Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 1 of 11
`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 1 of 11
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`EXHIBIT A
`EXHIBIT A
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 2 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`§
`
`§
`Case No. 6:22-cv-00697-ADA
`§
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`JURY TRIAL DEMANDED
`§
`§
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`§
`§
`§
`§
`§
`§
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`Plaintiff,
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`Defendant.
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`
`RFCYBER CORP.,
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`
`
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`v.
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`VISA U.S.A. INC.,
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`
`
`
`PLAINTIFF’S DISCLOSURES OF ASSERTED CLAIMS
`AND INFRINGEMENT CONTENTIONS
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`Plaintiff RFCyber Corp. (“RFCyber” or “Plaintiff”) hereby makes the following
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`infringement disclosures under the Court’s Standing Order Governing Proceedings in Patent Cases
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`with respect to United States Patent Nos. 8,118,218 (“’218 patent”), 8,448,855 (“’855 patent”),
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`9,189,787 (“’787” patent”), 9,240,009 (“’009” patent”) (collectively, “RFCyber Patents” or
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`“Asserted Patents”). RFCyber’s investigation is ongoing, and discovery is in its preliminary stages.
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`Accordingly, these disclosures are based on information available to RFCyber at this time.
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`RFCyber reserves the right to supplement this disclosure after further discovery from Visa U.S.A
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`Inc. (“Visa” or “Defendant”) and non-parties, particularly documents and other discovery
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`regarding Defendant’s accused products. RFCyber also reserves the right to assert additional
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`claims of the RFCyber Patents, accuse different products, or find alternative literal and/or
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`equivalent infringing elements in Defendant’s products.
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`

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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 3 of 11
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`I.
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`DISCLOSURE OF ASSERTED CLAIMS AND INFRINGEMENT
`CONTENTIONS
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`A.
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`ASSERTED CLAIMS
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`1.
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`Accused Products
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`Defendant Visa has infringed and/or continue to infringe one or more of the following
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`claims of the RFCyber Patents in connection with the Accused Products set forth below:
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`•
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`•
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`•
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`•
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`Claims 1-18 of the ’218 patent;
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`Claims 1-17 of the ’855 patent;
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`Claims 1-8 and 10-19 of the ’787 patent; and
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`Claims 1-17 of the ’009 patent.
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`B.
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`ACCUSED INSTRUMENTALITIES
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`1.
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`Accused Products
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`(a)
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`’218, ’855, ’787, and ’009 Patents
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`RFCyber is currently aware that all Visa products running or comprising any version or
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`variant of Visa applets and token infrastructure infringe at least one claim of the ’218, ’855, ’787,
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`and ’009 patents.
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`For example, the Accused Products include at least all Visa applets and token infrastructure
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`(e.g., TSP/TSM servers and token vaults), and all devices and mobile wallets which comprise
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`and/or utilize those applets, and all supporting software, computer systems, and/or servers
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`providing functionality related thereto. For example, the Accused Products include, but are not
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`limited to: Visa applet software such as the Visa Mobile Payment Applet (VMPA), Visa Smart
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`Debit Card applet (VSDC), Visa trustlets, trusted applications, PayWave applets/applications, and
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`supporting infrastructures; Visa wallet applications, such as Visa Ready wallets, payWave wallets
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`, Visa+, and supporting infrastructures; Visa payment servers and tokenization infrastructure, such
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`2
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 4 of 11
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`as Visa Token Service, VisaNet, Visa Cloud Based Payments, Token Management Service (TMS),
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`Token ID, PayWave servers, Visa token vaults, and supporting token service provider
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`infrastructure. The mobile devices and mobile wallet applications (e.g., Apple, Garmin, and Fitbit
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`devices and mobile wallet applications) which comprise and utilize the aforementioned Visa applet
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`software, payment servers, and tokenization infrastructure, including but not limited to:
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`• All Apple devices running (or capable of running) Apple Wallet, including but not limited
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`to: and all versions and variants of iPhone, iPad, Apple Watch, Macs with Touch ID or
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`Apple silicon, made, sold, offered for sale, used, or imported in the United States since the
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`launch of Apple Pay in October 2014, including at least all versions and variants of iPhone
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`6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE (1st generation), iPhone 7, iPhone
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`7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone XR, iPhone XS, iPhone XS Max, iPhone
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`11, iPhone 11 Pro, iPhone 11 Pro Max, iPhone SE (2nd generation), iPhone 12 mini, iPhone
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`12, iPhone 12 Pro, iPhone 12 Pro Max, iPhone 13 mini, iPhone 13, iPhone 13 Pro, iPhone
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`13 Pro Max, Apple Watch (1st generation), Apple Watch Series 1, Apple Watch Series 2,
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`Apple Watch Series 3, Apple Watch Series 4, Apple Watch Series 5, Apple Watch SE,
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`Apple Watch Series 6, Apple Watch Series 7, iPad (4th generation), iPad (5th generation),
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`iPad (6th generation), iPad (7th generation), iPad (8th generation), iPad (9th generation),
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`iPad mini 2, iPad mini 3, iPad mini 4, iPad mini (5th generation), iPad mini (6th
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`generation), iPad Air 2, iPad Air (3rd generation), iPad Air (4th generation), iPad Pro (12.9-
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`inch), iPad Pro (9.7-inch), iPad Pro (12.9-inch) (2nd generation), iPad Pro (10.5-inch), iPad
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`Pro (11-inch), iPad Pro (12.9-inch) (3rd generation), iPad Pro (11-inch) (2nd generation),
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`iPad Pro (12.9-inch) (4th generation), MacBook Air (Retina, 13-inch, 2018), MacBook Air
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`(Retina, 13-inch, 2019), MacBook Air (Retina, 13-inch, 2020), MacBook Air (M1, 2020),
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`3
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`MacBook Pro (13-inch, 2016, Four Thunderbolt 3 ports), MacBook Pro (15-inch, 2016),
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`MacBook Pro (13-inch, 2017, Four Thunderbolt 3 ports), MacBook Pro (15-inch, 2017),
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`MacBook Pro (13-inch, 2018, Four Thunderbolt 3 ports), MacBook Pro (15-inch, 2018),
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`MacBook Pro (13-inch, 2019, Four Thunderbolt 3 ports), MacBook Pro (15-inch, 2019),
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`MacBook Pro (16-inch, 2019), MacBook Pro (13-inch, 2020, Four Thunderbolt 3 ports),
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`MacBook Pro (13-inch, M1, 2020), Mac mini (M1, 2020), iMac (24-inch, M1, 2021),
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`MacBook Pro (16-inch, 2021), and MacBook Pro (14-inch, 2021).
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`• All Garmin devices running (or capable of running) Garmin Pay, including but not limited
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`to all versions and variants of: all Fenix watches released since the Fenix 5 (e.g., the Fenix
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`5, 5+, 5S, 5X, 6, 6S, 6X, 7, 7S, and 7X), all Venu watches (e.g., Venu, Venu Sq, Sq Music,
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`Venu 2, Venu 2+, Venu Sq 2, Sq 2 Music, 2S, ), all Vivoactive watches released since the
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`Vivoactive 3 (e.g., 3, 3 Music, and 4(S)), all Forerunner watches released since the
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`Forerunner 645 (e.g., 645, 645 Music, 945, 245, 245 Music, 45, 45S, 745, 55, 945 LT, 255,
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`and 955), all D2 watches (e.g., Mach 1, Air X10), all Legacy watches, all Approach
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`watches (e.g., S62, S62 Bundle), all Descent watches released since the Mk2 (e.g., the
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`Mk2, Mk2S, Mk2i, GI, and GI Solar), all Quatix watches released since the Quatix 6 (e.g.,
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`6, 6 Titanium, 6 Solar, , 7 Standard, 7 Sapphire, 7 Solar), all Tactix watches (e.g., Delta, 7
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`Standard, 7 Pro, 7 Ballistics), all Enduro watches (e.g., Enduro, Enduro 2), all Marq
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`watches (e.g., Captain, Captain American Magic Edition, Gen 2, Athlete Gen 2, Golfer
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`Gen 2, Captain Gen 2, Aviator Gen 2), Epix Gen2, all Instinct Watches (e.g., Crossover
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`Standard, Crossover Solar, Crossover Solar Tactical, 2X Solar, 2X Solar Tactical, 2 Solar,
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`2S Solar, 2 Solar Tactical, 2 Solar Surf, 2S Solar Surf, 2 dezl), and all Vivomove watches
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`(e.g., Trend, Style).
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`• All FitBit devices running (or capable of running) FitBit Pay, including but not limited to
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`all versions and variants of: Sense, Sense 2, Versa, Versa 2, Versa 3, Versa 4, Versa Special
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`Edition, Ionic, Charge 3 Special Edition, Charge 4, and Charge 5.
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`• All devices sold, offered for sale, imported, made, used, or otherwise distributed in or
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`through the United States running (or capable of running) any Visa mobile wallet capable
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`of contactless and/or online payments currently under development and/or released
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`subsequent to these contentions.
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`2.
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`Claim Charts
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`Claim charts identifying a location of every element of every asserted claim of the RFCyber
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`Patents within the Accused Products are attached hereto as Appendices A-D. RFCyber believes
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`that the Accused Products cited in the claim charts are representative of all versions of the Accused
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`Products. The Accused Products includes the hardware with associated software and the charts
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`also reference exemplary code to the extent available.
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`RFCyber reserves the right to amend these claim charts, as well as other information
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`contained in this document and the Appendices attached hereto, to incorporate new information
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`learned during the course of discovery including, but not limited to, information that is not publicly
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`available or readily discernible without discovery. RFCyber further reserves the right to amend
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`these claim charts, as well as other information contained in this document and the Appendices
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`attached hereto, in accordance with the Court’s Rules, Standing Orders, and Procedures.
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`C.
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`LITERAL INFRINGEMENT AND DOCTRINE OF
`EQUIVALENTS
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`RFCyber asserts that, under the proper construction of the asserted claims and their claim
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`terms, the limitations of the asserted claims of the RFCyber Patents are literally present in the
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`Accused Products as set forth in the claim charts attached hereto as Appendices A–D. RFCyber
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`contends that any and all elements found not to be literally infringed are infringed under the
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`doctrine of equivalents because the differences between the claimed inventions and the Accused
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`Products, if any, are insubstantial. RFCyber contends that Defendant directly infringes the asserted
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`claims by making, using, offering for sale, selling, and importing into the United States the
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`Accused Products. RFCyber also contends that Defendant indirectly infringes by contributing to
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`and/or inducing others (e.g., Defendant’s service providers or partners, suppliers, Defendant’s
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`customers, or its customers’ customers) to directly infringe those claims by making or using the
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`Accused Products. In addition, RFCyber contends that Defendant directly infringes to the extent
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`that activities of third parties may be legally attributable to Defendant. RFCyber contends that
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`Defendant induces infringement of the RFCyber Patents by others (e.g., end-users of the Accused
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`Products and Defendant’s customers) by inducing others to make or use the Accused Products
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`with the knowledge that this making or using directly infringes the RFCyber Patents or, in the
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`alternative, with the belief that there was a high probability that others infringe the RFCyber
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`Patents, but while remaining willfully blind to the infringement. RFCyber also contends that
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`Defendant contributorily infringes with the knowledge that the Accused Products, or the use
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`thereof, infringes the Asserted Patents. Defendant knowingly and intentionally contributed to the
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`direct infringement of the Asserted Patents by others, by supplying Accused Products that embody
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`a material part of the claimed invention of the Asserted Patents that are known by Defendant to be
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`specially made or adapted for use in an infringing manner and are not staple articles with
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`substantial non-infringing uses. Pursuant to the Court’s Standing Order Governing Patent Cases,
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`RFCyber reserves the right to amend its Infringement Contentions as to literal infringement or
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`infringement under the doctrine of equivalents in light of the Court’s claim construction.
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 8 of 11
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`D.
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`PRIORITY DATES
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`Each of the asserted claims of the ’218 patent has a priority date (i.e., earliest invention
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`date) at least as early as July 1, 2004, with diligent reduction to practice at least through its
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`September 24, 2006 filing date. Each claim further is entitled to the priority date of its earliest
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`application, U.S. Patent Application No. 11/534,653, with a filing date of September 24, 2006.
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`Each of the asserted claims of the ’855 patent has a priority date (i.e., earliest invention
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`date) at least as early as July 1, 2004, with diligent reduction to practice at least through its
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`September 24, 2006 filing date. Each claim further is entitled to the priority date of its earliest
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`application, U.S. Patent Application No. 11/534,653, with a filing date of September 24, 2006.
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`Each of the asserted claims of the ’787 patent has a priority date (i.e., earliest invention
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`date) at least early as July 1, 2004, with diligent reduction to practice at least through its September
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`24, 2006 filing date. Each claim further is entitled to the priority date of its earliest application,
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`U.S. Patent Application No. 11/534,653, with a filing date of September 24, 2006.
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`Each of the asserted claims of the ’009 patent has a priority date (i.e., earliest invention
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`date) at least as early as July 1, 2004, with diligent reduction to practice at least through its
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`September 24, 2006 filing date. Each claim further is entitled to the priority date of its earliest
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`application, U.S. Patent Application No. 11/534,653, with a filing date of September 24, 2006.
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`RFCyber makes this disclosure without prejudice to its right to prove an earlier date of
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`invention.
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`E.
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`RFCYBER’S OWN PRODUCTS
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`RFCyber identifies its own products, devices, processes, methods, acts or other
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`instrumentalities as practicing the claimed inventions as follows:
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 9 of 11
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`• Claims 1-18 of the ’218 patent;
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`RFCyber E-Payment and Trusted Security
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`• Claims 1-17 of the ’855 patent;
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`Manager Platform
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`• Claims 1-8 and 10-19 of the ’787
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`patent; and
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`• Claims 1-17 of the ’009 patent.
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`RFCyber reserves the right to amend this statement to identify covered products as
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`discovery progresses, and in view of the Court’s claim constructions.
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`II.
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`PRODUCTION OF DOCUMENTS PURSUANT TO PARAGRAPH 2 OF
`THE STANDING ORDER GOVERNING PATENT CASES
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`RFCyber is producing or making available for inspection documents that are in RFCyber’s
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`possession, custody, or control, as set forth in the Standing Order Governing Proceedings in Patent
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`Cases. RFCyber will make source code for the E-Payment and Trusted Security Manager Platform
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`available for inspection subject to the forthcoming Protective Order.
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 10 of 11
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`Dated: May 8, 2023
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`
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`Respectfully submitted,
`
` /s/ Richard Cowell
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`Email: raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
`
`OF COUNSEL:
`
`Alfred R. Fabricant (Pro Hac Vice to be filed)
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos (Pro Hac Vice to be filed)
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (Pro Hac Vice to be filed)
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Richard M. Cowell (admitted Pro Hac Vice)
`NY Bar No. 4617759
`Email: rcowell@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`ATTORNEYS FOR PLAINTIFF
`RFCYBER CORP.
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`Case 6:22-cv-00697-ADA Document 28-2 Filed 06/22/23 Page 11 of 11
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`CERTIFICATE OF SEVICE
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`I hereby certify that on May 8, 2023, a true and correct copy of the above and foregoing
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`document has been served by email on all counsel of record.
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`/s/ Richard Cowell
` Richard Cowell
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