Google LLC v. RFCyber Corp

1. Case Identification

• Case #: IPR2021-00955
• Patent #: 9,189,787
• Filed: May 19, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): RFCyber Corp.
• Challenged Claims: 1-2, 4-12, 14-19

2. Patent Overview

• Title: Mobile Commerce Device and Method
• Brief Description: The ’787 patent discloses a portable device, such as a mobile phone, for conducting secure commerce transactions. The technology involves using a smart card module with an emulator and an e-purse applet to function as an electronic purse, enabling personalization and transactions over a network.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4-12, and 14-19 are obvious over Staib in view of Chan.

• Prior Art Relied Upon: Staib (Application # 2005/0222961) and Chan (Patent 6,005,942).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Staib taught a system for facilitating contactless payments using a portable device (e.g., an NFC-enabled mobile phone) that acts as a smart card. Staib’s device included a mobile application and an external security module (a smart card) containing a secure memory for storing digital cash. Petitioner argued that while Staib provided the overall system, it lacked specific implementation details for its smart card architecture. Chan was alleged to fill this gap by teaching a detailed security architecture for smart cards built on the Java Card standard. Chan’s architecture, using a Java Card virtual machine (an emulator) and “Security Domains,” allows for the secure, post-issuance downloading and management of multiple applications (applets) from different providers onto a single smart card, keeping each application’s data and cryptographic keys confidential. Petitioner mapped key limitations of independent claim 1, such as the “emulator loaded in a smart card module,” to Chan’s Java Card virtual machine and the “e-purse applet” to Chan’s disclosure of stored-value applications. Staib was argued to teach the remaining elements, including the portable device for commerce, NFC and mobile network interfaces, and a “purse manager midlet” (Staib’s mobile application).
  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA), when implementing Staib’s system, would have been motivated to look to known smart card technologies to provide the undisclosed implementation details for its security module. A POSITA would combine Staib with Chan to enhance Staib’s device with the predictable and beneficial functionality of securely supporting and managing multiple applications from different providers (e.g., payment, transit, loyalty) on a single device. Chan’s security architecture was designed for use in any electronic device, including a phone, making it a suitable and logical choice for improving Staib’s system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying Chan's well-defined smart card security architecture to the smart card module in Staib’s NFC-enabled mobile device, which was a straightforward application of a known technology to a known system to achieve predictable results.

4. Key Claim Construction Positions

• “emulator”: Petitioner argued this term was explicitly defined in the ’787 patent’s specification as “a hardware device or a program that pretends to be another particular device or program that other components expect to interact with.” Based on the context of its use for providing physical security, Petitioner contended a POSITA would understand the term to mean “a hardware device or a program providing security that pretends to be another particular device or program that other components expect to interact with.” This construction was central to arguing that Chan’s Java Card virtual machine, which provides a secure, sandboxed environment, met the “emulator” limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. § 325(d) or the Fintiv factors.
• § 325(d): Petitioner asserted that denial was improper because, while the examiner considered Staib during prosecution, the specific combination of Staib and Chan was never considered. Therefore, the petition presented arguments and art not cumulative to those reviewed by the USPTO.
• Fintiv Factors: Petitioner argued the factors weighed in favor of institution.
  • The possibility of a stay in the parallel district court litigation was deemed neutral, as no stay had been requested.
  • The proximity of the district court trial date was argued to be neutral, as trial dates are often subject to change and this factor was outweighed by others.
  • The minimal investment in the merits of the invalidity positions in the district court at the time of filing strongly favored institution.
  • The overlap of issues was minimal, and Petitioner expressed a willingness to stipulate against pursuing the same grounds in district court, favoring institution.
  • The strength of the merits presented in the petition was asserted as a factor favoring institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-12, and 14-19 of the ’787 patent as unpatentable under 35 U.S.C. §103.