`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`RFCyber Corp.
`Patent Owner
`____________
`
`
`Case No. IPR2022-01239
`U.S. Patent No. 10,600,046
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,600,046
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. THE ’046 PATENT ...................................................................................... 1
`A.
`THE ’046 PATENT’S ALLEGED INVENTION ....................................................... 1
`B.
`THE ’046 PATENT’S PRIORITY DATE ............................................................... 3
`C.
`THE ’046 PATENT’S PROSECUTION .................................................................. 6
`D. A PERSON OF ORDINARY SKILL IN THE ART .................................................... 6
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ...................... 7
`A.
`STANDING UNDER 37 C.F.R. § 42.104(A) ....................................................... 7
`B.
`CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED ............. 7
`C.
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............................... 8
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE .................... 10
`A. GROUND 1: CLAIMS 1, 2, 3, 4, 5, 12, 13, AND 14 ARE OBVIOUS OVER LARACEY
`IN VIEW OF JOGU ............................................................................................ 10
`B. GROUND 2: CLAIM 17 IS OBVIOUS OVER LARACEY IN VIEW OF JOGU AND IN
`FURTHER VIEW OF TANG ................................................................................. 54
`C. GROUND 3: CLAIM 18 IS OBVIOUS OVER LARACEY IN VIEW OF JOGU AND IN
`FURTHER VIEW OF DORSEY ............................................................................. 58
`V. DISCRETIONARY CONSIDERATIONS ............................................... 65
`A.
`THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION ................................... 65
`B.
`THE FINTIV FACTORS FAVOR INSTITUTION .................................................... 66
`VI. CONCLUSION ........................................................................................... 68
`VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................... 69
`A.
`REAL PARTY-IN-INTEREST ............................................................................ 69
`B.
`RELATED MATTERS ....................................................................................... 69
`C.
`LEAD AND BACK-UP COUNSEL ...................................................................... 70
`
`
`
`
`i
`
`

`

`I.
`
`INTRODUCTION
`Petitioner Apple Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of
`
`IPR2022-01239
`U.S. Patent No. 10,600,046
`
`Claims 1-5, 12-14, and 17-18 (the “Challenged Claims”) of U.S. Patent No.
`
`10,600,046 (the “’046 Patent”).
`
`II. THE ’046 PATENT
`A.
`The ’046 Patent’s Alleged Invention
`The ’046 Patent is generally directed to a mobile device that allows a user to
`
`accept and settle charges reflected in an electronic invoice. ’046 Patent (Ex. 1001),
`
`Abstract, 1:15-21. To do this, the patent proposes that the mobile device includes a
`
`smart bill payment application. Id., 6:58-62. Figure 1B below depicts a “process . . .
`
`of settling a payment according to one embodiment of the present invention” where
`
`a “smart bill” is generated by the restaurant’s point of sale (POS) device and is
`
`presented to a customer’s mobile device that has been provisioned with a smart bill
`
`payment application:
`
`1
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`
`Id., Fig. 1B, 7:4-8:24 (describing the individual steps represented in Fig. 1B).
`
`The ’046 Patent describes two ways in which the electronic bill may be
`
`provided to the customer: (1) via a contactless smart card or (2) via the POS device
`
`
`
`2
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`itself. Fig. 1B depicts a scenario in which the electronic bill/invoice generated by the
`
`POS may be transferred to a contactless smart card (step 122), which is then
`
`delivered to the customer’s table (step 124). Id., 7:19-28. Alternatively, the POS
`
`device is directly presented to the customer and the electronic bill is retrieved by the
`
`mobile device with the installed payment application. Id., 6:6-23. Upon presenting
`
`the customer with the electronic invoice, the invoice is displayed (steps 126-128)
`
`and the user chooses a payment method (e.g., credit card, debit card, or e-purse) (step
`
`130). Id., 7:26-53. The mobile device then sends transaction information to a
`
`payment gateway for processing (step 132), and the payment gateway verifies the
`
`electronic invoice and either approves or denies the transaction (steps 134-138). Id.,
`
`7:10-8:24.
`
`B.
`The ’046 Patent’s Priority Date
`The ’046 Patent claims priority to the following applications:
`
`• U.S. App. 11/534,653 (“the ’653 Application”) filed on September 24, 2006.
`
`• U.S. App. 13/350,832 (“the ’832 Application”)—a continuation-in-part—
`filed on January 16, 2012.
`
`• U.S. Provisional 61/618,802 (“the ’802 Provisional”) filed on April 1, 2012.
`
`• U.S. App. 13/853,937 (“the ’937 Application”)—another continuation-in-
`part—filed on March 29, 2013.
`
`• U.S. App. 14/728,349 (“the ’349 Application”) filed on June 2, 2015.
`For purposes of establishing PGR eligibility, Google argued in PGR2021-
`
`00029 that certain ’046 Patent claims are not entitled priority claims before March
`3
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`16, 2013. PGR2021-00029, Paper 1 at 7-20. Relevant to the Challenged Claims,
`
`Google argued that Claim 1’s “displaying a denial” step finds no support in the pre-
`
`March 16, 2013 filings. Id., 9-13. In its POPR, Patent Owner argued that the ’802
`
`Provisional provides support for the claimed step. PGR2021-00029, Paper 7 at 12-
`
`17. Specifically, Patent Owner pointed to a teaching in the ’802 Provisional through
`
`which the user is presented with an option to “top-up” the account balance if it is
`
`insufficient to pay the invoice. Id. At institution, the Board rejected Patent Owner’s
`
`argument, concluding the top-up option is not equivalent to a payment denial
`
`because the payment is not denied at that point, but is instead permitted to proceed
`
`if the customer elects to top-up the e-token. PGR2021-00029, Paper 10 at 13-14
`
`(finding Claim 1 “has an effective filing date after March 16, 2013”). For purposes
`
`of this petition, and without waiving its right to challenge the written description
`
`support in this or any other proceeding, Petitioner applies March 29, 2013, as the
`
`effective filing date for Claim 1 and its dependents.1 Further, because Claim 1 has
`
`an effective filing date after March 16, 2013, all claims are subject to AIA 102 and
`
`103 provisions. See AIA § 3(n)(1) (the first-inventor-to-file provisions apply to any
`
`
`
`1 All prior art references in the Proposed Grounds are prior art to Claim 1 and its
`
`dependents even if they are accorded the earlier effective filing date of the ’802
`
`Provisional.
`
`4
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`patent that issues from an application that contains or contained at any time a claim
`
`to a claimed invention that has an effective filing date on or after March 16, 2013).
`
`All Challenged Claims recite elements that derive support from the electronic
`
`bill embodiment illustrated in Figs. 1A-1B and the corresponding descriptions. For
`
`example, independent Claims 1, 12, and 18 each recite (1) transferring electronic
`
`invoice and settlement information to a tag that is presented to the user’s mobile
`
`device and (2) the mobile device sending a payment request to a payment gateway
`
`when sufficient funds are available. Each of these concepts derives support, if at all,
`
`from Figs. 1A-1B and the corresponding description, and none find written
`
`description support in either the ’653 Application or the ’832 Application. Indeed,
`
`Figs. 1A and 1B were not introduced until the ’802 Provisional filing on April 1,
`
`2012. Similarly, independent Claims 1 and 18 require providing the user an option
`
`to add a tip on top of the invoiced amount (“an additional amount”). At best, this
`
`concept was first introduced in the ’802 Provisional filing with the introduction of
`
`Fig. 1B. Accordingly, for purposes of this petition, and without waiving its right to
`
`challenge the written description support in this or any other proceeding, Petitioner
`
`applies April 1, 2012, as the effective filing date for independent Claims 12 and 18
`
`and their dependents.
`
`5
`
`

`

`C.
`The ’046 Patent’s Prosecution
`Applicant faced multiple rejections citing a combination of mobile payment
`
`IPR2022-01239
`U.S. Patent No. 10,600,046
`
`patents. Ultimately the Examiner rejected the independent claims as being obvious
`
`in view of U.S. Patent Application Publication 2011/0173060 to Gallagher
`
`(“Gallagher”) in further view of U.S. Patent Application Publication 2013/0048717
`
`to Brendell et al. (“Brendell”). ’046 File History (Ex. 1002), 548-567. In response,
`
`Applicant amended the independent claims to recite: “an electronic purse (e-purse)
`
`maintained locally in the mobile device” and “verifying the total amount with a
`
`balance in the e-purse [as being] performed within the mobile device without
`
`sending the payment request to a payment gateway[.]” Id., 638-639. Applicant
`
`argued that Gallagher neither taught nor suggested the verification of a charge
`
`against the balance of a local e-purse. Id., 639. In view of these amendments, the
`
`Examiner issued a notice of allowance Id., 644-649.
`
`D. A Person of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSITA”) at the time of the ’046 Patent
`
`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
`
`6
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`payments. Additional education or experience might substitute for the above
`
`requirements. Dec.2, ¶¶ 34-35.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A.
`Standing Under 37 C.F.R. § 42.104(A)
`Petitioner certifies that the ’046 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting an IPR challenging the claim of the ’046
`
`Patent. Specifically, (1) Petitioner is not the owner of the ’046 Patent, (2) Petitioner
`
`has not filed a civil action challenging the validity of the claims of the ’046 Patent,
`
`and (3) this Petition is filed less than one year after the Petitioner was served with a
`
`complaint alleging infringement of the ’046 Patent.
`
`B. Challenge Under 37 C.F.R. § 42.104(B) and Relief Requested
`In view of the prior art and evidence presented, claims 1, 2, 3, 4, 5, 12, 13, 14,
`
`17, and 18 of the ’046 Patent are unpatentable and should be cancelled. 37 C.F.R. §
`
`42.104(b)(1). Further, based on the prior art references identified below, IPR of the
`
`Challenged Claims should be granted. 37 C.F.R. § 42.104(b)(2).
`
`
`
`2 All citations to “Dec.” are to paragraph numbers in Ex. 1003, Declaration of Gerald
`
`W. Smith.
`
`7
`
`

`

`Proposed Ground of Unpatentability
`Ground 1: Claims 1-5 and 12-14 are obvious over U.S. Patent
`Publication 2011/0251892 to Laracey (“Laracey”) in view of
`Japanese Patent No. 4901053 to Makoto Jogu (“Jogu”).
`Ground 2: Claim 17 is obvious over Laracey in view of Jogu in
`further view of PCT No. 2009/116954 to Tang (“Tang”).
`
`Ground 3: Claim 18 is obvious over Laracey in view of Jogu in
`further view of U.S. Patent No. 9,916,581 to Dorsey et al.
`(“Dorsey”).
`
`IPR2022-01239
`U.S. Patent No. 10,600,046
`Exhibits
`Ex. 1004,
`Ex. 1005,
`
`Ex. 1004,
`Ex. 1005,
`Ex. 1006
`Ex. 1004,
`Ex. 1005,
`Ex. 1007
`
`
`
`Section IV identifies where each element of the Challenged Claims is found
`
`in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the evidence relied
`
`upon to support the challenges are provided above and the relevance of the evidence
`
`to the challenges raised is provided in Section IV. 37 C.F.R. § 42.104(b)(5). Exhibits
`
`1001-1027 are also attached.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(B)(3)
`In this proceeding, claims are interpreted under the same standard applied by
`
`Article III courts (i.e., the Phillips standard). 37 C.F.R. § 42.100(b); 83 Fed. Reg.
`
`197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
`
`(en banc). Petitioner applies the plain and ordinary meaning of all claim terms as
`
`understood by a POSITA for all terms not expressly construed below.
`
`8
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`In parallel litigation,3 the Parties agreed to the following claim construction,
`
`which Petitioner applies in the mappings below.
`
`Claim Term
`“payment
`gateway” (all
`claims)
`
`Agreed Construction
`“server or collection of servers for settling a payment”
`
`Joint Markman Chart (Ex. 1016), 2.
`
`The Parties are disputing the following two claim construction issues pertinent
`
`to the Challenged Claims.
`
`“E-purse” and “e-purse applet”
`
`Patent Owner proposes construing the e-purse terms as they were construed
`
`in the prior district court litigation—“software that stores electronic financial
`
`information in a local device.” Id., 4. Petitioner’s proposal in the litigation further
`
`specifies (1) that the stored financial information includes “electronic value” and (2)
`
`that the software is in a “local portable device.” Id. The distinction between the
`
`parties’ respective proposals need not be resolved for this proceeding, however. As
`
`set forth below, the Proposed Grounds satisfy both Patent Owner’s and Petitioner’s
`
`proposed constructions.
`
`
`
`3 RFCyber Corp. v. Apple Inc., Case No. 6:21-cv-916-ADA-DTG (W.D. Tex.).
`
`9
`
`

`

`“Application”
`
`IPR2022-01239
`U.S. Patent No. 10,600,046
`
`Patent Owner proposes “application” be accorded its plain and ordinary
`
`meaning. Id., 5. Petitioner proposes construing an application as a “software
`
`program suitable for being executed on a portable device.” Id. As with the prior term,
`
`this distinction need not be resolved for this proceeding because the Proposed
`
`Grounds satisfy both Patent Owner’s and Petitioner’s proposed constructions.
`
`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1: Claims 1, 2, 3, 4, 5, 12, 13, and 14 are obvious over Laracey
`in view of Jogu
`Overview of Laracey
`
`U.S. Patent Publication No. 2011/0251892 to Laracey (“Laracey”) (Ex. 1004)
`
`was filed on July 30, 2010, published October 13, 2011, and is prior art to all
`
`Challenged Claims of the ’046 Patent under at least 35 U.S.C. § 102(a)(1) and
`
`102(a)(2) (post-AIA).4 Laracey was not cited or considered during prosecution of
`
`the ’046 Patent. ’046 Patent.
`
`
`
`4 Even if the Board were to determine that Claim 1 is entitled the earlier priority date
`
`of the ’802 Provisional (April 1, 2012), Laracey is prior art to the Challenged Claims
`
`under at least pre-AIA 35 U.S.C. § 102(a), (e).
`
`10
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`Laracey is generally directed to “systems, methods, processes, computer
`
`program code and means for using mobile devices to conduct payment transactions
`
`at merchant locations[.]” Laracey (Ex. 1004), Abstract.
`
`Laracey teaches a mobile device that contains a mobile payment application,
`
`which allows the mobile device to function as a payment device. Id., ¶47. The mobile
`
`device may “initiate and conduct payment transactions involving a number of
`
`different payment accounts, including, for example, credit, debit, deposit, stored
`
`value, checking and other accounts.” Id., ¶16. Fig. 1 depicts a general payment
`
`system that comprises a mobile device 102, a merchant 108, and transaction
`
`management system 130:
`
`Id., Fig. 1, ¶¶27-30 (describing the same).
`
`
`
`11
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`In a typical transaction, the customer takes products to a point of sale device
`
`(POS) where the merchant 108 totals the items to be purchased. Id., ¶28. The
`
`merchant then prompts the customer to select credit, debit, or a mobile payment
`
`option. Id. The mobile payment option may be selected by scanning/capturing a
`
`checkout identifier. Id., ¶29. Laracey teaches that the checkout identifier/token may
`
`be either physically or electronically presented to the customer. For example, the
`
`POS terminal may generate a checkout token in the form of a QR code displayed on
`
`a display associated with the merchant or otherwise nearby the POS terminal. Id.,
`
`¶0163 (teaching a checkout token may be “represented as a dynamic two
`
`dimensional bar code or ‘QR code’ 837”), ¶32 (teaching “the checkout token may
`
`be displayed on a display device associated with the merchant, [...], or other display
`
`near the point of sale”). Laracey also teaches that the checkout token may be
`
`wirelessly transmitted from the POS device to a mobile device (e.g., via Bluetooth
`
`or RFID). Id., ¶¶20, 50, 54, 98. The mobile device processes the checkout token to
`
`reveal transaction details, which the user confirms. Id., ¶38, 104. The mobile device
`
`then transmits a customer payment authorization message to a transaction
`
`management system, which clears and settles funds for the transaction. Id., ¶40.
`
`Because Laracey, like the ’046 Patent, is directed to performing mobile
`
`payment transactions with a merchant, Laracey is in the same field of endeavor as
`
`the ’046 Patent. Compare Laracey, Abstract, ¶27(describing a system and method
`
`12
`
`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`for conducting payment transactions at a merchant location with a mobile device),
`
`with ’046 Patent, 7:10-8:16 (describing a POS device generating an electronic bill
`
`and a customer capturing said bill with their mobile device for payment). Laracey is
`
`therefore analogous art to the ’046 Patent. Dec., ¶¶71-72.
`
`Overview of Jogu
`
`Japanese Patent No. 4901053 to Makoto Jogu (“Jogu”) (Ex. 1017) was
`
`published on March 21, 2012 and is prior art to all Challenged Claims of the ’046
`
`Patent under at least 35 U.S.C. § 102(a)(1) (post-AIA).5 A certified English
`
`translation of Japanese patent No. 4901053 to Makoto Jogu is referenced herein as
`
`(“Jogu”, Ex. 1005). Jogu was not cited or considered during prosecution of the ’046
`
`Patent. ’046 Patent.
`
`Jogu is generally directed to a mobile device configured to mediate payments
`
`between a buyer and seller. Jogu (Ex. 1005), 3. The mobile device of Jogu maintains
`
`and stores a local balance of a payment account. Id., 21. Specifically, “the POS
`
`terminal 27 of the brick-and-mortar store, [...] transmits the payment amount to the
`
`
`
`5 Even if the Board were to determine that Claim 1 is entitled the earlier priority date
`
`of the ’802 Provisional (April 1, 2012), Jogu is prior art to the Challenged Claims
`
`under at least pre-AIA 35 U.S.C. § 102(a).
`
`13
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`mobile phone 13” and the mobile phone’s data processing unit 131 “determines
`
`whether or not the received payment amount is within the current balance[.]” Id., 14.
`
`Because Jogu, like the ’046 Patent, is directed to performing mobile payment
`
`transactions with a merchant, Jogu is in the same field of endeavor. Further, because
`
`Jogu teaches a mobile device capable of performing a local balance check prior to
`
`performing a purchase, Jogu is pertinent to a problem to be solved by the claimed
`
`invention in the ’046 Patent. Compare Jogu, 14 (describing a mobile phone capable
`
`of “determin[ing] whether or not the received payment amount is within the current
`
`balance”), with ’046 Patent, 21:25-41 (describing a mobile device deciding if there
`
`is sufficient balance for a purchase request). Jogu is therefore analogous art to the
`
`’046 Patent. Dec., ¶¶74-75.
`
`i.
`
`Claim 1
`
`[1(Pre)] A method for mobile payment, the method comprising:
`To the extent the preamble is limiting, Laracey teaches a method of mobile
`
`payment. Laracey, Abstract. Specifically, Laracey teaches “systems, methods,
`
`processes, computer program code and means for using mobile devices to conduct
`
`payment transactions at merchant locations [...].” Id., Abstract, ¶27. Laracey’s
`
`general system is illustrated in Fig. 1 below:
`
`14
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`
`
`
`Id., Fig. 1. A customer uses mobile device 102 to conduct a purchase transaction
`
`with a merchant 108. Id., ¶ 27. The merchant 108 totals the items to be purchased at
`
`a POS device. Id., ¶28. Once totaled, the POS device dynamically generates a
`
`checkout token, which is captured by mobile device 102 and used to process
`
`payment. Id., ¶¶32, 35.
`
`[1(a)] causing a mobile device to capture data directly from a tag physically
`presented thereto,
`Laracey’s mobile device 102 captures data related to a transaction from a
`
`dynamic checkout token (a tag) that is physically presented by the POS device.
`
`As discussed above with respect to claim element [1(Pre)], a transaction
`
`begins with the merchant 108 totaling items to be purchased. Id., ¶28. The POS
`
`device then prompts the customer to select a payment method one of which is a
`
`15
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`IPR2022-01239
`U.S. Patent No. 10,600,046
`mobile payment option. Id. The mobile payment option is selected by the user’s act
`
`of scanning a checkout token generated and presented to the customer. Id., ¶¶29, 32.
`
`“Pursuant to some embodiments, the checkout token is dynamically generated for
`
`each transaction.” Id., ¶32. Generated by the merchant’s POS device, a dynamic
`
`checkout token is used to provide transaction details to the mobile device:
`
`[A]ll of the transaction details may be encoded in a dynamic checkout
`token which, when captured and processed by the mobile device 102,
`provides the transaction details to the mobile device 102.
`
`Id., ¶38, ¶55 (“In embodiments where the checkout token 210 is a dynamic checkout
`
`token, the token may further be used to communicate transaction details from the
`
`merchant 208 to the mobile device 202.”). Transaction details that may be embedded
`
`within a dynamic token include “the total transaction amount and other transaction
`
`details associated with the transaction[.]” Id., ¶82. While the transaction
`
`management system 230 may communicate certain transaction information to the
`
`mobile device in some embodiments, Laracey expressly contemplates embodiments
`
`in which “no transaction details need be received by the mobile device 202 from the
`
`transaction management system 230” when a dynamic checkout token is used. Id.,
`
`¶60.
`
`Laracey teaches a number of ways for the mobile device to capture a checkout
`
`token from the POS terminal. First, as illustrated in Fig. 8A below, the dynamic
`
`16
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`

`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`checkout token 210 may be displayed as a two-dimensional barcode, which a mobile
`
`device may capture with a camera or scanner:
`
`
`
`Id., Fig. 8A, ¶165 (describing the same), ¶54 (noting the token is captured “using a
`
`camera or scanner associated with the mobile device 202”). Laracey explicitly
`
`teaches that the “checkout token 210 is displayed on or near the point of sale.” Id.,
`
`¶53. Accordingly, a POSITA would have understood that Laracey teaches
`
`physically presenting the dynamic checkout token to the customer so that the
`
`customer may then capture the two-dimensional barcode using the mobile device.
`
`Dec., ¶84 (noting this embodiment requires the token to be physically presented
`
`within range of the camera or scanner).
`
`Second, Laracey teaches that the dynamic checkout token may be encoded
`
`“as a wireless signal,” which the mobile device may capture from the POS terminal.
`17
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`

`IPR2022-01239
`U.S. Patent No. 10,600,046
`Laracey, ¶54, ¶50 (the mobile device “has a wireless receiver (not shown) or other
`
`wireless signal receiving device which allows the mobile device 202 to capture a
`
`wireless signal representation of a checkout token 210”). Laracey contemplates a
`
`number of short range wireless technologies well-suited to wireless communication
`
`between the mobile device and POS terminal, including RFID, Bluetooth, and NFC
`
`(Near Field Communication). Id., ¶20, ¶156 (teaching the mobile device “can also
`
`include one or more wireless communication subsystems . . . such as . . . “RFID,
`
`NFC, and/or Bluetooth”). Although Laracey also teaches that the mobile device may
`
`include long-range wireless technologies, a POSITA would have been motivated to
`
`use one of the short-range technologies in the mobile device for capturing a checkout
`
`token from the POS terminal. Dec., ¶¶85-88. As set forth above, Laracey’s process
`
`involves a user physically presenting products for purchase to the merchant, the
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`merchant’s POS terminal generating a checkout token, and the user’s mobile device
`
`capturing that token either wirelessly or with a camera/scanner. A POSITA would
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`understand that this process is conducted in close proximity and would have been
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`motivated to use a compatible short-range wireless technology in support. Id.
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`(explaining that such short-range technologies provided benefits over long range
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`technologies, including avoiding the need for intermediate entities such as cell
`
`towers and WiFi hotspots/routers). As with the camera/scanner implementation, the
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`checkout tag is physically presented to the mobile device, allowing it to capture the
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`IPR2022-01239
`U.S. Patent No. 10,600,046
`checkout token using short-range communications. Id. (explaining that a POSITA
`
`would have understood that the physical proximity requirement of both Laracey
`
`implementations result in the checkout token being physically presented for capture,
`
`as claimed). Indeed, the ’046 Patent similarly describes placing a mobile device near
`
`a tag in order to utilize NFC to capture data from the tag. ’046 Patent, 7:26-33
`
`(disclosing a mobile device installed with a payment application wherein “[u]pon
`
`detecting the contactless card in the near field, the smart bill application is executed
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`and reads off data pertaining to the electronic bill from the contactless card at 128
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`and subsequently displays the electronic bill on a screen of the mobile device for the
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`consumer to verify.”); Dec., ¶89 (discussing the same and concluding that both
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`Laracey and the ‘046 Patent describe the same Near Field Communication (NFC)
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`technologies to capture tags).
`
`Finally, Laracey’s mobile device captures data directly from the dynamic
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`checkout token. Laracey, ¶38 (teaching “when captured and processed by the mobile
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`device 102, [a dynamic checkout token] provides the transaction details to the
`
`mobile device 102”), ¶82 (teaching that a dynamic checkout token will reveal “the
`
`total transaction amount and other transaction details associated with the transaction
`
`for which the dynamic checkout token was generated”).
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`[1(b)] wherein the tag receives the data directly from a POS device and allows the
`mobile device to capture the data,
`As discussed with respect to claim element [1(a)] above, Laracey teaches that
`
`the merchant’s POS terminal generates the dynamic checkout token, and that said
`
`token contains “all of the transaction details.” Laracey, ¶38, ¶55 (teaching that “[i]n
`
`embodiments where the checkout token 210 is a dynamic checkout token, the token
`
`may further be used to communicate transaction details from the merchant 208 to
`
`the mobile device 202.”). As also discussed above, Laracey expressly contemplates
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`dynamic checkout token embodiments in which all data is received by the mobile
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`device from the POS terminal such that “no transaction details need be received by
`
`the mobile device 202 from the transaction management system 230.” Id., ¶60.
`
`[1(c)] the data embedded in the tag includes an electronic invoice and settlement
`information with a merchant associated with the POS device,
`As discussed above with respect to claim element [1(b)], Laracey teaches that
`
`all the transaction details are encoded within a dynamic checkout token. Laracey,
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`¶38. This includes the amount of the transaction and other transaction details (an
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`electronic invoice) in addition to information specific to the merchant conducting
`
`the transaction (settlement information with a merchant associated with the POS
`
`device).
`
`Regarding the electronic invoice elements, Laracey’s dynamic checkout token
`
`includes “the total transaction amount and other transaction details associated with
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`U.S. Patent No. 10,600,046
`the transaction.” Id., ¶82. Fig. 8B below illustrates data comprising an electronic
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`invoice, including a total transaction amount, savings, and a user’s account
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`(annotated red) and data comprising settlement information with a merchant
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`associated with the POS device, including the merchant store number and address
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`(annotated blue):
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`
`
`Id., Fig. 8B (annotated). In addition to the information depicted in Fig. 8B, Laracey
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`teaches that the checkout token can provide other data specific to a merchant
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`conducting the transaction at a POS:
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`IPR2022-01239
`U.S. Patent No. 10,600,046
`“As a specific illustrative example, a dynamic checkout token
`generated for a grocery store may identify the name of the grocery
`store (e.g., such as the chain), the location of the grocery store (such
`as the specific geographical location of the store), the checkout lane
`within the specific store, and the POS device in the checkout lane.”
`
`Id., ¶81 (emphasis added).
`
`When discussing Fig. 8B, specifically, Laracey teaches that certain
`
`transaction information is received from the transaction management system. Id.,
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`¶165. As discussed above, however, Laracey teaches alternative dynamic checkout
`
`token embodiments in which all data is received by the mobile device from the POS
`
`terminal such that “no transaction details need be received by the mobile device 202
`
`from the transaction management system 230[.]” Id., ¶60. In this alternative
`
`implementation, a POSITA would have understood that the transaction information
`
`illustrated in Fig. 8B would be provided directly by the POS terminal (via the
`
`checkout token) without involvement from the transaction management system.
`
`Dec., ¶¶91-93 (noting Laracey at ¶38 teaches that the “checkout process[] may
`
`proceed without a need for a customer transaction lookup request message to be
`
`transmitted to the transaction management system 130[,]” and that “all of the
`
`transaction details may be encoded in a dynamic checkout token”).
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`IPR2022-01239
`U.S. Patent No. 10,600,046
`[1(d)] extracting the electronic invoice from the captured data in the mobile
`device;
`As discussed above with respect to claim element [1(c)], Laracey’s mobile
`
`device captures and processes (e.g., decodes) a dynamic checkout token that contains
`
`transaction details. Laracey, ¶38 (“[T]he transaction details may be encoded in a
`
`dynamic checkout token which, when captured and processed by the mobile device
`
`102, provides the transaction details to the mobile device 102.”), ¶19 (teaching that
`
`“the term ‘capture’ further includes any decoding [...] of a checkout token required
`
`to retrieve or otherwise obtain information from the checkout token”).
`
`A POSITA would have understood that Laracey’s mobile device is extracting
`
`the electronic invoice data from the token by decoding it such that the mobile device
`
`can use the decoded data to process a transaction. Dec., ¶¶94-95 (noting that
`
`decoding data from a received token is extracting said data pursuant to the meaning
`
`a POSITA would ascribe “extracting” within the context of the ’046 Patent).
`
`[1(e)] displaying the electronic invoice on a display of the mobile device to show
`an amount to be paid by a user of the mobile device,
`As discussed above with respect to claim elements [1(c-d)], Laracey’s mobile
`
`device captures and processes a dynamic checkout token to “provide[] the
`
`transaction details to the mobile device 102.” Laracey, ¶38.
`
`Namely, Laracey teaches that the mobile device may be a smart phone
`
`containing a display which displays user interfaces to the user. Id., ¶162 (teaching
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`“FIG. 8A-8E [] depict a number of illustrative user interfaces that may be presented
`
`to a user operating a mobile device (such as the mobile device 202 of FIG. 2) on a
`
`display screen of the device (such as the display 236 of FIG. 2) so that the customer
`
`can