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`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 1 of 22
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`EXHIBIT 9
`EXHIBIT 9
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`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 1 of 22
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`EXHIBIT 9
`EXHIBIT 9
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`Trials@uspto.gov
`Paper 10
`571-272-7822
`Entered: December 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00979
`Patent 8,118,218 B2
`
`
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`
`
`
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`
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`Patent 8,118,218 B2
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`INTRODUCTION
`I.
`Samsung Electronics America, Inc. and Samsung Electronics Co.,
`Ltd. (“Petitioner”) filed a petition to institute inter partes review of
`claims 1–18 of U.S. Patent No. 8,118,218 B2 (Ex. 1001, “the ’218 patent”).
`Paper 2 (“Pet.”). RFCyber Corp. (“Patent Owner”) filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply to Patent Owner’s Preliminary Response. Paper 8 (“Reply”).
`Patent Owner filed a Sur-Reply. Paper 9 (“Sur-Reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`that the information presented in the Petition does not establish a reasonable
`likelihood that Petitioner will prevail with respect to at least one challenged
`claim. Accordingly, we do not institute an inter partes review of the
`’218 patent.
`
`II. BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies its real parties in interest as Samsung Electronics
`America, Inc. and Samsung Electronics Co., Ltd. Pet. 2. Patent Owner
`identifies RFCyber Corp. as its real party in interest. Paper 4, 1 (Patent
`Owner’s Mandatory Notices).
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`B. Related Matters
`The parties identify the following proceeding as a related matter
`involving the ’218 patent: RFCyber Corp. v. Google LLC, No. 2:20-cv-
`00274 (EDTX); RFCyber Corp. v. LG Electronics, Inc., No. 2:20-cv-00336
`(EDTX); and RFCyber Corp. v. Samsung Electronics Co., 2:20-cv-00335
`(EDTX). Pet. 2–3; Paper 4, 2. The parties also identify the following Board
`proceedings involving petitioner Google LLC and related patents: IPR2021-
`00954 (U.S. Patent No. 8,448,855 B1); IPR2021-00955 (U.S. Patent
`No. 9,189,787 B1); IPR2021-00956 (U.S. Patent No. 9,240,009 B2);
`IPR2021-00957 (U.S. Patent No. 8,118,218 B2); PGR2021-00028 (U.S.
`Patent No. 10,600,046 B2); and PGR2021-00029 (U.S. Patent
`No. 10,600,046 B2). Pet. 3; Paper 4, 1. The parties also identify the
`following Board proceedings filed by Petitioner and involving related
`patents: IPR2021-00978 (U.S. Patent No. 8,448,855 B2); IPR2021-00980
`(U.S. Patent No. 9,189,787 B1); and IPR2021-00981 (U.S. Patent No.
`9,240,009 B2). Pet. 4; Paper 4, 1–2.
`C. The ’218 Patent
`The ’218 patent, titled “Method and Apparatus for Providing
`Electronic Purse,” issued February 21, 2012, with claims 1–18. Ex. 1001,
`codes (45), (54), 8:37–10:63. The ’218 patent “is related to a mechanism
`provided to devices, especially portable devices, functioning as an electronic
`purse (e-purse) to be able to conduct transactions over an open network with
`a payment server without compromising security.” Id. at 1:50–54.
`Figure 2 of the ’218 patent is reproduced below.
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`Figure 2 illustrates shows an exemplary architecture diagram 200 according
`to one embodiment. Id. at 2:63–64, 4:57–59. The architecture includes
`cellphone 202 embedded with a smart card module. Id. at 4:59–60. The
`smart card module is pre-loaded with Mifare emulator 208 for storing
`values. Id. at 4:62–64.
`Cellphone 202 includes purse manager midlet 204, which, for m-
`commerce, can act as an agent to facilitate communications between e-purse
`applet 206 and one or more payment network and servers 210 to conduct
`transactions. Id. at 5:5–9. Purse manager midlet 204 is also configured to
`provide administrative functions such as changing a PIN, viewing a purse
`balance and a history log. Id. at 5:16–18. A card issuer provides security
`authentication module (“SAM”) 212 that is used to enable and authenticate
`transactions between a card and a payment server. Id. at 5:19–22.
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`For e-commerce, web agent 214 is responsible for interacting with
`RFID reader 216 and network server 210. Id. at 5:30–32. Web agent 214
`sends commands or receives responses through RFID reader 216 to or from
`e-purse applet 206 residing in cellphone 202. Id. at 5:32–35. Web agent
`214 also composes network requests (such as HTTP) and receives responses
`thereto from payment server 210. Id. at 5:35–37.
`D. Challenged Claims
`As noted above, Petitioner challenges claims 1–18 of the ’218 patent.
`Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed
`subject matter and is reproduced below:
`1. A method for providing an e-purse, the method comprising:
`providing a portable device including or communicating with a
`smart card pre-loaded with an emulator configured to
`execute a request from an e-purse applet and provide a
`response the e-purse applet is configured to expect, the
`portable device including a memory space loaded with a
`midlet that is configured to facilitate communication
`between the e-purse applet and a payment server over a
`wireless network, wherein the e-purse applet is downloaded
`and installed in the smart card when the smart card is in
`communication with the payment server, the portable device
`further includes a contactless interface that facilitates
`communication between the e-purse applet in the smart card
`and the payment server over a wired network;
`personalizing the e-purse applet by reading off data from the
`smart card to generate in the smart card one or more
`operation keys that are subsequently used to establish a
`secured channel between the e-purse applet and an e-purse
`security authentication module (SAM) external to the smart
`card, wherein said personalizing the e-purse applet
`comprises:
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`establishing an initial security channel between the smart
`card and the e-purse SAM to install and personalize the
`e-purse applet in the smart card, and
`creating a security channel on top of the initial security
`channel to protect subsequent operations of the smart
`card with the e-purse SAM, wherein any subsequent
`operation of the emulator is conducted over the security
`channel via the e-purse applet.
`Ex. 1001, 8:37–67.
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims would have been
`unpatentable on the following grounds:1
`Claims Challenged
`35 U.S.C. §
`1–6, 10–14, 18
`103(a)
`7–9, 15–17
`103(a)
`
`Reference(s)/Basis
`Dua,2 GlobalPlatform,3 Philips4
`Dua, GlobalPlatform, Philips,
`Davis5
`Pet. 6. Petitioner supports its challenge with the Declaration of Gerald W.
`Smith (Ex. 1003).
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’218 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C.
`§ 103.
`2 US 2006/0160060 A1, published July 27, 2006 (Ex. 1004).
`3 GlobalPlatform Card Specification Version 2.1.1 (March 2003) (Ex. 1006).
`4 P5CT072 Secure Dual Interface PKI Smart Card Controller, Koninklijke
`Philips Electronics N.V., Rev. 1.3 (Oct. 4, 2004) (Ex. 1012).
`5 WO 98/49658 A1, published Nov. 5, 1998 (Ex. 1025).
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`ordinary skill in the pertinent art at the time of the effective filing date of the
`claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The
`person of ordinary skill in the art is a hypothetical person who is presumed
`to have known the relevant art. In re GPAC, Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995). Factors that may be considered in determining the level of
`ordinary skill in the art include, but are not limited to, the types of problems
`encountered in the art, the sophistication of the technology, and educational
`level of active workers in the field. Id. In a given case, one or more factors
`may predominate. Id.
`Petitioner contends that a person having ordinary skill in the art
`“would have been knowledgeable regarding mobile payment methods and
`systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that
`an ordinarily skilled artisan “would have had at least a bachelor’s degree in
`computer science, computer engineering, electrical engineering or an
`equivalent, and one year of professional experience relating to mobile
`payment technology, which would have exposed them to concepts like
`GlobalPlatform and SmartMX” and that “[l]ack of professional experience
`can be remedied by additional education, and vice versa.” Id. at 11–12
`(citing Ex. 1003 ¶¶ 27–28). Patent Owner states that it “utilizes Petitioner’s
`proposed level of skill in the art,” but only for its Preliminary Response.
`Prelim. Resp. 8.
`Based on our review of the record before us, we find that Petitioner’s
`stated level of ordinary skill in the art is reasonable because it is consistent
`with the evidence of record, including the asserted prior art. Accordingly,
`for the purposes of this Decision, we adopt Petitioner’s definition.
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`B. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under
`that standard, we generally give claim terms their ordinary and customary
`meaning, as would be understood by a person of ordinary skill in the art at
`the time of the invention, in light of the language of the claims, the
`specification, and the prosecution history. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner contends that the claim terms “emulator” and “midlet” are
`defined in the Specification of the ’218 patent, and those definitions should
`be controlling in this proceeding. Pet. 12 (citing Ex. 1001, 4:36–39, 5:9–11;
`Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362, 1365–66
`(Fed. Cir. 2012)). For all other terms, Petitioner indicates it applies “the
`plain and ordinary meaning to the claims as no specific constructions are
`required.” Id. Patent Owner argues that “claim construction is not required
`to resolve any issues” at this point in the proceeding. Prelim. Resp. 8.
`On the present record, we do not discern a need to construe explicitly
`any claim language because doing so would have no effect on our analysis
`below of Petitioner’s asserted grounds and will not assist in resolving the
`present controversy between the parties. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(stating that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
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`C. Asserted Obviousness Based on Dua, GlobalPlatform, and Philips
`Petitioner asserts that claims 1–6, 10–14, and 18 of the ’218 patent are
`unpatentable under 35 U.S.C. § 103(a) based on Dua, GlobalPlatform, and
`Philips. Pet. 17–60. Patent Owner provides arguments addressing this
`asserted ground of unpatentability. Prelim. Resp. 8–19. We first summarize
`the references and then address the parties’ contentions.
`1. Dua
`Dua is a published U.S. patent application entitled “Method and
`Apparatus for Managing Credentials through a Wireless Network.”
`Ex. 1004, code (54). Dua discloses a “system and methodology for
`conducting financial and other transactions using a wireless device.” Id. at
`Abstract. Dua’s wireless device includes a “wallet application” that
`receives, stores, manages, and transmits multiple payment, identification,
`and other confidential information electronically. Id. ¶ 41. Card issuers like
`banks or merchants can develop custom “extensions” which are installed in
`the wallet application and stored in an embedded smart card. Id. ¶¶ 289,
`295. One example of an extension is a stored-value card extension for
`paying subway fare. Id. ¶¶ 290, 293. The stored value card extension
`“need[s] to be programmed” to support “over-the-air reload,” i.e., wireless
`funding of the e-purse. Id. ¶ 293.
`2. GlobalPlatform
`GlobalPlatform Card Specification version 2.1.1 describes the
`“[s]pecifications that shall be implemented on GlobalPlatform smart cards.”
`Ex. 1006, 16. GlobalPlatform describes its own security architecture and
`commands for use in installing and personalizing applications on
`GlobalPlatform cards. Ex. 1006, 65–67, 88–90. GlobalPlatform is a
`“hardware-neutral,” “vendor-neutral,” and “Application independent” “chip
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`card standard” which “provides a common security and card management
`architecture.” Ex. 1006, 16; Ex. 1008, 290.6 “GlobalPlatform is intended to
`run on top of any secure, multi-application card runtime environment”
`including Java Card. Ex. 1006, 16 (§1), 29 (§3.1). GlobalPlatform specifies
`the card architecture, security architecture, Life Cycle models for smart
`cards and their Applications, the Card Manager, Security Domains for key
`management and establishing Secure Channels. Ex. 1003 ¶¶ 51–63.
`GlobalPlatform describes sequences of commands for installing,
`personalizing, and deleting applications on multi-application smart cards.
`Ex. 1006, 65–67, 88–90.
`
`3. Philips
`Philips is a short form specification describing a Secure PKI Smart
`Card Controller for the SmartMX (Memory eXtension) multiple interface
`option platform. Ex. 1012, 1. The Smart Card Controller can be used as
`data memory and program memory. Id. According to Philips, “[t]he
`interface technology is well established in all products of the MIFARE®
`interface platform.” Id. at 2. “Compatibility with existing MIFARE®
`reader infrastructure and the optional free of charge emulation modes of
`MIFARE® 1K and MIFARE® 4K enable fast system integration and
`backward compatibility of standard MIFARE® and ProX family based
`cards.” Id.
`
`4. Independent Claim 1
`Petitioner argues that Dua discloses a system and method for
`conducting financial transactions in which a wireless device includes a
`
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`6 We follow Petitioner’s convention of citing to the actual page numbers of
`Exhibit 1008. See Pet. 1 n.2.
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`wallet application “capable of receiving, storing, managing and transmitting
`multiple payment, identification, and other confidential information
`electronically.” Pet. 17 (citing Ex. 1004 ¶¶ 26, 41, 309). Petitioner also
`argues that Dua’s device has an embedded smart card, but Dua does not
`describe conventional smart card details. Id. at 17–18 (citing Ex. 1004 ¶¶ 7,
`215, 295). According to Petitioner, however,
`Dua does refer to credit card organizations “working jointly
`over the last few years to develop specifications that define a
`set of requirements for security and interoperability between
`chip cards and terminals on a global basis, regardless of the
`manufacturer, financial institution, or where the card was used,”
`which a [person having ordinary skill in the art] would
`recognize as including GlobalPlatform.
`Id. at 18 (citing Ex. 1004 ¶ 14; Ex. 1006, 16; Ex. 1003, ¶¶ 122–124;
`Ex. 1008, 290–91; Ex. 1022, 33).
`In addition, Petitioner asserts that GlobalPlatform discloses a smart
`card management specification or standard useable with Dua’s wallet
`application. Id. (citing Ex. 1004 ¶ 525; Ex. 1006, 16, 32; Ex. 1003, ¶¶ 122–
`124). Petitioner also asserts that both Dua and GlobalPlatform use the Java
`Card operating system, and GlobalPlatform facilitates loading and installing
`issuer specific applications, such as Dua’s extensions. Id. at 18–19 (citing
`Ex. 1004 ¶¶ 195, 216, 498–500; Ex. 1006, 24, 27, 29; Ex. 1003, ¶¶ 124–127;
`Ex. 1008, 290; Ex. 1022, 33). Thus, in Petitioner’s view, one of ordinary
`skill in the art would have been motivated and would have found it obvious
`to have used GlobalPlatform with Dua’s smart cards, wallet application, and
`extensions. Id. at 19 (citing Ex. 1003, ¶¶ 122–128).
`Furthermore, Petitioner argues that Philips Semiconductor SmartMX
`smart cards were well-known dual interface cards designed to work with
`Java Card. Id. (citing Exs. 1010–1013; Ex. 1028 ¶¶ 10, 23; Ex. 1030, 43–
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`44; Ex. 1031, 32:23–36; Ex. 1032 ¶ 11). Thus, Petitioner argues that one of
`ordinary skill in the art would have been motivated and would have found it
`obvious to have used a Philips smart card in Dua’s wireless device. Id. at 20
`(citing Ex. 1003, ¶¶ 132–133).
`Petitioner next provides analysis purporting to show where each
`limitation recited in independent claim 1 is disclosed by the combination of
`Dua, GlobalPlatform, and Philips. Id. at 20–51. Notably, Petitioner maps
`Dua’s wireless devices to the portable device of claim 1, Dua’s wallet
`application to the midlet, Dua’s secure value card extension (“SVCE”) to the
`e-purse applet, Dua’s Wireless Credential Manager (“WCM”) to the e-purse
`SAM, and Philips’s MIFARE® emulator to the claimed emulator. Id. at 20–
`21. Petitioner also contends that Dua’s issuer card management system
`(“ICMS”) corresponds to the payment server of claim 1. Id. at 25, 28–29
`(citing Ex. 1004 ¶¶ 40, 43–44, 57, 107, 253–256, 398, 422, Figs. 1, 3, 8;
`Ex. 1003 ¶¶ 160–162).
`Regarding the limitation “wherein the e-purse applet is downloaded
`and installed in the smart card when the smart card is in communication with
`the payment server,” Petitioner notes that Dua’s SVCEs (the e-purse applets)
`are distributed via Dua’s WCM and concedes that “Dua does not specifically
`disclose that its extensions are installed ‘when the smart card is in
`communication with the payment server’ [(i.e., Dua’s ICMS)] because Dua’s
`WCM (e-purse SAM) delivers SIP payload.”7 Id. at 29 (citing Ex. 1004
`¶¶ 215–216, 289, 295; Ex. 1003 ¶ 165).
`
`
`7 “SIP” refers to “Session Initiation Protocol.” Ex. 1004 ¶ 42. Dua discloses
`that SIP payload is delivered “between the WCM and the wallet application
`on the wireless device,” and may include “software extensions the issuer
`wants to register with the wallet application.” Id. ¶ 215.
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`Petitioner makes two arguments asserting that installing the
`extensions when the smart card is in communication with the payment server
`would have been obvious. First, Petitioner contends that it is a mere design
`choice as to whether to use Dua’s WCM or ICMS to deliver the SCVE, and
`it would have been obvious to install Dua’s extensions from the ICMS via
`the WCM. Id. at 29–30 (citing Ex. 1003 ¶ 166). Petitioner further contends
`that it would have been obvious to one of ordinary skill in the art “to
`complete the installation of the SVCE while the smart card was in
`communication with the ICMS so that the issuer could verify that the
`download and installation was successful to authorize use of the SVCE.” Id.
`at 30 (citing Ex. 1003 ¶ 167; Ex. 1008, 435, 651). Second, Petitioner
`contends that this limitation would have been obvious to one of ordinary
`skill in the art over the combination of Dua and GlobalPlatform. Id. at 30–
`32.
`
`a) Design Choice
`In response to Petitioner’s first argument, Patent Owner argues that
`Dua does not disclose that its smart card is in communication with a
`payment server while an extension is being downloaded and installed, and
`one of ordinary skill in the art would not have been motivated to modify Dua
`to do so. Prelim. Resp. 11–12. We agree with Patent Owner for the
`following reasons.
`To support its first argument, Petitioner argues that: (1) Dua’s ICMS
`already issues requests to the WCM; (2) the WCM receives files from the
`ICMS and interprets and acts on the information; (3) the WCM can
`communicate with different issuer systems (e.g., the ICMS) in real-time or
`batch mode; and (4) Dua discloses making sure the appropriate software is
`downloaded and on the mobile device. Pet. 30 (citing Ex. 1004 ¶¶ 57, 199,
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`216, 221, 253, 285, 447). Although these disclosures establish that Dua’s
`WCM and ICMS communicate with one another, neither the Petition nor
`Mr. Smith explains sufficiently why these disclosures would have caused
`one of ordinary skill in the art to use Dua’s ICMS to install extensions via
`the WCM. See Pet. 29–30; Ex. 1003 ¶ 166. At best, the cited disclosures
`suggest that one of ordinary skill in the art could make the proposed
`modification, not that they would make the modification. See Belden Inc. v.
`Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
`concerns whether a skilled artisan not only could have made but would have
`been motivated to make the combinations or modifications of prior art to
`arrive at the claimed invention.”).
`As for the assertion that one of ordinary skill in the art would have
`completed installation of the extension while the smart card was in
`communication with the ICMS so that the issuer could verify installation,
`both the Petition and Mr. Smith rely solely on Exhibit 10088 to support the
`assertion. See Pet. 30 (citing Ex. 1003 ¶ 167; Ex. 1008, 435, 651); Ex. 1003
`¶ 167 (citing Ex. 1008, 435, 651). The two cited passages of Exhibit 1008
`are:
`
`Communications procedures between a terminal and a smart
`card are always based on the master–slave principle. This
`means that the terminal, acting as the master, sends a command
`to the card, which as the slave immediately processes the
`command, generates a response and returns its response to the
`terminal,
`
`and
`
`In principle, the entire administrative process must be
`performed in an atomic manner by the card management
`
`8 Smart Card Handbook Third Edition, by Wolfgang Rankl and Wolfgang
`Effing (2003).
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`system, since if it is somehow possible to prevent
`administration operations from being fully completed by means
`of some sort of interruption to the process, it must be possible
`to restore the original state.
`Ex. 1008, 435, 651. The first passage broadly describes communications
`between a smart card and a terminal; this passage does not appear to teach or
`suggest establishing communication with a smart card to verify an
`installation to the smart card. The second passage discusses preventing an
`interruption to administrative operations. As an example, Exhibit 1008
`describes the operation of “downloading a Java applet into a SIM,”9 but
`describes avoiding any technical consequences for the SIM functionality in
`the event of a broken connection, such as a coverage gap in a tunnel. Id. at
`651. Thus, this passage does not appear to teach or suggest verifying an
`installation to a smart card. Furthermore, neither the Petition nor Mr. Smith
`explains sufficiently how either of these passages would have caused one of
`ordinary skill in the art to reconfigure Dua to relocate the download
`functionality from the WCM to the ICMS and also consider establishing
`communication between Dua’s ICMS and the smart card while Dua’s
`extension was being downloaded for the purpose of verifying installation.
`In view of the above discussion, we do not find Petitioner’s first
`argument persuasive on the record before us.
`
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`9 “SIM” refers to a type of smart card referred to as the “subscriber identity
`module” used in telecommunications. Ex, 1008. 13.
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`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 17 of 22
`IPR2021-00979
`Patent 8,118,218 B2
`b) Obviousness over Dua and GlobalPlatform
`For its second argument, Petitioner argues that GlobalPlatform
`discloses using APDU10 commands between a Host and an Issuer Security
`Domain (“ISD”) to install an application. Pet. 30–31 (citing Ex. 1006, 66,
`Fig. 6-3). In particular, Petitioner contends that GlobalPlatform’s Host
`sends an “INSTALL [for load]” command to the ISD. Id. at 31–32.
`According to Petitioner, the Host is defined as “the back end systems that
`support the GlobalPlatform system,” and one of ordinary skill in the art
`“knew that such ‘back end systems’ included off-card entities, such as
`payment servers like those of Dua’s ICMSs.” Id. at 31 n.15 (citing Ex. 1003
`¶ 182; Ex. 1006, 27, Fig. 2-1). Petitioner then contends that
`[t]hese exchange[s] of APDU commands, which are required by
`GlobalPlatform’s Security Domains, show that Dua’s SVCEs
`(e-purse applets) are “downloaded and installed in the smart
`card when the smart card is in communication with” Dua’s
`ICMS (payment server) at least because INSTALL [for install]
`[sic] APDU commands are communicated between the Host
`and ISD.
`Id. at 32 (citing Ex. 1003 ¶¶ 71–78, 170–172; Ex. 1006, 30, 39, 102).
`In response, Patent Owner argues that Petitioner does not support its
`assertion that GlobalPlatform’s Host equates to Dua’s ICMS. Prelim.
`Resp. 13 (citing Pet. 31 n.15).
`We agree again with Patent Owner. As noted above, Petitioner relies
`on paragraph 182 of Mr. Smith’s declaration and GlobalPlatform’s Figure
`2-1 to support its assertion. The cited testimony, however, states that
`GlobalPlatform uses the term “Host” “for any entity not on the card, such as
`
`10 In GlobalPlatform, “APDU” refers to Application Protocol Data Unit and
`is defined as a “[s]tandard communication messaging protocol between a
`card accepting device and a smart card.” Ex. 1006, 18.
`
`16
`
`
`
`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 18 of 22
`IPR2021-00979
`Patent 8,118,218 B2
`a POS terminal, server, [or] other external off-card management system.”
`Ex. 1003 ¶ 182. Although this is a broad statement that does not necessarily
`preclude the Host from being a payment server, it fails to state explicitly that
`the Host is a payment server, such as Dua’s ICMS, or suggest relocating the
`download functionality of Dua’s WCM to Dua’s ICMS. Id. As such, this
`testimony fails to provide evidentiary support for Petitioner’s position. Mr.
`Smith also cites GlobalPlatform’s Figure 2-1 as illustrating various off-card
`entities. Id. Figure 2-1, reproduced below, shows the GlobalPlatform
`architecture.
`
`
`Figure 2-1 shows the GlobalPlatform architecture, which “is designed to
`provide Card Issuers with the system management architecture for managing
`. . . smart cards.” Ex. 1006, 27. Figure 2-1 depicts the GlobalPlatform
`
`17
`
`
`
`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 19 of 22
`IPR2021-00979
`Patent 8,118,218 B2
`architecture as interacting with various entities, such as “Key Management
`Systems,” “Card Management Systems,” “Personalization Systems,”
`“Applications Servers,” and “Terminal Management Systems,” but does not
`specifically identify a payment server. Neither the Petition nor Mr. Smith
`explains sufficiently why Dua’s ICMS fits into any of the particular off-card
`entities shown in Figure 2-1 or why a person of ordinary skill would be
`motivated, based on this disclosure, to relocate the particular download
`functionality (the download of Dua’s SCVE’s) from Dua’s WCM to Dua’s
`ICMS. At best, this evidence shows that the functionality could be relocated
`to the ICMS, but provides an insufficient explanation why a person of
`ordinary skill would have relocated it. See Belden Inc., 805 F.3d at 1073.
`Accordingly, we are not persuaded on this record that one of ordinary skill
`in the art would have known that GlobalPlatform’s Host includes a payment
`server.
`Accordingly, we do not find Petitioner’s second argument persuasive
`on the record before us.
`
`c) Summary
`For the above reasons, we are not persuaded that the combination of
`Dua, GlobalPlatform, and Philips discloses “wherein the e-purse applet is
`downloaded and installed in the smart card when the smart card is in
`communication with the payment server” recited in claim 1. Accordingly,
`we determine Petitioner has not met its burden to show a reasonable
`likelihood it would prevail with respect to the contention that claim 1 is
`unpatentable over the combination of Dua, GlobalPlatform, and Philips.
`5. Independent Claim 11
`Independent claim 11 recites “[a] system for providing an e-purse”
`that recites limitation substantially similar to the limitations of claim 1,
`
`18
`
`
`
`Case 6:21-cv-00916-ADA Document 43-9 Filed 04/19/22 Page 20 of 22
`IPR2021-00979
`Patent 8,118,218 B2
`including the limitation “wherein the e-purse applet is downloaded from the
`payment server when the smart card is in communication with the payment
`server.” Ex. 1001, 9:51–10:19. Petitioner largely relies on the same
`analysis made in connection with claim 1 for showing where each limitation
`recited in independent claim 11 would have been obvious in view of the
`combination of Dua, GlobalPlatform, and Philips. Pet. 51–54. Thus,
`Petitioner’s challenge to claim 11 is based on the same deficient assertions
`as to the combination of Dua, GlobalPlatform, and Philips as discussed
`above in the analysis of the challenge to independent claim 1. For these
`same reasons, we find that Petitioner has not met its burden to show a
`reasonable likelihood that claim 11 is unpatentable over the combination of
`Dua, GlobalPlatform, and Philips.
`6. Claims 2–10 and 12–18
`Claims 2–10 depend from claim 1 and, thus, contain all the limitations
`of claim 1, and claims 12–18 depend from claim 11 and, thus, contain all the
`limitations of claim 11. Petitioner’s challenges to dependent claims 2–10
`and 12–18 do not overcome the deficiencies discussed above with respect to
`the challenge to independent claims 1 and 11. See Pet. 55‒60. Accordingly,
`for the same reasons discussed above in connection with claims 1 and 11, we
`find Petitioner has not met its burden to show a reasonable likelihood that
`claims 2–10 and 12–18 are unpatentable over the combination of Dua,
`GlobalPlatform, and Philips.
`D. Asserted Obviousness Based on Dua, GlobalPlatform,
`Phili
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