`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`
`PGR2022-00003
`U.S. Patent No. 10,600,046
`
`
`
`
`
`PETITION FOR POST-GRANT REVIEW
`(§ 112 and § 101)
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 2
`A. Real Party-In-Interest ................................................................................... 2
`B. Related Matters ............................................................................................ 2
`C. Lead and Back-Up Counsel ......................................................................... 3
`III. GROUNDS FOR STANDING .................................................................... 3
`IV. THE ’046 PATENT ..................................................................................... 4
`A. Overview of the ’046 Patent ........................................................................ 4
`B. Prosecution History...................................................................................... 7
`V. THE ’046 PATENT IS ELIGIBLE FOR POST-GRANT REVIEW. ..............11
`A. The ’046 Patent’s broken priority chain creates PGR eligibility. .................12
`B. The ’046 Patent’s lack of written description for subject matter added by
`amendment creates PGR eligibility. ...................................................................21
`VI. CLAIM CONSTRUCTION ........................................................................22
`VII. LEVEL OF ORDINARY SKILL IN THE ART .........................................22
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ................................................................................................................23
`IX.
`IDENTIFICATION OF CHALLENGES ....................................................23
`X. THE BOARD SHOULD INSTITUTE POST-GRANT REVIEW. .................23
`A. The challenges presented in this petition are not cumulative to prosecution of
`the ’046 Patent ...................................................................................................23
`B. The Fintiv factors favor institution. .............................................................24
`XI.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....26
`A. Challenge #1: Claims 1-17 are invalid for failing to satisfy the written
`description requirement of 35 U.S.C § 112. .......................................................26
`B. Challenge #2: Claims 1-17 are invalid under 35 U.S.C § 101. ....................49
`XII. CONCLUSION ..........................................................................................92
`
`
`
`
`
`ii
`
`

`

`I.
`
`INTRODUCTION
`
`U.S. Patent No. 10,600,046 (“the ’046 Patent,” GOOG-1001) describes
`
`methods and systems for mobile payment. In particular, the ’046 Patent attempts to
`
`simplify retail transactions by replacing a paper invoice with an electronic invoice
`
`presented to a customer in a “tag,” such as a radio-frequency identification (“RFID”)
`
`tag. The customer’s mobile device reads the tag and displays the invoice so the
`
`customer can add a tip, select a payment method, and settle the invoice.
`
`This method of mobile payment was already well known when the inventors
`
`filed the application for the ’046 Patent. As such, the Examiner repeatedly rejected
`
`the pending claims, forcing the inventors to heavily amend the claims by adding new
`
`limitations to gain allowance. The limitations added by these amendments lacked
`
`written description support and divorced the claims from the embodiments described
`
`in the specification. This lack of written description support (i) breaks the priority
`
`chain to the ’046 Patent’s pre-AIA priority applications, thereby giving rise to post-
`
`grant review eligibility, and (ii) renders the claims unpatentable under 35 U.S.C. §
`
`112(a).
`
`The claims are also unpatentable for a second, independent reason—they are
`
`directed to the abstract idea of presenting and settling an invoice. The claims do not
`
`seek to improve any computer functionalities or resolve a technological problem.
`
`Rather, they aim to speed up the traditional retail payment process by reducing the
`
`1
`
`

`

`number of contacts between a consumer and a merchant—and they do so with
`
`unimproved, off-the-shelf hardware, such as the aforementioned “tag” and a generic
`
`mobile device.
`
`The evidence in this Petition demonstrates that claims 1-17 of the ’046 Patent
`
`are unpatentable under 35 U.S.C. §§ 101 and 112(a). Accordingly, Apple Inc.
`
`(“Petitioner”) respectfully requests that these claims be held unpatentable and
`
`cancelled.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real party-in-interest is Apple Inc.
`
`B. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), to the best knowledge of the Petitioner,
`
`the ’046 Patent is or was involved in the following cases (“Related Litigation”):
`
`• RFCyber Corp. v. Apple Inc., Case No. 6:21-cv-00916 (W.D. Tex.)
`
`• Google LLC f/k/a Google Inc. v. RFCyber Corp., PGR2021-
`00028 (PTAB)
`
`• Google LLC f/k/a Google Inc. v. RFCyber Corp., PGR2021-
`00029 (PTAB)
`
`• RFCyber Corp. v. Samsung Electronics Co., Ltd., Case No. 2:20-cv-
`00335 (E.D. Tex.)
`
`• RFCyber Corp. v. Google LLC f/k/a Google Inc., Case No. 2:20-cv-
`00274 (E.D. Tex.)
`
`2
`
`

`

`Petitioner is also concurrently filing a petition for post-grant review of the
`
`’046 Patent that challenges claims 1-17 under 35 U.S.C. § 103.
`
`C. Lead and Back-Up Counsel
`Petitioner provides the following designation and service information for lead
`
`and back-up counsel. 37 C.F.R. § 42.8(b)(3) and (b)(4).
`
`Lead Counsel
`Adam P. Seitz (Reg. No. 52,206)
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`
`Back-Up Counsel
`Paul R. Hart (Reg. No. 59,646)
`Paul.Hart@eriseip.com
`
`
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`5299 DTC Blvd., Ste. 1340
`Greenwood Village, Colorado 80111
`Telephone: (913) 777-5600
`Fax: (913) 777-5601
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’046 Patent is eligible for post-grant review
`
`because it contains at least one claim with an effective filing date after March 16,
`
`2013, as described below in Section V. See AIA §§ 3(n)(1), 6(f)(2)(A). Petitioner is
`
`not barred or estopped from requesting post-grant review challenging the patent
`
`claims on the grounds identified in this Petition. Petitioner has not filed a civil action
`
`challenging the validity of any claim of the ’046 Patent.
`
`3
`
`

`

`IV. THE ’046 PATENT1
`A. Overview of the ’046 Patent
`The ’046 Patent pertains to a method of presenting and settling an invoice.
`
`GOOG-1001, Abstract. While
`
`the specification describes many different
`
`embodiments, the challenged claims generally correspond to Figures 1A and 1B (but
`
`with several important differences). Figures 1A and 1B describe a method in which
`
`a restaurant waiter delivers a bill/invoice to a customer via a “tag” or “contactless
`
`card,” rather than on paper. GOOG-1001, 7:19-26. The customer uses a mobile
`
`device (e.g., a smartphone) to read the invoice, select a payment method, and settle
`
`the invoice by sending a payment request to a payment server (e.g., “a payment
`
`gateway”). GOOG-1001, 7:25-8:24. Figure 1A illustrates the system for carrying out
`
`this method:
`
`
`1 Unless otherwise specified, all bold and bold italics emphasis below has been
`added.
`
`4
`
`

`

`
`
`GOOG-1001, Fig. 1A (annotated); GOOG-1003, ¶ 39.
`
`Figure 1B illustrates that the merchant’s point-of-sale (POS) device 106
`
`generates a bill that is written to the tag 108 (step 122). When the tag 108 is presented
`
`to the customer (step 124), an application on the mobile device reads the tag 108
`
`(step 126), and the bill is displayed to the customer on the mobile device (step 128).
`
`GOOG-1001, 7:19-33. The user can optionally add a tip (step 128). GOOG-1001,
`
`7:59-61. The mobile device user selects a payment method, such as “an electronic
`
`wallet or purse (a.k.a. e-purse) already created in the mobile device” (step 130).
`
`GOOG-1001, 7:48-50, 7:57-59. The mobile device then transmits a payment request
`
`to a payment gateway (server) 104 (step 132). GOOG-1001, 7:62-65. The payment
`
`5
`
`

`

`gateway 104 next verifies whether the payment request authorized by the customer
`
`is sufficient to cover the amount on the bill (step 134), and, if so, authorizes the
`
`payment with a financial payment network (step 136). Once the transaction is
`
`approved or denied, the payment server notifies the merchant as to whether payment
`
`has been authorized (step 138). GOOG-1001, 7:65-8:15; GOOG-1003, ¶ 40.
`
`The methods in independent claims 1 and 12 fundamentally differ from the
`
`embodiment of Figures 1A and 1B in that they each require an e-purse balance
`
`verification on the mobile device before sending the payment request to the payment
`
`gateway. Contingent upon that verification, the mobile device then transmits the
`
`payment request. Specifically, the claims require that, after the mobile device
`
`calculates the total amount (invoice amount + tip), it “verif[ies] the total amount with
`
`a balance in the e-purse…without sending the payment request to a payment
`
`gateway.” GOOG-1001, 25:47-51. “[W]hen the balance is less than the total
`
`amount,” the mobile device “display[s] a denial of the payment request.” GOOG-
`
`1001, 25:52-53. Alternatively, when “the balance is sufficient to honor the payment
`
`request,” the mobile device “send[s] the payment request from the mobile device to
`
`the payment gateway.” GOOG-1001, 25:54-55; GOOG-1003, ¶ 41.
`
`While the claims require transmission of the payment request to be contingent
`
`on the sufficiency of the balance in the e-purse, the specification does not disclose
`
`transmitting (or not transmitting) the payment request based on the sufficiency of
`
`6
`
`

`

`the existing e-purse balance. In all instances disclosed in the specification, the
`
`payment request is transmitted to the payment gateway regardless of the balance in
`
`the e-purse.
`
`B.
`
`Prosecution History
`
`The ’046 Patent issued on March 24, 2020 from U.S. Patent Application No.
`
`14/728,349 (“the ’349 application”) filed June 2, 2015. The ’046 Patent claims
`
`priority to a number of previous applications, but, as discussed below in Section V,
`
`it is not entitled to a priority date any earlier than its actual filing.
`
`During a prolonged prosecution, the Examiner rejected the claims of the ’349
`
`application over various references. GOOG-1002, pp. 622, 468, 370, 266, 166. After
`
`each rejection, the applicants amended the claims to avoid the prior art. GOOG-
`
`1002, pp. 561-66, 451-56, 357-62, 253-58, 153-58. When the Examiner finally
`
`issued a notice of allowance, the issued claims bore little resemblance to the
`
`originally filed claims. For example, original claim 1 recited a simple method for
`
`mobile payment between a mobile device and a POS device, in which the mobile
`
`device itself processed the payment request:
`
`7
`
`

`

`
`GOOG-1002, p. 747. When the Examiner found anticipating art, the applicants
`
`amended the claims to instead recite payment methods in which the payment request
`
`is settled remotely via a “payment gateway” and an “account associated with the
`
`user.” GOOG-1002, p. 561. In the accompanying remarks, the applicants explained
`
`that they amended the claim to match the process “shown in Fig. 1A,” annotated
`
`below, in which the elements “communicate in circular one-way fashion.” GOOG-
`
`1002, p. 568. As part of this explanation, the applicants emphasized that “the mobile
`
`device 110 (a.k.a., a customer’s device) does NOT talk back to the POS [point-of-
`
`sale] device 106 upon receiving the invoice.” Id.
`
`8
`
`

`

`
`
`GOOG-1001, Fig. 1A (annotated). The Examiner, however, was not persuaded by
`
`these amendments and again rejected the pending claims. GOOG-1002, pp. 470-92.
`
`After several more rejections and less substantial amendments, the applicants
`
`changed tactics and added the concept of an “electronic purse (e-purse) maintained
`
`locally in the mobile device” and related functionality to the pending 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. While Figure 6C
`
`describes e-purse functionality, it does so in the context of a fundamentally different
`
`system (Fig. 6A) from the one on which the pending claims were based (Fig. 1A).
`
`GOOG-1001, 20:13-51 (paragraph [0131]). In the system of Figure 1A, as the
`
`9
`
`

`

`applicants emphasized, the mobile device does “NOT” talk back to the POS device
`
`after receiving the invoice. GOOG-1002, p. 568. Instead, it communicates with a
`
`payment gateway. GOOG-1001, Fig. 1A. In the 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 between” the two devices, as shown
`
`below. GOOG-1001, 19:6-10; see also GOOG-1001, 20:4-21:15 (describing the
`
`back-and-forth communication between the POS 630 and mobile device 636).
`
`GOOG-1001, Fig. 6A (annotated); GOOG-1003, ¶¶ 48-49.
`
`Without regard for the differences between these embodiments, the applicants
`
`added limitations into the pending claims that required specific interactions between
`
`
`
`10
`
`

`

`an e-purse on a mobile device and a payment gateway. Such 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, the applicants’ E-purse
`
`Amendment created claims lacking written description support in the as-filed
`
`specification. See infra Sections V.B, XI.A.
`
`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
`
`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
`
`11
`
`

`

`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 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”).
`
`
`
`12
`
`

`

`Importantly, the applications that were filed after the AIA effective date—the
`
`applications for the ’046 Patent and the ’601 Patent (“the AIA Patents”)—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).2 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.3 These differences in disclosure are depicted below:
`
`
`2 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).
`3 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
`(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.
`
`13
`
`

`

`
`
`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 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
`
`14
`
`

`

`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. 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].
`
`15
`
`

`

`
`
`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. 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.
`
`16
`
`

`

`
`
`GOOG-1029 (ʼ832 application), Fig. 6D (annotated); GOOG-1003, ¶ 56.
`
`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 found such an idea obvious. See L.A. Biomedical Research
`
`Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1057 (Fed. Cir.
`
`2017) (A “disclosure in a parent application is not sufficient if it ‘merely renders the
`
`later-claimed invention obvious . . . ; the disclosure must describe the claimed
`
`invention with all its limitations.’” (quoting Tronzo v. Biomet, Inc., 156 F.3d 1154,
`
`1158 (Fed. Cir. 1998))); GOOG-1003, ¶ 57.
`
`The only arguable support for this step is in the description of Figure 1B,
`
`which first appeared in the ’601 Patent specification filed after the AIA effective
`
`17
`
`

`

`date. See GOOG-1001, 8:5-12 (corresponding to GOOG-1031 (’601 Patent), 7:53-
`
`60). The specification explains that after step 134 in Figure 1B “the bill application
`
`in the mobile device displays the rejection to get attention from the consumer.” See
`
`GOOG-1001, 8:9-12 (corresponding to GOOG-1031 (’601 Patent), 7:53-60).4 This
`
`disclosure of displaying a denial does not appear in Figure 1B itself, which was filed
`
`in the pre-AIA ʼ802 provisional. See GOOG-1030, p. 9; GOOG-1001, Fig. 1B;
`
`GOOG-1003, ¶ 55.
`
`Because none of the pre-AIA applications provides § 112 support for
`
`“displaying a denial of the payment request when the balance is less than the total
`
`amount,” claim 1 has an effective filing date after March 16, 2013. GOOG-1003, ¶¶
`
`55-57.
`
`2.
`
`The “account and bank information of the registered
`merchant” limitation in claims 6 and 15 lacks written
`description support in the pre-AIA applications.
`
`The ’046 Patent is PGR-eligible because claims 6 and 15 lack written
`
`description support in the pre-AIA applications. Claims 1 and 12 each recite a tag
`
`
`4 This disclosure still does not support the “displaying a denial” step because claim
`1 requires displaying the rejection “when the [e-purse] balance is less than the total
`amount,” whereas the rejection associated with step 134 in Figure 1B of the ’601
`Patent is displayed “if the payment amount is less than the billed amount.” See
`GOOG-1001, Fig. 1B; GOOG-1003, ¶ 55 & n.5. Moreover, as discussed below,
`Figs. 1A and 1B and the accompanying description in the specification do not
`support the limitation in claim 1 requiring “verifying the total amount with a balance
`in the e-purse” to be “performed within the mobile device without sending the
`payment request to a payment gateway.”
`
`18
`
`

`

`with “data” that is captured by the mobile device. Claims 6 and 15 further define and
`
`narrow the recited “data” by requiring it to include “account and bank information”
`
`of the merchant.
`
`The idea that the tag (or “contactless card”) includes “account and bank
`
`information” of the merchant is supported only in the description of Figures 1A and
`
`1B added to the ’601 Patent specification after the AIA effective date. See GOOG-
`
`1001, 7:33-40 (corresponding to GOOG-1031 (’601 Patent), 7:14-22) (“The security
`
`information includes, but may not be limited to, an account and bank information of
`
`the restaurant…”). Figures 1A and 1B (filed with the pre-AIA ’802 provisional)
`
`disclose only that the merchant’s contactless smart card presented to the customer’s
`
`mobile device includes an “electronic bill,” as shown below:
`
`GOOG-1001, Figs. 1A, 1B (annotated); GOOG-1003, ¶ 60.
`
`
`
`19
`
`

`

`The two pre-AIA applications, the ’653 and the ’832, necessarily lack written
`
`description support for storing “account and bank information” of the “merchant” in
`
`the tag because each application fails to disclose storing any merchant information
`
`on a tag. GOOG-1003, ¶ 61. At best, the pre-AIA applications disclose storing
`
`customer information in a mobile device tag that is read by the merchant POS device.
`
`See, e.g., GOOG-1029 (’832 application), [0113] (“The cell phone is equipped with
`
`a contactless interface (e.g., ISO 14443 RFID) that allows the cell phone to act as a
`
`tag.”), [0174]; GOOG-1003, ¶ 61.
`
`The pre-AIA ’802 provisional also does not disclose “account and bank
`
`information” on the tag. As mentioned above, the disclosure is limited to Figures 1A
`
`and 1B and a different (high-level) description than the description introduced in the
`
`post-AIA ’601 Patent. This general description includes a bulleted list of information
`
`stored on the “Contactless Smart Card” (i.e., tag) shown in Fig. 1A (Fig. 1 in the
`
`provisional), but “account and bank information” of the merchant is not on that list.5
`
`See GOOG-1030, pp. 8-11; GOOG-1003, ¶ 62.
`
`
`5 The only disclosure of anything remotely related to “account and bank information”
`is a bullet point noting that “necessary information needed to conduct the payment”
`is included in the “Payment Information.” GOOG-1030, pp. 10-11. But, as shown in
`Fig. 1A, such “Payment info” flows from the “Personal NFC device” (i.e.,
`consumer’s mobile device) to the “Payment Gateway,” and is not included in the
`“Contactless Smart Card” (i.e., tag). Id. at 8; GOOG-1003, ¶ 62.
`
`20
`
`

`

`Accordingly, because none of the pre-AIA applications provide § 112 support
`
`for claims 6 and 15, these claims have an effective filing date after March 16, 2013.
`
`GOOG-1003, ¶¶ 59-62.
`
`B.
`The ’046 Patent’s lack of written description for subject matter
`added by amendment creates PGR eligibility.
`
`The ’046 Patent is eligible for PGR for the independent reason that limitations
`
`added to independent claims 1 and 12 during prosecution lack written support in any
`
`application, pre-AIA or otherwise. As part of the E-purse Amendment during
`
`prosecution, the applicants added subject matter to independent claims 1 and 12 that
`
`does not find written description support in the as-filed specification of the ’046
`
`Patent or any prior applications. GOOG-1003, ¶ 58. As such, these claims (and their
`
`dependents) are only entitled to the filing date of the application underlying the ’046
`
`Patent itself—June 2, 2015 (post-AIA). See Front Row Techs., LLC v. MLB
`
`Advanced Media, L.P., PGR2015-00023, Paper 8 at 2-3 (PTAB Feb. 22, 2016)
`
`(holding that, under 35 U.S.C. § 100(i)(1)(A), the effective filing date of a claim
`
`with an unsupported amendment is the “actual filing date of the application”).
`
`Sections XI.A.1-2 below explain in detail why claims 1 and 12 lack written
`
`description support under § 112(a). For expediency, that showing is not repeated
`
`here, but it applies equally to confirm that claims 1 and 12 of the ’046 Patent have
`
`effective filing dates after March 16, 2013, and therefore the ’046 Patent is eligible
`
`for PGR.
`
`21
`
`

`

`VI. CLAIM CONSTRUCTION
`In a post-grant review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action under
`
`35 U.S.C. § 282(b), including 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.” 37 C.F.R. § 42.100(b); see
`
`also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The Board
`
`construes claims only to the extent necessary to resolve the underlying controversy.
`
`Toyota Motor Corp. v. Cellport Sys., Inc., IPR2015-00633, Paper No. 11, 16 (PTAB
`
`August 14, 2015) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999)). No terms require construction to determine that claims 1-17
`
`are invalid under §§ 112(a) and 101. GOOG-1003, ¶¶ 63-67.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A POSITA, as of March 29, 2013, would have had an understanding of mobile
`
`payment methods and systems pertinent to the ’046 Patent.6 Such a POSITA would
`
`have had a bachelor’s degree in computer science, computer engineering, or an
`
`
`6 The ’046 Patent has claims with potentially different effective filing dates. To the
`extent the Board finds some claims have an effective filing date of March 29, 2013,
`rather than June 2, 2015, Mr. Gray’s analysis of all claims is based upon the earlier
`date. For the purposes of the challenges in this petition, there is no meaningful
`difference in the knowledge of a POSITA between those two dates. GOOG-1003, ¶
`18.
`
`22
`
`

`

`equivalent, and one year of professional experience relating to mobile payment
`
`technology. Lack of professional experience could be remedied by additional
`
`education, and vice versa. GOOG-1003, ¶¶ 16-20.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF
`
`Petitioner asks that the Board review the following challenges, institute a trial
`
`for post-grant review of claims 1-17 of the ’046 Patent, and cancel those claims as
`
`unpatentable.
`
`IX.
`
`IDENTIFICATION OF CHALLENGES
`
`This petition challenges the patentability of claims 1-17 of the ’046 Patent
`
`(“the Challenged Claims”) as follows:
`
`Challenge
`
`Claims
`
`#1
`#2
`
`
`
`1-17
`1-17
`
`Ground
`35 U.S.C. § 112(a)
`35 U.S.C. § 101
`
`X. THE BOARD SHOULD INSTITUTE POST-GRANT REVIEW.
`A. The challenges presented in this petition are not cumulative to
`prosecution of the ’046 Patent
`
`The challenges presented in this petition are neither cumulative nor redundant
`
`to the prosecution of the ’046 Patent. The Examiner never rejected the claims for
`
`lacking written description under § 112(a) or for reciting unpatentable subject matter
`
`under § 101.
`
`23
`
`

`

`The Fintiv factors favor institution.
`
`B.
`Patent Owner just asserted the ’046 Patent against Petitioner in a lawsuit filed
`
`on September 7, 2021. The Board balances six factors in considering discretionary
`
`denial under § 314(a) when there is parallel litigation. Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). None of the Fintiv
`
`factors weighs in favor of discretionary denial.
`
`Factor 1 is neutral (possibility of a stay).
`
`1.
`A stay pending the outcome of an IPR in the co-pending District Court
`
`litigation has not been requested. If an IPR is instituted, a stay would be appropriate
`
`under the legal standard in the Eastern District of Texas. See, e.g., Uniloc USA, Inc.
`
`v. Avaya Inc., No. 6:15-cv-01168, 2017 WL 2882725, at *2 (E.D. Tex. Apr. 19,
`
`2017) (Gilstrap, J.) (order granting stay).
`
`The litigation is in its infancy. Patent Owner filed its Complaint on September
`
`7, 2021. GOOG-1041. Petitioner has not yet answered. Accordingly, a stay pending
`
`IPR would be appropriate due to the early stage of the district court litigation.
`
`Given that a motion to stay has not yet been filed, the Board should not infer
`
`the outcome of that motion. Intel Corp. v. VLSI Tech. LLC, IPR2020-00158, Paper
`
`16, at 7 (PTAB May 20, 2020); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15,
`
`at 12 (PTAB May 13, 2020). Thus, this factor is neutral.
`
`24
`
`

`

`2.
`
`Factor 2 favors institution (proximity of trial date to final
`written decision).
`
`The instant Petition is substantively identical to PGR2021-00028 and
`
`Petitioner has filed a motion to join that proceeding. Because that proceeding has
`
`been instituted and will reach a Final Written Decision in July 2022 long before
`
`Petitioner’s underlying litigation could reach a jury trial, this factor weighs heavily
`
`against discretionary denial.
`
`3.
`
`Factor 3 favors institution (investment in parallel
`proceeding).
`
`The litigation was just filed and Petitioner has not yet answered. Accordingly,
`
`little to no investment has been made, which weighs heavily against discretionary
`
`denial.
`
`Factor 4 favors institution (overlap in issues).
`
`4.
`Petitioner has not served its preliminary invalidity contentions in the district
`
`court proceeding (nor has a date been set for service of such contentions).
`
`Accordingly, no ove