Apple Inc v. Fintiv Inc

1. Case Identification

• Case #: IPR2022-01149
• Patent #: 10,223,692
• Filed: June 16, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Mozido Corfire – Korea, Ltd.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Method for Setting Mobile Payment Card to Be Used for Payment and Mobile Device Applying the Same
• Brief Description: The ’692 patent discloses a method for using a mobile e-wallet where a user can set a "temporary payment card" for a single transaction. This is accomplished by sliding a card's icon from a list in a "first portion" of a touch screen to a "second portion," which activates the card for a limited "payable time" visually represented by a countdown timer and a moving card animation.

3. Grounds for Unpatentability

Ground 1: Obviousness of Independent Claims - Claims 1 and 13 are obvious over Hertel in view of Chitti, Spodak, and Tedesco

• Prior Art Relied Upon: Hertel (Application # 2009/0288012), Chitti (Application # 2009/0037326), Spodak (Application # 2012/0123937), and Tedesco (Patent 8,296,686).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the independent claims recite a combination of well-known features from the prior art. Hertel taught the core user interface of an e-wallet with a drag-and-drop mechanism to select a payment instrument from a list (a first portion) and move it to a payment receptacle (a second portion). Chitti and Spodak introduced the underlying payment logic: Chitti disclosed using a default card that could be overridden by a temporary card for a specific transaction, and Spodak taught applying a specific time limit (a "payable time") to such a temporary card, after which it reverts to the default. Finally, Tedesco allegedly supplied the key feature used to overcome prosecution history rejections: a countdown timer that simultaneously displays a numerical indicator and a graphical animation (e.g., a decreasing bar) to visually represent the time remaining.
  • Motivation to Combine: A POSITA would combine these references to create a more intuitive and user-friendly e-wallet. It would be logical to implement Chitti’s convenient temporary card feature within Hertel's established drag-and-drop interface. Adding Spodak’s time limit would prevent accidental continued use of the temporary card. To provide clear feedback on this time limit, a POSITA would incorporate a visual timer like Tedesco's, as displaying countdowns was a common and predictable way to inform users of time-sensitive operations.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining these known software-based features for mobile payments involved applying predictable solutions to improve the user experience.

Ground 2: Obviousness of Dependent Claims - Claims 5-6 and 10 are obvious over Hertel, Chitti, Spodak, and Tedesco in view of Bierbaum

• Prior Art Relied Upon: Hertel (’012 application), Chitti (’326 application), Spodak (’937 application), Tedesco (’686 patent), and Bierbaum (Patent 7,967,196).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the core combination in Ground 1 by adding Bierbaum to teach the limitations of claims 5, 6, and 10. Bierbaum disclosed an e-wallet with a "ready-to-pay" timer that a user could extend if a transaction was taking longer than expected (teaching claim 5). The petitioner argued that extending the timer by reversing the setting animation was an obvious implementation (teaching claim 6). Bierbaum also taught outputting an audible alarm when the timer was about to expire, providing the user a chance to extend it (teaching claim 10).
  • Motivation to Combine: A POSITA would be motivated to add Bierbaum's features to the base combination to address common real-world problems, such as delays in a checkout line. Providing a timer extension and a warning alarm were known solutions to enhance the practicality and usability of a timed transaction system.

• Additional Grounds: Petitioner asserted additional obviousness challenges for other dependent claims based on the core combination plus one other reference. These included combinations with Grigg (using specific device movement patterns to extend time, for claim 7), Ording (making an icon disappear after a time period, for claim 8), and Roman (making an icon gradually fade away, for claim 9).

4. Key Claim Construction Positions

• Petitioner argued that the claim term "first portion of the screen" (where the card animation begins after being activated) must be construed as a different location from the "first portion of the touch screen interface" (where the list of inactive cards is displayed). This distinction was asserted to be supported by the patent's figures and necessary to properly map the deactivation animation taught by the prior art, where a card moves from an active area back toward an inactive area.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner contended that the claim limitations relating to displaying a numerical indicator and visually representing the passage of time (e.g., limitations 1.5-1.7.2) should be given no patentable weight under the printed matter doctrine. The argument was that this information merely informs a user of the remaining time and does not create a new functionality or cause a specific action in the claimed process itself, as the temporary card would reset after the "payable time" expires regardless of how or if that time is displayed.

6. Arguments Regarding Discretionary Denial

• The petition argued against discretionary denial under §314(a) or §325(d).
• Fintiv: Denial was argued as inappropriate because Petitioner was unaware of any co-pending district court litigation involving the ’692 patent.
• §325(d): Denial was argued as inappropriate because the Examiner materially erred during prosecution. The petition asserted that key references, most notably Tedesco, were not considered. Petitioner argued Tedesco directly teaches the "simultaneous use of both a numerical indicator and a visualization" of a timer, the very feature the applicant relied on to secure allowance of the claims.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-13 of the ’692 patent as unpatentable.