address claim 4 and 5 because those are
`the ones specifically identified in our briefing as well as Patent Owner’s.
`JUDGE DROESCH: Okay. Counsel, I just want to let you know that
`you’re going to be running into your rebuttal time.
`MR. GORYUNOV: Thank you, your Honor. All right, claim 4
`speaks about a debit network, this debit network that we were just selecting,
`is selected based on the location at which payment it initiated. All right, so
`just to lay it out for the Board, the parties seem to allocate a different
`understanding to the word location. The Petition treats location as a
`particular merchant, in other words, T.J. Maxx, CVS, Walgreens, whatever.
`And in that guise, Easterly discloses a merchant selecting, identifying their
`preference -- I’m sorry, a specific merchant identifying their preference
`because they can identify the most advantage route to clear transactions
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`IPR2022-01150
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`through the most -- least expensive, rather, and fastest route. So that is our
`position.
`Patent Owner comes back and says, no, location must be a geographic
`location, for example, East Coast, West Coast, Midwest, what have you. So
`if we go to our slide 20, we believe that Easterly renders claim 4 obvious
`rather even under Patent Owner’s proposed construction or interpretation
`rather of the word location because Easterly uses the user’s device’s global
`location service to determine the location of the user and identify the
`merchant situated at that position. And consistently, Patent Owner’s expert
`testified at deposition that the location is always tied into the particular
`merchant’s identity. And that’s Exhibit 10, page 37, 1 through 7. It’s
`discussed in our briefing as well, Reply pages 15 to 16.
`So it is our position that, even under this interpretation of location,
`Easterly renders this claim 4 and similar claims obvious. Now, I should note
`very quickly that neither party asks for the term location to be construed, so I
`guess we’re just looking here at how broadly do we want to understand
`location. And again, I don’t think that the Board needs to engage in
`affirmative claim construction because Easterly discloses it both ways.
`If we move forward to our slide 22, this is the last of the group of
`claims that are disputed by the parties. This debit network that is being
`selected, the selection is based on time of day at which the payment is
`initiated. All right, so Easterly again teaches that a merchant can specify
`information, their preferences. There’s also information about lowest cost of
`the transaction to the retailer. We’ve talked about that specific element
`before. Now, the way Easterly continues to explain is that when you’re
`selecting and you’re processing the transaction, you consider many factors,
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`IPR2022-01150
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`including time. Specifically, time for settlement of the transaction. And
`because time for settling the transaction is considered, at least in some
`instances, we believe that a POSITA would have understood and it would
`have been obvious that the debit network is selected based on the time of
`day at which payment is initiated.
`Now, the dispute here between the parties is -- and I believe -- I’m
`going to try to articulate as best as I can. Patent Owner argues that time for
`settlement of the transaction is very different fr