PTAB

IPR2021-00980

Samsung Electronics America Inc v. RFCyber Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Portable Device for Commerce
  • Brief Description: The ’787 patent describes a portable device, such as a mobile phone, that functions as an "electronic purse" (e-purse). The technology uses a smart card module with a preloaded emulator and an e-purse applet to conduct secure transactions via Near Field Communication (NFC) or a wireless network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua, GlobalPlatform, and Philips - Claims 1-19 are obvious over Dua in view of GlobalPlatform and Philips.

  • Prior Art Relied Upon: Dua (Application # 2006/0165060), GlobalPlatform (GlobalPlatform Card Specification Version 2.1.1, Mar. 2003), and Philips (P5CT072 Secure Dual Interface PKI Smart Card Controller publication, Oct. 2004).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught all elements of the challenged claims. Dua, the primary reference, disclosed a mobile wireless device with a "wallet application" (the claimed "purse manager midlet") capable of hosting software "extensions" for payment, such as a stored value card extension ("SVCE") for subway fares (the claimed "e-purse applet"). Dua taught using both an NFC/RFID interface for local transactions and a wireless interface for remote transactions ("mobile commerce"). However, Dua did not specify the underlying smart card architecture. Petitioner asserted a POSITA would implement Dua's system using standard, off-the-shelf components. Philips disclosed the SmartMX smart card, a well-known dual-interface card that included a MIFARE® e-purse emulator (the claimed "emulator") for storing value and transaction logs, making it ideal for the transit application described in Dua. GlobalPlatform provided the widely-adopted, industry-standard specification for managing and securing applications on smart cards. It described the entire lifecycle, including the personalization of applications (like Dua's SVCE) and the establishment of secure communication channels with cryptographic keys, which meets the claimed limitations for a "first security channel" for personalization and a "second security channel" for transactions.
    • Motivation to Combine: A POSITA would combine these references to implement Dua's conceptual mobile payment system with concrete, industry-standard components. Dua itself referred to the need for its system to meet standards defined by card organizations. GlobalPlatform was the de facto standard for smart card application management and was designed to work with Java Card platforms like that described in Dua. To make Dua’s system functional, a POSITA would select a suitable smart card; the Philips SmartMX card was a well-known, commercially available option designed for mobile communications that already included a MIFARE® emulator perfect for the transit-fare use case in Dua. The motivation was simply to use known standards and compatible hardware to realize a described system.
    • Expectation of Success: A POSITA would have had a high expectation of success because the references described components designed for interoperability. GlobalPlatform is a hardware-agnostic standard, and the Philips SmartMX card was specifically designed to work with open platforms like Java Card and GlobalPlatform for use in mobile devices. Combining them was a predictable integration of standard technologies.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both General Plastic and Fintiv.
  • General Plastic: Petitioner contended that although Google had filed a separate IPR against the same patent, this petition should not be denied because it presented a substantively distinct challenge based on different primary prior art (Dua instead of Staib). Petitioner also noted that Samsung and Google are distinct parties represented by different counsel and that this petition was filed promptly after the patent owner's infringement contentions were served.
  • Fintiv: Petitioner asserted that the co-pending district court case was in its earliest stages, with discovery having just begun and no claim construction or significant motions practice having occurred. With a trial date scheduled for March 2022, a final written decision in the IPR would issue many months prior to trial. Furthermore, Petitioner submitted a stipulation 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 could have been reasonably raised.

5. Relief Requested

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