Unified Patents LLC v. MobilePay LLC

1. Case Identification

• Case #: IPR2019-00466
• Patent #: 9,800,706
• Filed: December 31, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): MobilePay LLC
• Challenged Claims: 1–4, 19, 21, 22, and 25

2. Patent Overview

• Title: System for Coupling a Credit Card Reader to a Mobile Device
• Brief Description: The ’706 patent discloses a system for connecting a peripheral device, such as a credit card reader, to a mobile device through its audio port. The system converts data from the peripheral into an analog audio signal, which is then transmitted to the mobile device, converted back to binary data, and uploaded to a cloud service for decoding.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 19, 22, and 25 are obvious over Tang in view of Kinzalow and Inoue.

• Prior Art Relied Upon: Tang (WO 2010/097711), Kinzalow (Patent 6,052,603), and Inoue (Patent 7,058,842).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tang disclosed the core system of a credit card reader connecting to a mobile device’s audio port, converting transaction data to an analog audio signal, transmitting it to the mobile device, and uploading the resulting binary data to a remote server (cloud) for processing. However, Tang allegedly lacked specific implementation details for certain components. To supply these details, Petitioner asserted that Inoue taught a controller with a port and input buffer for receiving and temporarily storing data from an external device, corresponding to the claimed "communication controller for buffering." Further, Kinzalow was cited to teach the specific audio port interface limitation where a connector "bridges a microphone pin" to allow the mobile device to detect its presence and disable the internal microphone, thus preventing signal interference from conflicting audio sources.
  • Motivation to Combine: A POSITA would combine Tang with Inoue to improve Tang’s controller with the known technique of buffering to ensure data integrity and processing efficiency. A POSITA would combine the resulting system with Kinzalow’s audio port interface to solve the known and foreseeable problem of conflicting audio inputs from the external card reader and the phone's internal microphone, a solution Kinzalow provides for a similar bidirectional audio communication system.
  • Expectation of Success: Petitioner contended that combining these known elements—a general system from Tang, a standard controller feature from Inoue, and a known audio interface solution from Kinzalow—would yield only predictable and successful results.

Ground 2: Claims 2, 3, and 21 are obvious over the Tang combination (Ground 1) further in view of Cheon.

• Prior Art Relied Upon: Tang (WO 2010/097711), Kinzalow (Patent 6,052,603), Inoue (Patent 7,058,842), and Cheon (Patent 8,265,553).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims requiring a "host controller" or "serial port" for coupling the credit card reader. Petitioner argued that the primary combination lacked specific details for this connection. Cheon was introduced because it allegedly disclosed a credit card reader connecting to a host controller, including a "USB communication unit," and a controller that couples a card reader via a serial communication unit. This supplied the missing limitations for claims 2, 3 (host controller, serial port), and 21 (USB host controller).
  • Motivation to Combine: A POSITA, seeking to implement the system from Ground 1, would look to other references like Cheon for specific, well-known connection configurations. Using a standard USB or serial port connection as taught by Cheon would be a natural and obvious choice to create a more flexible and improved system compatible with existing standalone card readers.
  • Expectation of Success: Because USB and serial connections were ubiquitous and well-understood communication technologies at the time, a POSITA would have a reasonable expectation of success in integrating Cheon’s teachings into the system of Tang to achieve the claimed configuration.

4. Key Claim Construction Positions

• Petitioner argued that the terms "first mechanism," "second mechanism," and "third mechanism" in claim 1 should be given their plain and ordinary meaning and are not means-plus-function terms under 35 U.S.C. §112, ¶6. However, in the alternative that the Board construes them as such, Petitioner proposed the following functions and corresponding structures:
  • "First Mechanism": The function is to "receive data provided by the credit card reader," with the corresponding structure being a host controller or serial port as disclosed in the specification.
  • "Second Mechanism": The function is to "receive the analog audio signal and convert the analog audio signal into binary data," with the corresponding structure being a software application stored in memory and executed by a general-purpose processor on the mobile device.
  • "Third Mechanism": The function is to "upload the binary data to a cloud service for decoding," with the corresponding structure being hardware on the mobile device, such as a transceiver, configured by software to perform the upload.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central argument was that the ’706 patent was not entitled to the March 9, 2009 priority date of its provisional application. Petitioner contended that the provisional application failed to provide written description support for key limitations added during prosecution, specifically the "third mechanism... configured to upload the binary data to a cloud service for decoding." Petitioner argued this client-to-cloud architecture was absent from the provisional, which only described peripheral-to-device communication and discouraged using intermediary servers. Therefore, the effective priority date could be no earlier than the non-provisional filing date of March 8, 2010, which makes Tang (filed February 10, 2010) available as prior art under 35 U.S.C. §102(e).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1–4, 19, 21, 22, and 25 of the ’706 patent as unpatentable.