`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC,
`Petitioner,
`
`v.
`
`MOZIDO, INC.,
`Patent Owner.
`———————
`
`IPR2022-01150
`U.S. Patent No. 9,189,785
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`

`

`
`
`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 6 
`
`GROUNDS FOR STANDING ........................................................................ 6 
`
`III.  NOTE ............................................................................................................... 7 
`
`IV.  BACKGROUND ............................................................................................. 7 
`
`V. 
`
`SUMMARY OF THE ’785 PATENT ............................................................. 7 
`
`VI.  PROSECUTION HISTORY ......................................................................... 10 
`
`VII.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12 
`
`VIII.  CLAIM CONSTRUCTION .......................................................................... 12 
`
`IX.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................. 12 
`
`X.  DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE ................. 13 
`
`A.  Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 13 
`
`B. 
`
`C. 
`
`Discretionary denial under the Fintiv factors is not appropriate ........ 13 
`
`Discretionary denial under General Plastic is not appropriate .......... 13 
`
`XI. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 14 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................. 14 
`
`Statutory Grounds for Challenges ...................................................... 14 
`
`Ground 1: Claims 1-21 are obvious under 35 U.S.C. § 103(a) over
`Easterly in view of Luz. ..................................................................... 15 
`
`1. 
`
`Summary of Easterly ................................................................ 15 
`
`2
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Summary of Luz ....................................................................... 18 
`
`Reasons to Combine Easterly and Luz .................................... 21 
`
`Claim 1 ..................................................................................... 25 
`
`Claim 2 ..................................................................................... 50 
`
`Claim 3 ..................................................................................... 51 
`
`Claim 4 ..................................................................................... 52 
`
`Claim 5 ..................................................................................... 53 
`
`Claim 6 ..................................................................................... 55 
`
`10.  Claim 7 ..................................................................................... 55 
`
`11.  Claim 8 ..................................................................................... 56 
`
`12.  Claim 9 ..................................................................................... 58 
`
`13.  Claim 10 ................................................................................... 58 
`
`14.  Claim 11 ................................................................................... 59 
`
`15.  Claim 12 ................................................................................... 59 
`
`16.  Claim 13 ................................................................................... 59 
`
`17.  Claim 14 ................................................................................... 59 
`
`18.  Claim 15 ................................................................................... 59 
`
`19.  Claim 16 ................................................................................... 61 
`
`20.  Claim 17 ................................................................................... 61 
`
`21.  Claim 18 ................................................................................... 61 
`
`22.  Claim 19 ................................................................................... 61 
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`23.  Claim 20 ................................................................................... 62 
`
`24.  Claim 21 ................................................................................... 62 
`
`XII.  CONCLUSION .............................................................................................. 62 
`
`XIII.  MANDATORY NOTICES ........................................................................... 63 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest ......................................................................... 63 
`
`Related Matters ................................................................................... 63 
`
`Lead and Back-up Counsel and Service Information ........................ 63 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 65 
`
`CERTIFICATE OF SERVICE ................................................................................ 66 
`
`4
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
`
`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 9,189,785
`
`Prosecution History of U.S. 9,189,785
`
`Declaration of Henry Houh under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Henry Houh
`
`U.S. Patent Publication No. 2011/0208659 to Easterly et al.
`(“Easterly”).
`
`U.S. Patent Publication No. 2013/0346291 to Vellozo Luz et al.
`(“Luz”)
`
`U.S. Patent No. 9,317,850 to Keresman (“Keresman”)
`
`U.S. Patent No. 8,380,177 to Laracey (“Laracey”)
`
`U.S. Patent No. 7,536,352 to Lapsley (“Lapsley”)
`
`
`
`
`
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`
`5
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`

`
`I.
`
`INTRODUCTION
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`U.S. Patent No. 9,189,785 (the “’785 patent,” Ex.1001) describes and claims
`
`well-known concepts related to using a scannable code (such as Quick Response
`
`(QR) code) to facilitate a financial transaction. In one example described by the
`
`’785 Patent, a user may present to a merchant a barcode that encodes information
`
`that is used to process a transaction for goods or services. This information may
`
`include, for example, the user’s account number. The ’785 Patent was allowed
`
`after the applicant amended the claims to recite more pieces of information that are
`
`embedded in the barcode, such as the user’s and the merchant’s preferred networks
`
`for processing the transaction. However, as will be explained in detail below,
`
`including such pieces of information in a barcode for financial transactions was
`
`already known at the time the ’785 Patent was filed.
`
`Pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100, Apple Inc.
`
`(“Petitioner”) respectfully requests that the Board review and cancel as
`
`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-21 (hereinafter, the
`
`“Challenged Claims”) of the ’785 patent.
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’785 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
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`6
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`

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`III. NOTE
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`IV. BACKGROUND
`
`Mobile wallets, sometimes referred to as e-wallets, are virtual wallets that
`
`allow users to enter debit card, credit card, or other account type information into
`
`an application on their mobile phones. The application on the mobile phone can
`
`then be used to pay for goods or services either online or at point-of-sale terminals
`
`at merchant locations. In some cases, the mobile application may generate a
`
`barcode for scanning at a point-of-sale terminal. The barcode may have embedded
`
`therein various pieces of information, such as the user’s account number and other
`
`data for processing a transaction. As will be explained in more detail below, the
`
`’785 Patent describes and claims no more than commonly known pieces of
`
`information that can be embedded within such a barcode. Ex.1003, ¶ 29.
`
`V.
`
`SUMMARY OF THE ’785 PATENT
`
`The ’785 Patent relates to a payment processing system in which a customer
`
`uses an application on their phone to create a “scannable code” such as a QR code
`
`that is then presented to the merchant for payment of goods or services. The ’785
`
`describes “selecting a debit network using a quick response (QR) code” and
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`“processing a payment using a debit network selected according to information
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`7
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`

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`embedded in a QR code.” Ex.1001, abstract. The user’s mobile phone “determines
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`that the user or the provider has specified a preference indicating which debit
`
`network is to be used to process the payment.” Ex.1001, abstract. “The mobile
`
`computer system then generates a QR code with the debit network selection and
`
`portions of the user's debit account information embedded in the QR code, and
`
`sends the generated QR code to a payment processing system.” Ex.1001, abstract.
`
`“The payment processing system may … run locally at the provider's point of
`
`sale.” Ex.1001, abstract.
`
`The independent claims recite a list of information that are included in the
`
`scannable code, as shown in bold and underline in claim 1 below.
`
`A computer system comprising the following:
`one or more processors;
`system memory;
`one or more computer-readable storage media having stored
`thereon computer-executable instructions that, when executed by the
`one or more processors, cause the computing system to perform a
`method for processing a payment using a debit network selected
`according to information embedded in a scannable code, the method
`comprising the following:
`receiving a scannable code with one or more portions of
`embedded payment information, the embedded payment information
`including at least the following: a total payment amount that is to be
`paid by a user, debit account information for the user, and an
`
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`
`
`indication of which debit network is to be used to process the payment,
`the debit network comprising a debit payment processing entity that
`processes the initiated debit payment, wherein the indication of which
`debit network to be used includes (1) a user preferred network, (2) a
`provider preferred network and (3) a selected network, such that the
`scannable code includes all of (1) the user preferred network, (2) the
`provider preferred network and (3) the selected network, the scannable
`code also including an identification of rewards to be provided when
`the selected network is used and an identification of one or more
`goods or services associated with the total payment amount;
`determining which debit network is to be used to process the
`payment based on the indication provided in the embedded payment
`information in the received scannable code;
`sending the payment amount and the user's debit account
`information to the determined debit network; and
`receiving an indication that the payment was processed by the
`determined debit network.
`Ex.1001, Claim 1.
`
`Fig. 5 is a block diagram illustrating these pieces of information within the
`
`QR code. Each of the items shown below, except for the user’s purchase history, is
`
`recited in the claims.
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`Ex.1001, Fig. 5.
`
`
`
` The other claim limitations relate to routine payment processing steps, such
`
`as sending the payment amount and account numbers for processing and receiving
`
`confirmation of payment. Ex.1003, ¶¶ 30-34.
`
`VI. PROSECUTION HISTORY
`
`The ’785 Patent was filed on August 23, 2013 and claims priority to a
`
`provisional application filed August 24, 2012. The Office rejected the original
`
`claims as being anticipated by U.S. Patent No. 8,639,621 to Ellis (“Ellis”).
`
`Ex.1002, 229. In response, the Applicant amended the claims to distinguish the
`
`10
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`

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`claimed “debit network” from the debit accounts identified in Ellis by the Office.
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`Ex.1002, 211, 217. The Office then rejected the claims as being obvious in view of
`
`Ellis and U.S. Patent Publication No. 2011/00051685 to Royyuru.
`
`In response to this rejection, the applicant amended the claims to recite
`
`further limitations as to what information is included within the scannable code.
`
`Specifically, the amendments to claim 12 (now claim 1) included reciting that the
`
`scannable code includes (1) a user preferred network, (2) a provider preferred
`
`network, (3) a selected network, (4) identification of rewards, and (5) identification
`
`of goods or services. Ex.1002, 90. The Office then allowed claim 12 while
`
`maintaining the rejection of the other independent claims. Ex.1002, 60. The
`
`Applicant then cancelled the rejected claims, and added new claims that were
`
`similar to claim 12 through Examiner amendment. Ex.1002, 54-59. The ’785
`
`Patent then issued on November 17, 2015.
`
`As will be explained in further detail below, the concept of a using a
`
`scannable code (e.g., QR code) to pay for goods and services was well known at
`
`the time the ’785 patent was filed. Moreover, the prior art shows that it was known
`
`for each of the claimed pieces of information to be included in a scannable code.
`
`The prior art references used in this Petition show how each piece of information,
`
`including all the pieces of information added during prosecution to get the ’785
`
`patent, were known to be included in a scannable code.
`
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`A Person of Ordinary Skill in The Art (“POSITA”) in August of 2012 would
`
`have had a working knowledge of the software arts that are pertinent to the ’785
`
`patent. That person would have a bachelor’s degree in electrical engineering,
`
`computer science, or equivalent training, and approximately two years of
`
`experience working in the field of software programming. Lack of work
`
`experience can be remedied by additional education, and vice versa. Ex.1003, ¶ 20-
`
`22.
`
`VIII. CLAIM CONSTRUCTION
`
`The Challenged 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).” 37 C.F.R. § 42.100(b). Claim terms in IPR are construed according to
`
`their “ordinary and customary meaning” to those of skill in the art. 37 C.F.R.
`
`§ 42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that, for the purposes
`
`of this proceeding and the grounds presented herein, no claim term requires
`
`express construction. Ex.1003, ¶ 35.
`
`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`
`12
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`

`
`
`REQUESTED RELIEF
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`Petitioner asks that the Board institute a trial for inter partes review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`X. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ’785
`
`Patent. Neither the Easterly nor Luz references presented in this petition were
`
`presented to the Office during prosecution of the ’785 Patent. Furthermore, the
`
`petition presents new arguments because it applies the Easterly and Luz references
`
`to the claim amendments that were added to get the ’785 Patent allowed.
`
`B. Discretionary denial under the Fintiv factors is not appropriate
`
`The framework provided in Apple Inc. v. Fintiv, Inc. for discretionary denial
`
`is not applicable here because there are currently no pending district court cases
`
`involving the ’785 Patent. IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential).
`
`C. Discretionary denial under General Plastic is not appropriate
`
`The ’785 patent has not been challenged in any prior IPR petition, so none of
`
`General Plastic discretionary institution factors apply to this Petition. See General
`
`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`
`13
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`

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`16 (PTAB Sept. 6, 2016) (Section II.B.4.i. precedential).
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`XI.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenged Claims
`
`Petitioner challenges claims 1-21.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`Claims
`1-21
`
`Basis
`§ 103 (Pre-AIA) Easterly in view of Luz
`
`
`
`U.S. Patent Publication No. 2011/0208659 to Easterly et al. (“Easterly”) was
`
`filed May 5, 2011. It published on August 25, 2011. Easterly is thus prior art under
`
`at least 35 U.S.C. 102(b).
`
`U.S. Patent Publication No. 2013/0346291 to Vellozo Luz et al. (“Luz”) was
`
`filed June 22, 2012. It published on December 26, 2013. Luz is thus prior art under
`
`at least 35 U.S.C. 102(e).
`
`Petitioner’s analysis also cites additional evidence to demonstrate the
`
`background knowledge of a POSITA and to provide contemporaneous context to
`
`support Petitioner’s assertions regarding what a POSITA would have understood
`
`from the prior art. See Yeda Research v. Mylan Pharm. Inc., 906 F.3d 1031, 1041-
`
`1042 (Fed. Cir. 2018) (affirming the use of “supporting evidence relied upon to
`
`support the challenge”); 37 C.F.R. § 42.104(b); see also K/S HIMPP v. Hear-Wear
`
`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Arendi S.A.R.L. v. Apple
`
`14
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`

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`Inc., 832 F.3d 1355, 1363 (Fed. Cir. 2016).
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`IPR2022-01150 Petition
`Inter Partes Review of U.S. 9,189,785
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`C. Ground 1: Claims 1-21 are obvious under 35 U.S.C. § 103(a) over
`Easterly in view of Luz.
`1.
`
`Summary of Easterly
`
`Like the ’785 Patent, Easterly relates to “the facilitation of certain financial
`
`and nonfinancial transactions between customers, retailers and suppliers using
`
`smart devices.” Ex.1005, [0002]. Easterly describes “an application residing on a
`
`smart device to provide secure, encrypted communications with a proprietary
`
`server using scanable barcodes to authenticate the identity of the purchaser and
`
`authorize, clear and settle a transaction between the purchaser and a third party
`
`who may be a merchant.” Ex.1005, [0002]; Ex.1003, ¶ 39.
`
`Easterly describes a proprietary application referred to as “eCache.” The
`
`eCache application utilizes “a link between the retailer's POS system and the ACH
`
`network.” Ex.1005, [0013]. The eCache system also provides an additional link
`
`that “allows general purpose cards such as credit cards, debit cards, charge cards,
`
`gift cards, and prepaid cards, to be switched to and authorized through a merchant
`
`processor network, association network, debit (EFT) network or ATM network,
`
`where they may be used to complete a sales transaction.” Ex.1005, [0013];
`
`Ex.1003, ¶ 40.
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`Ex.1005, Fig. 1; Ex.1003, ¶ 40.
`
`
`
`To facilitate payment over such networks, Easterly describes “a system of
`
`unique primary barcodes which are personal to a customer and may be tendered
`
`at the POS of a merchant or retailer.” Ex.1005, [0018]. Easterly provides an
`
`example in which the primary barcodes are “2-D barcodes.” In Easterly’s system,
`
`“[e]ach customer-specific primary barcode is further linked to an extension
`
`barcode or barcodes. The extension barcodes are linked to specific retailers' POS
`
`systems.” Ex.1005, [0019]. “In a preferred embodiment of the invention, primary
`
`and extension barcode data may be combined into a single ‘combined’
`
`barcode for scanning.” Ex.1005, [0020]. The combined barcode may be presented
`
`to a merchant to facilitate the sale of goods or services and includes “all of the data
`
`required to authenticate, authorize, clear and settle a transaction.” Ex.1005,
`
`16
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`[0020]; Ex.1003, ¶ 41.
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`IPR2022-01150 Petition
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`2-D barcode
`
`Ex.1005, Fig. 17 (annotated); Ex.1003, ¶ 41.
`
`
`
`Easterly further describes the information that is included in the barcode and
`
`used to “authenticate, authorize, clear and settle a transaction.” Ex.1005, [0020].
`
`For example, Easterly describes how “[t]he 2-D barcode has encoded detailed
`
`information concerning the transaction which may include designating particular
`
`accounts through which a transaction may be settled.” Ex.1005, [0125]. The code
`
`may also include “a specific route to settle the transaction, say from a checking
`
`account or by executing an ACH transaction.” Ex.1005, [00124]; Ex.1003, ¶ 42.
`
`Easterly’s barcode includes both preferences from the user as well as the
`
`merchant. “[T]he eCache system will generate a unique 2-D barcode that encodes
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`

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`all such preferences and instructions.” Ex.1005, [0095]. “The system is not,
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`however, just limited to customer's preferences. Merchants themselves may also
`
`establish a profile and incorporate preferences.” Ex.1005, [0096]. These
`
`preferences include the route for settling a transaction: “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
`
`through the least expensive or fastest route.” Ex.1005, [0096]. As mentioned
`
`above, Easterly provides one example in which the route for settling a transaction
`
`is a debit network. See Ex.1005, [0013]; Ex.1003, ¶ 43.
`
`Accordingly, Easterly provides evidence that it was known to use a
`
`scannable barcode to facilitate payment between a purchaser and a merchant.
`
`Easterly also provides examples of the types of information that may be included
`
`in the barcode. Ex.1003, ¶ 44.
`
`2.
`
`Summary of Luz
`
`Luz provides additional examples of what types of information may be
`
`included within a scannable code. Like Ex.1005 and the ’785 Patent, Luz describes
`
`methods and systems for “conducting a transaction for a sale of products or
`
`services to a purchaser” that includes: “(1) receiving transaction information from
`
`a merchant; (2) generating data corresponding to the transaction information; [and]
`
`(3) encoding a symbology with the data.” Ex.1006, abstract; Ex.1003, ¶ 45.
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`Luz provides an example in which a “purchaser may indicate to the
`
`
`
`merchant a desired product and/or service 605.” Ex.1006, [0051]. Additionally, the
`
`“merchant may provide payment information, which may include, for example, a
`
`payment amount to the computing device 610.” Ex.1006, [0052]. Once this
`
`information (among other types of information) has been collected, Luz’s system
`
`generates “a symbology encoding the data therein 625.” Ex.1006, [0055]. “Once
`
`the symbology has been generated by the computing device 625, it may be
`
`transmitted by the computing device to the merchant and/or the purchaser
`
`630.” Ex.1006, [0055]. “Once the purchaser has received the generated symbology,
`
`he/she may scan the symbology 640 to authorize payment.” Ex.1006, [0056];
`
`Ex.1003, ¶ 46.
`
`Luz describes the symbology as a 2-D code: “The symbology provides an
`
`optical, electronically-readable encoded representation of data. Symbologies can
`
`include … two-dimensional (2D) barcodes.” Ex.1006, [0022]. “Examples of two-
`
`dimensional barcodes include data matrix codes, quick response (QR) codes, Aztec
`
`codes, Maxi codes and the like.” Ex.1006, [0022]. “The symbology 300 may be
`
`generated by a mobile device 100.” Ex.1006, [0039]; Ex.1003, ¶ 47.
`
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`2-D barcode
`
`Ex.1006, Fig. 1; Ex.1003, ¶ 47.
`
`
`
`Luz provides examples of the types of information to be included in the
`
`barcode, such as the total price of the transaction: “The symbology 300 may
`
`further be encoded with other data, such as, for example, information regarding
`
`a product or a service, information regarding a merchant, purchase payment
`
`information, information about a bill and purchase order information.” Ex.1006
`
`[0040]. Luz further teaches that payment information may include the total price:
`
`“payment information comprises at least one of merchant information, purchaser
`
`information, desired products or services, a cost of the products or the services, a
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`tax amount, and a total price.” Ex.1006, claim 6; see also claim 12; Ex.1003, ¶ 48.
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`Accordingly, Luz provides evidence that it was known to include various
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`pieces of information relevant to a transaction in a scannable barcode. Ex.1003, ¶
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`49.
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`3.
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`Reasons to Combine Easterly and Luz
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`A POSITA would have found it obvious for Easterly’s barcode to include
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`various pieces of information that are relevant to a transaction. Ex.1003, ¶ 50. As
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`will be explained in further detail below, placing information such as the total price
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`or the items subject to the transaction in Easterly’s barcode is merely an example
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`of combining prior art elements according to known methods to yield predictable
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`results. See MPEP 2143. Ex.1003, ¶ 50.
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`The combination of Easterly and Luz is explicitly suggested by Easterly. As
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`mentioned above, Easterly’s barcode “contains all of the data required to
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`authenticate, authorize, clear and settle a transaction.” Ex.1005, [0020]. Easterly
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`further notes that “records such data as item quantity, price, total amount, store
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`location, use of coupons or other promotion codes, and other data that may reflect
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`pertinent transaction-related data concerning the exchange.” Ex.1005, [0085].
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`Easterly further describes how the “2-D barcodes, are able to incorporate
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`information sufficient to identify the parties to a transaction and all other relevant
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`information regarding the transaction.” Ex.1005, [0018]. Accordingly, because
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`Easterly notes that price is pertinent to the transaction, and that the barcode
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`includes all the data required to process the transaction, or relevant to the
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`transaction, it would have been obvious for the barcode to include the total price.
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`Ex.1003, ¶ 51.
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`Easterly further explicitly suggests including the items associated with the
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`
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`transaction in the barcode. Again, Easterly further describes how the “2-D
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`barcodes, are able to incorporate information sufficient to identify the parties to a
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`transaction and all other relevant information regarding the transaction …
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`along with an identification of items that are the subject of a transaction.”
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`Ex.1005, [0018]. Accordingly, a POSITA would have understood that transaction
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`information such as the items subject to the transaction would be important and
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`thus obvious to include within the barcode that is used at point-of-sale terminals.
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`Ex.1003, ¶ 52.
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`In addition to Easterly’s strong suggestion that the barcode includes
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`information such as price and items subject to the transaction, Luz provides an
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`explicit example of putting such information in a barcode. As explained above,
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`Luz’s “symbology 300 may further be encoded with other data, such as, for
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`example, information regarding a product or a service, information regarding a
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`merchant, purchase payment information, information about a bill and purchase
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`order information.” Ex.1006 [0040]. Luz further teaches that payment information
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`may include “merchant information, purchaser information, desired products or
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`services, a cost of the products or the services, a tax amount, and a total price.”
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`Ex.1006, claim 6; see also claim 12; Ex.1003, ¶ 53.
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`Given Easterly’s suggestion that the barcode includes the total price and
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`items subject to a transaction, along with Luz’s explicit teaching of a barcode
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`including such information, a POSITA would have found it obvious for Easterly’s
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`barcode to include price and items of the transaction. Ex.1003, ¶ 54. Including such
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`information as the total price would have yielded the predictable result of having
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`the barcode include data that is relevant to the transaction. Ex.1003, ¶ 54.
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`In one example, the price and items for purchase may be known to the user
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`in the situation where a user identifies items for purchase, rather than the merchant
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`(e.g., cashier). Easterly describes an example in which the customer presents items
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`to a cashier for scanning. See Ex.1005, [0029]. The user then provides the barcode
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`for payment. See Ex.1005, [0029]. A POSITA also would have recognized that
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`there are situations where the user may identify items for purchase himself or
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`herself, as described by Luz. Ex.1003, ¶ 55. Luz provides an example in which a
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`“purchaser may indicate to the merchant a desired product and/or service 605.”
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`Ex.1006, [0051]. Additionally, the “merchant may provide payment information,
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`which may include, for example, a payment amount to the computing device 610.”
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`Ex.1006, [0052]. Once this information (among other types of information) has
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`been collected, Luz’s system generates “a symbology encoding the data therein
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`625.” Ex.1006, [0055]. “Once the symbology has been generated by the computing
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`device 625, it may be transmitted by the computing device to the merchant
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`and/or the purchaser 630.” Ex.1006, [0055]. “Once the purchaser has received the
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`generated symbology, he/she may scan the symbology 640 to authorize payment.”
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`Ex.1006, [0056]. In such a scenario where the user identifies items for purchase, it
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`would have thus been obvious for Easterly’s barcode to include such information
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`as the total price and the goods or services associated with the transaction.
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`Ex.1003, ¶ 55.
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`Both Easterly and Luz are analogous art to the ’785 Patent because they are
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`both in the same field of endeavor: mobile financial transactions. Like the ’785
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`Patent, Easterly relates to “the facilitation of certain financial and nonfinancial
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`transactions between customers, retailers and suppliers using smart devices.”
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`Ex.1005, [0002]; compare with ’785 Patent, abstract. Similarly, Luz is related to
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`“Methods and systems for conducting a transaction for a sale of products or
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`services to a purchaser [and] receiving the data corresponding to a payment
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`authorization encoded by the symbology from a mobile device.” Luz, abstract;
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`Ex.1003, ¶ 56.
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`A POSITA would have had a reasonable expectation of success when
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`including the total price in the barcode. Ex.1003, ¶ 57. Easterly notes that “2-D
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`barcodes enjoy significant advantages over existing technology in that significant
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`amounts of data, up to a terabyte, may be encoded in a 2-D barcode.” Ex.1005,
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`[0027]. Thus, Easterly’s barcode is well capable of supporting more information,
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`such as the total price. Easterly further describes how “[i]t is a further object of this
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`invention to employ smart phones in conjunction with barcode technology to
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`empower customers and merchants to manage and control the settlement of their
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`transactions.” Ex.1005, [0053]. Luz’s teachings are consistent with this objective
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`because Luz’s teachings fulfill “a need for additional secure, easy-to-use systems
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`and methods for transferring funds.” Ex.1006, [0002]. Luz further states that its
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`teachings “may be combined into many other different systems or applications.”
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`Ex.1006, [0068]; Ex.1003, ¶ 57.
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`Accor