Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 1 of 72
`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 1 of 72
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 2 of 72
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2022-00412
`U.S. Patent No. 9,189,787
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,189,787
`
`

`

`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 3 of 72
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`TABLE OF CONTENTS
`
`I. BACKGROUND .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) FOR INTER
`PARTES REVIEW ............................................................................................... 2
`A. REAL PARTY IN INTEREST UNDER 37 C.F.R. § 42.8(B)(1) ............................. 2
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) ...................................... 3
`C. LEAD AND BACKUP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) AND SERVICE
`INFORMATION UNDER 37 C.F.R. § 42.8(B)(4) ....................................................... 5
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15 ...................................... 6
`IV. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D)... 6
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ........................ 6
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............................. 6
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ........................................................................................................ 6
`VI. THE ’787 PATENT ...................................................................................... 7
`A. OVERVIEW .................................................................................................. 7
`B. EFFECTIVE FILING DATE ............................................................................. 7
`C.
`’787 PATENT’S PROSECUTION...................................................................... 7
`1. The ’218 patent ...................................................................................... 7
`2. The ’855 patent ...................................................................................... 8
`3. U.S. Patent Application No. 13/903,420 (the ’787 patent) ...................... 9
`VII. PETITIONER’S GROUNDS ARE NEW AND DISCRETIONARY
`DENIAL IS UNWARRANTED UNDER FINTIV ............................................10
`A. FINTIV .......................................................................................................10
`VIII. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ...........11
`IX. CLAIM CONSTRUCTION ........................................................................11
`X. OVERVIEW OF PRIOR ART ...................................................................12
`A. DUA ...........................................................................................................12
`B. GLOBALPLATFORM ....................................................................................13
`C. PHILIPS ......................................................................................................14
`XI. DETAILED ANALYSIS .............................................................................15
`
`ii
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 4 of 72
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`A. GROUND 1: DUA IN VIEW OF GLOBALPLATFORM AND PHILIPS RENDER
`OBVIOUS CLAIMS 1-19 ........................................................................................15
`XII. CONCLUSION ...........................................................................................57
`
`
`
`
`
`iii
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 5 of 72
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`Claim 1:
`
`CLAIM LISTING
`
`[Claim 1-PREAMBLE] A portable device for commerce, the portable device
`
`comprising:
`
`[1a] an emulator loaded in a smart card module for storing security values and
`
`updated transaction logs, and
`
`[1b] an e-purse applet to cause the portable device to function as an electronic
`
`purse (e-purse),
`
`[1c] wherein both of the emulator and e-purse applet are already personalized
`
`via a personalization process built on a first security channel so that the emulator
`
`is set to store a set of keys for subsequent data access authentication and the e-
`
`purse applet is configured to conduct a transaction with a network server over a
`
`second security channel;
`
`[1d] a first interface configured to perform field communication (NFC) with
`
`a reader to perform electronic commerce with the e-purse applet against a fund stored
`
`in the emulator;
`
`[1e] a second interface configured to perform mobile commerce with a
`
`payment server via an application against the fund stored in the emulator; and
`
`iv
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`

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`[1f] a purse manager midlet being executed in the portable device to act as
`
`an agent to facilitate communications between the e-purse applet and a payment
`
`server to conduct transactions therebetween.
`
`Claim 2:
`
`The portable device as recited in claim 1, further comprising a security module
`
`configured to install and personalize the e-purse applet via either the first interface
`
`or the second interface, wherein the keys are updated when the personalization
`
`process built on the first security channel completes.
`
`Claim 3:
`
`The portable device as recited in claim 1, wherein the e-purse is built on top
`
`of a global platform to be able to access MIFARE data structures with an appropriate
`
`transformed password based on the keys in the emulator, wherein the global platform
`
`is a cross-industry membership organization created to advance standards for smart
`
`card growth.
`
`Claim 4:
`
`The portable device as recited in claim 1, wherein the first interface is based
`
`on a RFID interface that allows the portable device to act as a tag to be read off by
`
`the reader connected to a computing device coupled to the Internet.
`
`Claim 5:
`
`v
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 7 of 72
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`The portable device as recited in claim 4, wherein a web agent on the
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`computing device is configured to interact with the RFID reader and the network
`
`server, the agent sends commands or receives responses thereto through the RFID
`
`reader to/from the e-purse applet, and on the other hand, the agent composes network
`
`requests and receives responses thereto from the network server.
`
`Claim 6:
`
`[6a] The portable device as recited in claim 1, wherein the first security
`
`channel is an initial security channel between the smart card module and a security
`
`authentication module (SAM) external to the smart card module to install and
`
`personalize the e-purse applet, and
`
`[6b] the second security channel is a security channel on top of the initial
`
`security channel to protect subsequent operations of the smart card module with the
`
`SAM, wherein any subsequent operation is conducted over the security channel via
`
`the e-purse applet.
`
`Claim 7:
`
`The portable device as recited in claim 6, wherein essential data being
`
`personalized include one or more operation keys, default PINs, administration keys
`
`and passwords.
`
`Claim 8:
`
`vi
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`The portable device as recited in claim 1, wherein the smart card module is
`
`part of the portable device.
`
`Claim 9:
`
`The portable device as recited in claim 1, wherein the smart card module is an
`
`external device inserted into the portable device.
`
`Claim 10:
`
`The portable device as recited in claim 1, wherein the purse manager midlet
`
`is configured to access the emulator directly.
`
`Claim 11:
`
`[Claim 11-PREAMBLE] A method for a portable device for commerce, the
`
`method comprising:
`
`[11a] loading a smart card module with an emulator for storing security values
`
`and updated transaction logs, and
`
`[11b] an e-purse applet to cause the portable device to function as an
`
`electronic purse (e-purse);
`
`[11c] personalizing the emulator and the e-purse applet via a personalization
`
`process built on a first security channel so that the emulator is set to store a set of
`
`keys for subsequent data access authentication and the e-purse applet is configured
`
`to conduct a transaction with a network server over a second security channel;
`
`vii
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 9 of 72
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`[11d] performing near field communication (NFC) via a first interface with a
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`reader to perform electronic commerce with the e-purse applet against a fund stored
`
`in the emulator; and
`
`[11e] performing mobile commerce via a second interface with a payment
`
`server via an application against the fund stored in the emulator,
`
`[11f] wherein the application is executed in the portable device to act as an
`
`agent to facilitate communications between the e-purse applet and a payment server
`
`to conduct transactions therebetween.
`
`Claim 12:
`
`The method as recited in claim 11, wherein a security module in the portable
`
`device is configured to install and personalize the e-purse applet via either the first
`
`interface or the second interface, wherein the keys are updated when the
`
`personalization process built on the first security channel completes.
`
`Claim 13:
`
`The method as recited in claim 11, wherein the e-purse is built on top of a
`
`global platform to be able to access MIFARE data structures with an appropriate
`
`transformed password based on the keys in the emulator, wherein the global platform
`
`is a cross-industry membership organization created to advance standards for smart
`
`card growth.
`
`viii
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 10 of 72
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`Claim 14:
`
`The method as recited in claim 11, wherein the first interface is based on a
`
`RFID interface that allows the portable device to act as a tag to be read off by the
`
`reader connected to a computing device coupled to the Internet.
`
`Claim 15:
`
`The method as recited in claim 14, wherein a web agent on the computing
`
`device is configured to interact with the RFID reader and the network server, the
`
`agent sends commands or receives responses thereto through the RFID reader
`
`to/from the e-purse applet, and on the other hand, the agent composes network
`
`requests and receives responses thereto from the network server.
`
`Claim 16:
`
`[16a] The method as recited in claim 11, wherein said personalizing of the
`
`emulator and the e-purse applet comprises: establishing an initial security channel
`
`between the smart card module and a security authentication module (SAM) external
`
`to the smart card module to install and personalize the e-purse applet in the card
`
`module, and
`
`[16b] creating a security channel on top of the initial security channel to
`
`protect subsequent operations of the smart card module with the SAM, wherein any
`
`subsequent operation is conducted over the security channel via the e-purse applet.
`
`ix
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 11 of 72
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`Claim 17:
`
`The method as recited in claim 16, wherein essential data being personalized
`
`include one or more operation keys, default PINs, administration keys and
`
`passwords.
`
`Claim 18:
`
`The method as recited in claim 11, wherein the smart card module is part of
`
`the portable device.
`
`Claim 19:
`
`The method as recited in claim 11, wherein the smart card module is an
`
`external device inserted into the portable device.
`
`
`
`
`x
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`

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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 12 of 72
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`
`
`Exhibit No.
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`1017
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 9,189,787 (“’787 patent”)
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`Declaration of Gerald Smith Regarding Invalidity of U.S.
`Patent No. 8,118,218
`U.S. Patent Application Publication No. 2006/0165060
`(“Dua”)
`Invalidity
`Defendants’ Contingent Election Regarding
`Defenses, RFCyber Corp v. Google LLC et al., Case Nos.
`2:20-cv-00274-JRG and 2:20-cv-00335-JRG, DKT. 60, dated
`June 8, 2021
`GlobalPlatform Card Specification Version 2.1.1 (March
`2003) (“GlobalPlatform” or “GP”)
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`Common Electronic Purse Specifications, Technical
`Specification Version 2.3 (March 2001)
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March
`26)
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March
`26)
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October
`2004)
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card
`IC, Short Form Specification (Revision 1.0 – November
`2003)
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote
`APDU structure for UICC based applications (Release 6)”
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal
`Reserve Bank of New York (April 1995).
`File History of U.S. Patent Application No. 13/782,948
`Excerpt from Cambridge Business English Dictionary
`
`xi
`
`

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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 13 of 72
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`Exhibit No.
`1018
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`1025
`
`1026
`
`1027
`
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`
`1037
`1038
`1039
`
`
`
`for
`
`commands
`
`Description
`U.S. Patent No. 6,983,882
`Identification
`RFID Handbook
`– Radio-Frequency
`Fundamentals and Applications, Klaus Finkenzeller, John
`Wiley & Son, Ltd. (1999)
`IC S50 Functional
`IC MF1
`Mifare Standard Card
`Specification; Product Specification Revision 5.0, Philips
`Semiconductors (November 1999)
`ISO/IEC
`7816-4:1995
`Interindustry
`interchange (May 1995)
`U.S. Government General Services Administration (GSA)
`Smart Card Handbook (FEB 2004)
`“Here Comes The Wallet Phone,” IEEE Spectrum, November
`2005
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`PCT Application Publication No. WO 98/49658 A1 to Visa
`International Service Association (“Davis”)
`RFC 3261, SIP: Session Initiation Protocol, The Internet
`Society (June 2002).
`Hargrave’s Communications Dictionary, IEEE Press, p. 24
`(defining “applet”) (excerpted)
`U.S. Patent Application Publication No. 2004/0177045
`European Patent No. 1,369,842
`PCT Publication No. WO02/241236
`U.S. Patent No. 6,792,536
`U.S. Patent Application Publication No. 2006/0005050
`U.S. Patent No. 7,748,636
`File history of U.S. Patent No. 7,747,636
`NXP Semiconductors 2006 Annual Report
`SEC Report: Amendment No 1 to Form F-1 Registration
`Statement, filed by NXP Semiconductors, March 22, 2011
`U.S. Patent Application Publication No. 2006/0208066
`U.S. Patent No. 8,498,898 to Kogen et al. (“Kogen”)
`U.S. Patent Application Publication No. 2006/0196931
`
`xii
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`

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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 14 of 72
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`Apple Inc. hereby seek inter partes review of Claims 1-19 (“the Challenged
`
`Claims”) of U.S. Patent No. 9,189,787. Ex-1001 (the “’787 patent”).
`
`I.
`
`BACKGROUND
`
`The ’787 patent relates to portable devices using an “electronic purse” or
`
`“epurse.” Ex-1001, 1:17-21, 8:49-10:56. The e-purse allows a user to conduct
`
`transactions over a wireless network or through a radio frequency identification
`
`(“RFID”) reader using the stored value in the smart card of the user’s mobile phone.
`
`Ex-1001, 1:17-29, 3:64-65, 4:6-9, 5:6-8; Ex-1002, p.131 (“an e-purse in the instant
`
`application describes about [sic] electronic money in a local portable device”).1 But
`
`e-purses a.k.a “stored value cards” were well-known. Ex-1008, pp., 486-488, 685-
`
`6862; Ex-1003, ¶¶83-87. Even in 1995 e-purses were used with “vending machines,
`
`phones, trains, buses, and parking meters.” Ex-1015, pp.1-2.
`
`The ’787 patent claims an emulator loaded in a smart card module.3 Ex-1001,
`
`8:51. But the inventors of the ’787 patent do not purport to have invented the smart
`
`
`1 All emphasis added unless otherwise noted.
`
`2 Citations to Ex-1008 are to the actual page numbers of the book.
`
`3 Smart cards, which were introduced at least as of the early 1990s, are plastic
`
`cards with an embedded computer chip that can be used for “storing, retrieving,
`
`and manipulating data.” Ex-1015, p.1; Ex-1008, pp.2-4.
`
`1
`
`

`

`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 15 of 72
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`card, recognizing that Java-enabled smart cards, like the SmartMX card, were
`
`available and that SmartMX already included a preloaded emulator. Ex-1001, 4:58-
`
`67, 5:4-8; Ex-1003, ¶¶89-94. The ’787 patent claims personalizing of the smart card
`
`emulator and “e-purse applets” with keys to provide for secure communications. Id.,
`
`8:49-11:56. The claimed personalization process is lifted from GlobalPlatform. Id.,
`
`5:61-6:3. GlobalPlatform was widely used prior to the ’787 patent, Ex-1008, p.290-
`
`293, and smart card personalization was industry standard to ensure cryptographic
`
`communications occurred between the card and off-card entities. Id., pp.18-21
`
`(overview of smart cards and personalization), 598, 638-647 (Phase 3 of smart card
`
`life cycle includes personalization); 177-181 (explaining basic smart card cryptology
`
`that is “firmly established”); 202-203 (DES or triple DES keys are “usually” used
`
`for smart card cryptographs); Ex-1006, pp.203, 219 (DES/3DES keys shall be used
`
`with GlobalPlatform for all Secure Channel communications). GlobalPlatform also
`
`commonly managed “applets.” Ex-1008, p.474. In sum, the claims of the ’787 patent
`
`merely recite familiar elements employed in known manner to yield predicable
`
`results, rendering them obvious.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) FOR INTER
`PARTES REVIEW
`A.
`
`Real Party in Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest in this petition is Apple Inc.
`
`2
`
`

`

`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 16 of 72
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related matters:
`
`• RFCyber Corp. v. Apple Inc., 6:21-cv-00916 (W.D. Tex.) (the “Apple
`
`case”);
`
`• RFCyber Corp. v. Google LLC et al., 2:20-cv-00274 (E.D. Tex.) (the
`
`Google case”);
`
`• RFCyber Corp v. LG Electronics, Inc., 2:20-cv-00336 (E.D. Tex.);
`
`• RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-00335
`
`(E.D. Tex.) (the “Samsung case”);
`
`• Google LLC v. RFCyber Corp., PGR2021-00028 and -00029
`
`concerning U.S. Patent No. 10,600,046;
`
`• Google LLC v. RFCyber Corp., IPR2021-00954 concerning U.S. Patent
`
`No. 8,448,855;
`
`• Google LLC v. RFCyber Corp., IPR2021-00955 concerning the ’787
`
`patent;
`
`• Google LLC v. RFCyber Corp., IPR2021-00956 concerning U.S. Patent
`
`No. 9,240,009; and
`
`• Google LLC v. RFCyber Corp., IPR2021-00957 concerning U.S. Patent
`
`No. 8,118,218;
`
`• Google LLC v. RFCyber Corp., IPR2021-00978 concerning U.S.
`
`3
`
`

`

`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 17 of 72
`
`Patent No. 8,448,855;
`
`• Google LLC v. RFCyber Corp., IPR2021-00979 concerning U.S.
`
`Patent No. 8,118,218;
`
`• Google LLC v. RFCyber Corp., IPR2021-00980 concerning U.S.
`
`Patent No. 9,189,787;
`
`• Apple Inc. v. RFCyber Corp., PGR2022-00003 concerning U.S. Patent
`
`No. 10,600,046;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp., IPR2021-
`
`00981 concerning U.S. Patent No. 9,240,009;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp., IPR2021-
`
`00979 concerning U.S. Patent No. 8,118,218;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp., IPR2021-
`
`00980 concerning U.S. Patent No. 9,189,787;
`
`• Samsung Electronics America, Inc., et al. v. RFCyber Corp., IPR2021-
`
`00978 concerning U.S. Patent No. 8,448,855.
`
`Petitioner is a party to the Apple case, which is in its earliest stages: no
`
`scheduling conference has occurred, and Apple has not yet answered the amended
`
`complaint, which was filed on December 2, 2021.
`
`4
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`

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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 18 of 72
`
`The instant petition is substantively identical to Samsung’s petition in
`
`IPR2021-00981. That proceeding was instituted on December 15, 2021, and
`
`Petitioner has filed a motion to join IPR2021-00981.
`
`In addition to joining IPR2021-00981, Petitioner is filing a substantively
`
`identical petition and motion to join Samsung’s IPR2021-00980. That proceeding
`
`was also instituted on December 15, 2021.
`
`The undersigned is unaware of any other any other judicial or administrative
`
`matter that would affect, or be affected by, a decision in the proceeding.
`
`C.
`
`Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3) and Service
`Information under 37 C.F.R. § 42.8(b)(4)
`
`Petitioner designates the following lead and backup counsel:
`
`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
`
`Service on Petitioner may be made by mail or hand delivery to: Erise IP, P.A., 7015
`
`College Boulevard, Suite 700, Overland Park, Kansas 66211. Petitioner also
`
`consents to and prefers electronic service by emailing PTAB@eriseip.com and
`
`counsel of record (shown above).
`
`5
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`

`

`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 19 of 72
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`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.15
`Petitioner authorizes the U.S. Patent & Trademark Office to charge Deposit
`
`Account No. 50-6159 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes for any additional fees to be charged to this Deposit Account.
`
`IV. CERTIFICATION OF WORD COUNT UNDER 37 C.F.R. § 42.24(D)
`Petitioner certifies that the word count in this Petition is 10,640 words, as
`
`counted by the word-processing program Microsoft Word used to generate this
`
`Petition, where such word count excludes the table of contents, table of authorities,
`
`mandatory notices, certificate of service, appendix of exhibits, and this certificate of
`
`word count. This Petition is in compliance with the 14,000 word limit set forth in 37
`
`C.F.R. § 42.24(a)(1)(i).
`
`V. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’787 patent is available for inter partes review, and
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`that Petitioner is not barred or estopped from requesting an IPR on the Ground
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`identified herein.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
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`The Challenged Claims should be cancelled based on the following Ground:
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`Ground
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`’787 Patent Claim(s)
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`Identification for Challenge
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`1
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`1-19
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`Rendered obvious by Dua (Ex-1004)
`in view of GlobalPlatform (Ex-1006)
`and Philips (Ex-1012)
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`VI. THE ’787 PATENT
`A. Overview
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`An overview of the ’787 patent is given in Section I.
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`B.
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`Effective Filing Date
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`To resolve Petitioner’s challenge the Board may presume that the effective
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`filing date of the ’787 patent is September 24, 2006.
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`C.
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`’787 Patent’s Prosecution
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`The ’787 patent is a continuation of the ’855 patent, which is a continuation
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`of the ’218 patent. The references cited by the examiner during prosecution of the
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`’218, ’855 and ’787 patents are not used herein.
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`1.
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`The ’218 patent
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`The originally-filed claims were rejected as anticipated by Shmueli
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`(US2002/0145632). Ex-1002, pp.60-64. In response, Applicants amended the claims
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`to add features including steps of “establishing an initial security channel” and
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`“creating the security channel on top of the initial security channel to protect
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`subsequent operations of the smart card with the e-purse SAM,” and argued Shmueli
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`did not disclose these features. Id., pp.75-81.
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`Over the course of several actions, the examiner rejected the claims over
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`combinations of Shmueli in view of Atsmon (US6,607,136) and Shmueli in view of
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 21 of 72
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`Nystrom (US2009/0313689). Id., pp.107, 136-146. Applicants contended that none
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`of Shmueli, Atsmon, or Nystrom disclosed the claimed two-level security channel
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`scheme. Id., pp.124, 129-131. After an interview, Applicants argued that the prior
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`art failed to disclose personalization of the e-purse applet “using (two-level) security
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`means.” Id., pp.220-222, 230. The claims were then allowed and the reasons for
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`allowance quoted the independent claims. Id., pp.239-241.
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`2.
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`The ’855 patent
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`The ’855 patent’s originally-filed claims were directed to a technique for
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`funding an e-purse. Ex-1007, p.37. They were rejected over combinations involving
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`Staib
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`(US2005/0222961), Davydov
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`(US2006/0171383),
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`and
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`Sarcanin
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`(US2003/0145205). Id., pp.66-73, 101-109.
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`The examiner also rejected the claims for indefiniteness because they recited
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`the tradename SMARTMX. Id., p.66. Applicants refused to remove the tradename
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`and admitted that SmartMX had been so “widely used in the industry through the
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`years,” a POSITA would have been confused about “what the inherent technology
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`is being meant [sic].” Id., p.89.
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`After a first rejection based on Staib and Davydov (id., pp.63-75), Applicants
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`amended the independent claims to require various limitations that did not result in
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`allowance of the patent. Id., pp.82-93. However, the second rejection (Id., pp.99-
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`113) indicated that dependent claims 9 and 19—which recited the same two-level
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 22 of 72
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`security claimed in the ’218 patent—were allowable; Applicants incorporated those
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`limitations into the independent claims. Id., pp.118-125. The two-channel security
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`requirements of original claims 9 and 19 provided the reasons for allowance. Id.,
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`p.110.
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`3.
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`U.S. Patent Application No. 13/903,420 (the ’787 patent)
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`The ’787 patent’s originally-filed claims were directed to portable devices
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`having an e-purse applet to provide e-purse functionality. Ex-1024, p.1. They were
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`rejected over combinations
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`involving Staib
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`(US2005/0222961), Moulart
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`(US6,031,912) and Sarcanin (US2003/0145205). Ex-1024, pp. 50-60. In response,
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`Applicants extensively amended the claims and argued that the prior art was
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`distinguished due to the emulator and two-level security of the claims. Id., pp.65-75.
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`Applicants argued:
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`• “[T]he [claimed] emulator … emulates a data structure for storing
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`security values and updated transaction logs. Therefore, it has to be
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`personalized together with the e-purse applet via a personalization
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`process.”
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`• The prior art did not teach/suggest “personalization of the emulator and
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`the e-purse via ‘a personalization process built on a first security
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`channel so that the emulator is set to store a set of keys for subsequent
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`data access authentication and the e-purse applet is configured to
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`9
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 23 of 72
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`conduct a transaction with a network server over a second security
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`channel.’”
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`Id., p.74. The application was subsequently allowed. Id., pp.81-90.
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`VII. PETITIONER’S GROUNDS ARE NEW AND DISCRETIONARY
`DENIAL IS UNWARRANTED UNDER FINTIV
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`As noted above, Applicants’ prosecution arguments focused on Staib and
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`Moulart allegedly failing to disclose two-level security and personalization of an
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`epurse applet and emulator that emulates a data structure for storing security values
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`and updated transaction logs. Supra §VI.C.3. These features—as well as the other
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`features of the Challenged Claims—are obvious over Dua, GlobalPlatform, and
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`Philips.4 None of these references were cited during prosecution of the ’787, ’218 or
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`’855 patents.
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`Fintiv
`
`A.
`Petitioner submits the Fintiv factors weigh against exercising authority to
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`deny. Specifically, Petitioner is seeking to join an already instituted proceeding,
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`which will conclude with a final written decision by December 15, 2022. The District
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`Court proceedings are at the earliest stage: no scheduling conference has occurred,
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`and Apple has not yet answered the amended complaint, which was just filed on
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`4 Although GlobalPlatform and MIFARE® emulation are discussed in the ’787
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`patent specification, neither were not cited during prosecution.
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`December 2, 2021. Based on the expected schedule that will govern the district court
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`litigation, the final written decision will issue long before any district court trial.
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`VIII. PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`A POSITA in the field of the ’787 patent at the time of the effective filing date
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`would have been knowledgeable regarding mobile payment methods and systems
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`pertinent to the ’787 patent. Such a POSITA would have had at least a bachelor’s
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`degrees in computer science, computer engineering, electrical engineering or an
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`equivalent, and one year of professional experience relating to mobile payment
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`technology, which would have exposed them to concepts like GlobalPlatform and
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`SmartMX. Lack of professional experience could be remedied by additional
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`education, and vice versa. Ex-1003, ¶¶27-28.
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`IX. CLAIM CONSTRUCTION
`Under Phillips v. AWH Corp., 415 F.3d 1303, 1312-16 (Fed. Cir. 2005) (en
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`banc) claim terms are typically given their ordinary and customary meanings, as
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`would have been understood by a POSITA, at the time of the invention, having taken
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`into consideration the language of the claims, the specification, and the prosecution
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`Case 6:22-cv-00697-ADA Document 22-2 Filed 06/08/23 Page 25 of 72
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`history of record.5 Other than the defined terms, below, Petitioner applies the plain
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`and ordinary meaning to the claims as no specific constructions are required.
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`Applicants defined the terms “emulator” and “midlet” in the specification of
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`the ’787 patent so those definitions are controlling. Ex-1001, 4:47-50, 5:20-22;
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`Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362, 1365-66 (Fed.
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`Cir. 2012). Petitioner applies those definitions.
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`X. OVERVIEW OF PRIOR ART
`A. Dua
`
`Dua was filed January 21, 2005 and published on July 27, 2006 making it
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`§§102(a), (e) prior art.6 Ex-1004, cover. Dua is analogous art to the ’787 patent
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`because it discloses e-purses in a smart card on a mobile device to pay for things like
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`subway fare. Id., ¶¶[0288]-[0289], [0293]-[0295], [0368].
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`Dua discloses a “system and methodology for conducting financial and other
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`transactions using a wireless device.” Id., Abstract. Dua’s wireless device includes
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`a “wallet application” that receives, stores, manages, and transmits multiple
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`payment, identification, and other confidential information electronically. Id.,
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`¶[0041]. Card issuers like banks or merchants can develop custom software
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`5 The claims may be invalid for reasons not raised herein, including reasons based
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`on statutory grounds unavailable in an IPR.
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`6 All references to §102 are to pre-AIA §102.
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`“extensions” installed into the wallet application. Id., ¶¶[0289], [0295]. Dua’s
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`extensions may be a stored-value card extension (“SVCE”), e.g., for paying subway
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`fare, which “needs to be programmed” to support “over-the-air reload,” i.e., wireless
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`funding of the e-purse. Id., ¶¶[0290], [0293]; Ex-1003, ¶¶103-107.
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`B. GlobalPlatform
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`GlobalPlatform is a printed publication under §102(b) because it was printed,
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`distributed, and publicly accessible by April 2003. Ex-1003, ¶¶58-59. Mr. Smith,
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`former Board Member of GlobalPlatform, knows that Exhibit-1006 was released in
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`March 2003 and was publicly available by April 2003 for free download on
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`GlobalPlatform’s web