Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 1 of 27
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`
`RFCyber CORP.,
`
`
`
`
`v.
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`
`VISA U.S.A. INC.,
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`§
`Case No. 6:22-cv-00697-ADA
`§
`
`§
`JURY TRIAL DEMANDED
`§
`§
`
`§
`§
`§
`§
`§
`
`
`Defendant.
`
`PLAINTIFF RFCYBER CORP.’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`
`
`
` 
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 2 of 27
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION .............................................................................................................. 1 
`
`THE PATENTS-IN-SUIT .................................................................................................. 2 
`
`A. 
`
`The ’218, ’855, and ’787 Patents ............................................................................ 2 
`
`LEGAL STANDARD ......................................................................................................... 3 
`
`DISPUTED TERMS ........................................................................................................... 4 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`“fund” / “funded” / “funding” / “fund stored in an emulator” ................................ 4 
`
`Visa’s Method/Apparatus Indefiniteness Positions ................................................ 7 
`
`1. 
`
`2. 
`
`Claims 11-18 of the ’218 Patent ................................................................. 7 
`
`Claims 1-8, 10 of the ’787 Patent ............................................................. 13 
`
`“e-purse SAM originally used to issue the e-purse / existing security
`authentication module (SAM) originally used to issue the e-purse” .................... 14 
`
`“an appropriate transformed password based on the keys in the
`emulator”............................................................................................................... 15 
`
`“contactless interface that facilitates communication between the e-
`purse applet in the smart card and the payment server over a wired
`network” ................................................................................................................ 16 
`
`“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” ............................................................................................... 20 
`
`CONCLUSION ................................................................................................................. 21
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`
`
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
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`V. 
`
`
`
`i
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 3 of 27
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Aug. Tech. Corp. v. Camtek, Ltd.,
`655 F.3d 1278 (Fed. Cir. 2011)..................................................................................................3
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)..............................................................................................3, 5
`
`Huawei Techs. Co. Ltd. v. Verizon Commc’ns, Inc.,
`No. 2:20-CV-00030-JRG, 2021 WL 150442 (E.D. Tex. Jan. 15, 2021) ...................................9
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)........................................................................................ passim
`
`KIPB LLC v. Samsung Elecs. Co. Ltd.,
`No. 2:19-CV-00056-JRG-RSP, 2020 WL 1495231 (E.D. Tex. Mar. 27, 2020) .....................11
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)......................................................................................................3
`
`Microprocessor Enhancement Corp. v. Texas Instruments Inc.,
`520 F.3d 1367 (Fed. Cir. 2008)..........................................................................................10, 11
`
`Motion Games, LLC v. Nintendo Co., Ltd.,
`No. 6:12-CV-878-JDL, 2015 WL 11170167 (E.D. Tex. Jan. 16, 2015) ...................................4
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................................17
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................................3, 21
`
`RFCyber Corp. v. Google, LLC,
`No. 2:20-cv-00274-JRG, Dkt. 147 (E.D. Tex., Nov. 17, 2021).............................................5, 6
`
`RightQuestion, LLC v. Samsung Elecs. Co., Ltd.,
`No. 2:21-CV-00238-JRG, 2022 WL 1154611 (E.D. Tex. Apr. 18, 2022) ........................11, 21
`
`Rothschild Connected Devices Innovations, LLC v. Coca-Cola Co.,
`813 F. Appx. 557 (Fed. Cir. 2020) .............................................................................................9
`
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)................................................................................................19
`
`ii
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 4 of 27
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`Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)..................................................................................................3
`
`U.S. Well Servs., Inc. v. Halliburton Co.,
`No. 6:21-CV-00367-ADA, 2022 WL 819548 (W.D. Tex. Jan. 17, 2022) ....................4, 12, 13
`
`UltimatePointer, LLC v. Nintendo Co., Ltd.,
`816 F.3d 816 (Fed. Cir. 2016)........................................................................................4, 10, 13
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................4
`
`
`
`iii
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 5 of 27
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`Pursuant to the Court’s Scheduling Order (Dkt. 27), Plaintiff RFCyber Corp. (“RFCyber”)
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`hereby submits its Responsive Claim Construction Brief in response to Visa’s Opening Claim
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`Construction Brief (Dkt. 41, “Visa Br.”). The asserted patents are U.S. Patent Nos. 8,118,218 (Dkt.
`
`1-1, hereinafter the “’218 Patent”), 8,448,855 (Dkt. 1-2, hereinafter the “’855 Patent”), and
`
`9,189,787 (Dkt. 1-3, hereinafter the “’787 Patent”), (together, the “Asserted Patents”).
`
`I.
`
`INTRODUCTION
`
`RFCyber is a pioneer in mobile and electronic payment technology. The Asserted Patents
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`embody RFCyber’s technology and are directed to various aspects of a mobile payment system.
`
`Visa proposes a construction for only the group of terms “fund” / “funded” / “funding” /
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`“fund stored in an emulator.” Visa’s construction seeks to limit the ’855 and ’787 Patents to a
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`disclosed embodiment requiring a “balance” in order to manufacture a non-infringement defense.
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`But the intrinsic evidence demonstrates that the terms are not so narrow and cover things other
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`than a mere balance.
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`Visa further asks the Court to find every asserted system claim indefinite for allegedly
`
`claiming both an apparatus and method of using that apparatus. But the clauses that Visa complains
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`about clearly set out the functionality and capability of the claimed apparatuses, and do not impose
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`method steps or require user action.
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`Finally, Visa misunderstands the plain language of claims 1 and 11 of the ’218 Patent to
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`argue that a contactless interface that facilitates communications over a wired network is
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`indefinite. But as the specification of the ’218 Patent makes clear, the term merely means that the
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`claimed device uses a contactless interface, such as RFID, to communicate with a server connected
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`to the other end of the RFID connection via a wired network.
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`Accordingly, the Court should reject Visa’s constructions and further find the claims not
`
`indefinite.
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 6 of 27
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`II.
`
`THE PATENTS-IN-SUIT
`A.
`
`The ’218, ’855, and ’787 Patents1
`
`The ’218, ’855, and ’787 Patents share a common specification and are directed to various
`
`aspects of a mobile payment system focusing, in particular, on inventions for “portable devices,
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`functioning as an electronic purse.” (’218 Patent, 1:34-38.) In exemplary embodiments, the
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`invention provides a portable device, such as a cell phone with a smart card module, configured to
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`conduct e-commerce transactions over contactless interfaces and m-commerce transactions over
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`wireless interfaces. (Id. 1:42-2:46.) Figure 2 of the ’218 Patent shows an exemplary embodiment
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`of the system:
`
`
`1 On August 31, 2023, the parties stipulated to stay their dispute over the ’009 Patent pending a
`decision on RFCyber’s appeal of the PTAB’s final written decision. Dkt. 42.
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`
`
`2
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 7 of 27
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`(’218 Patent, Fig. 2.) The portable device includes an emulator that pretends to be another device
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`or program, such as a payment card, that other components expect to interact with. (Id., 2:9-41,
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`4:35-39.) In exemplary embodiments, a purse manager midlet acts as an agent to conduct
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`transactions with one or more e-purse applets. (Id. 2:9-41, 5:5-16.) To use the device as a payment
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`card, it must be personalized with card details. (E.g., id., 4:4-22, 5:50-6:54.) The electronic purse
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`may be personalized over secure channels, such as secure channels between an applet and a
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`security authentication module. (Id., 5:50-6:65.) The secure channels, in turn, may be established
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`by creating a key or keys used to protect subsequent operations. (Id. 1:65-2:1, 2:9-24, 4:35-46.)
`
`III.
`
`LEGAL STANDARD
`
`Claim construction is a question of law to be decided by the Court. Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). In construing claim terms, courts begin with
`
`an examination of the claim language itself. Aug. Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284
`
`(Fed. Cir. 2011). The terms used in the claims are generally given their “ordinary and customary
`
`meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations
`
`omitted). This is the meaning as understood by a person of ordinary skill in the art at the time of
`
`the invention. Id. at 1313. “There are only two exceptions” to the general rule that a claim term is
`
`given its plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution.” Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012)); accord Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`
`Cir. 2014) (“We depart from the plain and ordinary meaning of claim terms based on the
`
`specification in only two instances: lexicography and disavowal.”). Accordingly, “although the
`
`specification often describes very specific embodiments of the invention, [the Federal Circuit]
`
`ha[s] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at
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`3
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 8 of 27
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`1323. That being said, a construction that excludes a preferred embodiment is “rarely, if ever,
`
`correct.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`
`The Federal Circuit has held that certain claims may be invalid as indefinite if they cover
`
`both an apparatus and a method of use of that apparatus. IPXL Holdings, L.L.C. v. Amazon.com,
`
`Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). In such a case it may be unclear if infringement
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`occurs “when one creates a system that allows the user to [perform the step] ... or ... when the user
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`actually [performs the step].” Id. at 1384. “The Federal Circuit’s ruling in IPXL is narrow and does
`
`not apply to claims that merely recite a structure and its capability.” U.S. Well Servs., Inc. v.
`
`Halliburton Co., No. 6:21-CV-00367-ADA, 2022 WL 819548, at *11 (W.D. Tex. Jan. 17, 2022)
`
`(internal quotations omitted). Indeed, “if an apparatus claim ‘is clearly limited to a[n apparatus]
`
`possessing the recited structure and capable of performing the recited functions,’ then the claim is
`
`not invalid as indefinite.” UltimatePointer, LLC v. Nintendo Co., Ltd., 816 F.3d 816, 826 (Fed.
`
`Cir. 2016) (quoting Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367,
`
`1375 (Fed. Cir. 2008)). Thus, “Whether claim language is indefinite for improperly mixing claim
`
`forms depends on whether the language used is directed at user actions or system
`
`capabilities.” Motion Games, LLC v. Nintendo Co., Ltd., No. 6:12-CV-878-JDL, 2015 WL
`
`11170167, at *4 (E.D. Tex. Jan. 16, 2015). Indefiniteness must be shown by clear and convincing
`
`evidence. U.S. Well. Servs., 2022 WL 819548, at *3.
`
`
`
`IV. DISPUTED TERMS
`A.
`
`“fund” / “funded” / “funding” / “fund stored in an emulator”
`
`Term and Claims
`“fund” / “fund stored in the
`emulator” ’855 Patent, Claim
`9, ’787 Patent, Claims 1 and
`
`RFCyber’s Construction
`Plain and ordinary meaning
`except for “emulator”
`
`Visa’s Construction
`“money balance” / “money
`balance
`stored
`in
`the
`emulator”
`
`4
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 9 of 27
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`11
`“fund” / “funded” / “funding” Plain and ordinary meaning
`
`“add / added / adding money
`balance to”
`The “fund” terms are readily understandable to a lay juror without construction. Visa’s
`
`attempt to rewrite the claims at issue to more narrowly recite a “money balance” is a naked attempt
`
`to create a non-infringement position. Visa apparently seeks to limit the claims to a specific type
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`of “stored value” implementation where funds are represented on the device as a number. But the
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`claims are not so limited. The term “balance” appears only once in the specification (identifying
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`the ability to view a balance as an exemplary e-purse function) and cannot be read to limit the term
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`“fund” in any way. There is no basis to import limitations from the specification, nor to arbitrarily
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`limit the claims based on the slew of extrinsic evidence which Visa cites. Brief at 12. The Court
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`should reject Visa’s position.
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`First, Visa fails to identify any lexicography or prosecution history to support its position
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`that a fund is a “money balance.” Visa’s attempt to characterize its non-infringement position as a
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`disagreement over the plain and ordinary meaning of the term is not a basis to rewrite the claims
`
`more narrowly. Hill-Rom Servs., 755 F.3d at 1371 (“We depart from the plain and ordinary
`
`meaning of claim terms based on the specification in only two instances: lexicography and
`
`disavowal.”) Notably, the disclosed e-purse embodiment on which Visa relies in an attempt to
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`limit a fund to a “money balance” are explicitly non-limiting. ’218 Patent, 4:57-59, 5:5-22 (“FIG.
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`2 [] shows an exemplary architecture diagram 200 according to one embodiment of the present
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`invention … In the cellphone 202, a purse manager midlet 204 is provided … One of the functions
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`of this software component is … viewing a purse balance.”) In analyzing that disclosure in the
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`context of the e-purse term, Eastern District of Texas found that it merely “describe[s] the e-purse
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`used in particular embodiments” rather than providing any definition. Ex. A at 16, (RFCyber Corp.
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`v. Google LLC, No. 2:20-cv-00274-JRG, Dkt. 147 at 16 (E.D. Tex., Nov. 17, 2021)) . Indeed,
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`5
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 10 of 27
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`Visa’s attempt to require a “money balance” in an electronic device is illogical – even Visa
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`acknowledges that all electronically stored funds are at some level a representation of a fund.
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`Visa’s invented requirement that the representation must be stored as a number (which it
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`characterizes as a “money balance”) instead of tokens, consumable keys, or other object which
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`allow a user to make purchases, is based on a nonsensical distinction. None of “funds” recited in
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`the claims logically require a “money balance.” For example, in the context of claims 1 and 11 of
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`the ’787 Patent, the disclosed e-purse is just as capable of conducting a transaction against a “fund
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`stored in the emulator” in the form of tokens as in the form of a numerical balance. Visa does not,
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`and cannot, identify anything to the contrary.
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`Second, Visa’s construction would effectively exclude embodiments disclosed in the
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`specification. For example, the specification specifically discloses a “purchase key” which may be
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`“personalized into the purse.” See e.g. ’855 Patent at 5:62-67. The specification further describes
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`that the process of “financing an e-purse according to one embodiment” is accomplished through
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`a request/response of “APDU commands” with a payment server. Id., 7:18-26, 7:53-63. APDU
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`commands are an application protocol data unit for communication with a smart card and include
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`message data fields with up to 255 bytes that support all forms of smart card purchases (with any
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`form of “fund”). See ’855 Patent, 5:30-37. Funding an e-purse through the disclosed APDU
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`commands supports far more types of “fund” (such as tokens and keys) than the “money balance”
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`to which Visa seeks to limit the claims.
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`Third, the claims of the ’855 Patent which recite “funding an e-purse” do not require a fund
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`to be stored on the mobile device at all. Visa fails to address that the term “funding” only appears
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`in the preamble of claims 1 and 9. There is no basis to treat the preamble as limiting, and the
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`Eastern District of Texas has expressly held that those preambles are non-limiting. Ex. A at 44-45
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`6
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 11 of 27
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`(“Here, the preamble is not limiting because unlike Proveris, the preamble recital of “an e-purse”
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`provides no additional detail regarding the e-purse itself, and also because “for funding” is a
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`statement of purpose or intended use.”) “Funding” as a statement of purpose or intended use, may
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`equally be accomplished by sending a fund to the e-purse, or by authorizing funds to complete a
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`transaction at the e-purse’s request. This is consistent with the actual limitations of claims 1 and
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`9, which recite a “fund transfer request” between a “server administrating the e-purse” and a
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`“financial institution server” based on a request by the e-purse applet.
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`None of Visa’s arguments show that this term requires construction, let alone that Visa’s
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`construction is somehow correct. Visa’s argument that the intrinsic record somehow distinguishes
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`between “funding” and “purchasing” boils down to an irrelevant assertion that the patentee used
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`the term “fund” instead of “purchase,” and relies heavily on the non-limiting preambles of claims
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`1 and 9 of the ’855 Patent. Contrary to Visa’s arguments, the specification uses “financing” and
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`“funding” beyond the scope of a “top-up” transaction, expressly stating that “[a]although the
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`process 400 is described as funding the e-purse[, t]hose skilled in the art can appreciate that the …
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`purchasing over a network with the e-purse is substantially similar to the process 400.” ’855 Patent,
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`8:15-18. Visa’s argument that a “fund” is synonymous with a “top-up” is similarly an improper
`
`attempt to limit the claims to exemplary specification embodiments without any legitimate basis.
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`The “fund” terms should therefore be accorded their plain and ordinary meaning.
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`B.
`
`Visa’s Method/Apparatus Indefiniteness Positions
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`
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`Visa argues that every asserted system claim is indefinite for mixing method and apparatus
`
`terms. (Visa Br. at 13-16). Visa is wrong. Ex. B, hereinafter “Jones Decl.,” ¶¶ 42-73.
`
`1.
`
`Claims 11-18 of the ’218 Patent
`
`
`
`According to Visa, “A person of ordinary skill in the art at the time of the invention would
`
`not know whether infringement occurs when the portable device is created (and perhaps capable
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`7
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 12 of 27
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`of downloading an e-purse applet from the payment server), or if infringement occurs only if, or
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`after, the e-purse applet is actually downloaded.” Visa Br. at 14. This is not a question of
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`indefiniteness, but rather of the scope of the claim. In any event, the plain language of claim 11
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`answers Visa’s question. Jones, Decl., ¶¶ 43-54.
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`
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`The claim recites a system including a portable device. The elements of that portable device
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`are configured to operate with an e-purse applet in a smart card, wherein that e-purse applet is
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`downloaded from the payment server while the smart card is in communication with the payment
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`server. ’218 Patent, cl. 11. In other words, the e-purse applet is not an element of the claimed
`
`portable device; the device must be configured to operate with the applet. Jones Decl., ¶¶ 51-53.
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`And the “wherein” clause further defines the applet.
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`
`
`The claim language makes this relationship clear:
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`11. A system for providing an e-purse, the system comprising:
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`a portable device including or communicating with a smart card pre-loaded with an
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`emulator configured to execute a request from and provide a response an e-purse
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`applet is configured to expect, the portable device including a memory space loaded
`
`with a midlet that is configured to facilitate wireless communication between the
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`e-purse applet in the smart card and a payment server over a wireless network, the
`
`portable device further
`
`including a contactless
`
`interface
`
`that facilitates
`
`communication between the e-purse applet in the smart card and the payment server
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`over a wired network, wherein the e-purse applet is downloaded from the payment
`
`server when the smart card is in communication with the payment server, and
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`operations of personalizing the e-purse applet comprises…
`
`8
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 13 of 27
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`
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`Reading the claim shows that the claimed portable device contains three elements: i) a
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`smart card preloaded with an emulator; ii) a memory space that is loaded with a midlet; and iii) a
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`contactless interface. The emulator, midlet, and contactless interface are further configured to
`
`operate with an e-purse applet in the smart card. That e-purse applet, which is not itself a claimed
`
`element, must be downloaded from the payment server when the smart card is in communication
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`with the payment server. In other words, the wherein clause of which Visa complains sets forth
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`the type of e-purse applet (one that is downloaded from the payment server while the smart card
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`is in communication with the payment server) with which the emulator, midlet, and contactless
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`interface must be configured to operate. A device that is not configured to operate with an e-purse
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`applet “downloaded from the payment server while the smart card is in communication with the
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`payment server” would not infringe. Jones Decl., ¶¶ 51-54.
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`
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`Thus, the plain language of the claim leaves no ambiguity as to when infringement occurs:
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`when the device including the recited elements and with the proper capability is created. Jones
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`Decl., ¶ 54. The device infringes even if an e-purse applet is never downloaded, because it merely
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`requires being configured to (i.e., having the capability to) operate with the specified type of e-
`
`purse applet. E.g., Rothschild Connected Devices Innovations, LLC v. Coca-Cola Co., 813 F.
`
`Appx. 557, 564 (Fed. Cir. 2020) (“Nor does claim 11 require that such communication actually
`
`occurs. All the claim requires is that the user interface module be ‘configured to’ receive the user
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`and beverage identifiers.”); Huawei Techs. Co. Ltd. v. Verizon Commc’ns, Inc., No. 2:20-CV-
`
`00030-JRG, 2021 WL 150442, at *18 (E.D. Tex. Jan. 15, 2021) (“The ‘configured to’ and ‘adapted
`
`to’ limitations denote actual capability to perform the claim-recited function….”).
`
`
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`Accordingly, the wherein clause of which Visa complains does not render the claim a
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`mixed method and apparatus claim. Instead, that clause defines the capability of the claimed
`
`9
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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 14 of 27
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`system. E.g., UltimatePointer, 816 F.3d at 827 (“Unlike IPXL and similar cases, the claims at
`
`issue here make clear that the “generating data” limitation reflects the capability of that structure
`
`rather than the activities of the user.”).
`
`
`
`Indeed, the Federal Circuit has held similar claims including a “wherein” clause to not
`
`include both method and apparatus elements. For example, in MasterMine Software, Inc. v.
`
`Microsoft Corp, the claims recited:
`
`a reporting module installed within the CRM software application…
`
`software
`the CRM
`installed within
`reporting module
`the
`wherein
`application presents a set of user-selectable database fields as a function of the
`selected report template, receives from the user a selection of one or more of the
`user-selectable database fields, and generates a database query as a function of the
`user selected database fields
`
`
`874 F.3d 1307, 1315–16 (Fed. Cir. 2017). As the Federal Circuit explained:
`
`Though claim 8 includes active verbs—presents, receives, and generates—these
`verbs represent permissible functional language used to describe capabilities of the
`“reporting module.” Like the claims in MEC, HTC, and UltimatePointer, the claims
`at issue here merely claim that the system “possess[es] the recited structure [which
`is] capable of performing the recited functions.” MEC, 520 F.3d at 1375.
`
`These claims are also distinguishable from those at issue in IPXL Holdings and
`Katz, as the claims here do not claim activities performed by the user. While these
`claims make reference to user selection, they do not explicitly claim the user's act
`of selection, but rather, claim the system's capability to receive and respond to
`user selection. The limitations at issue here (“receiv[ing] from the user a selection”
`and “generat[ing] a database query as a function of the user selected database
`fields”) focus on the capabilities of the system, whereas the claims in IPXL
`Holdings (“the user uses the input means”) and Katz (“said individual callers
`digitally enter data”) focus on specific actions performed by the user. Moreover,
`unlike the claims in Rembrandt, the functional language here does not appear in
`isolation, but rather, is specifically tied to structure: the reporting module installed
`within the CRM software application.
`
`
`
`10
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 15 of 27
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`Id. The claims here fit squarely into the Federal Circuit’s discussion in MasterMine. Claim 11
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`makes reference to downloading the e-purse applet, but only claims the capability to operate with
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`an e-purse applet downloaded in the described way.2
`
`
`
`Visa further argues that the claims impose a “temporal limitation” via the clause “when the
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`smart card is in communication with the payment server.” Visa Br. at 14. But, again, the clause
`
`merely sets forth the type of e-purse applet—one that “is downloaded from the payment server
`
`when the smart card is in communication with the payment server.” This merely describes the
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`portable device’s functionality and does not impose any method steps.3 Jones Decl., ¶ 55.
`
`
`
`Visa’s citation to In re Katz Interactive Call Proc. Litig. does not support its argument.
`
`Visa Br. at 14 (citing 639 F.3d 1303, 1318 (Fed. Cir. 2011)). The claims in Katz recited “wherein
`
`... callers digitally enter data” and “wherein ... callers provide ... data,” using the active voice to
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`denote that the callers must actively enter or provide data. 639 F.3d at 1318. The limitations here
`
`do not depend on user actions and are in written in the passive voice (“wherein the e-purse applet
`
`is downloaded…”) to denote that it describes the type of e-purse applet at issue. RightQuestion,
`
`
`2 Numerous District Court cases have also found similar terms not indefinite. E.g., RightQuestion,
`LLC v. Samsung Elecs. Co., Ltd., No. 2:21-CV-00238-JRG, 2022 WL 1154611, *8–10 (E.D. Tex.
`Apr. 18, 2022) (holding claims directed to computer access authentication system and reciting
`wherein claim phrases ‘wherein a second device associated with the user is registered with the
`storage service, and wherein the record is downloaded from the storage service device,’ were not
`invalid under IPXL as “the system and software-product claims recite capabilities to be
`implemented rather than operational steps to be performed”); KIPB LLC v. Samsung Elecs. Co.
`Ltd., No. 2:19-CV-00056-JRG-RSP, 2020 WL 1495231, *6-7 (E.D. Tex. Mar. 27, 2020)
`(limitation reciting "wherein the parasitic capacitance between said gate and bulk silicon substrate
`is reduced by selecting the thickness of said second oxidation layer to be between 20 nm and 800
`nm" was not invalid under IPXL for being a mixed apparatus and method claim since the claim
`"language in question is directed toward the design criteria of the structure and its capabilities, not
`the subsequent use of the product”
`3 Even if the claim were (somehow) read to require an applet to have actually been downloaded on
`the portable device as Visa urges, of the wherein clause would still simply impose limitations on
`the applet with which the e-purse is configured to work and is definite for the same reasons. 
`
`11
`
`

`

`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 16 of 27
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`2022 WL 115461, at *8-9 (noting that noting that “the passive-voice nature of the clause,”
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`indicated that user action was not claimed).
`
`
`
`Similarly, Visa’s reference to the prosecution history fails to support its argument. During
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`prosecution, the applicants noted that a paragraph of the specification provided support for the
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`“wherein the e-purse is downloaded” limitation. See Visa Br. at 14-15 (citing Ex. 3). The cited
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`portion of the specification explains that an e-purse applet is dynamically installed. Ex. 3 at 9 (“As
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`supported in paragraph [0037], the e-purse applet is dynamically installed and personalized.”
`
`(emphasis added)); Ex. 4 at 12 (“The card manager 311 performs … establishing a security
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`channel, via a security domain, to install and personalize an external application (e.g., e-purse
`
`applet) in the card.”). Visa does not explain how these statements might render the claims invalid
`
`under IPXL. Visa. Br. at 14-15. Indeed, the statements are completely consistent with claim 11
`
`claiming a portable device with components that are configured to operate with a downloaded
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`applet. Jones Decl., ¶¶ 56-59.
`
`
`
`Visa finally argues that dependent claim 18 is separately invalid because it recites “wherein
`
`the e-purse is funded through a financial institution that maintains an account for a user being
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`associated with the portable device.” Visa Br. at 15. Just as with claim 11, this limitation merely
`
`further describes the e-purse with which the portable device must operate and does not require any
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`user action. Jones, Decl., ¶¶ 60-61.
`
`
`
`The wherein limitations of which Visa complains merely describe the capabilities of the
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`portable device and its components; specifically, they describe the type of e-purse applet that the
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`portable device must operate with. The limitations do not impose method steps and are not directed
`
`at user activities. Accordingly, claims 11-18 are not indefinite. U.S. Well Servs., 2022 WL 819548,
`
`12
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`

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`Case 6:22-cv-00697-ADA Document 43 Filed 09/05/23 Page 17 of 27
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`at *10-11 (holding limitation “wherein the variable frequency drive frequently performs electric
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`motor diagnostics” not indefinite under IPXL).
`
`2.
`
`Claims 1-8, 10 of the ’787 Patent
`
`Visa similarly argues that claims 1-8 and 10 of the ’787 Patent are invalid for claiming
`
`both a method and apparatus. Visa.Br. at 15-16. Here, the allegedly offending term is “purse
`
`manager midlet being executed in the portable device to act as an agent…” Id. Once again, Visa
`
`is mistaken. Jones Decl., ¶¶ 63-73.
`
`The clause “being executed…to act as an agent” denotes the functional capabilities of the
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`purse manager midlet. In other words, it describes how the midlet operates when executed; it does
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`not require the midlet to be executed. Jones Decl., ¶¶ 66-67.
`
`This Court has previously ruled similar claims not indefinite. For example, in U.S. Well
`
`Servs., the claim ““at least one variable frequency drive connected to the electric motors to control
`
`the speed of the motors, the at least one variable frequency drive frequently performing electric
`
`motor diagnostics to prevent dam