Case 6:22-cv-00697-ADA Document 43-2 Filed 09/05/23 Page 1 of 48
`Case 6:22-cv-00697-ADA Document 43-2 Filed 09/05/23 Page 1 of 48
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`EXHIBIT A
`EXHIBIT A
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`Case 2:20-cv-00274-JRG-RSP Document 147 Filed 11/17/21 Page 1 of 47 PageID #: 5023Case 6:22-cv-00697-ADA Document 43-2 Filed 09/05/23 Page 2 of 48
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`RFCYBER CORP.,
`
`v.
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`GOOGLE LLC, GOOGLE PAYMENT
`CORP.
`___________________________________
`
`RFCYBER CORP.,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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`
`
` CASE NO. 2:20-CV-274-JRG
` [LEAD CASE]
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`
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`
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` CASE NO. 2:20-CV-335-JRG
` [MEMBER CASE]
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`Before the Court is the Opening Claim Construction Brief (Dkt. No. 116) filed by Plaintiff
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`RFCyber Corp. (“Plaintiff” or “RFCyber” or “RFC”). Also before the Court is the Responsive
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`Claim Construction Brief (Dkt. No. 122) filed by Defendants Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc. (“Defendants” or “Samsung”)1 as well as Plaintiff’s reply
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`(Dkt. No. 124).
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`The Court held a claim construction hearing on October 27, 2021.
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`1 Defendants Google LLC and Google Payment Corp. (collectively, “Google”) have been
`dismissed. (See Dkt. Nos. 72–73, 127, 129.)
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 2
`II. LEGAL PRINCIPLES ........................................................................................................... 4
`III. AGREED TERMS................................................................................................................. 8
`IV. DISPUTED TERMS .............................................................................................................. 8
`1. “security channel” .................................................................................................................. 9
`2. “secured channel” ................................................................................................................ 11
`3. “security channel on top of the initial security channel” ..................................................... 12
`4. “applet” ................................................................................................................................ 13
`5. “e-purse” and “electronic purse” ......................................................................................... 13
`6. “install” and “installed” ....................................................................................................... 19
`7. “payment server” ................................................................................................................. 23
`8. “personalize,” “personalized,” “personalizing,” and “personalization” .............................. 26
`9. “smart card pre-loaded with [an/the] emulator” .................................................................. 29
`10. “smart card,” “card module,” and “smart card module” .................................................... 31
`11. “security authentication module” and “SAM” ................................................................... 34
`12. “device information of [a/the] secure element” ................................................................. 37
`13. “key set installed on the secure element” .......................................................................... 40
`14. “secure element” ................................................................................................................ 40
`15. “method for funding an e-purse” ....................................................................................... 41
`16. “contactless interface that facilitates communication between the e-purse applet in the
`smart card and the payment server over a wired network” and “e-purse SAM originally
`used to issue the e-purse / existing security authentication module (SAM) originally used
`to issue the e-purse” ............................................................................................................ 45
`V. CONCLUSION...................................................................................................................... 46
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`I. BACKGROUND
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`Plaintiff alleges infringement of United States Patent Nos. 8,118,218 (“the ’218 Patent”),
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`8,448,855 (“the ’855 Patent”), 9,189,787 (“the ’787 Patent”), and 9,240,009 (“the ’009 Patent”)
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`(collectively, “the patents-in-suit” or “the asserted patents”). (Dkt. No. 116, Exs. A–D). Plaintiff
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`submits that the patents-in-suit “are directed to various aspects of a mobile payment system.” (Dkt.
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`No. 116 at 2.)
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`The ’218 Patent, titled “Method and Apparatus for Providing Electronic Purse,” issued on
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`February 21, 2012, and bears a filing date of September 24, 2006. The Abstract of the ’218 Patent
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`states:
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`
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`Techniques for portable devices functioning as an electronic purse (e-purse) are
`disclosed. According to one aspect of the invention, a mechanism is provided to
`enable a portable device to conduct transactions over an open network with a
`payment server without compromising security. In one embodiment, a device is
`loaded with an e-purse manager. The e-purse manager is configured to manage
`various transactions and functions as a mechanism to access an emulator therein.
`The transactions may be conducted over a wired network or a wireless network. A
`three-tier security model is contemplated to support the security of the transactions
`from the e-purse. The three-tier security model includes a physical security, an e-
`purse security and a card manager security, concentrically encapsulating one with
`another. Security keys (either symmetric or asymmetric) are personalized within
`the three-tier security model.
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`The ’855 Patent resulted from continuations of the ’218 Patent. The ’787 Patent, in turn,
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`resulted from a continuation of the ’855 Patent. The ’009 Patent resulted from a continuation-in-
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`part of the ’218 Patent.
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`Samsung submits: “RFCyber has accused Samsung of infringing claims 1, 3, 7–9, 11, 14–
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`15, and 17 of the ’218 patent, claims 1–6, 10, and 12 of the ’855 patent, claims 1–3, 6, 8, 11, 13,
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`16, and 18 of the ’787 patent, and claims 1, 6–7, 10, 14, and 16 of the ’009 patent (collectively,
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`the ‘Asserted Claims’).” (Dkt. No. 122 at 2 n.3.)
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`Plaintiff previously also asserted United States Patent No. 10,600,046 (“the ’046 Patent”).
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`(Dkt. No. 1, Ex. E). Plaintiff did not elect any claims from the ’046 Patent in its election of asserted
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`claims filed on September 15, 2021 (Dkt. 110, Ex. A), so Plaintiff no longer asserts the ’046 Patent
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`in the present case.
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`II. LEGAL PRINCIPLES
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right which
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`the patent confers on the patentee to exclude others from making, using or selling the protected
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`invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
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`Claim construction is clearly an issue of law for the court to decide. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
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`which explains the invention and may define terms used in the claims. Id. “One purpose for
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`examining the specification is to determine if the patentee has limited the scope of the claims.”
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`Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
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`lexicographer, but any special definition given to a word must be clearly set forth in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`Although the specification may indicate that certain embodiments are preferred, particular
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`embodiments appearing in the specification will not be read into the claims when the claim
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`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the patentee
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`is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
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`are generally given their ordinary and customary meaning. Id. The ordinary and customary
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`meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
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`inventors are usually persons who are skilled in the field of the invention and that patents are
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`addressed to, and intended to be read by, others skilled in the particular art. Id.
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
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`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
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`the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long
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`ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions
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`of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
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`language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
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`the specification, the Phillips court quoted with approval its earlier observations from Renishaw
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`PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
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`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
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`plays in the claim construction process.
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”
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`it may lack the clarity of the specification and thus be less useful in claim construction proceedings.
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`Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
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`of how the inventor understood the invention and whether the inventor limited the invention during
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`prosecution by narrowing the scope of the claims. Id.; see also Microsoft Corp. v. Multi-Tech Sys.,
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`Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
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`prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`“In some cases, however, the district court will need to look beyond the patent’s intrinsic
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`evidence and to consult extrinsic evidence in order to understand, for example, the background
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`science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm.
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`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
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`subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
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`extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
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`discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”
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`Id. (citing 517 U.S. 370).
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The court
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`did not impose any particular sequence of steps for a court to follow when it considers disputed
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`claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
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`weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
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`the general rule that the claims measure the scope of the patent grant. Id.
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`The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
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`patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
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`in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 572 U.S. 898, 910, 134 S. Ct. 2120, 2129 (2014). “A determination of claim
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`indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
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`construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.
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`Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by
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`Nautilus, 572 U.S. 898. “Indefiniteness must be proven by clear and convincing evidence.” Sonix
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`Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
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`III. AGREED TERMS
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`In their August 19, 2021 P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt.
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`No. 101) and their October 14, 2021 P.R. 4-5(d) Joint Claim Construction Chart (Dkt. No. 73, Ex.
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`A at 3–4), the parties submitted the following agreements:
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`Term
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`“emulator”
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`’218 Patent, All Claims
`’855 Patent, All Claims
`’787 Patent, All Claims
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`“midlet”
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`’218 Patent, All Claims
`’855 Patent, All Claims
`’787 Patent, All Claims
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`“payment gateway”
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`’046 Patent, All Claims
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`Agreed Construction
`“hardware device or program that pretends to be another
`particular device or program that other components
`expect to interact with”
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`“software component suitable for being executed on a
`portable device”
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`“server or collection of servers for settling a payment”
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`IV. DISPUTED TERMS
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`The parties organize the disputed terms slightly differently in their briefing. Rather than
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`attempt to divine an ideal arrangement of the disputed terms, the Court adopts the ordering set
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`forth in Plaintiff’s opening brief.
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`Also, the parties have set forth their positions on the qualifications of a person of ordinary
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`skill in the art, but neither side argues that any differences between the parties in this regard has
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`any significance when addressing the claim construction disputes. (See Dkt. No. 116 at 1–2; see
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`also Dkt. No. 122 at 6.)
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`1. “security channel”
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`“security channel”
`(’218 Patent, All Claims; ’855 Patent, All Claims;
`’787 Patent, All Claims; ’009 Patent, All Claims)
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`Plaintiff’s Proposed Construction
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`Plain and ordinary meaning
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`(Dkt. No. 126, Ex. B at 2.)
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`Defendants’ Proposed Construction
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`“protected channel established by keys”
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`(a) The Parties’ Positions
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`Plaintiff argues that “‘security’ is a readily understandable word,” and “Defendants identify
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`no disclaimer or definition that limits a security channel to one ‘established by keys.’” (Dkt. No.
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`116 at 4.) As to the prosecution history cited by Defendants, Plaintiff argues that “the question of
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`whether a channel established by keys could meet the limitation is distinct from whether only
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`channels established by keys can meet the limitation.” (Id.)
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`Defendants respond that “the Asserted Patents use the term ‘secured channel’
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`interchangeably with the term ‘security channel.’” (Dkt. No. 122 at 34.) Defendants also argue
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`that “a POSITA would understand that the secured channels and security channels described in the
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`patents are established using ‘keys,’” and “[t]he Asserted Patents do not disclose any secured
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`channel or security channel that is not established by keys.” (Id. at 35, 36.) Further, Defendants
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`argue that “there can be no genuine dispute that a security channel and secured channel must be
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`‘protected.’” (Id. at 36.) Finally, Defendants argue that “RFCyber fails to address the extrinsic
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`evidence that supports Defendants’ construction.” (Id. at 37.)
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`Plaintiff replies that “nothing in the specification requires the use of keys to create a
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`security channel,” which are only “one way of creating a security channel.” (Dkt. No. 124 at 2.)
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`At the October 27, 2021 hearing, Defendants argued that although the specification
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`contains no explicit disclaimer, the specification does not disclose any other way of providing a
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`“security channel” or “secure channel.” Plaintiff argued that keys do not perform the establishing.
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`At most, Plaintiff argued, keys are used during the process of establishing.
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`(b) Analysis
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`Claim 1 of the ’218 Patent, for example, recites in part (emphasis added):
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`1. A method for providing an e-purse, the method comprising:
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`. . .
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`personalizing the e-purse applet by reading off data from the smart card to
`generate in the smart card one or more operation keys that are subsequently used to
`establish a secured channel between the e-purse applet and an e-purse security
`authentication module (SAM) external to the smart card, wherein said
`personalizing the e-purse applet comprises:
`establishing an initial security channel between the smart card
`and the e-purse SAM to install and personalize the e-purse
`applet in the smart card, and
`creating a security channel on top of the initial security channel
`to protect subsequent operations of the smart card with the
`e-purse SAM, wherein any subsequent operation of the
`emulator is conducted over the security channel via the e-
`purse applet.
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`As a threshold matter, Defendants’ proposal of requiring a “protected” channel is consistent
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`with disclosures in the specification regarding using “security” mechanisms to “protect data.” See,
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`e.g., ’218 Patent at 3:51–52. Plaintiff does not demonstrate that “security” has any other meaning
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`in this context.
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`As to Defendants’ proposal that the channel must be “established by keys,” Defendants
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`cite disclosure that:
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`Security keys (either symmetric or asymmetric) are personalized within the three-
`tier security model so as to personalize an e-purse and perform secured transaction
`with a payment server. . . . During a transaction, the security keys are used to
`establish a secured channel between an embedded e-purse and an SAM . . . or
`backend server.
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`’218 Patent at 1:65–2:8; ’009 Patent at 2:53–63 (similar);’218 Patent at 3:66–4:2 (similar).
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`Defendants also cite disclosure regarding “updat[ing] security keys to establish appropriate
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`channels for interactions between the server and the applets . . . .” ’218 Patent at 4:41–46; ’009
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`Patent at 10:36–40.
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`
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`These disclosures regarding security keys, however, refer to specific details of particular
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`disclosed embodiments that should not be imported into the claims. See Phillips, 415 F.3d at 1323.
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`Defendants identify no definition or disclaimer in which the patentee limited the term “security
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`channel” so as to require being “established by keys.” Indeed, Claim 1 of the ’009 Patent, for
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`example, expressly recites “establishing a secured channel between the secure element and the
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`server using a key set installed on the secure element,” which is an additional reason to reject
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`Defendants’ proposal to introduce an “established by keys” requirement into all of the claims.
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`
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`The Court therefore construes “security channel” to mean “protected channel.”
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`2. “secured channel”
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`
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`“secured channel”
`(’218 Patent, All Claims; ’009 Patent, All Claims)
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`Plaintiff’s Proposed Construction
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`Plain and ordinary meaning
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`
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`(Dkt. No. 126, Ex. B at 2.)
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`
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`Defendants’ Proposed Construction
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`“protected channel established by keys”
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`Prior to the start of the October 27, 2021 hearing, the parties notified the Court that the
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`parties now agree that the term “secured channel” should be given the same construction as the
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`above-discussed term “security channel.”
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`
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`The Court therefore construes “secured channel” to mean “protected channel.”
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`3. “security channel on top of the initial security channel”
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`
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`“security channel on top of the initial security channel”
`(’218 Patent, All Claims;
` ’855 Patent, All Claims;
`’787 Patent, Claims 6–7, 16–17)
`
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`Plaintiff’s Proposed Construction
`
`Plain and ordinary meaning
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`
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`(Dkt. No. 116 at 7.)
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`Defendants’ Proposed Construction
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`Indefinite
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`
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`Defendants asserted in their portion of the parties’ P.R. 4-3 Joint Claim Construction and
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`Prehearing Statement that this term is indefinite. (Dkt. No. 101, Ex. B at B-7.) Defendants’
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`response brief does not address this term, and this term does not appear in the parties’ P.R. 4-5(d)
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`Joint Claim Construction Chart. (See Dkt. No. 122; see also Dkt. No. 126, Ex. B.) At the October
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`27, 2021 hearing, the remaining Defendants confirmed that they are not asserting indefiniteness
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`and therefore this term is no longer in dispute.
`
`
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`The Court therefore construes “security channel on top of the initial security channel”
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`to have its plain and ordinary meaning.
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`4. “applet”
`
`
`
`“applet”
`(’218 Patent, Claims 1, 11, 14, 15;
`’855 Patent, Claims 1, 3;
`’787 Patent, Claims 1, 2, 6, 11)
`
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`“application configured to perform a specific
`task”
`
`Plain and ordinary meaning
`
`Alternatively:
`configured
`component
`“software
`perform one or more specific tasks”
`
`
`
`(Dkt. No. 126, Ex. B at 2.)
`
`to
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`
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`Prior to the start of the October 27, 2021 hearing, the parties notified the Court that the
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`parties now agree that this term should be given its plain and ordinary meaning.
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`
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`The Court therefore construes “applet” to have its plain and ordinary meaning.
`
`5. “e-purse” and “electronic purse”
`
`
`
`“e-purse” / “electronic purse”
`(’218 Patent, Claims 1, 11, 14, 15;
`’855 Patent, Claims 1, 3, 5;
`’787 Patent, Claims 1, 2, 6, 11)
`
`
`Plaintiff’s Proposed Construction
`
`Plain and ordinary meaning
`
`Alternatively:
`“system that maintains electronic financial
`information locally”
`
`
`
`(Dkt. No. 126, Ex. B at 2.)
`
`Defendants’ Proposed Construction
`
`“application that stores electronic money
`locally (i.e., in the user’s portable device)”
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`
`
`
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`(a) The Parties’ Positions
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`Plaintiff argues that “[t]he term is readily understandable and can be applied without
`
`construction,” and “Defendants’ construction finds no support in the intrinsic record.” (Dkt.
`
`No. 116 at 11.) As to the prosecution history cited by Defendants, Plaintiff argues that “[t]he most
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`relevant Office Action actually demonstrates that Defendants’ construction is unwarranted and
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`unsupported.” (Id.) Plaintiff also argues, for example, that “[w]hile the specifications describe
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`functions related to stored values on a card, those discussions do not amount to any disclaimer.”
`
`(Id. at 13.)
`
`
`
`Defendants respond that “an ‘e-purse’ is a well-known term of art,” and “[d]uring
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`prosecution of the ’218 patent, RFCyber distinguished the prior art ‘Atsmon’ reference, which
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`discloses an ‘e-wallet,’ by arguing that, as ‘is commonly known in the art,’ an ‘e-wallet is not the
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`same as [an] e-purse’ and, unlike an e-wallet which stores credit cards or e-cards, an e-purse stores
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`‘electronic money in a local portable device’ . . . .” (Dkt. No. 122 at 7.) Defendants also cite the
`
`specification as well as the prosecution of a related patent. (See id. at 8–12.)
`
`
`
`Plaintiff replies that “an e-purse, just like a physical purse, is not limited to only storing
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`money (or being a stored-value card) and can store credit card numbers and other financial-related
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`materials.” (Dkt. No. 124 at 4.) Plaintiff argues that “[w]hile the asserted patents disclose
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`embodiments that include locally stored money, Samsung identifies no disclaimer or lexicography
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`that would justify limiting the claims.” (Id. at 6.) Plaintiff also argues that “[n]othing in the
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`prosecution history or in the specification amounts to a clear and unambiguous disavowal of claim
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`scopes [sic] that would limit the claims to a local-only implementation, or to an ‘application that
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`stores electronic money locally.’” (Id. at 4.) As an alternative, Plaintiff proposes: “a system that
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`maintains electronic financial information locally.” (Id. at 7.)
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`
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`At the October 27, 2021 hearing, Plaintiff argued that in the prosecution history relied upon
`
`by Defendants, the patentee distinguished accessing information remotely (as opposed to storing
`
`information locally) and did not limit the term “e-purse” in the manner proposed by Defendants.
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`Moreover, Plaintiff argued that “electronic money” is not the same as cash because electronic
`
`money may still need to be settled after use.
`
`
`
`
`
`(b) Analysis
`
`Defendants cite prosecution history of the ’218 Patent in which the patentee stated:
`
`Atsmon teaches an interactive authentication system to allow a consumer to interact
`with a base station to receive coupons, special sales and other information with an
`electronic card. After a careful review, the Applicant concludes that Atsmon does
`not teach how to use a security channel to install and personalize an e-purse applet
`in a smart card. Atsmon only says that special client remote access software is
`downloaded, see Col. 32, lines-56-63, where that special client remote access
`software is for access to the website (e.g., a base station), no encryption, or any
`mechanism for a security channel are mentioned or described.
`
` .
`
` . . [T]he Applicant submits [the] Shmueli [reference] could not be modified with
`[the] Atsmon [reference] or such modification would render Shmueli inoperable.
`The Applicant wishes to further point out that Atsmon describes entirely about
`e-wallet. It is commonly known in the art that e-wallet is not the same as e-purse.
`An e-wallet system has a user credit-card and personal info at the backend, an
`e-card in the e-wallet system is used as an identity card for logging in into the
`system. When shopping, the e-card can be used to identify the user to retrieve the
`info and submit the info to the merchant site. Evidently, an e-purse in the instant
`application describes about electronic money in a local portable device.
`Accordingly, the combination of Shmueli and Atsmon neither teaches nor suggests
`Claim 1, and Claim shall be allowable over Shmueli and Atsmon.
`
`(Dkt. No. 116, Ex. E, Dec. 31, 2010 Response to Final OA, at 9–10 (p. 132–33 of 259 of Ex. E)
`
`(emphasis added).)
`
`
`
`The patentee thus distinguished Shmueli and Atsmon based on the claimed invention using
`
`information stored locally rather than retrieving information from somewhere else. This
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`prosecution history therefore does not amount to a definitive statement by the patentee that the
`
`term “e-purse” requires money stored locally. See Omega Eng’g Inc. v. Raytek Corp., 334 F.3d
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`1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation,