PTAB

IPR2021-00979

Samsung Electronics America Inc v. RFCyber Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Providing an E-Purse
  • Brief Description: The ’218 patent describes a method for mobile payments using an "e-purse applet" on a smart card within a portable device. The invention focuses on securely downloading, installing, and personalizing the applet using a two-level security channel architecture involving an external security authentication module (SAM).

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua, GlobalPlatform, and Philips - Claims 1-6, 10-14, and 18 are obvious over Dua in view of GlobalPlatform and Philips.

  • Prior Art Relied Upon: Dua (Application # 2006/0165060), GlobalPlatform (a 2003 smart card specification), and Philips (a 2004 smart card controller publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dua disclosed a general framework for a mobile wallet on a portable device that uses a smart card and downloadable software "extensions" (the claimed "e-purse applet") for payments. However, Dua lacked specific implementation details for smart card security and management. The combination with GlobalPlatform, an industry standard for smart card architecture, supplied the missing details. Specifically, GlobalPlatform taught the claimed two-level security scheme, where an initial secure channel with an Issuer Security Domain (ISD) is used for installation and personalization, and a second secure channel with an Application Provider Security Domain (APSD) is used for subsequent secure operations. The Philips publication disclosed a commercially available SmartMX smart card that was designed to be compatible with GlobalPlatform and included a pre-loaded MIFARE e-purse emulator, satisfying the emulator limitation.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Dua’s high-level mobile payment system would combine it with the GlobalPlatform standard to ensure security and interoperability. A POSITA would then select a compatible hardware component like the Philips SmartMX card, which was known to support both GlobalPlatform and the e-purse functionality required by Dua. The combination involved applying a standard protocol and compatible hardware to a known system to achieve predictable functionality.
    • Expectation of Success: A POSITA would have a high expectation of success because the references were designed to be interoperable; the Philips smart card was explicitly designed to work with Java Card and GlobalPlatform standards.

Ground 2: Obviousness over Dua, GlobalPlatform, Philips, and Davis - Claims 7-9 and 15-17 are obvious over Dua, GlobalPlatform, Philips, and Davis.

  • Prior Art Relied Upon: Dua (Application # 2006/0165060), GlobalPlatform (a 2003 smart card specification), Philips (a 2004 smart card controller publication), and Davis (a 1998 publication, WO 98/49658).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the transaction-specific limitations in claims 7-9 and 15-17. While Dua mentioned an "over-the-air reload tool," it did not describe the process. Petitioner asserted that Davis supplied these missing details by teaching a complete method for loading value onto a stored-value card. Davis disclosed the specific steps of a client terminal initiating a load request, composing a response, transporting it to a load server for verification with a financial institution, receiving a server response (a "load command"), and updating the value on the card. Petitioner mapped this detailed transaction flow from Davis onto the system architecture established by the combination of Dua, GlobalPlatform, and Philips.
    • Motivation to Combine: A POSITA seeking to implement the "over-the-air reload" feature mentioned in Dua would have been motivated to consult known prior art that explicitly taught how to perform such transactions. Davis provided a detailed, established technique for loading stored-value cards, which was directly applicable to adding this functionality to Dua's system. Integrating Davis’s method would have been a straightforward application of a known solution to a known problem.
    • Expectation of Success: A POSITA would have expected to successfully integrate Davis's loading techniques into Dua's system, as it involved known processes like load requests and commands within the context of Dua’s existing communication and server infrastructure.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under General Plastic was unwarranted because the present IPR asserted different prior art and grounds than a co-pending IPR filed by Google against the same patent.
  • Petitioner further argued that discretionary denial under Fintiv was inappropriate because the parallel district court proceeding was in its earliest stages, with discovery having just begun. To further weigh against denial, Petitioner stipulated that if the IPR were instituted, it would not pursue in the litigation the specific grounds asserted in the petition or any other ground that was raised or could have been reasonably raised in the IPR.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of the ’218 patent as unpatentable.