`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 9
`Date: July 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2023-00398
`Patent 10,438,196 B2
`____________
`
`
`
`Before MICHAEL R. ZECHER, GEORGE R. HOSKINS, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`IPR2023-00398
`Patent 10,438,196 B2
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`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) has filed a Petition (Paper 2, “Pet.”) pursuant
`to 35 U.S.C. §§ 311–319 requesting to institute an inter partes review
`(“IPR”) of U.S. Patent No. 10,438,196 B2 (Ex. 1001, “the ’196 patent”),
`claims 1–22. Fintiv, Inc. (“Patent Owner”) has filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”) opposing institution of review.
`Applying the institution standard set forth in 35 U.S.C. § 314(a),
`which requires the Petition to demonstrate a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`institute, on behalf of the Director (37 C.F.R. § 42.4(a)), an inter partes
`review to determine whether Petitioner demonstrates by a preponderance of
`the evidence that the challenged claims are unpatentable, considering the
`sole ground asserted in the Petition.
`
`BACKGROUND
`
`II.
`Real Parties-in-Interest and Related Proceedings
`A.
`Petitioner is the sole real party-in-interest for Petitioner. See Pet. 1.
`Patent Owner is the sole real party-in-interest for Patent Owner. See
`Paper 4.
`The parties identify one district court case involving the ’196 patent:
`Fintiv, Inc. v. PayPal Holdings, Inc., Case No. 6:22-cv-00288 (W.D. Tex.).
`See Pet. 1; Paper 4. Petitioner represents that “Petitioner is not a party to
`that case” and “the defendant in that case had no knowledge of this IPR prior
`to its filing.” Pet. 1.
`Petitioner also identifies IPR2023-00399 as a related proceeding,
`because in that case Petitioner has challenged claims 1–22 of U.S. Patent
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`IPR2023-00398
`Patent 10,438,196 B2
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`No. 9,208,488 B2, which issued from a parent application of the ’196 patent.
`See Pet. 1; Ex. 1001, code (63).
`
`The ’196 Patent
`B.
`The ’196 patent is titled “Using a Mobile Wallet Infrastructure to
`Support Multiple Mobile Wallet Providers.” Ex. 1001, code (54). It is
`“directed to performing a transaction using a third party mobile wallet.” Id.
`at code (57). Figure 1 (reproduced below) illustrates a monetary transaction
`system architecture in which embodiments of the ’196 patent may operate.
`Id. at 3:4–5.
`
`Figure 1 of the ’196 Patent.
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`Figure 1 illustrates an exemplary platform functional architecture that
`includes (among other things) integration tier 101, notification services 102,
`service connectors 103, payment handler 105, security services 106,
`authorization services 107, database 108, rules engine 109, channels 111,
`notifications 112, third party systems 113, and processor 121. Id. at
`9:62–63, Fig. 1.
`“Integration tier 101 is configured to manage mobile wallet sessions
`and maintain integrity of financial transactions,” and it can include
`“communication mechanisms to accept messages from channels 111.” Id.
`at 9:63–10:1; see also id. at Fig. 1 (showing various channels 111 including,
`for example, “Web,” “POS [point of sale],” “iphone,” and “Android”).
`“Notification services 102 is configured to send various notifications
`through different notification channels 112, such as, for example, Short
`Message Peer-to-Peer (‘SSMP’) for Short Messaging Service (‘SMS’) and
`Simple Mail Transfer Protocol (‘SMTP’) for emails.” Id. at 10:7–13.
`“Service connectors 103 are a set of connectors configure[d] to
`connect to 3rd party systems 113.” Id. at 10:14–15.
`“Payment handler 105 is configured to wrap APIs[1] of different
`payment processors, such as, for example, banking accounts, credit/debit
`cards or processor 121,” and “exposes a common API to facilitate
`interactions with many different kinds of payment processors.” Id. at
`10:21–26.
`“Security services 106 are configured to perform subscriber
`authentication” (id. at 10:27–28), and “[a]uthorization services 107 are
`
`
`1 The ’196 patent does not appear to define “API.” We understand it to
`mean “Application Program Interface.” See Ex. 1006 ¶ 48.
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`configured to perform client authorization, such as, for example, using a
`database-based Access Control List (‘ACL’) table” (id. at 10:28–30).
`Database 108 manages accounts, transaction histories, and customer
`profiles. Id. at 10:31–37.
`Rules engine 109 “enforce[s] business constraints, such as, for
`example, transactions and platform license constraints.” Id. at 10:41–43.
`“Transaction processor 121 is configured to manage financial
`accounts and transactions,” and it “can be used to hold, load, withdraw and
`deposit funds to mobile wallet accounts.” Id. at 10:47–52.
`
`The Claims of the ’196 Patent
`C.
`Petitioner challenges all twenty-two claims of the ’196 patent, of
`which claims 1, 8, 16, 21, and 22 are independent. We reproduce illustrative
`claim 1 here, including Petitioner’s numbering and lettering reference
`scheme in brackets.
`1.
`[1.0] A computing system for facilitating management
`of a mobile wallet, comprising:
`[1.1]
`one or more processors;
`[1.2]
`system memory;
`[1.3]
`[A] an integration tier configured to manage
`mobile wallet sessions with a mobile device and
`[B] including web services communication mechanisms
`for interfacing with a mobile wallet application and
`[C] a plurality of different device types over a plurality of
`different communication channels, [D] the integration tier
`being configured to receive binary and text messages from
`a mobile device;
`[1.4]
`[A] a notification services engine configured to
`interface with the integration tier and [B] to send a
`plurality of corresponding different types of messages over
`the different communication channels to different devices,
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`[C] including a customer’s mobile device, to interface with
`a mobile wallet application installed on the customer’s
`mobile device;
`[1.5]
`service connectors that are each configured to
`connect the computing system to a different third party
`system;
`[1.6]
`a payment handler that exposes a common API for
`interacting with different payment processors;
`[1.7]
`a security services engine that performs subscriber
`authentication utilizing a database-based Access Control
`List (ACL);
`[1.8]
`a rules engine configured to enforce constraints on
`financial transactions performed with the mobile wallet
`application, the mobile wallet application being associated
`with a mobile wallet account; and
`[1.9]
`one or more computer-readable storage media
`having stored thereon computer-executable instructions
`which are executable by the one or more processors, to
`facilitate a transaction for a customer using the mobile
`wallet by causing the computing system to perform at least
`the following:
`[1.10] [A] receive communication from the customer
`over one of the plurality of channels connected to the
`computing system, [B] the customer communication
`indicating that the customer desires to purchase an item at
`an agent terminal for a specified amount of funds using
`a specified payment method from a mobile wallet;
`[1.11] return a secure, perishable purchase code to the
`customer over at least one of the plurality of channels
`connected to the computing system;
`[1.12] [A] receive communication from the agent
`terminal over at least one of the plurality of channels
`connected to the computing system, [B] the agent terminal
`communication indicating that the purchase code has been
`presented to an agent;
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`[1.13] debit the mobile wallet by the specified amount of
`funds;
`[1.14] credit an agent account by the specified amount of
`funds; and
`[1.15] after selecting a particular channel included in the
`plurality of channels, send a notification communication
`from the computing system to the agent terminal using the
`particular channel, which is connected to the computing
`system, the notification communication providing
`a notification indicating confirmation of the processing of
`the transaction.
`Ex. 1001, 23:60–24:52.
`
`Asserted Prior Art
`D.
`Petitioner relies principally on the three prior art references set forth
`in the table below. See Pet. 6–7 (summarizing Petitioner’s sole ground of
`unpatentability).
`
`Exhibit No.
`Pub. Date
`Reference
`Name
`1005
`US 2009/0265272 A1 Oct. 22, 2009
`Dill
`1006
`US 2010/0133334 A1 June 3, 2010
`Vadhri
`Akashika US 2009/0217047 A1 Aug. 27, 2009 1007
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`Asserted Ground
`E.
`Petitioner’s sole ground of unpatentability is that claims 1–22 of the
`’196 patent are unpatentable under 35 U.S.C. § 103(a)2 as having been
`obvious over Dill, Vadhri, and Akashika. See, e.g., Pet. 6–7.
`
`Testimonial Evidence
`F.
`Petitioner relies on the declaration testimony of Henry Houh, Ph.D.
`(Exhibit 1003). Patent Owner relies on the declaration testimony of Michael
`Shamos, Ph.D. (Exhibit 2001).
`
`III. ANALYSIS OF PETITIONER’S PROPOSED GROUND
`Petitioner argues claims 1–22 of the ’196 patent are unpatentable as
`having been obvious over Dill, Vadhri, and Akashika. See, e.g., Pet. 6–7.
`Patent Owner opposes. See Prelim. Resp. generally.
`We have reviewed the preliminary record, and we conclude Petitioner
`has demonstrated a reasonable likelihood of prevailing on its assertions as to
`at least claim 1.
`
`A.
`Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`
`
`2 The first-inventor-to-file provisions of the Leahy-Smith America Invents
`Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“the AIA”), apply to any
`patent issuing 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. See AIA § 3(n)(1). Petitioner assumes the ’196 patent has
`a priority date in November 2011, so the pre-AIA versions of 35 U.S.C.
`§ 102 and § 103 apply here. See Pet. 4. The Preliminary Response does not
`dispute Petitioner’s assumption. Thus, we refer to pre-AIA law here.
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness, if made available in the record, which has not happened
`here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’196 patent “would have had a working knowledge of mobile payment
`systems and techniques,” as well as “a bachelor’s degree in electrical
`engineering, computer science, or equivalent training, and approximately
`two years of work experience in software development with a basic
`knowledge of accounting.” Pet. 4; Ex. 1003 ¶¶ 21–23. Further according to
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`Petitioner: “Lack of work experience can be remedied by additional
`education, and vice versa.” Pet. 4; Ex. 1003 ¶ 22.
`The Preliminary Response does not dispute this aspect of the Petition.
`For purposes of this Decision, we determine a person of ordinary skill
`in the art “would have had a working knowledge of mobile payment systems
`and techniques” and “a bachelor’s degree in electrical engineering, computer
`science, or equivalent training, and approximately two years of work
`experience in software development with a basic knowledge of accounting,”
`as Petitioner proposes. Pet. 4. We are satisfied that this definition generally
`comports with the level of skill necessary to understand and implement the
`teachings of the ’196 patent and the asserted prior art. See Ex. 1003 ¶ 22;
`Ex. 2001 ¶¶ 33–35 (agreeing with this articulation of the level of ordinary
`skill).
`
`To the extent the level of ordinary skill in the art is in dispute or
`makes a material difference in the obviousness analysis, the parties should
`brief their respective positions in this regard during trial.
`
`C.
`Claim Construction
`We interpret the ’196 patent claims “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). This “includ[es]
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” Id.
`The Petition and the Preliminary Response raise several claim
`construction issues. We address each one here, to provide guidance to the
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`parties for the upcoming trial. If either party disagrees with our analysis, it
`should explain its position at trial.
`
`“mobile device” (Claims 1, 8, 16, 21, and 22)
`1.
`Each of the independent claims of the ’196 patent (claims 1, 8, 16, 21,
`and 22) recites “an integration tier configured to manage mobile wallet
`sessions with a mobile device.” Ex. 1001, 23:64–65, 25:40–41, 26:56–57,
`27:35–36, 28:48–49 (emphasis added).
`Patent Owner argues we should construe the term “mobile device” to
`mean a “physical device that is mobile, such as a phone or tablet.” Prelim.
`Resp. 8; Ex. 2001 ¶¶ 39–41. Patent Owner cites passages of the ’196 patent
`specification to support this argument. See Prelim. Resp. 8 (citing Ex. 1001,
`11:32–33, 12:27–36); Ex. 2001 ¶¶ 40–41. Patent Owner proffers this claim
`construction because, according to Patent Owner, “the Petition (through its
`mappings [of the ’196 patent to Dill]) has implicitly raised the possibility
`that a ‘mobile device’ need not be a physical device, and need not even be
`mobile.” Prelim. Resp. 9–10 (citing Pet. 22–23, 33; Ex. 1005, Fig. 9);
`Ex. 2001 ¶¶ 39–41.
`At this stage, we agree with Patent Owner’s understanding of the
`“mobile device” claim term. Patent Owner’s construction generally accords
`with the term’s plain and ordinary meaning and is supported by the
`’196 patent specification. See, e.g., Ex. 1001, 11:32–35, 12:27–36
`(identifying a phone and a tablet as “mobile device” examples). We
`therefore apply Patent Owner’s construction in this Decision. Nonetheless,
`we disagree with Patent Owner’s argument that this construction leads to a
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`deficiency in the Petition’s contentions concerning Dill, for reasons provided
`in Section III.G.1(a) below.
`In this Decision, for purposes of institution, we construe the term
`“mobile device” to mean a “physical device that is mobile, such as a phone
`or tablet.”
`
`2.
`“mobile wallet application” (Claims 1, 8, 16, 21, and 22)
`Claim 1 recites “an integration tier configured to manage mobile
`wallet sessions with a mobile device and including web services
`communication mechanisms for interfacing with a mobile wallet
`application.” Ex. 1001, 23:64–67 (emphases added).
`Claims 8 and 16 each recite “an integration tier configured to manage
`mobile wallet sessions with a mobile device on which a mobile wallet
`application is installed and including web services communication
`mechanisms for interfacing with the mobile wallet application.” Id.
`at 25:40–44, 26:56–60 (emphases added).
`Claims 21 and 22 each recite “an integration tier configured to
`manage mobile wallet sessions with a mobile device and including web
`services communication mechanisms for interfacing with a mobile wallet
`application installed on computer readable media executable by the mobile
`device.” Id. at 27:35–39, 28:48–52 (emphases added).
`Patent Owner argues we should construe the term “mobile wallet
`application” to mean a “wallet application installed on a SIM card or
`elsewhere on a mobile device.” Prelim. Resp. 10; Ex. 2001 ¶¶ 42–43.
`Patent Owner contends this corresponds to an express definition of the term
`in the ’196 patent specification. See Prelim. Resp. 10 (citing Ex. 1001,
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`7:14–16); Ex. 2001 ¶ 42. Patent Owner asserts its proffered construction
`also is consistent with the ’196 patent claims and specification, taken as a
`whole. See Prelim. Resp. 10–11 (citing Ex. 1001, Fig. 2, 11:32–40,
`12:27–33). Patent Owner suggests that applying its proffered construction
`leads to a deficiency in the Petition’s contentions concerning Dill. See
`Prelim. Resp. 11, 18–19; Ex. 2001 ¶¶ 43, 51–52.
`At this stage, we agree with Patent Owner’s understanding of the
`“mobile wallet application” claim term. The ’196 patent specification states:
`“As used herein, a mobile wallet application is a mobile wallet application
`installed on a SIM card or elsewhere on a mobile device.” Ex. 1001,
`7:14–16 (emphases added). For purposes of institution, we conclude this is
`an express definition of the claim term “mobile wallet application.” We
`therefore apply Patent Owner’s construction in this Decision. Nonetheless,
`we disagree with Patent Owner’s argument that this construction leads to a
`deficiency in the Petition’s contentions concerning Dill, for reasons provided
`in Section III.G.1(b) below.
`In this Decision, for purposes of institution, we construe the term
`“mobile wallet application” to mean a “wallet application installed on a SIM
`card or elsewhere on a mobile device.”
`
`“debit the mobile wallet” (Claims 1, 8, 16, 21, and 22)
`3.
`Claim 1 is directed to a “computing system for facilitating
`management of a mobile wallet,” in which the system can “debit the mobile
`wallet by [a] specified amount of funds.” Ex. 1001, 23:60–61, 24:43
`(emphases added). The other independent claims also contain preambles
`that refer to facilitating management of a mobile wallet, and limitations that
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`refer to debiting or transferring funds from the mobile wallet. Id. at 25:5–6,
`25:26–27 (claim 8); id. at 26:22–27, 26:43 (claim 16); id. at 27:31–32,
`27:64–28:3, 28:10–18 (claim 21); id. at 28:44–45, 29:10–16, 29:23–25
`(claim 22).
`Petitioner asserts a person of ordinary skill in the art “would have
`understood that there are various types of mobile wallets: (1) where a mobile
`device holds value (such as on a secure chip) and (2) where the value is
`stored in an external account.” Pet. 5 (citing Ex. 1001, 9:26–36; Ex. 10113
`¶¶ 9, 22); Ex. 1003 ¶¶ 39–44. Petitioner maintains that “[t]he ’196 patent
`refers to the first type of mobile wallet.” Pet. 5 (citing Ex. 1001, 9:26–30);
`Ex. 1003 ¶ 42. Further according to Petitioner, “[t]he ’196 patent does not
`provide technical details of how its mobile wallet is debited other than to say
`that ‘[t]he cloud-based transaction platform then debits the customer’s third
`party mobile wallet by the specified amount of funds to complete the
`purchase.’” Id. at 6 (quoting Ex. 1001, 2:40–42); Ex. 1003 ¶ 43. Petitioner
`adds that “the term ‘stored value’ in mobile wallets is well-known and refers
`to a value stored on a mobile device (such as in a secure memory).” Pet. 5–6
`(citing Ex. 1011 ¶¶ 9, 22); Ex. 1003 ¶ 43. From the foregoing, Petitioner
`concludes the phrase “debit the mobile wallet by the specified amount of
`funds” in claims 1 and 16 must “include ‘transferring the specified amount
`of funds from the stored value on a mobile device.’” Pet. 6; Ex. 1003 ¶¶ 41,
`44.
`
`Patent Owner argues Petitioner “construes ‘mobile wallet’ as being
`limited to a type of mobile wallet where ‘a mobile device holds value[.]’”
`
`
`3 Exhibit 1011 is US 2008/0167988 A1 to Sun et al. (“Sun”).
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`Prelim. Resp. 15 (citing Pet. 5–6); Ex. 2001 ¶¶ 48–50. Patent Owner asserts
`Petitioner’s claim construction applies to all of the independent claims of the
`’196 patent (claims 1, 8, 16, 21, and 22), despite that the Petition refers only
`to claims 1 and 16, because all of these claims recite a “mobile wallet.” See
`Prelim. Resp. 15–16. Patent Owner then maintains we should deny
`institution because the Petition fails to establish that Dill discloses a mobile
`device that stores value, as Dill instead stores value in an account external to
`the mobile device. See id. at 15–18; Ex. 2001 ¶ 50.
`We are not persuaded by Patent Owner’s argument, for two reasons.
`First, for purposes of institution, we disagree with Patent Owner’s
`characterization of Petitioner’s claim construction. The Petition states only
`that the ’196 patent “refers to” a type of mobile wallet where a mobile
`device holds value, and that the claims “include” transferring funds from a
`stored value on a mobile device. Pet. 5–6. Neither of those statements takes
`the position that the claims are “limited to” such an embodiment to the
`exclusion of other embodiments, as Patent Owner would have it. See
`Prelim. Resp. 15, 16.
`Second, for purposes of institution, we determine that the term
`“mobile wallet” is a stored value account or prepaid access account that
`allows its owner to pay for goods and services. This construction is based
`on the ’196 patent specification’s express definition of this term, as cited in
`the Petition:
`
`The term “mobile wallet” or “mobile wallet account”
`refers to a stored value account or prepaid access account (PPA)
`that allows the owner (or “subscriber”) to pay for goods and
`services on the mFS platform from his or her mobile wallet
`account.
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`Ex. 1001, 9:26–30 (cited at Pet. 5); see also id. at 6:43–48 (“mFS” refers to
`“mobile financial services”). Our construction is also consistent with the
`construction recently adopted by a district court. See Fintiv, Inc. v. PayPal
`Holdings, Inc., Case No. 6:22-cv-00288, Dkt #60 (W.D. Tex.) (claim
`construction order; included in the record as Exhibit 3002).
`We observe that Patent Owner does not address the proper
`construction of the term “mobile wallet.” See Prelim. Resp. 15–18 & n.1
`(neither agreeing nor disagreeing with Petitioner’s alleged claim
`construction, and expressly “reserv[ing] the right to challenge” it). This is
`particularly notable because the district court provided its construction for
`the term “mobile wallet” several months before Patent Owner filed the
`Preliminary Response.4
`Petitioner cites the ’196 patent description quoted above as supporting
`Petitioner’s claim construction. See Pet. 5 (quoting Ex. 1001, 9:26–30). We
`see nothing therein to suggest that the term “mobile wallet” should be
`construed as being limited to a mobile wallet where a mobile device stores
`value, to the exclusion of a mobile wallet where an external account stores
`value. Indeed, the ’196 patent’s express definition of “mobile wallet” goes
`on to state that in some embodiments, “the mobile wallet balance is
`maintained by the mFS platform and value is exchanged within the mFS
`
`
`4 Although the district court issued its order on January 9, 2023, Patent
`Owner did not submit that order to the Board with its Preliminary Response,
`as instructed by the PTAB Consolidated Trial Practice Guide (Nov. 2019)
`(“CTPG”) (available at www.uspto.gov/TrialPracticeGuideConsolidated).
`See CTPG 47 (“Parties should submit a prior claim construction
`determination by a federal court or the ITC in an AIA proceeding as soon as
`that determination becomes available.”).
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`program as eMoney,” wherein “the mFS platform is integrated to an
`external card processor.” Ex. 1001, 9:30–36 (emphases added); see also id.
`at 6:43–60 (introducing the term “mobile financial services (mFS)
`platform”), 8:66–9:10 (introducing the term “eMoney”).
`Petitioner’s citation to Sun does not demonstrate otherwise. Sun
`pertinently states: “Mobile communication devices used in the architecture
`described herein are characterized by secure memory usable for storing
`value and a controller which manages the secure memory.” Ex. 1011 ¶ 9.
`Also: “Another possible method for handling payment transactions in a
`system as described above changes the stored value represented by data on
`the mobile communication device according to the particular transaction.”
`Id. ¶ 22. These disclosures do not refer to the term “mobile wallet” or any
`similar term, so as to suggest that the ’196 patent’s use of that term should
`be construed to be limited to a mobile wallet where a mobile device stores
`value. Moreover, at best these disclosures indicate that Sun’s system
`requires its mobiles devices to store value, without suggesting that all mobile
`payment systems must be so configured.
`Petitioner states that “the term ‘stored value’ in mobile wallets is
`well-known and refers to a value stored on a mobile device (such as in a
`secure memory).” Pet. 5–6. However, the independent claims of the
`’196 patent pertinently recite only a “mobile wallet”; they do not recite a
`“stored value.” Thus, the meaning of the term “stored value” appears to be
`irrelevant to the ’196 patent claims, based on the present record.
`For the foregoing reasons, for purposes of institution, we construe the
`term “mobile wallet” to mean a stored value account or prepaid access
`account that allows its owner to pay for goods and services.
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`IPR2023-00398
`Patent 10,438,196 B2
`
`
`“third party mobile wallet” (Claims 21 and 22)
`4.
`Claim 21 refers to a “mobile wallet transaction using a third party
`mobile wallet” that comprises at least one of: “a mobile wallet transfer in
`which funds are transferred from the mobile wallet of the customer to a third
`party mobile wallet”; “a mobile wallet withdrawal in which funds are
`withdrawn from the third party mobile wallet and provided to the customer”;
`or “a mobile wallet deposit in which funds are deposited into the third party
`mobile wallet.” Ex. 1001, 28:4–17 (emphases added). Claim 22 contains a
`similar “third party mobile wallet” limitation. Id. at 29:17–25.
`Patent Owner argues we should construe the term “third party mobile
`wallet” to mean a “mobile wallet provided by a provider other than the
`provider of the cloud-based transaction platform.” Prelim. Resp. 11;
`Ex. 2001 ¶¶ 44–46. Patent Owner contends this corresponds to an express
`definition of the term in the ’196 patent specification. Prelim. Resp. 12
`(citing Ex. 1001, 7:14–20); Ex. 2001 ¶ 44. Patent Owner asserts the
`’196 patent specification further contrasts between third party mobile wallet
`applications and native mobile wallet applications. See Prelim. Resp. 2–3,
`4–5, 12 (citing Ex. 1001, code (54), 1:39–51, 7:5–10, 7:14–20, 11:33–43,
`18:11–25). In particular, according to Patent Owner, the ’196 patent
`“improved upon prior art wallet system[s] that required all users of the
`system to have obtained their wallets from the same provider.” Id. at 5–6,
`12 (citing Ex. 1001, Fig. 1, 6:61–64, 18:11–25); Ex. 2001 ¶ 45. Patent
`Owner argues Petitioner acknowledges this difference between third party
`and native mobile wallet applications. Prelim Resp. 12–13 (citing Pet. 64).
`
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`IPR2023-00398
`Patent 10,438,196 B2
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`
`We generally agree with Patent Owner’s understanding of the term
`“third party mobile wallet.” The ’196 patent specification provides an
`express definition for this term:
`With respect to the entire description of FIG. 6, and as
`explained above, the term “mobile wallet” encompasses not
`only mobile wallets owned or managed by the mobile wallet
`platform, but also third party mobile wallets owned by third
`party mobile wallet providers or managed by third party mobile
`wallet platforms. In contrast, the term “third party mobile
`wallet” refers only to third party mobile wallets owned by third
`party mobile wallet providers or managed by third party mobile
`wallet platforms. Accordingly, cloud-based transaction
`platform 601 may manage and process transactions using
`mobile wallets 605, which may be mobile wallets owned by
`cloud-based transaction platform 601 or mobile wallets owned
`by a third party mobile wallet provider.
`Ex. 1001, 18:11–25 (emphases added); see also id. at 7:16–20 (providing
`corollary definition for a “third party” mobile wallet application). Thus, for
`purposes of this Decision, we determine that a “third party mobile wallet”
`must be owned or managed by an entity different than the one that owns or
`manages the “computing system” recited in claims 21 and 22.
`Patent Owner’s proposed construction uses slightly different language
`than our construction. Patent Owner refers to “provid[ing]” the wallet
`(rather than owning or managing it) and to the “cloud-based transaction
`platform” (rather than the “computing system”). We have altered the
`construction for three reasons: (1) the ’196 patent specification’s definition
`refers to entities that “own[]” or “manage[]” the wallets; (2) claims 21
`and 22 focus on the components and operation of the “computing system”;
`and (3) claims 21 and 22 refer to a “cloud-based transaction platform” only
`twice (and only in the context of the “plurality of communication channels
`
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`IPR2023-00398
`Patent 10,438,196 B2
`
`connected to the cloud-based transaction platform”). Nevertheless, we
`understand Patent Owner’s proposed construction to be substantially the
`same as our construction for purposes of evaluating Patent Owner’s
`arguments. In particular, even if we adopted the specific language used in
`Patent Owner’s proposed construction, we would still determine that
`Petitioner sufficiently shows that Dill teaches or suggests a third party
`mobile wallet for the reasons provided in Section III.H.1 below.
`In sum, for purposes of institution, we construe the term “third party
`mobile wallet” as a mobile wallet that is owned or managed by an entity
`different than the one that owns or manages the “computing system” or
`“computer system” recited in the claims.
`
`Other Claim Terms
`5.
`Upon review of the arguments and evidence presented at this stage of
`the proceeding, we determine no further explicit constructions of any claim
`term is needed at the present time. 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)).
`
`Summary of Dill
`D.
`Dill discloses systems and methods for money transfers. See
`Ex. 1005, codes (54) and (57). Dill particularly “relates to financial transfers
`utilizing a unique identifier to facilitate flexible payment options for the
`transaction.” Id. ¶ 2. Figure 9 of Dill, reproduced below, illustrates an
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`IPR2023-00398
`Patent 10,438,196 B2
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`“exemplary system for making financial transfers according to one
`embodiment.” Id. ¶ 25.
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`Figure 9 of Dill.
`Figure 9 illustrates system 100 that includes, among other things, sender 105
`initiating a money transfer transaction (e.g., payment) to recipient 110 via
`mobile wallet application 121 of mobile network operator 120. Id. ¶¶ 49,
`54; see id. ¶ 100 (s
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