Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: January 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2022-01239
`Patent 10,600,046 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, PATRICK R. SCANLON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: January 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2022-01239
`Patent 10,600,046 B2
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, PATRICK R. SCANLON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-01239
`Patent 10,600,046 B2
`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1‒5, 12–14, 17, and 18 of U.S. Patent
`No. 10,600,046 B2 (Ex. 1001, “the ’046 patent”). RFCyber Corp. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`that the information presented in the Petition establishes a reasonable
`likelihood that Petitioner will prevail with respect to at least one challenged
`claim. Accordingly, we institute an inter partes review of claims 1‒5, 12–
`14, 17, and 18 based on the grounds set forth in the Petition.
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real parties in interest. Pet. 69.
`Patent Owner identifies itself as the real party in interest. Paper 5, 1.
`B. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’046 patent: RFCyber Corp. v. Apple Inc., Case No. 6:21-cv-
`00916-ADA (W.D. Tex.) (the “District Court Case”); and RFCyber Corp. v.
`Visa U.S.A. Inc., Case No. 6:22-cv-00697 (W.D. Tex.). Pet. 69; Paper 5, 1.
`In addition, Petitioner identifies several other matters involving the ’046
`patent that have been dismissed or terminated. Pet. 69–70.
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`Patent 10,600,046 B2
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`C. The ’046 Patent
`The ’046 patent relates to electronic commerce and, more particularly,
`to settling payments “using a mobile device reading electronic bills or
`invoices off from another mobile device in a near field communication
`range.” Ex. 1001, 1:16‒21. In general, the invention includes a first mobile
`device that generates an electronic invoice and can be part of a point of sale
`(“POS”) machine. Id. at 1:56–58, 2:1–3. The first mobile device is
`embedded with a secure element and executes a software module. Id.
`at 1:57–58, 2:55–59. When the first mobile device is brought to a consumer
`using a second mobile device, the electronic invoice is read wirelessly into
`the second mobile device. Id. at 1:59–63. The second mobile device is a
`near field communication (“NFC”) device “configured to execute an
`application that communicates with the software module in the first mobile
`device to read the data off from the first mobile device.” Id. at 2:28–30,
`2:65–3:1.
`The user is then able to verify the amount charged and authorize
`payment, after which the second mobile device “communicates with a
`payment gateway or network for payment that is configured to proceed with
`the payment in accordance with a chosen payment method.” Id. at 1:63–67,
`2:61–64. That is, the gateway receives the payment request from the second
`mobile device, verifies the payment request, and sends a payment response
`to the user of the first mobile device after the payment request is processed.
`Id. at 3:17–31.
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`Patent 10,600,046 B2
`Figure 1A of the ’046 patent is reproduced below.
`
`
`Figure 1A shows system configuration 100, which is one embodiment
`of the invention. Ex. 1001, 5:29‒30. System configuration 100 includes
`network 102, which provides services by a financial institution to
`electronically transfer money or settle payments. Id. at 5:30–34. Payment
`gateway 104 comprises one or more servers configured to provide an
`application that may be installed on a user’s mobile device. Id. at 5:52–56.
`The application allows a user to authorize payment of an electronic invoice.
`Id. at 5:60–62.
`System configuration 100 also includes POS device 106 at a point of
`sale. Id. at 6:6–7. POS device 106 generates an electronic bill or invoice
`that is loaded onto portable device 108, such as a contactless card or an NFC
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`Patent 10,600,046 B2
`device, which contacts a user’s NFC device. Id. at 6:10–14. In one
`embodiment, “the POS device is a single device embedded with a secure
`element. The single device may be an NFC device that is used to enter
`information to generate an invoice.” Id. at 6:15–18. This device is brought
`to the customer for authorization and payment. Id. at 6:22–23.
`Alternatively, “the POS device includes a stationary device corresponding to
`106 of FIG. 1A and one or more contactless cards corresponding to 108 of
`FIG. 1A.” Id. at 6:23–26. In this case, “[t]he stationary device is used by
`the cash[i]er to enter charging information to generate an invoice. A
`contactless card is loaded with the electronic invoice and brought to the
`customer for authorization and payment.” Id. at 6:26–30.
`Device 110 is a personal NFC device with wallet software. Id. at
`Fig. 1A. Specifically, device 110 “is configured to function as an electronic
`purse or e-purse that may be used to directly settle a charge being displayed
`on a display screen thereof.” Id. at 8:25–28.
`To settle a payment, the merchant, such as a waiter or cashier at a
`restaurant, causes POS device 106 to generate an electronic bill that is
`transported to a contactless card. Id. at 7:19–22. The contactless card is
`then presented to the customer who uses his or her mobile device to read the
`contactless card. Id. at 7:24–26. Upon detecting the contactless card in the
`near field, the application on the user’s mobile device reads data pertaining
`to the electronic bill from the contactless card and subsequently displays the
`electronic bill on a screen of the mobile device for the customer to verify.
`Id. at 7:28–33. The customer then chooses a method for settling the bill,
`such as an e-purse already created in the mobile device, cash, traditional
`credit or debit card, and electronic transfer. Id. at 7:46–53.
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`When selecting to pay the bill via the e-purse, the customer enters the
`amount to be paid against the bill; the customer may enter more than what is
`being charged in the bill as a tip or gratuity. Id. at 7:57–61. Once the
`customer has entered the total amount to be paid, the application on the
`user’s mobile device sends a payment request to gateway or server 104 for
`processing. Id. at 7:57–61. “[T]he server 104 receives the payment request
`authorized by the consumer and proceeds with the payment request in
`conjunction with the payment network 102,” and “[o]nce the transaction is
`complete or denied, the server 104 sends a notice to the merchant.” Id.
`at 8:17–24.
`Figure 6A of the ’046 patent is reproduced below.
`
`
`Figure 6A “is a diagram showing an exemplary architecture, in which
`a portable device is enabled as a mobile POS conducting e-commerce and
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`m-commerce.” Ex. 1001, 4:32‒35. Specifically, exemplary architecture 600
`includes portable device 630 that includes baseband 624 and secured
`element 629. Id. at 18:65–19:3. POS manager 623 is installed in baseband
`623, and POS SAM1 628 is installed in secured element 629 to enable
`portable device 630 to act as a mobile POS. Id. at 19:3–6. This
`configuration allows real time transaction 639 to be conducted between
`portable device 630 and e-token enabled device 636, which can be a single
`functional card or a portable device enabled with an e-purse. Id. at 19:7–10.
`Real time transaction 639 can be conducted without the portable
`device connecting to POS transaction server 613, in which case records of
`accumulated offline transactions are uploaded via secured channel 618 to
`POS transaction server 613 for settlement. Id. at 19:14–16, 9:23–27.
`However, portable device 630 may connect to POS transaction servers 613
`over cellular network 520 in certain instances. Id. at 19:16–18.
`D. Challenged Claims
`Petitioner challenges claims 1‒5, 12–14, 17, and 18, of which claims
`1, 12, and 18 are independent. Claim 1, reproduced below, is illustrative.
`1.
`A method for mobile payment, the method comprising:
`causing a mobile device to capture data directly from a tag
`physically presented thereto, wherein the tag receives the data
`directly from a POS device and allows the mobile device to
`capture the data, the data embedded in the tag includes an
`electronic invoice and settlement information with a merchant
`associated with the POS device;
`extracting the electronic invoice from the captured data in
`the mobile device; displaying the electronic invoice on a display
`
`
`1 A “POS SAM” refers to a mobile POS application applet. Ex. 1001,
`18:13–14. Although the acronym “SAM” is not defined in the ’046 patent, it
`appears to refer to a Security Authentication Module. See Ex. 1016, 2.
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`of the mobile device to show an amount to be paid by a user of
`the mobile device, wherein the mobile device is configured to
`execute an installed application therein to capture the data from
`the tag;
`receiving an entry by the mobile device, the entry
`including the amount for the invoice and optionally an additional
`amount from the user;
`calculating a total amount by adding the additional amount
`to the amount in the electronic invoice;
`generating a payment request in the mobile device in
`response to the electronic invoice after the user has chosen an
`electronic purse (e-purse) maintained locally in the mobile
`device;
`displaying the electronic invoice on the display of the
`mobile device for the user to verify the payment request
`verifying the total amount with a balance in the e-purse,
`wherein said verifying the total amount with a balance in the e-
`purse is performed within the mobile device without sending the
`payment request to a payment gateway;
`displaying a denial of the payment request when the
`balance is less than the total amount;
`sending the payment request from the mobile device to the
`payment gateway, wherein the balance is sufficient to honor the
`payment request, the payment gateway sends a message directly
`to the POS device that a monetary transaction per the payment
`request sent from the mobile device has been successfully
`completed; and
`displaying a confirmation in the mobile device that the
`balance in the e-purse has been reduced by the total amount.
`Ex. 1001, 25:20–63.
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds:
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`Patent 10,600,046 B2
`Reference(s)/Basis
`35 U.S.C. §
`Claim(s) Challenged
`Laracey,2 Jogu,3
`103
`1–5, 12–14
`Laracey, Jogu, Tang4
`103
`17
`Laracey, Jogu, Dorsey5
`103
`18
`Pet. 8. Petitioner relies on the Declaration of Gerald W. Smith (Ex. 1003) to
`support its challenges.
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the invention. Graham v.
`John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the
`art is a hypothetical person who is 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). Factors that may be considered in determining the level of
`ordinary skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. Id. In a given case, one or more factors
`may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“would have had at least a bachelor’s degree in computer science, computer
`engineering, or equivalent with at least one year of experience in the field of
`mobile payments,” and “[a]dditional education or experience might
`substitute for the above requirements.” Pet. 6–7 (citing Ex. 1003 ¶¶ 34–35).
`
`
`2 US 2011/0251892, published Oct. 13, 2011 (Ex. 1004).
`3 JP 4901053, published Mar. 21, 2012 (Ex. 1005).
`4 WO 2009/116954 A2, published Sept. 24, 2009 (Ex. 1006).
`5 US 9,916,581 B2, issued Mar. 13, 2018 (Ex. 1007).
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`Patent Owner indicates that it uses Petitioner’s proposed level of ordinary
`skill in the art for the purposes of its Preliminary Response only. Prelim.
`Resp. 4.
`Based on our review of the record before us, we determine that
`Petitioner’s stated level of ordinary skill in the art is reasonable because it
`appears consistent with the evidence of record, including the asserted prior
`art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s
`definition.
`
`B. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that
`standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner contends that, in the District Court Case, the parties have
`agreed to construe the claim term “payment gateway” as a “server or
`collection of servers for settling a payment.” Pet. 9 (citing Ex. 1016, 2).
`Petitioner further contends that the parties are disputing the constructions of
`the claim terms “e-purse,” e-purse applet,” and “application” in the District
`Court Case, but the differences between the proposed construction need not
`be resolved for this proceeding because its asserted grounds of
`unpatentability satisfy both Patent Owner’s and Petitioner’s proposed
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`constructions. Id. at 9–10. Patent Owner argues that, for the purposes of its
`Preliminary Response only, claim construction is not required to resolve any
`issues. Prelim, Resp. 4.
`On the present record, we do not discern a need to construe explicitly
`any claim language because doing so would have no effect on our analyses
`below of Petitioner’s asserted grounds and will not assist in resolving the
`present controversy between the parties. See Realtime Data, LLC v. Iancu,
`912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe
`‘only those 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)).
`C. Asserted Obviousness Based on Laracey and Jogu
`Petitioner asserts that claims 1–5 and 12–14 are unpatentable under
`35 U.S.C. § 103 based on Laracey and Jogu. Pet. 10–54. Patent Owner
`provides arguments addressing this asserted ground of unpatentability.
`Prelim. Resp. 4–8. We first summarize the references and then address the
`parties’ contentions.
`
`1. Laracey
`Laracey, titled “Mobile Phone Payment Processing Methods and
`Systems,” was published on October 13, 2011. Ex. 1004, codes (54), (43).
`Laracey relates to “using mobile devices to conduct payment transactions at
`merchant locations including brick and mortar locations and remote
`locations as well as for person to person transactions.” Id., code (57).
`Figure 1 of Laracey is reproduced below.
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`Figure 1 is a block diagram depicting payment system 100. Ex. 1004 ¶¶ 7,
`27. A user, referred to as the customer, uses mobile device 102 (such as a
`mobile telephone) to conduct a purchase transaction with merchant 108. Id.
`¶ 27. For a point-of-sale purchase, merchant 108 totals the items to be
`purchased and prompts the customer to select a payment option, such as the
`mobile payment option disclosed by Laracey. Id. ¶ 28. Alternatively, rather
`than requiring the customer to select the mobile payment option, the choice
`can be made by the customer scanning, capturing, or entering a checkout
`identifier. Id. ¶ 29. When the mobile payment option is selected, merchant
`108 transmits a merchant payment authorization request message to
`transaction management system 130 via path 116. Id. ¶ 30. This message
`may include a merchant identifier, the amount due, and a unique checkout
`token. Id.
`The customer, either before or after selecting the mobile payment
`option, performs an authentication process to confirm their identity and
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`authority to conduct transaction via the mobile payment process. Id. ¶ 33.
`“After a successful authentication process, the customer is prompted to scan,
`capture (or otherwise enter) a checkout token from a device associated with
`the merchant 108 (shown as interaction 112 between the mobile device 102
`and the merchant 108).” Id. ¶ 35. Mobile device 102 then transmits the
`checkout token to transaction management system 130 in a customer
`transaction lookup request message via path 114. Id. The checkout token
`can be either a static or dynamic token. Id. ¶ 36.
`When a static token is used, transaction management system 130
`matches information in the customer transaction lookup request with
`information in the merchant payment authorization request. Id. Upon
`finding a match, transaction management system 130 transmits a transaction
`detail message to mobile device 102 via path 114 that provides the customer
`with details about the transaction. Id. When a dynamic token is used,
`checkout processing may proceed without a customer transaction lookup
`request message being transmitted to transaction management system 130.
`Id. ¶ 38.
`Next, the customer causes a customer payment authorization request
`message to submitted from mobile device 102 to transaction management
`system 130. Id. ¶ 39. Transaction management system 130 then sends an
`authorization approval request message to one or more payment processing
`networks for the authorization, clearing, and settlement of funds for the
`transaction. Id. ¶ 40.
`
`2. Jogu
`Jogu relates to a payment method using a mobile phone, and, more
`specifically, a service that mediates payments at virtual stores and brick-and-
`mortar stores on the Internet. Ex. 1005, 3. In one embodiment, a user orders
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`a product or service from virtual store 24 using mobile phone 13 and selects
`the mobile phone payment method. Id. at 5, Fig. 5. Upon receiving the
`billing request, mobile phone company 10 either notifies virtual store 24 that
`the service cannot be used if there is a problem with the user’s status, or
`sends an electronic invoice to mobile phone 13 if there is no problem with
`the user’s status. Id. at 5–6. When the user approves payment of the
`invoice, mobile phone 13 verifies the prepaid balance and, if the prepaid
`balance is less than the payment amount, notifies mobile phone company 10
`that the payment cannot be made due to insufficient balance. Id. at 6. On
`the other hand, if the prepaid balance is more than the payment amount,
`mobile phone company 10 is notified that the payment is approved. Id.
`3. Independent Claim 1
`Petitioner contends that the proposed combination of Laracey and
`Jogu discloses the limitations of claim 1. Pet. 14–47. To support its
`arguments, Petitioner identifies certain passages in the cited references and
`explains the significance of each passage with respect to the corresponding
`claim limitation. Id. Petitioner also articulates reasons to combine the
`relied-upon aspects of Laracey and Jogu with a reasonable expectation of
`success. Id. at 40–42, 46–47. Patent Owner argues that Petitioner’s
`combination fails with respect to the claim 1 limitation “verifying the total
`amount with a balance in the e-purse, wherein said verifying the total
`amount with a balance in the e-purse is performed within the mobile device
`without sending the payment request to a payment gateway” (the “verifying
`limitation”). Prelim. Resp. 4–8.
`We have reviewed Petitioner’s contentions with respect to the
`limitations of claim 1, and for the reasons discussed below, we determine
`that the Petition shows a reasonable likelihood that Petitioner would prevail
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`with respect to the contention that claim 1 would have been obvious based
`on Laracey and Jogu. See Pet. 14–47. We address Patent Owner’s
`arguments below.
`
`a) The Verifying Limitation
`Regarding the verifying limitation, Petitioner first argues that Laracey
`discloses that transaction management system 130 is in communication with
`one or more payment servers and receives a payment authorization message
`from a mobile device. Pet. 34 (citing Ex. 1004 ¶¶ 39–40). Thus, in
`Petitioner’s view, “transaction management system 130 in conjunction with
`one or more payment processing networks is a payment gateway as claimed
`at least because they comprise a collection of servers for settling payment.”
`Id. (citing Ex. 1003 ¶¶ 108–109).
`Petitioner then argues that
`it would have been obvious to modify Laracey’s e-purse
`transaction process pursuant to the teachings of Jogu to verify[]
`the total amount with a balance in the e-purse, wherein said
`verifying the total amount with a balance in the e-purse is
`performed within the mobile device without sending the payment
`request to a payment gateway.
`Id. at 35. Specifically, Petitioner contends that Laracey discloses
`maintaining a balance for a “stored valve” account, or an e-purse, and
`providing that balance to the user when the user is deciding which account to
`select for a transaction. Id. at 35–36 (citing Ex. 1004 ¶¶ 100, 165, Fig. 8B).
`Petitioner adds that, despite stressing the importance of maintaining the
`account balance, Laracey does not explain what happens if the user selects a
`stored value account that has insufficient funds for the transaction. Id. at 36.
`Petitioner argues, however, that Jogu discloses a POS terminal that
`transmits a payment amount to a mobile device, which performs a balance
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`check for sufficient funds (i.e., determines whether the payment amount is
`within the current balance). Id. at 37–38 (citing Ex. 1005, 14, 15, Fig. 39).
`Petitioner further argues that Jogu discloses that the user is notified of the
`insufficient balance if the payment amount exceeds the balance, but the
`mobile device communicates with the POS terminal to continue the payment
`process if the balance is sufficient. Id. at 38 (citing Ex. 1005, 14, Fig. 23).
`In view of these teachings, Petitioner argues that one of ordinary skill
`in the art would have been motivated to implement Jogu’s balance check in
`Laracey’s mobile device because this modification would have achieved the
`same benefits in Laracey that the balance check provides in Jogu. Id. at 40–
`41 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
`Petitioner also argues that one of ordinary skill in the art would have
`understood that Jogu’s balance check ensures that a user is informed of
`insufficient funds before proceeding with a transaction that will ultimately
`fail, which provides the benefit producing successful transactions and avoids
`the need to resolve an insufficient funds issue. Id. at 41 (citing Ex. 1003
`¶¶ 119–121). In addition, Petitioner argues that a skilled artisan “would
`have recognized that Jogu’s balance check process is particularly well-suited
`to Laracey’s system because Laracey expressly provides alternative account
`options for the user to select in the event an e-purse has insufficient funds.”
`Id. (citing Ex. 1003 ¶¶ 119–121). Petitioner asserts that there would have
`been a reasonable expectation of success for the proposed combination
`because it would have required only minor programming that was well
`within the ordinary skill in the art. Id. at 42 (citing Ex. 1003 ¶ 122).
`Patent Owner argues that Laracey discloses that verification is
`performed by a server, specifically transaction management system 130,
`rather than on the mobile device. Prelim. Resp. 5–6 (citing Ex. 1004 ¶¶ 30,
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`33, 35, 36, 39, Fig. 1). Patent Owner adds that “Petitioner argues that
`Laracey teaches ‘storing’ values, but ‘storing’ values is not the claimed
`verification.” Id. at 5. This argument is not persuasive because it addresses
`Laracey individually and does not address Petitioner’s proposed
`combination of Laracey and Jogu. See In re Keller, 642 F.2d 413, 426
`(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
`individually where . . . the rejections are based on combinations of
`references.”). As discussed above, Petitioner asserts that the verifying
`limitation is obvious over the combination of Laracey and Jogu.
`Patent Owner also argues that, given Laracey’s extensive teachings of
`server-side verification, “Petitioner identifies a single passage of Laracey in
`support of its device-side allegations” (which passage describes using a
`dynamic checkout token for checkout processing without messaging
`transaction management system 130), but “this passage does not relate to
`verification.” Prelim. Resp. 6–7 (quoting Ex. 1004 ¶ 38). According to
`Patent Owner, Petitioner ignores the last sentence of Laracey’s paragraph
`38, which Patent Owner contends supports its position that Laracey requires
`a server for verifying transactions. Id. at 7 (quoting Ex. 1004 ¶ 38). Patent
`Owner further contends that Petitioner’s motivation to combine is supported
`only by its incorrect interpretation of Laracey’s dynamic token embodiment.
`Id.
`
`At this stage of the proceeding, we do not find these arguments
`persuasive. First, these arguments again address Laracey individually rather
`than the proposed combination of Laracey and Jogu. Furthermore, Patent
`Owner appears to mischaracterize Petitioner’s position in arguing that
`Petitioner relies on Laracey’s paragraph 38 support of its device-side
`allegations. Although the Petition does cite paragraph 38 in support of some
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`of its assertions (see, e.g., Pet. 16, 19, 20, 22, 23), there does not appear to
`be any citation to paragraph 38 in the section of the Petition addressing the
`verifying limitation (see id. at 34–42). Patent Owner does not direct us to
`any such citation to paragraph 38 in the Petition. See Prelim. Resp. 6–7. As
`discussed above, Petitioner relies on Jogu for disclosing using the mobile
`device to verifying the e-purse balance. Pet. 37–38.
`Next, Patent Owner argues that Petitioner asserts that the proposed
`combination can “(1) perform a balance check, (2) display a denial when the
`account balance is insufficient, (3) generate a payment request only when
`sufficient funds exist, and (4) reduce the account balance on the mobile
`device after a successful transaction to ensure the local balance is
`accurate,” but does not state that the combination can perform verification
`as required by the claims. Prelim. Resp. 8 (quoting Pet. 37). We disagree
`that Petitioner fails to state that the proposed combination performs the
`claimed verification. Instead, as discussed above, the Petition contends that
`it would have been obvious to modify Laracey in view of Jogu “to verify[]
`the total amount with a balance in the e-purse, wherein said verifying the
`total amount with a balance in the e-purse is performed within the mobile
`device without sending the payment request to a payment gateway.” Pet. 35.
`Although Petitioner also refers to performing a balance check, we
`understand this terminology as intended to be comparable to verifying the
`total amount with the e-purse balance. Furthermore, Figure 39 of Jogu,
`which is cited by Petitioner, clearly describes that mobile phone device 13
`verifies the balance after receiving the payment amount. Ex. 1005, Fig. 39.
`Jogu also discloses that “mobile phone 13 . . . verifies the prepaid balance.”
`Id. at 6; see also id. at 20 (“[D]ata processing unit 131 verifies whether or
`not the billed amount is within the available balance.”).
`
`18
`
`
`
`IPR2022-01239
`Patent 10,600,046 B2
`For the above reasons, we do not find Patent Owner’s arguments
`persuasive. Instead, at this stage of the proceeding and on the current
`record, we determine that Petitioner has made a sufficient showing that the
`proposed combination of Laracey and Jogu discloses the verifying
`limitation.
`b) The Remaining Aspects of Petitioner’s Contentions
`Patent Owner does not offer any arguments specifically addressing the
`remaining limitations of claim 1. See generally Prelim. Resp. We have
`reviewed Petitioner’s contentions with respect to the remaining limitations
`of claim 1 and determine that the Petition provides a sufficient showing, at
`this stage of the proceeding, that the proposed combination of Laracey and
`Jogu satisfies each limitation. See Pet. 14–33, 42–47.
`c) Conclusion
`For the above reasons, we determine, based on the current record, that
`the Petition shows a reasonable likelihood that Petitioner would prevail in
`demonstrating that claim 1 is unpatentable over Laracey and Jogu.
`4. Independent Claim 12
`Independent claim 12 is substantially similar to claim 1, and, for this
`claim, Petitioner relies on substantially the same teachings of Laracey and
`Jogu relied on in connection with asserting that claim 1 is unpatentable.
`Pet. 52–54.
`Patent Owner does not offer any arguments specifically addressing
`claim 12. See generally Prelim. Resp. To the extent Patent Owner is relying
`on the arguments made with respect to claim 1 as applying to claim 12, we
`find those arguments unpersuasive for the reasons discussed above.
`Furthermore, we have reviewed Petitioner’s contentions with respect to
`claim 12 and determine that the Petition provides a sufficient showing, at
`
`19
`
`
`
`IPR2022-01239
`Patent 10,600,046 B2
`this stage of the proceeding, that the proposed combination of Laracey and
`Jogu satisfies each limitation. See Pet. 52–54.
`Accordingly, we determine, based on the current record, that the
`Petition shows a reasonable likelihood that Petitioner would prevail in
`demonstrating that claim 12 is unpatentable over Laracey and Jogu.
`5. Dependent Claims 2–5, 13, and 14
`Claims 2–5 depend from claim 1, and claims 13 and 14 depend from
`claim 12. Because Petitioner has demonstrated a reasonable likelihood of
`success in proving that at least one claim of the ’046 patent is unpatentable,
`we institute on all grounds and all claims raised in the Petition. See SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting
`the statute to require “a simple yes-or-no institution choice respecting a
`petition, embracing all challenges included in the petition”); 37 C.F.R.
`§ 42.108(a) (“When instituting inter partes review, the Board will authorize
`the review to proceed on all of the challenged claims and on all grounds of
`unpatentability asserted for each claim.”). Therefore, it is not necessary for
`us to assess every claim challenged by Petitioner.
`Nevertheless, we note that Petitioner provides reasonable and detailed
`explanations, supported with the testimony of Mr. Smith, indicating where
`the references teach or suggest the limitations of claims 2–5, 13, and 14.
`Pet. 48–52,
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