`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`GOOGLE LLC,
`Petitioner,
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`v.
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`RFCYBER CORP.,
`Patent Owner
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`———————
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`PGR2021-00028
`U.S. Patent No. 10,600,046
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`
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`PETITION FOR POST-GRANT REVIEW
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` (§ 112 and § 101)
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................. 1
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`II. MANDATORY NOTICES ............................................................................... 2
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`A. Real Party-in-Interest................................................................................ 2
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`B. Related Matters ......................................................................................... 2
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`C. Lead and Back-up Counsel and Service Information .............................. 3
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`III. GROUNDS FOR STANDING .......................................................................... 4
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`IV. THE ’046 PATENT ........................................................................................... 5
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`A. Overview of the ’046 Patent ..................................................................... 5
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`B. Prosecution History .................................................................................. 8
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`V. THE ’046 PATENT IS ELIGIBLE FOR POST-GRANT REVIEW. .............13
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`A. The ’046 Patent’s broken priority chain creates PGR eligibility. .......... 14
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`1. The “displaying a denial” step in claim 1 lacks written
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`description support in the pre-AIA applications. ........................... 17
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`2. The “account and bank information of the registered
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`merchant” limitation in claims 6 and 15 lacks written
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`description support in the pre-AIA applications. ........................... 21
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`B. The ’046 Patent’s lack of written description for subject matter
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`added by amendment creates PGR eligibility. ....................................... 25
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`VI. CLAIM CONSTRUCTION.............................................................................25
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`VII. LEVEL OF ORDINARY SKILL IN THE ART .............................................26
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`– ii –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
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`RELIEF ....................................................................................................................27
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`IX. IDENTIFICATION OF CHALLENGES ........................................................27
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`X. THE BOARD SHOULD INSTITUTE POST-GRANT REVIEW. ................28
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`A. The challenges presented in this petition are not cumulative to
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`prosecution of the ’046 Patent ................................................................ 28
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`B. The Fintiv factors favor institution. ........................................................ 28
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`1.
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`Factor 1 is neutral (possibility of a stay). ....................................... 28
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`2.
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`Factor 2 favors institution (proximity of trial date to final
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`written decision). ............................................................................ 29
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`3.
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`Factor 3 favors institution (investment in parallel
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`proceeding). .................................................................................... 30
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`4.
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`Factor 4 favors institution (overlap in issues). ............................... 31
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`5.
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`Factor 5 is neutral (overlap in parties). .......................................... 31
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`6.
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`Factor 6 favors institution (other circumstances). .......................... 32
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`XI. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ......32
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`A. Challenge #1: Claims 1-17 are invalid for failing to satisfy the
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`written description requirement of 35 U.S.C § 112. .............................. 32
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`1.
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`Independent Claim 1 ...................................................................... 33
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`a. The specification does not describe sending a payment request
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`to a payment gateway only when an e-purse balance is
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`sufficient.................................................................................. 34
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`– iii –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`b. The specification does not describe “displaying a confirmation
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`in the mobile device that the balance in the e-purse has been
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`reduced by the total amount.” ................................................. 47
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`2.
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`Independent Claim 12 .................................................................... 51
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`a. The specification does not describe sending a payment request
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`to a payment gateway only if an e-purse balance is sufficient.
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` ................................................................................................. 52
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`b. The specification does not describe a payment gateway
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`configured to cause the balance in the e-purse to be reduced. 53
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`3. Dependent Claims 2-17 .................................................................. 57
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`B. Challenge #2: Claims 1-17 are invalid under 35 U.S.C § 101. ............. 58
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`1. Guidance Step 1: Statutory Category ............................................. 61
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`2. Guidance Step 2A, Prong 1: The ʼ046 Patent claims recite
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`the abstract idea of presenting and settling an invoice, a
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`fundamental economic practice...................................................... 61
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`a.
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`Presenting and settling an invoice is a fundamental economic
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`practice and, thus, an abstract idea under the Guidance. ........ 62
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`b. The Supreme Court and Federal Circuit have determined that
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`presenting and settling an invoice is a fundamental economic
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`practice and, thus, is an abstract idea. ..................................... 64
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`3. Guidance Step 2A, Prong 2: The ’046 Patent claims do not
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`integrate the abstract idea into a practical application. .................. 65
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`– iv –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`a. The claims do not aim to improve the functioning of a
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`computer or other technology. ................................................ 67
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`b. The claims employ standard e-commerce components to
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`implement an abstract idea. .................................................... 70
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`4. Guidance Step 2B: The ’046 Patent claims do not provide
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`an “inventive concept.” .................................................................. 76
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`a. The additional claim elements simply append well-understood,
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`routine, and conventional e-commerce activities to the abstract
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`idea. ......................................................................................... 77
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`b. The ordered combination of elements does not add
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`“significantly more” to the abstract idea of presenting and
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`settling an invoice. .................................................................. 91
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`5.
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`Independent claim 12 is substantially similar to
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`representative claim 1 and is thus not patent eligible. ................... 93
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`6. The dependent claims of the ’046 Patent are directed to the
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`same abstract idea and add only trivial and conventional
`
`elements. ......................................................................................... 94
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`a. Claims 2, 5, and 13 ................................................................. 95
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`b. Claims 3, 7, 9, 10, 14, and 17 ................................................. 97
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`c. Claims 4 and 8 ...................................................................... 101
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`d. Claims 6 and 15 .................................................................... 104
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`e. Claims 11 and 16 .................................................................. 106
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`– v –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`XII. CONCLUSION ..............................................................................................108
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`– vi –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`PETITIONER’S EXHIBIT LIST
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`GOOG-1001 U.S. Patent No. 10,600,046 to Xie et al. (“’046 Patent”)
`GOOG-1002 Prosecution History of U.S. Patent No. 10,600,046 (“’046 PH”)
`GOOG-1003 Declaration of Mr. Stephen Gray under 37 C.F.R. § 1.68
`GOOG-1004 Curriculum Vitae of Mr. Gray
`GOOG-1005 U.S. Patent Application Publication No. 2014/0310117 to Moshal
`(“Moshal”)
`GOOG-1006 Verified English Language Translation of Japanese Patent No.
`4901053 B2 (“Jogu”)
`GOOG-1007 U.S. Patent No. 9,027,827 to Dessert et al. (“Dessert”)
`GOOG-1008 U.S. Patent Application Publication No. 2014/0365371 to
`Ohlhausen (“Ohlhausen”)
`GOOG-1009 U.S. Patent Application Publication No. 2010/0211507 to Aabye et
`al. (“Aabye”)
`GOOG-1010 U.S. Patent Application Publication No. 2014/0297381 to Park
`(“Park”)
`GOOG-1011 U.S. Patent Application Publication No. 2011/0066550 to Shank et
`al. (“Shank”)
`GOOG-1012 U.S. Patent No. 8,170,527 to Granucci (“Granucci”)
`GOOG-1013 U.S. Patent Application Publication No. 2013/0166448 to
`Narayanan (“Narayanan”)
`GOOG-1014 Japanese Patent No. 4901053 B2 to Jogu
`GOOG-1015 U.S. Patent Application Publication No. 2011/0173060 to Gallagher
`(“Gallagher”)
`GOOG-1016 U.S. Patent Application Publication No. 2013/0048717 to Brendell
`et al.
`GOOG-1017 U.S. Patent No. 9,202,330 to Boucher (“Boucher”)
`GOOG-1018 Mifare in Action, Card Technology Today (Mar. 2003)
`GOOG-1019 U.S. Patent No. 7,890,371 to Chao
`GOOG-1020 U.S. Patent No. 10,380,573 to Lin
`GOOG-1021 U.S. Patent Application Publication No. 2009/0094123 to Killian
`GOOG-1022 U.S. Patent Application Publication No. 2010/0174650 to Nonaka
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`– vii –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`GOOG-1023 Reserved
`GOOG-1024 U.S. Patent Application Publication No. 2012/0296819 to Lu
`GOOG-1025 U.S. Patent Application Publication No. 2010/0287095 to Ueno
`(“Ueno”)
`GOOG-1026 Comparison (not including figures) of the specification of U.S.
`Application No. 13/350,832 (as published in U.S. Patent
`Application Publication No. 2012/0130838) and the specification of
`U.S. Patent No. 9,047,601
`GOOG-1027 Comparison (not including figures) of the specification of U.S.
`Provisional No. 61/618,802 and the specification of U.S. Patent
`9,047,601
`GOOG-1028 U.S. Patent No. 8,118,218 (“the ʼ218 Patent”)
`GOOG-1029 U.S. Patent Application Publication No. 2012/0130838 (publication
`of U.S. Application 13/350,832) (“the ʼ832 application”)
`GOOG-1030 U.S. Provisional No. 61/618,802
`GOOG-1031 U.S. Patent 9,047,601 (“the ʼ601 Patent”)
`GOOG-1032 U.S. Patent Application Publication No. 2013/0246258
`GOOG-1033 U.S. Patent No. 8,601,266
`GOOG-1034 U.S. Patent Application Publication No. 2010/0211504
`GOOG-1035 Petri Vuorinen, Applying the RFID technology for field force
`solution (Oct. 2005), available at
`https://dl.acm.org/doi/pdf/10.1145/1107548.1107564
`GOOG-1036 Carol L. Clark, Shopping without cash: The emergence of the e-
`purse, Economic Perspectives (2005) (“Shopping without cash”)
`GOOG-1037 History of Money and Payments,
`https://squareup.com/us/en/townsquare/history-of-money-and-
`payments
`GOOG-1038 Reserved
`GOOG-1039 PayPal, Britannica, https://www.britannica.com/topic/PayPal
`GOOG-1040 U.S. Patent No. 7,597,250
`GOOG-1041 Complaint for Patent Infringement, RFCyber Corp. v. Google LLC
`et al., 2:20-cv-00274 (E.D. Tex. Aug. 21, 2020)
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`– viii –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`GOOG-1042 Affidavits of Service in RFCyber Corp. v. Google LLC et al., 2:20-
`cv-00274 (E.D. Tex.)
`GOOG-1043 Infernal Technology, LLC v. Sony Interactive Entertainment LLC,
`No. 2:19-cv-249, ECF No. 261 (E.D. Tex. Nov. 20, 2020)
`GOOG-1044 Ramot at Tel Aviv Univ. v. Cisco Sys., Inc., No. 2:19-cv-225, ECF
`No. 203 (E.D. Tex. Nov. 20, 2020)
`GOOG-1045 Solas Oled Ltd. v. Samsung Display Co., Ltd., No. 2:19-cv-152,
`ECF No. 302 (E.D. Tex. Nov. 20, 2020)
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`– ix –
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`I.
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`INTRODUCTION
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`U.S. Patent No. 10,600,046 (“the ’046 Patent,” GOOG-1001) describes
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`methods and systems for mobile payment. In particular, the ’046 Patent attempts to
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`simplify retail transactions by replacing a paper invoice with an electronic invoice
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`presented to a customer in a “tag,” such as a radio-frequency identification
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`(“RFID”) tag. The customer’s mobile device reads the tag and displays the invoice
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`so the customer can add a tip, select a payment method, and settle the invoice.
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`This method of mobile payment was already well known when the inventors
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`filed the application for the ’046 Patent. As such, the Examiner repeatedly rejected
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`the pending claims, forcing the inventors to heavily amend the claims by adding
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`new limitations to gain allowance. The limitations added by these amendments
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`lacked written description support and divorced the claims from the embodiments
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`described in the specification. This lack of written description support (i) breaks
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`the priority chain to the ’046 Patent’s pre-AIA priority applications, thereby giving
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`rise to post-grant review eligibility, and (ii) renders the claims unpatentable under
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`35 U.S.C. § 112(a).
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`The claims are also unpatentable for a second, independent reason—they are
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`directed to the abstract idea of presenting and settling an invoice. The claims do
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`not seek to improve any computer functionalities or resolve a technological
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`1
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`problem. Rather, they aim to speed up the traditional retail payment process by
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`reducing the number of contacts between a consumer and a merchant—and they do
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`so with unimproved, off-the-shelf hardware, such as the aforementioned “tag” and
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`a generic mobile device.
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`The evidence in this Petition demonstrates that claims 1-17 of the ’046
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`Patent are unpatentable under 35 U.S.C. §§ 101 and 112(a). Accordingly, Google
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`LLC (“Petitioner”) respectfully requests that these claims be held unpatentable and
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`cancelled.
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`II. MANDATORY NOTICES
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`A. Real Party-in-Interest
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`The real parties-in-interest are Google LLC1 and Google Payment Corp.
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`B. Related Matters
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`Pursuant to 37 C.F.R. § 42.8(b)(2), to the best knowledge of the Petitioner,
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`the ’046 Patent is or was involved in the following cases (“Related Litigation”):
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`
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`1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
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`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real parties in interest
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`to this proceeding.
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`2
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Case Heading
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`Number
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`Court
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`Filed
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`RFCyber Corp. v. Google LLC et al. 2:20-cv-00274 EDTX Aug. 21, 2020
`RFCyber Corp. v. LG Electronics,
`2:20-cv-00336 EDTX Oct. 16, 2020
`Inc.
`RFCyber Corp. v. Samsung
`Electronics Co., Ltd. et al.
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`Petitioner is also concurrently filing a petition for post-grant review of the
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`2:20-cv-00335 EDTX Oct. 16, 2020
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`’046 Patent that challenges claims 1-17 under 35 U.S.C. § 103.
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`C. Lead and Back-up Counsel and Service Information
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`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Scott T. Jarratt
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Jonathan R. Bowser
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
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`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`
`Phone: (972) 739-8663
`Fax: (214) 200-0853
`scott.jarratt.ipr@haynesboone.com
`USPTO Reg. No. 70,297
`
`Phone: (202) 654-4503
`Fax: (214) 200-0853
`jon.bowser.ipr@haynesboone.com
`USPTO Reg. No. 54,574
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`3
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Angela M. Oliver
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
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`
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`Phone: (202) 654-4552
`Fax: (214) 200-0853
`angela.oliver.ipr@haynesboone.com
`USPTO Reg. No. 73,271
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`Please address all correspondence to lead and back-up counsel. Petitioner
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`consents to electronic service via email.
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`III. GROUNDS FOR STANDING
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`Petitioner certifies that the ’046 Patent is eligible for post-grant review
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`because it contains at least one claim with an effective filing date after March 16,
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`2013, as described below in Section V. See AIA §§ 3(n)(1), 6(f)(2)(A). Petitioner
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`is not barred or estopped from requesting post-grant review challenging the patent
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`claims on the grounds identified in this Petition. Petitioner has not filed a civil
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`action challenging the validity of any claim of the ’046 Patent.
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`IV. THE ’046 PATENT2
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`A. Overview of the ’046 Patent
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`The ’046 Patent pertains to a method of presenting and settling an invoice.
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`GOOG-1001, Abstract. While the specification describes many different
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`embodiments, the challenged claims generally correspond to Figures 1A and 1B
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`(but with several important differences). Figures 1A and 1B describe a method in
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`which a restaurant waiter delivers a bill/invoice to a customer via a “tag” or
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`“contactless card,” rather than on paper. GOOG-1001, 7:19-26. The customer uses
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`a mobile device (e.g., a smartphone) to read the invoice, select a payment method,
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`and settle the invoice by sending a payment request to a payment server (e.g., “a
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`payment gateway”). GOOG-1001, 7:25-8:24. Figure 1A illustrates the system for
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`carrying out this method:
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`2 Unless otherwise specified, all bold and bold italics emphasis below has been
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`added.
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`5
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Payment
`gateway
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`Point-of-sale
`device
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`Customer’s
`mobile device
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`Tag storing invoice
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`GOOG-1001, Fig. 1A (annotated); GOOG-1003, ¶ 39.
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`Figure 1B illustrates that the merchant’s point-of-sale (POS) device 106
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`generates a bill that is written to the tag 108 (step 122). When the tag 108 is
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`presented to the customer (step 124), an application on the mobile device reads the
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`tag 108 (step 126), and the bill is displayed to the customer on the mobile device
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`(step 128). GOOG-1001, 7:19-33. The user can optionally add a tip (step 128).
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`GOOG-1001, 7:59-61. The mobile device user selects a payment method, such as
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`“an electronic wallet or purse (a.k.a. e-purse) already created in the mobile device”
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`(step 130). GOOG-1001, 7:48-50, 7:57-59. The mobile device then transmits a
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`6
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`payment request to a payment gateway (server) 104 (step 132). GOOG-1001, 7:62-
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`65. The payment gateway 104 next verifies whether the payment request
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`authorized by the customer is sufficient to cover the amount on the bill (step 134),
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`and, if so, authorizes the payment with a financial payment network (step 136).
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`Once the transaction is approved or denied, the payment server notifies the
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`merchant as to whether payment has been authorized (step 138). GOOG-1001,
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`7:65-8:15; GOOG-1003, ¶ 40.
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`The methods in independent claims 1 and 12 fundamentally differ from the
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`embodiment of Figures 1A and 1B in that they each require an e-purse balance
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`verification on the mobile device before sending the payment request to the
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`payment gateway. Contingent upon that verification, the mobile device then
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`transmits the payment request. Specifically, the claims require that, after the
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`mobile device calculates the total amount (invoice amount + tip), it “verif[ies] the
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`total amount with a balance in the e-purse…without sending the payment request
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`to a payment gateway.” GOOG-1001, 25:47-51. “[W]hen the balance is less than
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`the total amount,” the mobile device “display[s] a denial of the payment request.”
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`GOOG-1001, 25:52-53. Alternatively, when “the balance is sufficient to honor the
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`payment request,” the mobile device “send[s] the payment request from the mobile
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`device to the payment gateway.” GOOG-1001, 25:54-55; GOOG-1003, ¶ 41.
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`7
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`While the claims require transmission of the payment request to be
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`contingent on the sufficiency of the balance in the e-purse, the specification does
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`not disclose transmitting (or not transmitting) the payment request based on the
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`sufficiency of the existing e-purse balance. In all instances disclosed in the
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`specification, the payment request is transmitted to the payment gateway regardless
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`of the balance in the e-purse.
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`B.
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`Prosecution History
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`The ’046 Patent issued on March 24, 2020 from U.S. Patent Application No.
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`14/728,349 (“the ’349 application”) filed June 2, 2015. The ’046 Patent claims
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`priority to a number of previous applications, but, as discussed below in Section V,
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`it is not entitled to a priority date any earlier than its actual filing.
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`During a prolonged prosecution, the Examiner rejected the claims of the
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`’349 application over various references. GOOG-1002, pp. 622, 468, 370, 266,
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`166. After each rejection, the applicants amended the claims to avoid the prior art.
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`GOOG-1002, pp. 561-66, 451-56, 357-62, 253-58, 153-58. When the Examiner
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`finally issued a notice of allowance, the issued claims bore little resemblance to the
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`originally filed claims. For example, original claim 1 recited a simple method for
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`mobile payment between a mobile device and a POS device, in which the mobile
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`device itself processed the payment request:
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`8
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`GOOG-1002, p. 747. When the Examiner found anticipating art, the applicants
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`amended the claims to instead recite payment methods in which the payment
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`request is settled remotely via a “payment gateway” and an “account associated
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`with the user.” GOOG-1002, p. 561. In the accompanying remarks, the applicants
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`explained that they amended the claim to match the process “shown in Fig. 1A,”
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`annotated below, in which the elements “communicate in circular one-way
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`fashion.” GOOG-1002, p. 568. As part of this explanation, the applicants
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`emphasized that “the mobile device 110 (a.k.a., a customer’s device) does NOT
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`talk back to the POS [point-of-sale] device 106 upon receiving the invoice.” Id.
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`9
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Consumer device does not talk
`back to POS
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`
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`GOOG-1001, Fig. 1A (annotated). The Examiner, however, was not persuaded by
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`these amendments and again rejected the pending claims. GOOG-1002, pp. 470-
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`92.
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`After several more rejections and less substantial amendments, the
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`applicants changed tactics and added the concept of an “electronic purse (e-purse)
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`maintained locally in the mobile device” and related functionality to the pending
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`claims (“the E-purse Amendment”). GOOG-1002, pp. 153-58. For support, the
`
`applicants cited Figure 6C and related paragraph [0131]. GOOG-1002, p. 160.
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`While Figure 6C describes e-purse functionality, it does so in the context of a
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`fundamentally different system (Fig. 6A) from the one on which the pending
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`claims were based (Fig. 1A). GOOG-1001, 20:13-51 (paragraph [0131]). In the
`
`system of Figure 1A, as the applicants emphasized, the mobile device does “NOT”
`
`talk back to the POS device after receiving the invoice. GOOG-1002, p. 568.
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`Instead, it communicates with a payment gateway. GOOG-1001, Fig. 1A. In the
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`system of Figure 6A, however, there is no payment gateway, and the mobile device
`
`must talk back to the POS device because the transaction 639 is “conducted
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`between” the two devices, as shown below. GOOG-1001, 19:6-10; see also
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`GOOG-1001, 20:4-21:15 (describing the back-and-forth communication between
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`the POS 630 and mobile device 636).
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`11
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Consumer device
`with e-purse
`
`Point-of-sale
`(POS)
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`Consumer device talks
`back to POS
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`
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`GOOG-1001, Fig. 6A (annotated); GOOG-1003, ¶¶ 48-49.
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`Without regard for the differences between these embodiments, the
`
`applicants added limitations into the pending claims that required specific
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`interactions between an e-purse on a mobile device and a payment gateway. Such
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`interactions are not disclosed in either embodiment. GOOG-1003, ¶ 50. Figures 1A
`
`and 1B, while disclosing a payment gateway, do not disclose specific e-purse
`
`functionality; Figures 6A and 6C, while disclosing e-purse functionality, do not
`
`disclose a payment gateway that communicates with the mobile device. In short,
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`12
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`the applicants’ E-purse Amendment created claims lacking written description
`
`support in the as-filed specification. See infra Sections V.B, XI.A.
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`The Examiner issued a notice of allowance after the E-purse Amendment,
`
`and the unsupported claims issued in the ’046 Patent. GOOG-1002, pp. 7-21.
`
`V. THE ’046 PATENT IS ELIGIBLE FOR POST-GRANT REVIEW.
`
`The ’046 Patent is eligible for post-grant review (PGR) because it contains
`
`at least one claim with an effective filing date that is later than March 16, 2013,
`
`when the AIA’s first-to-file rule became effective. See AIA § 3(n)(1). The ’046
`
`Patent issued from an application filed on June 2, 2015 (post-AIA). Although the
`
`application is in a chain of continuations and continuations-in-part, some of which
`
`were filed before the AIA effective date, the claims of the ’046 Patent contain
`
`limitations that were not disclosed in those earlier filed patent applications. See
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`Inguran, LLC v. Premium Genetics (UK) Ltd., PGR2015-00017, Paper 8, at 10-11
`
`(PTAB Dec. 22, 2015) (holding that a patent granted from a “transitional
`
`application” is available for post-grant review if it contains at least one claim that
`
`was not disclosed in compliance with § 112(a) in any pre-AIA priority
`
`application).
`
`Specifically, claims 1-17 contain limitations that were either (i) not disclosed
`
`in the pre-AIA patent applications due to a broken priority chain or (ii) not
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`13
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`disclosed in any application due to unsupported amendments made during
`
`prosecution of the ’046 Patent. Just one of these post-AIA claims renders the ’046
`
`Patent eligible for PGR. See AIA § 3(n)(1).
`
`A. The ’046 Patent’s broken priority chain creates PGR eligibility.
`
`As illustrated in the figure below, the ’046 Patent claims priority to three
`
`pre-AIA applications—the ’832 application, the ’653 application, and the ’802
`
`provisional (“the pre-AIA applications”).
`
`Importantly, the applications that were filed after the AIA effective date—
`
`the applications for the ’046 Patent and the ’601 Patent (“the AIA Patents”)—
`
`
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`14
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`contain figures and descriptions not found in the pre-AIA applications. For
`
`example, the two pre-AIA non-provisional applications (the ’832 and the ’653) do
`
`not include Figures 1A and 1B and the associated description in the common
`
`specification of the AIA Patents (5:29-8:30 in the ’046 Patent).3 These figures and
`
`descriptions were first introduced together in the ’601 Patent. See GOOG-1026
`
`(comparison of the’832 application’s and ’601 Patent’s specifications). While
`
`Figures 1A and 1B of the AIA Patents were included in the pre-AIA ’802
`
`provisional, the associated description in the AIA Patents was not. See GOOG-
`
`1027 (comparison of the ’802 provisional’s and the ’601 Patent’s specifications).
`
`Instead, the ’802 provisional includes a brief, high-level overview of the figures
`
`that was not incorporated by reference into the ’046 Patent.4 These differences in
`
`disclosure are depicted below:
`
`
`
`3 The ’832 and the ’653 applications instead include Figures 1A and 1B that are
`
`fundamentally different from Figures 1A and 1B in the AIA Patents. See GOOG-
`
`1028 (’218 Patent), Figs. 1A-B; GOOG-1029 (’832 application).
`
`4 The ’802 provisional also includes an “Appendix” containing the majority of the
`
`specification and figures of the pre-AIA ’832 application. GOOG-1030, pp. 13-81
`
`15
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`GOOG-1003, ¶¶ 46, 52-53.
`
`Claims 1, 6, and 15 of the ’046 Patent recite subject matter supported only in
`
`the description of Figures 1A and 1B first filed with the ’601 Patent on March 29,
`
`2013, after the AIA effective date. For example, the “displaying a denial”
`
`limitation in claim 1 is only found in this post-AIA description. The “account and
`
`bank information of the registered merchant” limitation in claims 6 and 15 is
`
`
`
`(ʼ802 provisional). Paragraphs 1-8 and 10-142 of the “Appendix” correspond to
`
`paragraphs 2-142 of the ’832 application, respectively. GOOG-1003, ¶ 53 & n.4.
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`16
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`similarly found only in this description. GOOG-1003, ¶ 54. The presence of any
`
`one of these post-AIA claims makes the ’046 Patent eligible for PGR.
`
`1.
`
`The “displaying a denial” step in claim 1 lacks written
`description support in the pre-AIA applications.
`
`The ’046 Patent is PGR-eligible because claim 1’s “displaying a denial” step
`
`lacks written description in the pre-AIA applications. Claim 1 recites the step of
`
`“displaying a denial of the payment request when the balance is less than the total
`
`amount.” GOOG-1001, 25:52-53. There is no written description supporting this
`
`limitation in any of the pre-AIA applications because such support first appeared in
`
`the post-AIA ’601 Patent.
`
`In more detail, the two pre-AIA applications, the ’653 and the ’832, are
`
`missing any disclosure of “displaying a denial” based on a failed balance
`
`verification, as recited in claim 1. GOOG-1003, ¶¶ 55-56. The earlier ’653
`
`application (issued as U.S. 8,118,218) lacks any disclosure of a display step. See
`
`GOOG-1028; GOOG-1003, ¶¶ 55-56. The ’832 application (published as US
`
`2012/0130838, GOOG-1029) also lacks any disclosure of a display step; while it
`
`generally describes comparing the balance of an e-token with a purchase amount in
`
`association with Figures 6C and 6D, but it fails to describe displaying a denial
`
`within the mobile device when the balance is insufficient. See GOOG-1029, Figs.
`
`17
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`6C-6D, [0173]-[0177]; GOOG-1003, ¶ 56. For example, in the embodiment of
`
`Figure 6C, shown below, when the balance is insufficient at step 656, the process
`
`displays an option to “top-up” the balance, but does not display a denial. GOOG-
`
`1029, Fig. 6C, [0174].
`
`Point-of-sale (POS)
`verifies balance
`
`If insufficient,
`offer top-up
`
`
`
`GOOG-1029 (ʼ832 application), Fig. 6C (annotated); GOOG-1003, ¶ 56. In the
`
`embodiment of Figure 6D, shown below, when the balance is insufficient at step
`
`674, the process 670 simply ends after a “return message” denying the purchase is
`
`received by the POS manager 623. GOOG-1029 (ʼ832 application), Fig.
`
`18
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`6D, [0177]. No denial is displayed in the mobile device. Moreover, even if process
`
`670 disclosed “displaying a denial” (which it does not), any such denial would not
`
`be based upon the balance being less than a “total amount” (i.e., the invoice
`
`amount plus an additional amount from the user, such as a gratuity). Process 670
`
`does not contemplate a user entering an additional amount.
`
`If insufficient,
`end without
`display
`
`GOOG-1029 (ʼ832 application), Fig. 6D (annotated); GOOG-1003, ¶ 56.
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`
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`19
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`Petition for Post-Grant Review of U.S. Patent No. 10,600,046 (§ 112 and § 101)
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`Without disclosure of a “display,” Figures 6C and 6D cannot provide written
`
`description support for the “displaying a denial” in claim 1, irrespective of whether
`
`a POSITA would have
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