Apple Inc v. Fintiv Inc

1. Case Identification

• Case #: IPR2022-01150
• Patent #: 9,189,785
• Filed: June 16, 2022
• Petitioner(s): Apple Inc.
• Patent Owner(s): Mozido, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Payment Processing System Using Scannable Codes
• Brief Description: The ’785 patent discloses a payment processing system where a customer uses a mobile device to generate a scannable code (e.g., a QR code) for a transaction. The code embeds multiple pieces of payment information, including debit account details, total payment amount, and indications of user, provider, and selected debit networks for processing the payment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Easterly and Luz - Claims 1-21 are obvious over Easterly in view of Luz.

• Prior Art Relied Upon: Easterly (Application # 2011/0208659) and Luz (Application # 2013/0346291).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Easterly and Luz taught all limitations of the challenged claims. Easterly disclosed a foundational system for facilitating financial transactions at a point-of-sale (POS) using a scannable 2-D barcode generated on a smart device. Easterly's barcode was described as containing all data required to "authenticate, authorize, clear and settle a transaction," including debit account information and routing preferences from both the user and the merchant (provider). Easterly further taught that its barcode could encode preferences for allocating reward points. Petitioner contended that Easterly alone rendered most claim limitations obvious.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine the teachings of Easterly and Luz to create a more comprehensive and efficient transaction system. Easterly itself suggested that its barcode could incorporate "all other relevant information regarding the transaction," explicitly mentioning "item quantity, price, [and] total amount." Luz provided explicit teachings for including these specific data types—such as total price and desired products or services—within a scannable code for a transaction. Therefore, a POSITA would have been motivated to implement Easterly's suggested system using the explicit methods taught by Luz, viewing it as a predictable combination of known elements to improve transaction data completeness.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because Easterly taught that 2-D barcodes are capable of storing significant amounts of data. Adding further well-understood transaction data, as detailed in Luz, was a straightforward technical task that would predictably result in a barcode containing all relevant information for a transaction in a single pass.
  • Key Aspects: The core of Petitioner’s argument was that the very limitations added during prosecution to secure allowance of the ’785 patent—specifically, embedding a combination of a user preferred network, a provider preferred network, a selected network, rewards identification, and goods identification—were all individually well-known in the art and explicitly taught or suggested by the combination of Easterly and Luz.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate for three primary reasons. First, under 35 U.S.C. §325(d), the petition raised new arguments based on the Easterly and Luz references, neither of which was considered during the original prosecution. Second, denial under the Fintiv factors was not applicable because there were no pending parallel district court proceedings involving the ’785 patent. Third, denial under General Plastic was unwarranted as the ’785 patent had not been the subject of any previous inter partes review (IPR) petitions.

5. Relief Requested

• Petitioner requested the institution of an IPR trial and the cancellation of claims 1-21 of the ’785 patent as unpatentable under 35 U.S.C. §103.