Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CASE NO.: 6:22-cv-00697-ADA
`
`JURY TRIAL DEMANDED
`
`))))))))))))
`
`RFCyber CORP.,
`
`Plaintiff,
`
`v.
`
`VISA U.S.A. Inc.,
`
`Defendants.
`
`DEFENDANT VISA U.S.A. INC.’S
`REPLY CLAIM CONSTRUCTION BRIEF
`
`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 2 of 18
`
`TABLE OF CONTENTS
`
`PAGE
`
`I.
`
`II.
`
`III.
`
`TERMS NO LONGER IN DISPUTE................................................................................. 1
`
`“FUND” AND “FUND STORED IN AN EMULATOR” ................................................. 2
`
`INDEFINITE TERMS & CLAIMS .................................................................................... 6
`
`A.
`
`Each Asserted System Claim Is Indefinite for Covering Both an Apparatus
`and a Method of Using the Apparatus .................................................................... 6
`
`1.
`
`2.
`
`’218 Patent Claims 11-18............................................................................ 6
`
`’787 Patent Claims 1-8, 10.......................................................................... 9
`
`B.
`
`C.
`
`“contactless interface that facilitates communication between the e-purse
`applet in the smart card and the payment server over a wired network” .............. 10
`
`“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” ..................................................................................................... 12
`
`IV.
`
`CONCLUSION ................................................................................................................. 13
`
`-i-
`
`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 3 of 18
`
`TABLE OF AUTHORITIES
`
`PAGE(S)
`
`CASES
`02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................2
`Courtesy Prods., L.L.C. v. Hamilton Beach Brands, Inc., No. 13-2012-SLR,
`2015 WL 7295436 (D. Del. Nov. 18, 2015) ........................................................................8
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016)............................................................................................2
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004)............................................................................................6
`Intel Corp. v. Qualcomm Inc.,
`21 F.4th 801 (Fed. Cir. 2021) ............................................................................................12
`IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)........................................................................................6, 8
`MasterMine Software, Inc. v. Microsoft Corp.,
`874 F.3d 1307 (Fed. Circ. 2017) ......................................................................................7, 8
`MicroStrategy Inc. v. Bus. Objects Americas,
`238 F. App’x 605 (Fed. Cir. 2007) ....................................................................................12
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .............................................................................................................6
`U.S. Well Servs., Inc. v. Halliburton Co., No. 6:21-CV-00367-ADA,
`2022 WL 819548 (W.D. Tex. Jan. 17, 2022) ......................................................................9
`UltimatePointer, L.L.C. v. Nintendo Co.,
`816 F.3d 816 (Fed. Cir. 2016)..............................................................................................9
`STATUTES
`35 U.S.C. § 102 ..............................................................................................................................10
`
`-ii-
`
`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 4 of 18
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`Plaintiff RFCyber Corp.’s (“RFCyber’s”) Responsive Claim Construction Brief (Dkt. 43;
`
`“Response” or “Resp.”) only confirms that Visa U.S.A. Inc.’s (“Visa’s”) proposed constructions
`
`are correct, and that several of the terms are indefinite. In advance of filing its Response, RFCyber
`
`dropped several claims essentially conceding that those claims are indefinite, as Visa long
`
`contended. The remaining terms fare no better. They are similarly indefinite, and their
`
`corresponding claims are invalid.
`
`As to the “fund” terms, RFCyber’s purported “plain and ordinary meaning” construction
`
`stretches the meaning of the word “fund” beyond any ordinary understanding, sweeping in
`
`unclaimed devices and functionality. RFCyber’s construction is inconsistent with the intrinsic
`
`evidence and contemporaneous extrinsic evidence reflective of the plain and ordinary meaning of
`
`the term to a person having ordinary skill in the art (“POSA”). The Court should reject RFCyber’s
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`implicit, unsupportable construction and adopt Visa’s proposed constructions.
`
`I.
`
`TERMS NO LONGER IN DISPUTE
`
`Because RFCyber is no longer asserting infringement of claims 3 and 14 of the ’218 Patent,
`
`claims 3 and 13 of the ’787 Patent, and claims 6 and 15 of the ’855 Patent against Visa, there is no
`
`longer a dispute as to the following claim terms:
`
`•
`
`•
`
`/ existing security
`issue the e-purse
`“e-purse SAM originally used to
`authentication module (SAM) originally used to issue the e-purse”
`
`“an appropriate transformed password based on the keys in the emulator”
`
`In addition, the parties stipulated to stay the case as to the ’009 Patent (Dkt. 42), and
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`RFCyber did not respond to arguments relating to the ’009 Patent in its Response. Accordingly,
`
`Visa does not address those arguments here.
`
`-1-
`
`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 5 of 18
`
`II.
`
`“FUND” AND “FUND STORED IN AN EMULATOR”
`
`Term and Claims
`“fund” / “fund stored in the
`emulator”
`
`’855 Patent, Claim 9
`’787 Patent, Claims 1 and 11
`“fund” / “funded” / “funding”
`
`’218 Patent, Claims 10, 18
`’855 Patent, Claims 1, 4, 13
`
`Visa’s Construction
`“money balance” / “money
`balance
`stored
`in
`the
`emulator”
`
`RFCyber’s Construction
`Plain and ordinary meaning
`except for “emulator”
`
`“add” / “added” / “adding
`money balance to”
`
`Plain and ordinary meaning
`
`RFCyber argues that “[t]he ‘fund’ terms are readily understandable to a lay juror without
`
`construction.” Resp. at 5. But the law is clear that “[w]hen the parties present a fundamental
`
`dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” 02 Micro Int’l Ltd.
`
`v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361-62 (Fed. Cir. 2008); see also Eon Corp. IP
`
`Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1319-20 (Fed. Cir. 2016). Here,
`
`Visa’s proposed construction of “money balance” or “adding money balance to” are consistent
`
`with both the specification and extrinsic dictionary evidence from the time of the alleged invention.
`
`Dkt. 41 (“Opening Br.”) at 8-13.
`
`In contrast, RFCyber’s purported “plain and ordinary meaning” stretches the meaning of
`
`“fund” far beyond any ordinary understanding of the term to encompass a storage of “tokens,
`
`consumable keys, or other object [sic] which allow a user to make purchases.” Resp. at 6. In
`
`support of this argument, RFCyber relies on disclosures and embodiments from the specification
`
`that lack any reference to the term “fund” or “funding.” Moreover, RFCyber mischaracterizes
`
`Visa’s proposed construction as requiring that the preamble be limiting, when in fact the terms
`
`“fund” and funding” are also recited in the body of the claims.
`
`-2-
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`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 6 of 18
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`First, neither of the two disclosures from the specification relied upon by RFCyber uses
`
`the term “fund” or discusses a “fund” and thus are not relevant to resolving the dispute over the
`
`meaning of the term “fund.” See id. As to the first disclosure, the specification “specifically
`
`discloses a ‘purchase key’ which may be ‘personalized into the purse.’” Id. (citing ’855 Patent at
`
`5:62-67). But that portion of the specification merely explains the personalization process, not
`
`funding or how to store a fund. See Dkt. 1-2, ’855 Patent at 5:62-67 (“[In] one embodiment, the
`
`essential data to be personalized into the purse include one or more operation keys (e.g., a load
`
`key and a purchase key), default PINs, administration keys (e.g., an unblock PIN key and a reload
`
`PIN key), and passwords (e.g., from Mifare).”).1 Personalization is just one aspect of the claimed
`
`invention, one that is separately recited in the claims from “fund” and “funding.” E.g., id. at claim
`
`1 (“wherein the e-purse in the portable device has been personalized by operations”); ’218 Patent
`
`(Dkt. 1-1) at claim 1 (“personalizing the e-purse applet by reading off data from the smart card to
`
`generate in the smart card one or more operation keys”).
`
`The ’218 Patent, a related patent having the same specification as the ’855 Patent, confirms
`
`this distinction between “personalization” and “funding.” All of the claims of the ’218 Patent
`
`recite “personalizing an e-purse,” but only dependent claims 10 and 18 recite “wherein the e-purse
`
`is funded.” Thus, it is clear that an e-purse may be personalized, but that does not necessarily
`
`mean that the e-purse is also funded or has a fund stored on the device. “Personalization” and
`
`“funding” are not the same thing.
`
`The ’218 Patent refers to “fund[ing] the e-purse from an account associated with a bank.”
`
`’218 Patent at 7:20-22. Bank accounts do not contain “tokens, consumable keys, or other object
`
`1 All emphasis added unless otherwise indicated.
`
`-3-
`
`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 7 of 18
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`which allow a user to make purchases.” They contain money balances. Claim 9 of the ’855 Patent
`
`recites “initiating a fund transfer request by a server with a financial institution administrating the
`
`e-purse when the request is successfully verified.” The meaning of “fund” in that limitation is
`
`clear – a money balance is subtracted from a bank account and added to the e-purse.
`
`The second disclosure highlighted by RFCyber involves “the process of ‘financing an e-
`
`purse according to one embodiment’ [which] is accomplished through a request/response of
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`‘APDU commands’ with a payment server.” Resp. at 6 (citing ’855 Patent at 7:18-26, 7:53-63).
`
`The full description of this embodiment describes the flowchart of how commands are sent to and
`
`from the bank, as shown in Figures 4A and 4B:
`
`FIG. 4A and FIG. 4B show together a flowchart or process 400 of financing an e-
`purse according to one embodiment of the present invention. The process 400 is
`conducted via the m-commerce path of FIG. 2. To better understand the process
`400, FIG. 4C shows an exemplary block diagram 450 of related blocks interacting
`with each other to achieve the process 400. Depending on an actual application of
`the present invention, the process 400 may be implemented in software, hardware
`or a combination of both.
`
`[…]
`
`At 416, the response from the bank is transported to the payment network and
`server. The midlet strips and extracts the APDU commands from the response and
`forwards the commands the e-purse at 418. The e-purse verifies the commands at
`420 and, provided they are authorized, send the commands to the emulator at 420
`and, meanwhile updating a transaction log. At 422, a ticket is generated to
`formulate a response (e.g., in APDU format) for payment server. As a result, the
`payment server is updated with a successful status message for the midlet, where
`the APDU response is retained for subsequent verification at 424.
`
`’855 Patent at 7:18-63.
`
`As with the first disclosure, this cited portion of the specification discusses another aspect
`
`of the claimed invention—the path and method for sending and receiving commands—not funding
`
`or funds. For example, claims 8 and 9 of the ’218 Patent recite:
`
`-4-
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`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 8 of 18
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`8. The method as recited in claim 7, wherein messages exchanged between the
`midlet and the payment server are in a type of commands encapsulated in network
`messages.
`
`9. The method as recited in claim 8, wherein the commands are applicable for
`APDU which stands for Application Protocol Data Unit.
`
`There is no mention of “fund” in these claims, or in claims 1 and 7 from which they depend.
`
`Despite such absence, RFCyber argues that this disclosure shows that “[f]unding an e-purse
`
`through the disclosed APDU commands supports far more types of ‘fund’ (such as tokens and
`
`keys) than the ‘money balance’ to which Visa seeks to limit the claims.” Resp. at 6. But RFCyber
`
`is wrong. This embodiment merely shows that regardless of whether the e-purse is storing funds
`
`or tokens or keys, APDU commands can be used to exchange messages with the payment server.
`
`Like with personalization, this discussion of APDU commands is a separate and distinct aspect of
`
`the alleged invention. The manner in which funds are transmitted (e.g., via APDU commands)
`
`does not extend the meaning of “fund” (i.e., money balance) beyond its plain and ordinary
`
`meaning.
`
`RFCyber’s reliance on disclosures that make no reference to “fund” or “funding” is
`
`misguided. Those disclosures provide no relevant insight into the meaning of the term “fund” that
`
`would resolve the parties’ dispute. By contrast, to determine what a “fund” is and how one is
`
`added to the e-purse, Visa properly identified key embodiments that use the term “fund.” Opening
`
`Br. at 8-13.
`
`Finally, RFCyber suggests that Visa’s position requires that the preamble method for
`
`“funding an e-purse” be limiting. See Resp. at 6. However, this is a mischaracterization of Visa’s
`
`position. Consistent with what the law requires, where the term “fund” appears in limitations in
`
`the body of a claim, Visa urges that it be given its proper meaning and effect. And vice versa,
`
`where the claims do not recite a “fund” or “funding” at all, such as in claims 1-9 and 11-17 of the
`
`-5-
`
`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 9 of 18
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`’218 Patent, there is no requirement that the financing process involve a fund or money balance.
`
`RFCyber’s position that a “fund” can be “tokens, consumable keys, or other object [sic] which
`
`allow a user to make purchases” would render the term “fund” meaningless because any usable
`
`“e-purse”—a separately-recited term in each asserted claim—is going to contain some “object
`
`which allow[s] the user to make purchases.” Therefore, it would make no difference under
`
`RFCyber’s construction whether a claim also recites a “fund” term or not. This position violates
`
`basic canons of claim construction. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`
`Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[A]ll claim terms are presumed to have meaning in a
`
`claim. . . . [W]hen an applicant uses different terms in a claim it is permissible to infer that he
`
`intended his choice of different terms to reflect a differentiation in the meaning of those terms.”).
`
`III.
`
`INDEFINITE TERMS & CLAIMS
`
`A.
`
`Each Asserted System Claim Is Indefinite for Covering Both an Apparatus
`and a Method of Using the Apparatus
`
`1.
`
`’218 Patent Claims 11-18
`
`It is black letter law that “a patent is invalid for indefiniteness if its claims, read in light of
`
`the specification delineating the patent, and the prosecution history, fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 572 U.S. 898, 901 (2014). A “claim covering both an apparatus and a method
`
`of use of that apparatus” is a textbook example of such a claim that lacks reasonable certainty to a
`
`POSA. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
`
`RFCyber cannot overcome the indefiniteness of its claim by having the Court simply assign a
`
`scope to the claim when the claim as written lacks reasonable certainty to overcome indefiniteness.
`
`RFCyber’s contention that a reasonably certain meaning of the claims could include a
`
`construction that is plainly contradicted by the intrinsic evidence underscores the indefiniteness
`
`-6-
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`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 10 of 18
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`and implausibility of its contention. See Resp. at 8 (arguing in favor of construction that “the e-
`
`purse applet is not an element of the claimed portable device”). In fact, the ’218 Patent states:
`
`Broadly speaking, the invention is related to a mechanism provided to devices,
`especially portable devices, functioning as an electronic purse (e-purse) to be able
`to conduct transactions over an open network with a payment server without
`compromising security.
`
`’218 Patent at 1:50-54; see also id. at Abstract (“Techniques for portable devices functioning as
`
`an electronic purse (e-purse) are disclosed.”).
`
`Similarly, during prosecution in distinguishing claims 11-18 over the prior art, the
`
`applicants relied on arguments regarding (1) “installing and personalizing the e-purse applet in the
`
`smart card,” (2) the prior art “not explicitly disclos[ing] establishing a security channel to install
`
`the e-purse applet in the smart card,” and (3) the “e-purse in the instant application.” Dkt. 43-4
`
`(12/31/2010 Response to Final Office Action, Prelim. Amendments) at 8-9. In light of the intrinsic
`
`evidence that the e-purse is central to the invention, as is downloading the e-purse, a POSA could
`
`not be reasonably certain of RFCyber’s proposed construction that a claim reciting that “the e-
`
`purse applet is downloaded and installed in the smart card” does not actually require any e-purse
`
`applet or downloading it at all.
`
`RFCyber’s contention that the claimed device is merely “configured to” perform certain
`
`steps is similarly meritless. For example, the claim does not recite that the system is “configured
`
`to download” the e-purse. ’218 Patent Claim 11. Instead, it recites that “the e-purse applet is
`
`downloaded from the payment server” under certain conditions, namely, “when the smart card is
`
`in communication with the payment server.” Id. The claim further recites additional functions of
`
`the e-purse—the e-purse RFCyber claims is not required at all—including that “any subsequent
`
`operation of the emulator is conducted over the security channel via the e-purse applet.” Id. This
`
`distinguishes the claim at issue from those in the cases cited by RFCyber, including MasterMine
`
`-7-
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`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 11 of 18
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`Software, Inc. v. Microsoft Corp., 874 F.3d 1307 (Fed. Circ. 2017). In MasterMine, the limitations
`
`at issue did not relate to the circumstances under which the “reporting module” was downloaded
`
`or installed in the claimed system; the issue was only whether the functions of the “reporting
`
`module” itself implicated IPXL issues. 874 F.3d at 1315-16. Here in contrast, a finding of
`
`definiteness would require that the “e-purse applet” discussed at length in the claim was not
`
`actually required by the claim at all. Resp. at 8.
`
`The limitation at issue is more similar to that in Courtesy Prods., L.L.C. v. Hamilton Beach
`
`Brands, Inc., No. 13-2012-SLR, 2015 WL 7295436, at *5 (D. Del. Nov. 18, 2015). In that case,
`
`claims to a “beverage brewing system” included limitations requiring, e.g., “the brew baskets being
`
`inserted into the location in the beverage brewing machine” which were followed by subsequent
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`limitations regarding the brew baskets in the system. Id. The court concluded “that a person of
`
`ordinary skill in the art would not understand whether the claims at bar are infringed by an
`
`apparatus capable of heating water and having brew baskets inserted or when a person actually
`
`uses the beverage brewing system to heat water and inserts a brew basket.” Id. Similarly, here, a
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`POSA would not understand whether the claims are infringed by a device capable of downloading
`
`the e-purse or when the e-purse is actually downloaded onto the device.
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`Moreover, as discussed previously, the intrinsic record is clear that the installation of the
`
`e-purse on the device is not merely a capability of the claimed device; it is a claimed method step
`
`inserted in system claim 11. The disclosure cited in support of the limitation states that “a user
`
`desired to personalize an e-purse embedded in a device” and an “authorized personal [sic] initiates
`
`a personalization process 304 to personalize the e-purse for a user thereof[.]” ’218 Patent at 5:60-
`
`6:1.
`
`-8-
`
`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 12 of 18
`
`2.
`
`’787 Patent Claims 1-8, 10
`
` RFCyber’s attempt to analogize “purse manager midlet being executed in the portable
`
`device to act as an agent” to the claims at issue in 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), and UltimatePointer,
`
`L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016), is misplaced. Resp. at 13. In both of
`
`those cases, the court determined that the limitations at issue reflected the “capability of that
`
`structure,” as they described activities performed by the structure. UltimatePointer, 816 F.3d at
`
`827 (regarding claim limitation “image sensor generating data”); see also U.S. Well Servs., Inc.,
`
`2022 WL 819548, at *5 (regarding claim limitation “variable frequency drive frequently performs
`
`electric motor diagnostics to prevent damage to the at least one electric motor”). Here, the
`
`limitation at issue does not recite, for example, “purse manager midlet acting as an agent.” Instead,
`
`it recites “purse manager midlet being executed in the portable device to act as an agent.” Neither
`
`RFCyber nor its expert contends that the midlet is capable of executing itself, and therefore, this
`
`language cannot merely describe a capability of the midlet. See Dkt. 43-3 (M. Jones Decl.) ¶ 65
`
`(referring to “the midlet, when executed”).
`
`RFCyber also fails to explain how the limitation “wherein the keys are updated when the
`
`personalization process built on the first security channel completes” is a mere “precondition” to
`
`the claimed system. Resp. at 14. There is no explanation for how a POSA looking at a system
`
`after it has been personalized and with updated keys is supposed to know whether those keys were
`
`updated during the personalization process or if they were only updated when the personalization
`
`process was completed. Similarly, it is uncertain how a POSA is supposed to know whether that
`
`personalization process was performed using the claimed first security channel when the POSA is
`
`only looking at the apparatus after this “precondition” is met. The claims are indefinite.
`
`-9-
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`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 13 of 18
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`B.
`
`“contactless interface that facilitates communication between the e-purse
`applet in the smart card and the payment server over a wired network”
`
`The term “contactless interface that facilitates communication between the e-purse applet
`
`in the smart card and the payment server over a wired network” is indefinite because the claim
`
`language is susceptible to multiple interpretations and has an inherent contradiction that leaves a
`
`POSA without a meaningfully precise claim scope. The term fails to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.
`
`In an attempt to resolve the ambiguity and contradiction, RFCyber argues that a “wired
`
`network” refers to “in-person transactions through a cash register point-of-sale system” and that
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`“wireless network” refers to “remote transactions with WiFi or a cellular network.” Resp. at 16.
`
`Similarly, RFCyber distinguishes a “contactless interface” as “NFC interface to contactlessly
`
`interface with a wired network at a cash register,” whereas the “midlet [is] configured to facilitate
`
`wireless communication between the e-purse applet in the smart card and a payment server over a
`
`wireless network.” Resp. at 16-17. But as explained below, there are no such distinctions or
`
`consistent usage of these terms in the claims, specification, or prosecution history.
`
`In fact, the prosecution history quoted by RFCyber does not support RFCyber’s
`
`interpretation of the claim language and only adds confusion. For example, RFCyber cites to the
`
`following paragraph from the examiner’s rejection under 35 U.S.C. § 102:
`
`Regarding claim 1, Shmueli teaches providing an e-purse (e-wallet 82, Fig. 6;
`para [0053]), the method comprising: providing a portable device (host system 12
`embodied as a cell phone, Fig. 1; para [0029]) including or communicating with a
`smart card module (key 10 embodied as smart card 10B, Figs. 1 & 2B; para [0033])
`pre-loaded with an emulator (para [0027-0028]), the portable device including a
`memory space (memory 28, Fig. 1; para [0029]) loaded with a midlet (keylets such
`as web keylet 56, Fig. 4) that is configured to facilitate communication between an
`e-purse applet (key manager application 58, Fig. 4; para [0041-0044]) therein and
`a payment server (server 14 running web servlet 66, Figs. 1 & 4) over a wireless
`network (mobile phone network is partially wireless), wherein the portable device
`further includes a contactless interface (mobile phone network interface 38, Fig.
`
`-10-
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`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 14 of 18
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`1) that facilitates communication between the e-purse applet therein and the
`payment server over a wired network (host 12 embodied as a mobile phone
`accessing network 16 via the internet would include a partially wired network,
`i.e. the internet); personalizing the e-purse applet by reading off data from the smart
`card to generate one or more operation keys (Figs. 3A-3B) that are subsequently
`used to establish a secured channel between the e-purse and a SAM or a payment
`server (para [0037-0042]).
`
`Dkt. 43-4 (2/3/2010 Office Action Summary at 238-239) at 3-4.
`
`Here, the examiner maps the “contactless interface” to the “mobile phone network
`
`interface” that “facilitates communication . . . over a wired network.” Id. at 238. The examiner
`
`further maps “a wired network” to “network 16 via the internet.” Id. at 239. This is the opposite
`
`of RFCyber’s proposed understanding of these terms. RFCyber argues that the internet is accessed
`
`by a “wireless interface” and not the “contactless interface.” See Resp. at 16 (“The claims and the
`
`specification of the ’218 Patent unambiguously explain that a ‘wired network’ is one with which
`
`a device can interface using a ‘contactless interface,’ whereas a ‘wireless network’ requires a
`
`‘wireless interface.’”2). This inconsistency alone demonstrates that the claim scope is unclear.
`
`It appears that in interpreting these claim terms, the examiner inserted the word “partially”
`
`to map the mobile phone network and the internet as networks that are both “partially wired” and
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`“partially wireless.” See Dkt. 43-4 at 238, 241. This is essentially what RFCyber also argues
`
`when it says that Visa is incorrect in assuming that a “wired” network must be “one without
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`wireless components.” See Resp. at 19. But the word partially is nowhere in the specification or
`
`2 RFCyber contrasts “contactless interface” with “wireless interface,” but “wireless interface”
`is not a term found in the patents. Resp. at 16. In another part of its argument, RFCyber compared
`“contactless interface” to the “midlet,” suggesting that “midlet” could be construed as “wireless
`interface” for facilitating communications over a cellular network. Id. Although “midlet” is not a
`claim term before the Court now, Visa disagrees with RFCyber and finds that RFCyber’s
`understanding is unsupported.
`
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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 15 of 18
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`the claim language. Moreover, inserting the word “partially” essentially takes away any
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`meaningful distinction between the claim terms “a wireless network” and “a wired network.” A
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`“partially wireless network” and a “partially wired network” both describe the same type of
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`network—a network with parts that are wired and parts that are wireless. Therefore, inserting
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`“partially” as RFCyber proposes would give two distinct claim terms identical meanings, which is
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`highly disfavored. MicroStrategy Inc. v. Bus. Objects Americas, 238 F. App’x 605, 609 (Fed. Cir.
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`2007) (“different claim terms are presumed to have different meanings”); see also Intel Corp. v.
`
`Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is highly disfavored to construe terms in a
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`way that renders them void, meaningless, or superfluous.”). And it does nothing to resolve the
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`ambiguity regarding the term “contactless interface.” Essentially, RFCyber is arguing that a
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`“wired network” can have wireless components and a “wireless network” can have wired
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`components, completely effacing any difference between “wired network” and “wireless network”
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`unless a “wired network” has no wireless components and a “wireless network” has no wired
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`components.
`
`Accordingly, the Court should find that the term “contactless interface that facilitates
`
`communication between the e-purse applet in the smart card and the payment server over a wired
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`network” is indefinite.
`
`C.
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`“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”
`
`RFCyber’s responsive arguments regarding this term raise more questions than they
`
`answer. RFCyber asserts that the term “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” is “simply used to
`
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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 16 of 18
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`describe functionality of the ‘agent’ in composing/receiving network requests to and from a
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`‘payment server’ as distinct from its functionality in composing/receiving commands and
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`responses to or from the ‘e-purse applet’ via an ‘RFID reader.’” Resp. at 20. But, again, it is
`
`unclear what it means for the agent to have these two functionalities be “distinct” from each other.
`
`This leaves open the question whether the agent has to perform these functions at different times,
`
`at the same time, or whether an agent that does one function but not the other is within the scope
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`of the claims. The extra language in the claims requiring the functions to be “distinct” in some
`
`unspecified way renders the claims indefinite.
`
`IV.
`
`CONCLUSION
`
`For the foregoing reasons, the Court should adopt Visa’s proposed constructions and hold
`
`that claims 1-18 of the ’218 Patent and claims 1-8 and 10 of the ’787 Patent are indefinite.
`
`Dated: September 18, 2023
`
`/s/ James C. Yoon
`James C. Yoon (CA State Bar No. 177155)
`jyoon@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Fax: (650) 493-6811
`
`Lucy Yen (NY State Bar No. 4871653)
`(pro hac vice)
`lyen@wsgr.com
`Cassie Black (NY State Bar No. 5599303)
`(pro hac vice)
`cblack@wsgr.com
`
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019-6022
`Telephone: (212) 999-5800
`Fax: (212) 999-5899
`
`-13-
`
`

`

`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 17 of 18
`
`Jamie Y. Otto (CA State Bar No. 295099)
`(pro hac vice)
`jotto@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`633 West Fifth St., Suite 1550
`Los Angeles, CA 90071
`Telephone: (650) 849-3109
`
`Attorneys for Defendant Visa U.S.A. Inc.
`
`-14-
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`

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`Case 6:22-cv-00697-ADA Document 44 Filed 09/18/23 Page 18 of 18
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`CERTIFICATE OF SERVICE
`
`The undersigned, an attorney, hereby certifies that a true and correct copy of the foregoing
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`document has been served on September 18, 2023, via the Court’s CM/ECF system on all counsel
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`of record who have consented to electronic service.
`
`By: /s