PTAB

IPR2017-01320

CPI Card Group Inc v. Gemalto SA

Key Events

Petition

petition

Title: System for Customizing Smart Cards
Brief Description: The ’418 patent discloses a system for customizing smart cards by managing data requests from multiple customizing stations to multiple data servers. The invention aims to solve prior art problems of communication bus insufficiency and inefficient resource sharing by using a dedicated management interface with bidirectional links to both the customizing stations and the data servers, separate from the main communication bus.

Prior Art Relied Upon: Goman (Patent 6,196,459).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Goman teaches a smart card personalization system that addresses the same problems as the ’418 patent with a nearly identical architecture. Goman’s “smart card personalization server 100” was asserted to be the claimed “management interface,” which connects multiple “personalization stations 130” (the claimed “customizing stations”) to external data resources like “security services 204” and “additional data sources 206” (the claimed “data server”). Petitioner contended that Goman’s server 100 receives data requests from the personalization stations, retrieves data from the external sources, and transmits the data back, thus teaching all limitations of independent claim 1. Dependent claims were argued to be obvious as they recite features also taught by Goman, such as using a multitasking operating system (claim 2) and providing enciphering data (claim 7).
- Key Aspects: Petitioner emphasized that this argument is substantially different from the one made by the Examiner during the original prosecution, which allegedly misidentified Goman’s controller 120 as the management interface.

Prior Art Relied Upon: Goman (Patent 6,196,459) and Applicant's Admitted Prior Art (AAPA) from the ’418 patent specification.
Core Argument for this Ground:
- Prior Art Mapping: Claim 4 adds limitations requiring each customizing station to comprise a “microprocessor” and a “reader/encoder.” Goman’s personalization stations are disclosed as having a “processor.” Petitioner asserted that the ’418 patent’s own specification admits that conventional customizing stations included a microprocessor and a reader/encoder.
- Motivation to Combine: A POSITA would have found it obvious to implement the “processor” in Goman’s personalization stations as the conventional microprocessor described in the ’418 patent’s AAPA. Similarly, it would have been an obvious and predictable design choice to include a conventional reader/encoder, a necessary component for interfacing with a smart card, in Goman’s stations.
- Expectation of Success: The combination involved substituting known, conventional elements (microprocessor, reader/encoder) for their intended purposes, leading to a predictable result.

Prior Art Relied Upon: Mackenthun (Patent 5,969,318).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Mackenthun teaches a smart card customization system where a central “gateway apparatus 30” connects card requesters with multiple card service providers. Petitioner mapped Mackenthun’s gateway 30 to the claimed “management interface,” the card requester’s computer 10 to a “customizing station,” and the computers of the service providers (40A-40I) to the “data servers.” Mackenthun’s system uses these components to receive requests, transmit them to the appropriate data provider, and return the necessary data for card personalization, thereby teaching the limitations of independent claims 1 and 13. For dependent claim 3, Petitioner argued that Mackenthun’s gateway is a computer with multiple communication ports, which a POSITA would understand could be implemented on a conventional multi-port card with serial links.
- Key Aspects: Petitioner asserted this ground was not redundant because Mackenthun discloses different technology (e.g., a gateway for multiple third-party service providers) and provides a distinct basis for invalidating dependent claims 3 and 14.

“management interface”: Petitioner proposed the construction “a communication interface between two devices.” This broad construction was argued to be supported by the specification and prosecution history and was critical for mapping Goman’s “server 100” and Mackenthun’s “gateway apparatus 30” onto this claim element.
“data server”: Proposed construction was “a device providing data.” Petitioner argued this construction was necessary because the patent’s Detailed Description was inconsistent with the claims, and this interpretation allows mapping to Goman’s external data sources and Mackenthun’s service provider computers.
“monitoring the occurrence of a request”: Proposed construction was “determining that a request has been received.” Petitioner argued that the specification provides no detail for this term and that this construction, which does not require active polling, is consistent with the Patent Owner’s litigation positions.

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate, even though Goman was considered during original prosecution. Petitioner contended that the Examiner’s rejection was based on a “fundamental misunderstanding” of Goman’s system, was not exhaustive, and was overcome by a fallacious applicant argument. The petition asserted that its grounds based on Goman were “substantially different” from the Examiner’s because they correctly mapped Goman’s server 100 (not controller 120) to the claimed management interface, presenting a new and more accurate invalidity theory.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 7-17 of the ’418 patent as unpatentable.