Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 1 of 32
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`FINTIV, INC.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`Civil Action No. 1:19-cv-01238-ADA
`
`DEFENDANT APPLE INC.’S MOTION FOR SUMMARY JUDGMENT
`OF NONINFRINGEMENT
`
`WEST\294918330.1
`
`0
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 2 of 32
`
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...............................................................................................................1
`I.
`STATEMENT OF UNDISPUTED FACTS ........................................................................2
`II.
`LEGAL STANDARDS .......................................................................................................3
`III.
`IV. APPLE DOES NOT INFRINGE CLAIM 18 WHEN FOREIGN USERS
`PROVISION CARDS FROM OUTSIDE THE UNITED STATES. ..................................4
`A.
`There Is No Infringement Under § 271(a) When The “Situs Of
`Infringement” Is Outside The United States. ...........................................................5
`Foreign Users “Exercise Control” Of The Accused Card Provisioning
`System From Outside The United States. ................................................................7
`For Foreign Users, Beneficial Use Of the System Is Obtained Outside The
`United States. .........................................................................................................10
`APPLE DOES NOT INFRINGE THE ASSERTED CLAIMS BECAUSE
`FINTIV HAS NO EVIDENCE OF A “WIDGET” IN THE ACCUSED
`PRODUCTS. ......................................................................................................................12
`A.
`Fintiv And Its Expert Failed To Identify The Claimed “Widget” In The
`Accused Products. ..................................................................................................14
`Apple’s Engineers And Experts Uniformly Confirmed That Apple Does
`Not Use The Claimed “Widget.” ...........................................................................17
`The Court Should Disregard The New “Widget” Theories Dr. Shamos
`Offered At His Deposition, But Those New Theories Do Not Change The
`Result Of This Motion. ..........................................................................................18
`THE ACCUSED IPADS AND MACS DO NOT MEET THE “CONTACTLESS”
`LIMITATION OF CLAIMS 11 AND 23. .........................................................................20
`A.
`The Court’s Claim Construction Confirms That “Contactless” Does Not
`Mean “Wireless.” ...................................................................................................22
`The Accused iPads And Macs Do Not Contain A “Contactless” Card
`Applet And Therefore Do Not Infringe Claims 11 And 23. ..................................22
`VII. THE ACCUSED IPHONE-WATCH PAIRING IS NOT A “MOBILE DEVICE”
`UNDER THE COURT’S CONSTRUCTION. ..................................................................24
`A.
`The Asserted Claims Require “A Single Mobile Device.” ....................................24
`B.
`The Pairing Of An iPhone And An Apple Watch Cannot Constitute “A
`Single Mobile Device.” ..........................................................................................25
`VIII. CONCLUSION ..................................................................................................................26
`
`V.
`
`VI.
`
`B.
`
`C.
`
`B.
`
`C.
`
`B.
`
`WEST\294918330.1
`
`i
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 3 of 32
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Acceleration Bay LLC v. Activision Blizzard, Inc.,
`324 F. Supp. 3d 470 (D. Del. 2018) .........................................................................................10
`
`Alice Corp. Pty. Ltd,
`667 F. Supp. 2d 29, 35-36 (D.D.C. 2009) ............................................................................8, 10
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...............................................................................................................3, 4
`
`Blue Spike, LLC v. Soundmouse Ltd.,
`No. 14-cv-2243, 2014 WL 6851259 (S.D.N.Y. Dec. 2, 2014) ............................................8, 10
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...............................................................................................................3, 4
`
`Centillion Data Sys., LLC v. Qwest Comms. Int’l, Inc.,
`631 F.3d 1279 (Fed. Cir. 2011)........................................................................................ passim
`
`Cleveland v. Pol’y Mgmt. Sys. Corp.,
`526 U.S. 795 (1999) .................................................................................................................17
`
`Eason v. Thaler,
`73 F.3d 1322 (5th Cir. 1996) .....................................................................................................3
`
`Forsyth v. Barr,
`19 F.3d 1527 (5th Cir. 1994) .....................................................................................................3
`
`Grecia v. McDonald’s Corp.,
`724 F. App’x 942 (Fed. Cir. 2018) ....................................................................................10, 12
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
`475 U.S. 574 (1986) ...................................................................................................................3
`
`MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp.,
`420 F.3d 1369 (Fed. Cir. 2005)..................................................................................................3
`
`NTP, Inc. v. Research in Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005)........................................................................................ passim
`
`Pellegrini v. Analog Devices, Inc.,
`375 F.3d 1113 (Fed. Cir. 2004)..................................................................................................5
`
`WEST\294918330.1
`
`ii
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 4 of 32
`
`
`TABLE OF AUTHORITIES
`(Cont.)
`
`Page(s)
`
`Ragas v. Tenn. Gas Pipeline Co.,
`136 F.3d 455 (5th Cir. 1998) .................................................................................................3, 4
`
`Renhcol Inc. v. Don Best Sports,
`548 F. Supp. 2d 356 (E.D. Tex. 2008) .....................................................................................11
`
`STATUTES
`
`35 U.S.C. § 271(a) ................................................................................................................. passim
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 56(a) ........................................................................................................................3
`
`WEST\294918330.1
`
`iii
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 5 of 32
`
`
`I.
`
`INTRODUCTION
`
`Apple moves for summary judgment of noninfringement on four independent and equally
`
`compelling grounds.
`
`First, Apple seeks summary judgment of noninfringement as to Fintiv’s claim that
`
`foreign users who provision cards using Apple Pay infringe the wallet management system
`
`recited in independent claim 18. As a matter of law, these foreign users do not “use” the accused
`
`system “within the United States,” so their allegedly infringing activities are beyond the
`
`territorial scope of 35 U.S.C. § 271(a). Granting summary judgment on this ground will remove
`
` of damages based on “foreign provisions” from Fintiv’s
`
`
`
`damages demand.
`
`Second, Apple requests summary judgment of noninfringement as to all asserted claims
`
`(claims 11, 13, 14, 18, 20, 23, 24, and 25) because Fintiv and its technical expert, Dr. Michael
`
`Shamos, failed to identify any software code in the accused products that constitutes a “widget”
`
`under the Court’s construction of that term, which is a requirement of all asserted claims. The
`
`undisputed evidence demonstrates the Apple accused products do not use a “widget” as
`
`construed, and granting summary judgment on this ground will be case dispositive.
`
`Third, Apple seeks summary judgment that the accused iPads and Macs do not infringe
`
`asserted claims 11 and 23 and their dependent claims, because the accused iPads and Macs do
`
`not meet the “contactless card applet” limitations of those claims. As construed by the Court,
`
`“contactless” transactions are not equivalent to “wireless” transactions, but for iPads and Macs,
`
`Fintiv and its expert point to purely wireless transactions. Granting summary judgment on this
`
`ground will remove the accused iPads and Macs from this case.
`
`Fourth, Apple requests summary judgment that the pairing of an iPhone and an Apple
`
`Watch does not satisfy the Court’s construction of “mobile device” as “a single mobile device.”
`
`WEST\294918330.1
`
`1
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 6 of 32
`
`
`The iPhone and Watch are two different “mobile devices,” and Fintiv’s allegations with respect
`
`to the iPhone-Watch pairing are flatly contrary to the Court’s construction of that term. Granting
`
`summary judgment on this ground will remove the accused Apple Watches from this case.
`
`For the reasons demonstrated below, summary judgment of noninfringement is warranted
`
`on all four grounds.
`
`II.
`
`STATEMENT OF UNDISPUTED FACTS
`
`On December 21, 2018, Fintiv filed its complaint alleging infringement of U.S. Patent
`
`No. 8,843,125 (“the ’125 patent”). ECF No. 1, ¶ 3. Fintiv alleges Apple infringes independent
`
`claims 11, 18, and 23 and dependent claims 13, 14, 20, 24, and 25 (the “asserted claims”). Ex. 2,
`
`Shamos Report ¶ 2.
`
`All the asserted claims relate to “card provisioning.” Ex. 3, Shamos Depo. at 31:21-24;
`
`Ex. 1, ’125 patent, claims 11, 18, 23. Card provisioning is a process whereby a user “load[s]
`
`data concerning a payment instrument, such as a credit card, onto a mobile device for the
`
`purposes of making payment transactions.” Ex. 2, Shamos Report ¶ 71. Independent claim 11
`
`recites a method for card provisioning, specifically a “method for provisioning a contactless card
`
`applet in a mobile device comprising a mobile wallet application.” Independent claim 18 recites
`
`a system for card provisioning, specifically a “wallet management system (WMS) in a non-
`
`transitory storage medium to store and manage mobile wallet account information.” Independent
`
`claim 23 recites a “mobile device” for card provisioning. Ex. 1, ’125 patent, claims 11, 18, 23.
`
`Fintiv accuses each of the Apple iPhone, Watch, iPad, and Mac products of infringing at
`
`least one claim of the ’125 patent. Ex. 2, Shamos Report ¶ 102-03. The accused iPads and Macs
`
`do not have an near-field communication (“NFC”) antenna and, therefore, cannot conduct NFC
`
`transactions. See Ex. 3, Shamos Depo. at 141:22-142:2; Ex. 2, Shamos Report ¶ 88 (NFC
`
`signals in payment transactions “travel only inches and are secure because they are both short-
`
`WEST\294918330.1
`
`2
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 7 of 32
`
`
`distance and encrypted”). Fintiv’s accusations against iPads and Macs are limited to conducting
`
`in-app or online purchase transactions through Apple Pay. Ex. 2, Shamos Report ¶¶ 45, 88, 269-
`
`270, 279. Apple Pay provides users with the capability to perform mobile payments securely
`
`and requires that users add or provision a card to their digital wallet. Ex. 4, Weinstein Report ¶
`
`63. Fintiv accuses Apple of infringement of claim 18 of the ’125 patent when users outside the
`
`United States provision cards in connection with Apple Pay—what Fintiv calls “foreign
`
`provisions.” Ex. 4, Weinstein Report, Ex. 20.1.
`
`III.
`
`LEGAL STANDARDS
`
`Summary judgment is warranted when “there is no genuine issue as to any material fact
`
`and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986); Ragas v. Tenn. Gas Pipeline Co., 136
`
`F.3d 455, 458 (5th Cir. 1998). An issue of material fact is genuine only if the evidence could
`
`lead a reasonable jury to find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477
`
`U.S. 242, 248 (1986). In determining whether a genuine issue for trial exists, the court views all
`
`inferences drawn from the factual record in the light most favorable to the nonmoving party. Id.;
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
`
`Once the moving party makes a prima facie showing that it is entitled to summary
`
`judgment, the nonmoving party must assert competent summary judgment evidence showing the
`
`existence of a genuine fact issue for trial. See Matsushita, 475 U.S. at 586; MEMC Elec.
`
`Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1373 (Fed. Cir. 2005)
`
`(citing Anderson, 477 U.S. at 248). Mere conclusory allegations, unsubstantiated assertions,
`
`improbable inferences, and unsupported speculation are not competent summary judgment
`
`evidence. See Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir. 1996); Forsyth v. Barr, 19 F.3d
`
`1527, 1533 (5th Cir. 1994). The nonmoving party is required to identify evidence in the record
`
`WEST\294918330.1
`
`3
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 8 of 32
`
`
`and articulate the manner in which that evidence supports his claim. Ragas, 136 F.3d at 458.
`
`“Only disputes over facts that might affect the outcome of the suit under the governing laws will
`
`properly preclude the entry of summary judgment.” Anderson, 477 U.S. at 248. Summary
`
`judgment must be granted if the nonmoving party fails to make a showing sufficient to establish
`
`the existence of an element essential to its case and on which it will bear the burden of proof at
`
`trial. Celotex, 477 U.S. at 322-23.
`
`IV.
`
`APPLE DOES NOT INFRINGE CLAIM 18 WHEN FOREIGN USERS
`PROVISION CARDS FROM OUTSIDE THE UNITED STATES.
`
`The Court should enter summary judgment of noninfringement of claim 18 for what
`
`Fintiv calls “foreign provisions”—that is, users located in foreign countries who provision cards
`
`using Apple Pay on devices outside the United States (hereafter “Foreign Users”). Fintiv’s
`
`damages expert, Roy Weinstein, improperly includes
`
` in damages solely
`
`from these so-called “foreign provisions.” Ex. 4, Weinstein Report, Ex. 20.1. Because Fintiv
`
`improperly tries to bring foreign transactions into this domestic dispute, the Court should grant
`
`summary judgment on this issue.
`
`Fintiv’s “foreign provisions” direct and indirect infringement theory for claim 18 is based
`
`on a faulty premise—that Foreign Users “use” the accused card provisioning system “within the
`
`United States” merely because their foreign devices may communicate with Apple servers in the
`
`United States. Ex. 2, Shamos Report ¶ 504 (“
`
`
`
`
`
`); see also id. ¶ 505-06 (Dr. Shamos’ “foreign provisions” infringement theory for
`
`WEST\294918330.1
`
`4
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 9 of 32
`
`
`induced and contributory infringement, respectively).1 But Federal Circuit authority and
`
`undisputed facts prohibit Fintiv’s theory. Foreign Users do not use the accused system “within
`
`the United States” as required under § 271(a). Rather, the “situs of infringement”—that is, “the
`
`place where control of the system is exercised and beneficial use of the system obtained”—is
`
`outside the United States. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316-17
`
`(Fed. Cir. 2005). Claim 18 recites a “mobile device” that, under Fintiv’s “foreign provisions”
`
`infringement theory, is located outside the United States. Foreign Users initiate the accused card
`
`provisioning system by using their mobile devices from their foreign locations, thus causing the
`
`system to “act for its intended purpose.” Centillion Data Sys., LLC v. Qwest Comms. Int’l, Inc.,
`
`631 F.3d 1279, 1285 (Fed. Cir. 2011); see also Ex. 3, Shamos Depo. at 19:1-21:23. Foreign
`
`Users also obtain beneficial use of the card provisioning system—what Dr. Shamos calls
`
` (Ex. 2, Shamos
`
`Report ¶ 123)—in their foreign locations using their foreign devices. Therefore, Foreign Users’
`
`use of the accused Apple Pay card provisioning system is beyond the territorial reach of § 271 as
`
`a matter of law.
`
`A.
`
`There Is No Infringement Under § 271(a) When The “Situs Of Infringement”
`Is Outside The United States.
`
`“[As] the U.S. Supreme Court explained nearly 150 years ago in Brown v. Duchesne, …
`
`the U.S. patent laws ‘do not, and were not intended to, operate beyond the limits of the United
`
`States.’” Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117 (Fed. Cir. 2004) (citation
`
`omitted); see also 35 U.S.C. § 271(a) (patent infringement requires allegedly infringing acts
`
`1 Fintiv’s indirect infringement allegations under the “foreign provisions” theory are based on
`acts of direct infringement that arise under § 271(a), not § 271(f).
`
`WEST\294918330.1
`
`5
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 10 of 32
`
`
`“within the United States”). This is because “Section 271(a) is only actionable against patent
`
`infringement that occurs within the United States.” NTP, 418 F.3d at 1313. A plaintiff must
`
`therefore demonstrate that the “situs of infringement”—the location of the allegedly infringing
`
`acts—is within the United States. Id. at 1316. For Foreign Users, Fintiv cannot do so.
`
`In NTP, the Federal Circuit considered the situs of infringement for patents claiming “a
`
`system for transmitting originated information” between processors in an electronic mail system.
`
`Id. at 1294. There, components of the accused system operated in different countries—RIM’s
`
`customers used their mobile devices in the United States, while RIM operated a “relay”
`
`component of the wireless network in Canada. Id. at 1311. The Federal Circuit held that “use of
`
`a claimed system under section 271(a) is the place at which the system as a whole is put into
`
`service, i.e., the place where control of the system is exercised and beneficial use of the system
`
`obtained.” Id. at 1317. Applying this analysis, the Federal Circuit held that RIM’s customers
`
`using mobile devices in the United States controlled and benefitted from the system and thus the
`
`“situs of infringement” was in the United States:
`
`RIM’s customers located within the United States controlled the
`transmission of the originated information and also benefited from
`such an exchange of information. Thus, the location of the Relay
`in Canada did not, as a matter of law, preclude infringement of the
`asserted system claims in this case.
`
`Id. As demonstrated below, NTP controls this case, although opposite facts here compel the
`
`opposite result. Namely, it is undisputed Foreign Users of the accused system “control[] the
`
`transmission of the originated information and also benefit[] from such an exchange of
`
`information” outside the United States. Id. Thus, the location of Apple servers in the United
`
`States does not change the analysis; rather, NTP compels a finding that the “use” by Foreign
`
`Users occurs outside the United States and is therefore beyond the reach of § 271. Id. at 1316.
`
`WEST\294918330.1
`
`6
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 11 of 32
`
`
`B.
`
`Foreign Users “Exercise Control” Of The Accused Card Provisioning System
`From Outside The United States.
`
`Under the first factor of the NTP analysis, the “place where control of the system is
`
`exercised” for Foreign Users is outside the United States despite the presence of Apple servers in
`
`the United States. Indeed, courts frequently hold that users exercise control over an accused
`
`system from a location different from the physical location of other system components.
`
`For example, in Centillion Data Systems., LLC v. Qwest Communications International,
`
`Inc., the asserted patent claimed a “system for collecting, processing, and delivering information
`
`from a service provider, such as a telephone company, to a customer.” 631 F.3d 1279, 1281
`
`(Fed. Cir. 2011). The accused system included two parts: “‘a back-end’ system maintained by
`
`the service provider (claim elements 1, 2, and 3) and a ‘front-end’ system maintained by an end
`
`user (claim element 4).” Id. The district court ruled that Qwest’s customers did not “use” the
`
`claimed system under § 271(a) because those customers did not direct or control the data
`
`processing of the back-end. Id. at 1282. The Federal Circuit reversed. Relying on NTP, the
`
`Federal Circuit held that Qwest’s customers in the United States “used” the accused system by
`
`“causing the system as a whole to perform this processing and obtaining the benefit of the
`
`result”:
`
`The customer controls the system by creating a query and
`transmitting it to Qwest’s back-end. The customer controls the
`system on a one request/one response basis. This query causes the
`back-end processing to act for its intended purpose to run a query
`and return a result … . This is “use” because, but for the
`customer’s actions, the entire system would never have been put
`into service.
`
`Id. at 1285 (emphasis added).
`
`Similarly, in CLS Bank International v. Alice Corp. Pty. Ltd., none of the accused system
`
`components were located in the United States, yet the court held that users in the United States
`
`WEST\294918330.1
`
`7
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 12 of 32
`
`
`“controlled” the system. 667 F. Supp. 2d 29, 35-36 (D.D.C. 2009). Relying on NTP, the court
`
`found that United States users (or “members”) exercised control over the system because they
`
`“control[ed] the input” via the “submission of transactions.” Id. The court explained that
`
`“settlement and pay-out occur only in response to the submission of transactions by CLS
`
`Members, including U.S. members.” Id. The members’ input caused the system to act for its
`
`intended purpose, resulting in “settlement and pay-out.” Id.
`
`Likewise, in Blue Spike, LLC v. Soundmouse Ltd., the accused system “provide[d] music
`
`recognition services for its customers” using “digital fingerprints for music.” No. 14-cv-2243,
`
`2014 WL 6851259, at *2 (S.D.N.Y. Dec. 2, 2014). To identify a certain piece of musical
`
`content, Soundmouse’s United States customers would send their content to Soundmouse’s
`
`computers in the United Kingdom, and Soundmouse’s computers would then compare the
`
`customer’s content to a musical “fingerprint database” also located in the United Kingdom. Id.
`
`at *2, 4. Soundmouse’s United Kingdom computers would then “send[] the results of the
`
`comparison to the customers in those customer locations.” Id. at *4. The district court found the
`
`circumstances indistinguishable from NTP: users “transmit content to it from the United States
`
`for processing and receive processed content back from Soundmouse in the United States.” Id.
`
`at *5. Like the users in NTP, Soundmouse’s consumers were “in control of the system” because
`
`the “system responds to and as a result of the user’s conduct.” See id. at *5.
`
`The same analysis applies here with the facts transposed. Here, Foreign Users initiate the
`
`Apple Pay card provisioning system by capturing their card information with a device in their
`
`possession and thereby “caus[e] the system as a whole to perform.” See Centillion, 631 F.3d at
`
`1285; see also Ex. 3, Shamos Depo. at 19:1-21:23. Fintiv’s expert, Dr. Shamos, concedes that
`
`the user initiates the accused system:
`
`WEST\294918330.1
`
`8
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 13 of 32
`
`
`
`
`
`
`Ex. 3, Shamos Depo. at 19:1-5; see also Ex. 2, Shamos Report ¶ 119 (
`
`
`
`
`
`
`
`
`
`system would never be put into service but for the user’s request to provision a card:
`
`). Dr. Shamos also concedes the card provisioning
`
`
`
`
`
`
`
`
`
`Id. at 19:6-22; see also id. at 28:12-21 (
`
`
`
`). And
`
`Dr. Shamos concedes that Foreign Users receive the output of the card provisioning system on a
`
`. See Ex. 2, Shamos Report ¶ 119 (“
`
`); Ex. 3, Shamos Depo. at 25:21-25, 26:22-25 (agreeing that “
`
`
`
`
`
`
`
`);
`
`see also Centillion, 631 F.3d at 1285.
`
`Claim 18 confirms that Foreign Users “exercise control” over the card provisioning
`
`system using devices in their possession outside the United States. Claim 18 recites a “wallet
`
`management system,” wherein the wallet management system “is configured to receive the
`
`mobile device information from a mobile device … .” Ex. 1, ’125 patent, claim 18. In
`
`comparing Apple’s accused system to claim 18, Dr. Shamos contends that “
`
`
`
`
`
`WEST\294918330.1
`
`9
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 14 of 32
`
`
`
`
` Ex. 2, Shamos Report
`
`¶ 533; see also ¶ 503. Without a user’s input of information from their mobile device, the
`
`remaining claim limitations—“stor[ing] the mobile device information” and “register[ing] the
`
`mobile device and the mobile wallet application”—would never happen. See Centillion, 631
`
`F.3d at 1285; CLS Bank, 667 F. Supp. 2d at 35-36.
`
`In sum, there is no dispute that: (1) Foreign Users of the accused card provisioning
`
`system control inputs to the system by capturing card information using Apple devices in their
`
`possession; (2) Foreign Users’ input triggers the rest of the accused system to work for its
`
`intended purpose; (3) the accused system would never be put into service but for Foreign Users’
`
`input; and (4) Foreign Users receive the output of the accused system on a one request/one
`
`response basis. As a matter of law, therefore, Foreign Users “exercise control” over the card
`
`provisioning system from outside the United States. See NTP, 418 F.3d at 1317; Centillion, 631
`
`F.3d at 1285; CLS Bank, 667 F. Supp. 2d at 35-36; Blue Spike, 2014 WL 6851259, at *5.
`
`C.
`
`For Foreign Users, Beneficial Use Of the System Is Obtained Outside The
`United States.
`
`Under the second factor of the NTP analysis, “the place where … beneficial use of the
`
`system obtained” for Foreign Users also is outside the United States. For “beneficial use,” courts
`
`consider “the way in which the claimed [] system is actually used by [] customers.” NTP, 418
`
`F.3d at 1317. The alleged benefits must be “tangible, not speculative, and tethered to the
`
`claims.” Grecia v. McDonald’s Corp., 724 F. App’x 942, 947 (Fed. Cir. 2018). And “beneficial
`
`use” requires more than “general financial benefits and vague technological benefits.”
`
`Acceleration Bay LLC v. Activision Blizzard, Inc., 324 F. Supp. 3d 470, 483 (D. Del. 2018).
`
`WEST\294918330.1
`
`10
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 15 of 32
`
`
`In NTP, the Federal Circuit held that RIM’s customers in the United States obtained
`
`“beneficial use” of the accused email system because they “benefited from [the claimed]
`
`exchange of information”:
`
`The user is no longer required to initiate a connection with the mail
`server to determine if he or she has new email … [and] “time spent
`dialing-up and connecting to the desktop (possibly to find that
`there is no new email) is eliminated as users … are notified
`virtually instantly of important messages, enabling the user to
`respond immediately.”
`
`Id. at 1290 (quoting asserted patent). Similarly, in Renhcol Inc. v. Don Best Sports, the accused
`
`product was an electronic marketplace for exchanging sports handicapping information. 548 F.
`
`Supp. 2d 356, 363-65 (E.D. Tex. 2008). The district court determined that “the handicappers and
`
`prediction consumers” in the United States, rather than the operator of the web server located in
`
`Canada, obtained beneficial use of the system because “the handicappers and prediction
`
`consumers benefit from the information exchanged in the marketplace”:
`
`Both the handicappers and prediction consumers benefit from the
`execution of the alleged “code for receiving” and “code for
`calculating,” as the prediction consumers ultimately receive the
`transmitted prediction information and the handicappers have their
`accounts credited if their event predictions are correct … . The
`handicappers and prediction consumers benefit from execution of
`the alleged “code for crediting,” as the code’s execution makes an
`electronic record to pay the handicappers and encourages the
`exchange of prediction information for the prediction consumers’
`benefit.
`
`Renhcol, 548 F. Supp. 2d at 364-65.
`
`The same analysis applies here, again with the facts transposed. Foreign Users of the
`
`Apple Pay card provisioning system obtain beneficial use of the system outside the United States
`
`because they “benefit[] from [the] exchange of information.” NTP, 418 F.3d at 1289-90, 1317.
`
`According to Fintiv’s expert, Dr. Shamos, the accused card provisioning system offers
`
`“numerous benefits,” every one of which is obtained by the users, not by Apple. Ex. 3, Shamos
`
`WEST\294918330.1
`
`11
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 16 of 32
`
`
`Depo. at 29:16-30:10. For example, Dr. Shamos concedes that “
`
`at 29:10-14 (emphasis added). Dr. Shamos opines that using the accused card provisioning
`
`system “
`
`
`
` Id.
`
`
`
`(Ex. 2, Shamos Report at ¶ 123)—again, a benefit to users, not to Apple. Dr. Shamos further
`
`opines that:
`
`
`
`
`
`
`
`
`
`Id. (emphasis added). Thus, according to Fintiv’s expert, the card provisioning system provides
`
`users the benefit of
`
` Id.
`
`All of these benefits are “tangible, not speculative, and tethered to the claims.” Grecia, 724 F.
`
`App’x at 947. Thus, there can be no dispute that when Foreign Users use the accused card
`
`provisioning system, they obtain those benefits outside the United States.
`
`In sum, Foreign Users of the Apple Pay card provisioning system exercise control over
`
`and obtain beneficial use of the system from outside the United States. As a result, NTP compels
`
`a finding that Foreign Users do not use the accused card provisioning system “within the United
`
`States” under § 271(a). Because no reasonable jury could find that Foreign Users infringe claim
`
`18 of the ’125 patent, the Court should enter partial summary judgment of noninfringement as to
`
`Foreign Users.
`
`V.
`
`APPLE DOES NOT INFRINGE THE ASSERTED CLAIMS BECAUSE FINTIV
`HAS NO EVIDENCE OF A “WIDGET” IN THE ACCUSED PRODUCTS.
`
`Apple is entitled to summary judgment of noninfringement as to all asserted claims
`
`because (1) Fintiv failed to identify any software code in the accused products that meets the
`
`WEST\294918330.1
`
`12
`
`PUBLIC VERSION
`
`

`

`Case 1:21-cv-00896-ADA Document 296 Filed 07/09/21 Page 17 of 32
`
`
`“widget” limitations of the asserted claims, and (2) undisputed facts confirm the accused
`
`products do not use and are not configured to use a “widget.”
`
`Every asserted claim recites a “widget.” Claim 11 requires “retrieving a widget …
`
`corresponding to a contactless card applet” and “provisioning the widget.” Claim 18 requires “a
`
`widget management component configured to store and to manage widgets” and “a rule engine
`
`configured to filter a widget.” Claim 23 requires “a mobile wallet application configured to store
`
`a widget” and “an over-the-air (OTA) proxy configured to provision … a widget.” The Court
`
`construed “widget” to have its plain and ordinary meaning; that is, “software that is either an
`
`application or works with an application, and which may have a user interface.” Dkt. No. 86 at
`
`17, 34. The Court also ruled that “a POSITA would not understand that a widget is a stand-alone
`
`application, but rather as code, e.g., a ‘plug-in,’ that runs within an application.” Dkt. No. 86 at
`
`16. Thus, the Court’s construction confirms the claimed “widget” must be software code that
`
`“runs” within an application. Id.
`
`This is not the first time the Court has addressed the deficiencies in Fintiv’s “widget”
`
`infringement theories. On October 16, 2020, Apple moved to strike Fintiv’s infringement
`
`contentions for failing to identify where the “widget” is found in the accused products. See Dkt.
`
`No. 186. At the April 30, 2021 hearing on that motion, the Court denied Apple’s motion to
`
`strike “without prejudice to Apple raising that [the deficiencies in the infringement contentions]
`
`in the context of what is now extant in the expert reports.” Ex. 11, 4/30/21 Hearing Tr.