Apple Inc v. RFCyber Corp

1. Case Identification

• Case #: IPR2022-00412
• Patent #: 9,189,787
• Petitioner(s): Apple Inc.
• Patent Owner(s): RFCyber Corp.
• Challenged Claims: 1-19

2. Patent Overview

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

3. Grounds for Unpatentability

Ground 1: 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 (SmartMX P5CT072 Secure Dual Interface PKI Smart Card Controller Specification, Oct. 2004).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the prior art combination discloses all limitations of the challenged claims. Dua teaches the foundational system: a portable wireless device with an embedded smart card, a "wallet application" (the claimed midlet), and software "extensions" (the claimed e-purse applets) for conducting commerce. Dua’s system supports two transaction interfaces: a short-range RFID/NFC interface for payments like subway fares (the claimed first interface) and a wireless network interface for mobile commerce and over-the-air reloads (the claimed second interface). However, Dua does not specify the underlying smart card architecture.

  Petitioner asserted that Philips discloses a specific, well-known smart card controller (SmartMX) that would have been an obvious choice to implement Dua's system. The Philips SmartMX card includes a pre-loaded MIFARE emulator, which satisfies the "emulator" limitation of the claims. This emulator was known to store security values (encryption keys) and update transaction logs as part of standard e-purse functionality.

  GlobalPlatform provides the missing industry-standard framework for securely managing and personalizing applications on smart cards like the one in Philips. Petitioner contended that GlobalPlatform teaches using a first secure channel to personalize applications (like Dua’s e-purse applet) and the emulator by loading cryptographic keys. It also teaches creating a second, distinct secure channel for subsequent transactions with a network server. Applying the GlobalPlatform standard to the Dua/Philips combination allegedly renders the two-level security and personalization limitations obvious. Dependent claims were argued to be obvious as they recite additional conventional features, such as using a global platform standard (disclosed by GlobalPlatform) or making the smart card module internal or external (a simple design choice).

  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be highly motivated to combine these references. Dua’s disclosure, while describing a complete system, explicitly refers to the need for its applications to meet standards defined by card organizations. A POSITA would have recognized GlobalPlatform as the de facto industry standard for smart card application management and security. To implement Dua’s e-purse for subway fares, a POSITA would naturally select a widely used, compatible smart card like the Philips SmartMX, which was designed to work with GlobalPlatform and included the necessary MIFARE emulator for transit applications. The combination represented the straightforward application of an industry standard (GlobalPlatform) and a suitable off-the-shelf component (Philips) to implement a known system (Dua).
  • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involved integrating known, compatible technologies for their intended purposes. Using the GlobalPlatform standard with a Philips SmartMX card to enable the e-purse functionality described in Dua would yield predictable results without requiring undue experimentation.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors would be unwarranted. The petition was filed to join an already-instituted IPR proceeding for which a final written decision was expected well before any potential trial date in the parallel district court litigation. Petitioner asserted the court case was in its earliest possible stage, with no scheduling conference held and the answer to the complaint having only recently been filed, weighing heavily against denial.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-19 of the ’787 patent as unpatentable.