Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 1 of 305
`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 1 of 305
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`EXHIBIT C
`EXHIBIT C
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`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 2 of 305
`Paper7
`Date: 1/23/2023
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`571-272-7822
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`UNITED ST ATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`V.
`
`SHENZHEN RFCYBERASSET MANAGEMENT, LLP,
`Pa tent Owner.
`
`IPR2022-01240
`Patent 8,118,218 B2
`
`Before JOSIAH C. COCKS, PATRICK R. SCANLON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 US.C. § 314
`
`

`

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`INTRODUCTION
`Apple Inc. ("Petitioner") filed a Petition (Paper 1, "Pet.") requesting
`
`I.
`
`an inter partes review of claims 1-5, 12-14, 17, and 18 ofU. S. Patent
`
`No. 8,118,218 B2 (Ex 1001, "the '218 patent"). Shenzhen RFCyber Asset
`
`Management, LLP ("Patent Owner") filed a Preliminary Response (Paper 6,
`
`"Prelim. Resp.").
`
`We have authority to determine whether to institute an inter partes
`
`review. See35U.S.C. §314(2018);37C.F.R. §42.4(a)(2022). To
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`institute an inter partes review, we must determine that the information
`
`presented in the Petition shows "a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition." 35 U. S.C. § 314(a). For the reasons set forth below, we determine
`
`that Petitioner has not demonstrated a reasonable likelihood that it would
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`prevail with respect to at least one challenged claim. Accordingly, we do
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`not institute an inter partes review of any challenged claim on any asserted
`
`ground.
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`II. BACKGROUND
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`A. Real Parties in Interest
`
`Petitioner identifies itself as the real parties in interest. Pet. 70.
`
`Patent Owner identifies itself and RFCyber Corp. as the real parties in
`
`interest. Paper 5, 1.
`
`B. Related Matters
`
`The parties identify the following proceedings as related matters
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`involving the '218 patent: RFCyberCorp. v. Apple Inc., Case No. 6:21-cv-
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`00916-ADA (W.D. Tex.) (the "District Court Case"); and RFCyber Corp. v.
`
`Visa US.A. lnc.,CaseNo. 6:22-cv-00697(W.D. Tex). Pet. 70;Paper5, 1.
`
`Petitioner also identifies the following dismissed district-court proceedings
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`2
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`

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`as related matters: RFCyber Corp. v. Google LLC, No. 2:20-cv-00274 (E.D.
`
`Tex.); RFCyber Corp. v. LG Electronics, Inc., No. 2:20-cv-00336 (E.D.
`
`Tex.); andRFCyber Corp. v. Samsung Electronics Co., 2:20-cv-00335 (E.D.
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`Tex.). Pet. 70. Petitioner further identifies the following Board proceedings
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`involving other petitioners and the '218 patent: IPR2021-00957
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`(terminated), andIPR2021-00979 (denied). Pet. 70.
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`C. The '218Patent
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`The '218 patent, titled "Method and Apparatus for Providing
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`Electronic Purse," issued February 21, 2012, with claims 1-18. Ex 1001,
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`codes ( 45), (54), 8:37-10:63. The '218 patent "is related to a mechanism
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`provided to devices, especially portable devices, functioning as an electronic
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`purse ( e-purse) to be able to conduct transactions over an open network with
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`a payment server without compromising security." Id. at 1 :50-54.
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`Figure 2 of the '218 patent is reproduced below.
`
`E Purse
`securit
`
`SAM
`Module
`
`212
`
`200
`
`Payment network
`and servers
`
`210
`
`Web agent
`on PC
`
`214
`
`M-commerce
`
`RFID reader 216
`
`E-commerce
`
`Existing hardware for
`land-based commerce
`(e.g., stores or
`transpQrtation) in
`enclosed environment
`
`: Contact!ess interface
`
`Smart carp
`rotocol
`:
`
`Single functional:
`card protocol
`:
`
`Purse
`manage
`mid!et
`204
`
`E-Purse
`applet built on
`GP with
`access to MF
`assword 206
`
`mulator
`
`208
`
`Cell phone with
`smart card
`module
`
`202
`
`3
`
`FIGR 2
`
`

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`Figure 2 illustrates an exemplary architecture diagram 200 according to one
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`embodiment. Id. at2:63-64, 4:57-59. The architecture includes cellphone
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`202 embedded with a smart card module and including an RFID interface.
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`Id. at 4:59-60, 64-66. The smart card module is pre-loaded with emulator
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`208 for storing values. Id. at 4:62-64.
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`Cellphone 202 includes purse manager midlet 204, which, for
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`m-commerce, can act as an agent to facilitate communications between
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`e-purse applet 206 and one or more payment network and servers 210 to
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`conducttransactions. Id. at5:5-9. Pursemanagermidlet204is also
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`configured to provide administrative functions such as changing a PIN,
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`viewing a purse balance and a history log. Id. at 5: 16-18. A card issuer
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`provides security authentication module ("SAM") 212 that is used to enable
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`and authenticate transactions between a card and a payment server. Id. at
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`5:19-22.
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`For e-commerce, web agent 214 is responsible for interacting with
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`RFIDreader216 and network server 210. Id. at5:30-32. Webagent214
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`sends commands or receives responses through RFID reader 216 to or from
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`e-purse applet 206 residing in cellphone 202. Id. at 5:32-35. Web agent
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`214 also composes network requests ( such as HTTP) and receives responses
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`thereto from payment server 210. Id. at 5 :3 5-3 7.
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`D. ChallengedClaims
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`As noted above, Petitioner challenges claims 1-18 of the '218 patent.
`
`Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed
`
`subject matter and is reproduced below:
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`1. A method for providing an e-purse, the method comprising:
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`providing a portable device including or communicating with a
`smart card pre-loaded with an emulator configured to
`
`4
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`execute a request from an e-purse applet and provide a
`response the e-purse applet is configured to expect, the
`portable device including a memory space loaded with a
`midlet that is configured to facilitate communication
`between the e-purse applet and a payment server over a
`wireless network, wherein the e-purse applet is downloaded
`and installed in the smart card when the smart card is in
`communication with the payment server, the portable device
`further includes a contactless interface that facilitates
`communication between the e-purse applet in the smart card
`and the payment server over a wired network;
`
`personalizing thee-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
`compnses:
`
`establishing an initial security channel between the smart
`card and the e-purse SAM to install and personalize the
`e-purse applet in the smart card, and
`
`creating a security channel on top of the initial security
`channel to protect subsequent operations of the smart
`card with the e-purse SAM, wherein any subsequent
`operation of the emulator is conducted over the security
`channel via the e-purse applet.
`
`Ex. 1001, 8:37-67.
`
`E. Asserted Grounds ofUnpatentability
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following ground: 1
`
`1 TheLeahy-SmithAmericainventsAct, Pub. L. No. 112-29, 125 Stat. 284
`(2011) ("AIA"), amended 35 U.S.C. § 103. Because the '218 patent has an
`effective filing date before the March 16, 2013, effective date of the
`applicable AIA amendments, we apply the pre-AIA version of 35 U.S. C.
`§ 103.
`
`5
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`

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`1-18
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`103 a
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`Ha aashi, 2 Prisma 3
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`Pet. 5. Petitioner relies on the Declaration of Gerald W. Smith (Ex. 1003)to
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`support its challenges.
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`III. ANALYSIS
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`A. Level of Ordinary Skill in the Art
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`In determining whether an invention would have been obvious at the
`
`time it was made, 35 U.S. C. § 103 requires us to resolve the level of
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`ordinary skill in the pertinent art at the time of the invention. Graham v.
`
`John Deere Co., 3 83 U.S. 1, 17 (1966). The person of ordinary skill in the
`
`art is a hypothetical person who is presumed to have known the relevant art
`
`at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
`
`Cir. 1995). Factors that may be considered in determining the level of
`
`ordinary skill in the art include, but are not limited to, the types of problems
`
`encountered in the art, the sophistication of the technology, and educational
`
`level of active workers in the field. Id. In a given case, one or more factors
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`may predominate. Id.
`
`Petitioner contends that a person having ordinary skill in the art
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`"would have had at least a bachelor's degree in computer engineering,
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`computer science, electrical engineering, or a related field, with at least one
`
`year of experience in the field of mobile payment technology," and
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`"[ a ]dditional pertinent education might substitute for the requisite
`experience and vice versa." Pet. 4-5 ( citing Ex 1003 ,r,r 34-36). Patent
`
`2 US 2005/0009564 Al, published Jan. 13, 2005 (Ex. 1004).
`3 ProtonPrismaGuide, Proton World, July 28, 2004 (retrievedfromhttps://
`web. archive.org/web/20040728190109if_/http://protonworld.st.com:80/
`downloads/pdfs/proton_prisma_guide.pdf(see Pet. 11)) (Ex. 1005).
`
`6
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`Owner indicates that it uses Petitioner's proposed level of ordinary skill in
`
`the art for the purposes of its Preliminary Response only. Prelim, Resp. 7.
`
`Based on our review of the record before us, we determine that
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`Petitioner's stated level of ordinary skill in the art is reasonable because it
`
`appears consistent with the evidence of record, including the asserted prior
`
`art. Accordingly, for the purposes of this Decision, we adopt Petitioner's
`
`definition.
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`B. Claim Construction
`
`In inter partes reviews, the Board interprets claim language using the
`
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) ( en bane). See 37 C.F.R. § 42. l00(b ). Under that
`
`standard, we generally give claim terms their ordinary and customary
`
`meaning, as would be understood by a person of ordinary skill in the art at
`
`the time of the invention, in light of the language of the claims, the
`
`specification, and the prosecution history. See Phillips, 415 F.3d at
`
`1313-14. Although extrinsic evidence, when available, may also be useful
`
`when construing claim terms under this standard, extrinsic evidence should
`
`be considered in the context of the intrinsic evidence. See id. at 1317-19.
`
`Petitioner contends that, in the District Court Case, the parties have
`
`agreed to construe the claim terms "emulator" as a "hardware device or
`
`program that pretends to be another particular device or program that other
`
`components expect to interact with," "payment server" as a "server for
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`enabling payments," and "security authentication module" or "SAM" as a
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`"hardware or software module containing data to authenticate transactions."
`
`Pet. 6-7 ( citing Ex 10 3 9, 1-2). Petitioner further contends that the parties
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`are disputing the constructions of the claim terms "e-purse" and "e-purse
`
`applet" in the District Court Case, but the differences between the proposed
`
`7
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`construction need not be resolved for this proceeding because its asserted
`
`grounds of unpatentability satisfy both Patent Owner's and Petitioner's
`
`proposed constructions. Id. at 7. Patent Owner agrees that, for the purposes
`
`of its Preliminary Response, claim construction is not required to resolve
`
`any issues. Prelim. Resp. 7.
`
`On the present record, we do not discern a need to construe explicitly
`
`any claim language because doing so would have no effect on our analyses
`
`below of Petitioner's asserted grounds and will not assist in resolving the
`
`present controversy between the parties. See Rea/time Data, LLC v. lancu,
`
`912 F.3d 1368, 1375 (Fed. Cir. 2019) ("The Board is required to construe
`
`'only those terms that . . . are in controversy, and only to the extent
`
`necessary to resolve the controversy."') ( quoting Vivid Techs., Inc. v. Am.
`
`Sci. & Eng'g, Inc., 200F.3d 795,803 (Fed. Cir. 1999)).
`
`C. Asserted Obviousness Based onHayaashi andPrisma
`
`Petitioner asserts that claims 1-18 are unpatentable under 35 U.S. C.
`
`§ 103(a) based on Hayaashi andPrisma. Pet. 10-61. Patent Owner provides
`
`arguments addressing this asserted ground of unpatentability. Prehm.
`
`Resp. 7-17. We first summarize the references and then address the parties'
`
`contentions.
`
`1. Hayaashi
`
`Hiyaashi is entitled "Communication System, Settlement
`
`Management Apparatus and Method, Portable Information Terminal and
`
`Information Processing Method, and Program." Ex. 1004, code (54).
`
`Hiyaashi "provides a communication system that enables safe and easy
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`addition of a function for use of credit card settlement services to a portable
`
`information terminal." Id. at code ( 5 7).
`
`8
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`

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`Figure 5, reproduced below, shows a diagram of the Hiyaashi system.
`
`FIG. 5
`SETTLEMENT
`MANAGEMENT COMPANY
`CARD MANAGEMENT SYSTEM
`APPLI CAT I ON
`SECURE
`MANAGEMENT
`SERVER
`SERVER
`AUTHENTI·-
`CATION
`SECTION
`
`SAM
`
`81
`91
`
`71
`
`BASE
`STATION
`
`~ . 73
`llJ5lJil
`131 .
`
`MER CHAND I ZE
`INFORMATION
`
`111
`
`62- ~$N~~ SETTLEMENT
`
`MERCHAN(cid:173)
`DIZE
`MASTER
`
`MEMBER STORE
`
`MA1L
`SERVER
`
`ORDER
`ACCEPTANCE/
`ORDER
`PLACEMENT
`-INVENTORY
`M/\NAGEMENT
`SYSTEM
`
`ORDER
`! NFORMA T! ON
`
`MEMBER
`MASTER
`
`~51
`
`61
`
`82
`
`83
`
`101
`
`122
`
`121
`
`63
`
`64
`
`Figure 5 shows mobile phone 1, settlement management company 51, and
`the member store 111. Id. ,r,r 99-100. Figure 8, reproduced below, is a
`schematic diagram of the mobile phone ofHiyaashi.
`
`191-...r
`
`IMAGE
`ANALYZER
`
`1,,,:,-
`
`IMAGING
`CONTROLLER
`
`r--1 93
`
`19 2--- COMMUNICATION
`CONTROLLER
`
`DISPLAY
`
`!BROWSER' SECURE I ...... CONTROLLER r"'--194
`
`CLIENT
`
`I
`201
`
`'
`202
`
`195 ...r Cfi IP CONTROLLER
`
`---- IC GARD
`
`CONTACTLESS
`CONTROLLER
`
`211
`
`212
`
`-- k--- WRITER
`
`READER/
`CONTROLLER
`
`MEMORY
`MANAGER
`
`-------
`
`213
`
`COMMUNICATION i.--- L..-
`CONTROLLER
`
`214
`
`9
`
`

`

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`Figure 8 shows mobile phone 1, with communications controller 192, which
`
`operates by "executing a mobile settlement application downloaded from the
`application managementserver81." Id. ,r 127. Figure 8's "communication
`controller 192 controls the transmitter 162 and the receiver 163 and performs
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`HTTP communication with the card management system 61 of the
`settlement management company 51 by using the browser 201." Id. ,r 129.
`Figure 8 also shows chip controller 195, which "implements the function of
`
`serving as a contactless IC card by controlling the contactless IC card
`reader/writer chip 171." Id. ,r 131.
`2. Prisma
`
`Prisma, titled "ProtonPrisma Guide: Multi-Application Smart Card
`
`Technology and Solutions From Proton World," sets forth a twenty-page
`
`overview the Proton Prisma payment system. See generally Ex. 1005. It
`
`begins, "Proton Prisma is the new generation of smart card products from
`
`Proton World that offers the functionalities required by smart card issuers
`
`now and in the future." Id. at 1. Prisma describes that
`
`The core of the technology is CALC ( the Card and Application
`LifeCycle manager). Proton Prisma CALC end-to-end (E2E) is
`a technological platform that manages the life cycle of multi(cid:173)
`application smart cards, including personalisation and dynamic
`downloading of applications. CALC
`(E2E) provides a
`homogeneous
`card management
`and
`personalisation
`environment that is independent of card vendor and card type.
`
`Id. at 2. Prisma describes that its architecture supports the dynamic
`
`downloading of applications and a Java Card™ Virtual Machine, and
`
`includes a standard e-purse application. Id. at 8. Prisma' s specification is
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`designed for "credit card payment, debit card payment, cash withdrawal
`
`from an ATM and charge-back transactions." Id. at 9. Also,
`
`10
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`

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`The Proton Prisma e-purse is the successor to the successful
`Proton R3 e-purse. Thee-purse complements the bank's other
`payment products, such as debit and credit cards and is mainly
`used as a replacement for coins and notes in small value payment
`environments such as shops, pay phones, parking meters and
`public transport.
`
`Id. at 12. Prism's "purse is a prepaid product," where"[ e ]lectronic value
`
`loaded on the cardholder' s cards is debited from the cardholders account and
`
`transferred to a float account where the money remains available to the
`
`issuing bank until the corresponding value is presented by the merchant to
`
`the acquiring bank for payment." Id. at 14.
`
`3.
`
`Independent Claims 1 and 11
`
`Petitioner contends that the proposed combination of Hayaashi and
`
`Prisma discloses the limitations of independent claims 1 and 1 1. Pet. 19-4 2,
`
`55-59. Petitioner also articulates reasons to combine the relied-upon aspects
`
`ofHayaashiand Prisma with a reasonable expectation of success. Id. at 15-
`
`19. Regarding the claim I limitation "providing a portable device including
`
`or communicating with a smart card pre-loaded with an emulator configured
`
`to execute a request from an e-purse applet and provide a response the e(cid:173)
`
`purse applet is configured to expect," Petitioner maps the emulator to
`
`Prisma's preloadedJavaCard™Virtual Machine ("JCVM"). 4 Pet. 25
`( citing Ex 1005, 12, 24; Ex 1003 ifif 175-179).
`
`4 Petitioner relies on the same analysis of this claim 1 limitation for the
`claim 11 limitation "a portable device including or communicating with a
`smart card pre-loaded with an emulator configured to execute a request from
`and provide a response an e-purse applet is configured to expect." Pet. 5 5.
`Accordingly, our analysis of the claim 1 limitation applies equally to the
`claim 11 limitation.
`
`11
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`

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`As an initial point, however, we note that Petitioner does not establish
`
`sufficiently that the proposed combination of Hayaashi and Prisma would
`
`incorporate Prisma' s JCVM. See id. at 15-19. Instead, Petitioner asserts
`
`that one of ordinary skill in the art "would have simply needed to modify
`
`Hayaashi 's smart IC card chip 171 to incorporatePrisma 'score smart card
`
`elements, including CALC/OS and support for third-party e-purse applets."
`Id. at 1 7 ( citing Ex 100 3 ,r,r 15 8-16 7). More specifically, Petitioner
`provides an annotated diagram, reproduced below, to identify the smart card
`
`components from Prisma to be incorporated into Hayaashi' s smart IC card
`
`chip 171.
`
`R: ;;, :W:-:i.
`~:=:;:-~:-{~::•:.~~ t~~
`
`Id. at 18 ( citing Ex 100 5, 9). In this annotated diagram, Petitioner adds red
`
`borders to the three boxes labeled "e-purse," "CALC," and "OS," 5 thereby
`
`5 "CALC" is Prisma's Card and Application LifeCycle manager, and "OS"
`is the card's operating system. Ex. 1005, 6, 9.
`
`12
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`identifying these three components as the only components incorporated into
`
`Hayaashi. As such, Petitioner does not specify Prisma' s JCVM as
`
`component that is incorporated into Hayaashi.
`
`To the extent Petitioner's reference to "support for third-party e-purse
`
`applets" is meant to include Prisma' s JCVM, such a broad statement that
`
`fails to specifically mention Prisma' s JCVM lacks sufficient specificity to
`
`suggest that it would have been obvious to modify Hayaashi to include
`
`Prisma's JCVM. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`
`1363 (Fed. Cir. 2016) ("In an IPR, the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`unpatentable." ( citing 35 U.S. C. § 312(a)(3)); see also Intelligent Bio(cid:173)
`
`Systems, Inc. v. lllumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`
`2016) ("It is of the utmost importance that petitioners in the IPR proceedings
`
`adhere to the requirement that the initial petition identify 'with particularity'
`
`the 'evidence that supports the grounds for the challenge to each claim.'"
`
`(quoting 35 U.S.C. §312(a)(3))).
`
`For these reasons, we determine that the Petition fails to explain
`
`adequately why one of ordinary skill in the art would have been led to
`
`incorporate Prisma' s JCVM into Hayaashi.
`
`Furthermore, even if it would have been obvious to incorporate
`
`Prisma' s JCVM into Hayaashi, Patent Owner disputes that the combination
`
`would satisfy the claimed requirement of an "emulator configured to execute
`
`a request from an e-purse applet and provide a response thee-purse applet is
`
`configured to expect," arguing that Petitioner fails to identify an e-purse
`
`applet and merely assumes the existence of a "third-party e-purse applet."
`
`Prelim. Resp. 11. We agree with Patent Owner because, although the
`
`Petition states that "[i]n the context of a third-party e-purse applet, this Java
`
`13
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`software runs a downloaded applet to 'emulate' an e-purse for e-commerce
`
`and m-commerce transactions," this statement does not explain adequately
`
`why one of ordinary skill in the art would have provided a third-party
`
`e-purseapplet. See Pet. 25-26(citing Ex. 1003ifif 175-179).
`
`In the section discussing the preamble of claim 1, however, Petitioner
`
`argues that Prisma provides for dynamic downloading of third-party applets
`
`and applications, "such that the Prisma card can be 'specially designed to
`
`respond to the needs of the sectors in which smart cards play or will play an
`
`important role."' Id. at 22-23 (citing Ex 1005, 6-10; quoting Ex 1003
`,r 173 ). Then, Petitioner argues that, because Prisma' s card can support
`multiple implementation-specific e-purses, one of ordinary skill in the art
`
`"would have been motivated to download implementation-specific e-purses
`
`to facilitate Prisma 's goal of multi-sector interoperability." Id. at 23 ( citing
`Ex. 1003 ,r,r 168-174).
`This assertion does not state explicitly that the combination would
`
`include an e-purse applet as opposed to an e-purse. But even assuming for
`
`the sake of argument that one of ordinary skill in the art would have
`
`included an e-purse applet, we are not persuaded that the emulator (i.e.,
`
`Prisma' s JCVM) would have been configured to execute a request from the
`
`e-purse applet and provide a response the e-purse applet is configured to
`
`expect. For this aspect of the claim limitation, Petitioner, relying on the
`
`testimony of Mr. Smith, asserts that "[t]he JCVM is configured to execute a
`
`request from a downloaded Java e-purse applet and provide a response the e(cid:173)
`
`purse applet is configured to expect. More particularly, the 'Java Card
`
`environment enables smart cards to run Java applets."' Pet. 26 ( citing
`
`Ex. 1003 ifif 175-179). Mr. Smith testifies that:
`
`14
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 16 of 305
`IPR2022-01240
`Patent 8,118,218 B2
`
`It is ... my opinion that the JCVM "execute a request from an e(cid:173)
`purse applet and provides a response the e-purse applet is
`configured to expect" as claimed because the JCVM ensures that
`an applet operates as expected and that the applet' s requests are
`handled as the applet expects regardless of the underlying
`hardware platform.
`Ex. 1003 ,r 178. This testimony, however, is entitled to little weight because
`Mr. Smith fails to provide the underlying basis for his opinion. See 3 7
`
`C.F .R. § 42. 65( a) ("Expert testimony that does not disclose the underlying
`
`facts or data on which the opinion is based is entitled to little or no
`
`weight."); see also Nobel Biocare Services AG v. lnstradent USA, Inc., 903
`
`F.3d 1365, 1382(Fed. Cir. 2018)(explaining thattheBoardcanreject
`
`arguments based on expert testimony that lacks specificity or detail). The
`
`assertion that "the JCVM ensures that an applet operates as expected" is a
`
`conclusory statement not supported sufficiently by any objective evidence or
`
`analysis. Accordingly, we do not find Mr. Smith's testimony of this point
`
`persuasive. Moreover, neither the Petition nor Mr. Smith explains
`
`sufficiently how Hayaashi or P risma disclose providing an e-purse applet
`
`that the JCVM would interact with in the manner claimed.
`
`For the above reasons, we determine Petitioner has not met its burden
`
`to show a reasonable likelihood it would prevail with respect to the
`
`contention that claims 1 and 11 are unpatentable over the combination of
`
`Hayaashi and Prisma.
`
`4. Dependent Claims 2-l0and 12-18
`
`Claims 2-10 depend from claim 1 and, thus, contains all the
`limitations of claim 1. Claims 12-18 depend from claim 11 and, thus,
`contains all the limitations of claim 11.
`
`15
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 17 of 305
`IPR2022-01240
`Patent 8,118,218 B2
`
`Petitioner's challenges to dependent claims 2-10 and 12-18 do not
`
`overcome the deficiencies discussed above with respect to the challenge to
`independent claims 1 and 11. See Pet. 42-54, 59-61. Accordingly, for the
`
`same reasons discussed above in connection with claims 1 and 11, we find
`
`Petitioner has not met its burden to show a reasonable likelihood that claims
`
`2-10 and 12-18 are unpatentable over the combination ofHayaashi and
`
`Prisma.
`
`IV. CONCLUSION
`
`For the foregoing reasons, we do not institute inter partes review.
`
`In consideration of the foregoing, it is hereby:
`
`V. ORDER
`
`ORDERED thatthe Petition is denied as to all challenged claims of
`
`the '218 patent; and
`
`FURTHER ORDERED that no inter part es review is instituted.
`
`16
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 18 of 305
`IPR2022-01240
`Patent 8,118,218 B2
`
`FOR PETITIONER:
`
`PaulR. Hart
`Adam P. Seitz
`ERISEIP
`paul. hart@eriseip.com
`adam. seitz@eriseip.com
`
`FORPATENTOWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Enrique W. Iturralde
`Richard Cowell
`F ABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturralde@fabricantllp.com
`rcowell@fabricantllp.com
`
`17
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 19 of 305
`Case 6:22-cv-00697 Document 3 Filed 06/28/22 Page 1 of 1
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Western District of Texas - Waco Division
`filed in the U.S. District Court
`on the following
`D Trademarks or @Patents.
`( D the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`6:22-cv-00697
`PLAINTIFF
`
`RFCyber CORP.
`
`DATE FILED
`6/28/2022
`
`U.S. DISTRICT COURT
`Western District of Texas - Waco Division
`DEFENDANT
`
`VISA U.S.A. INC.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 8,118,218
`
`2 8,448,855
`
`3 9,189,787
`
`4 9,240,009
`
`5
`
`2/21/2012
`
`5/28/2013
`
`RFCyber Corp.
`
`RFCyber Corp.
`
`11/17/2015
`
`RFCyber Corp.
`
`1/19/2016
`
`RFCyber Corp.
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/WDGEMENT
`
`I (BY) DEPUTY CLERK
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2-Upon filing document adding patent(s), mail this copy to Director Copy 4-Case file copy
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 20 of 305
`Case 2:20-cv-00274-JRG-RSP Document 270 Filed 03/28/22 Page 1 of 1 PagelD #: 19473
`
`AO 120 (RcY ()8/1 ll}
`
`TO:
`
`Mail Stop 8
`Diredor of the U.S. Patent and Trademark Otlice
`P.O.Boxl450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FlLlNG OR DET.ERMINA TION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C § 290 and/or 15 U.S.C. § 11 J.6 you are hereby advised tlt.at a rnuri ac1ion has been
`for the Eastern District of Texas, Marshal! Division
`fik,J in thr us District Cm1rt
`on tlie following
`0 Trademarks or D Patents..
`( 0 th..:, pakllt acii.on involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2 :10-cv-00274
`PLAfNTIFF
`
`DATE FILED
`August 24, 2020
`
`U.S. DISTRICT COURT
`for the Eastern District of Texas. Marshall Division
`DEFENDANI
`
`RFCyber Corp.
`
`Google LLC and Google Payment Corp.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADE!vfARK
`
`! 8,118,218
`
`2 8,448,855
`
`J 9,189,787
`
`4 9,240,009
`
`February 21, 2012
`
`RFCyber Corp.
`
`May 28, 2013
`
`RFCyber Corp.
`
`November 17, 2015
`
`RFCyber Corp.
`
`January 19, 2016
`
`RFCyber Corp.
`
`5 10,600,046
`
`March 24, 2020
`
`RFCyber Corp.
`
`fa the above---entitled c1,1:;.;, the following p~te!1t(s)/ trademark(s) h;ivc; bee;) indudc;d;
`
`D Answer
`
`0 Cross Bill
`
`□ Other Pleading
`HOLDER OF PATENT OR TRADEll..fARK
`
`DATE INCLUDED
`
`PATENTOR
`TRAJ)EMARK NO.
`
`INCLUDED BV
`
`D Amendment
`DATE OF PATENT
`OR TltADElvlARK
`
`l
`
`2
`
`3
`
`4
`
`5
`
`In the above--enlitled ca~e, the following dechfon has been rendered or judgement is~med:
`
`DEClSION/JUDGE~:fENT
`All claims asserted against Defendants by Plaintiff are D1Siv1ISSED
`WITH PREJUDICE and all claims for relief asserted against Plaintiff by Defendants are
`DISMISSED WITHOUT PREJUDICE
`
`CLERK
`c--~~A. {i'1crcr-U-
`
`{BYI DEPUTY CLERK
`
`nkl
`
`DATE
`3/28/22
`
`Copy 1--Upnn initiation of action, mail this mp)-' tn Director Cupy 3--Upon termin11tion of.action, mui! this copy to Director
`Copy 2-:Up-0n fl.ling document adding patent(s), mail th.is ropy to Dil'eefor Copy 4----Case file wpy
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 21 of 305
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: December 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
`
`IPR2021-00979
`Patent 8,118,218 B2
`
`Before PATRICK R. SCANLON, KEVIN W. CHERRY, and
`KRISTI L. R. SA WERT, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Institution of inter Partes Review
`35 USC.§ 314
`
`

`

`Case 6:22-cv-00697-ADA Document 43-4 Filed 09/05/23 Page 22 of 305
`
`IPR2021-00979
`Patent 8,118,218 B2
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. and Samsung Electronics Co.,
`
`Ltd. ("Petitioner") filed a petition to institute inter partes review of
`
`claims 1-18 of U.S. Patent No. 8,118,218 B2 (Ex. 1001, "the '218 patent").
`
`Paper 2 ("Pet."). RFCyber Corp. ("Patent Owner") filed a Preliminary
`
`Response (Paper 6, "Prelim. Resp."). With our authorization, Petitioner
`
`filed a Reply to Patent Owner's Preliminary Response. Paper 8 ("Reply").
`
`Patent Owner filed a Sur-Reply. Paper 9 ("Sur-Reply").
`
`We have authority to determine whether to institute an inter partes
`
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To
`
`institute an inter partes review, we must determine that the information
`
`presented in the Petition shows "a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition." 35 U.S.C. § 314(a). For the reasons set forth below, we determine
`
`that the information presented in the Petition does not establish a reasonable
`
`likelihood that Petitioner will prevail wi