PTAB

IPR2022-01239

Apple Inc v. RFCyber Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Payment System and Method
  • Brief Description: The ’046 patent discloses a method for mobile payments where a user’s mobile device, equipped with a smart bill payment application, receives an electronic invoice from a merchant’s point-of-sale (POS) device via a tag (e.g., NFC) and settles the payment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Laracey and Jogu - Claims 1-5 and 12-14 are obvious over Laracey in view of Jogu.

  • Prior Art Relied Upon: Laracey (Application # 2011/0251892) and Jogu (Japanese Patent No. 4901053).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Laracey, which is in the same field of mobile payments, discloses most elements of the challenged claims. Laracey teaches a mobile device capturing transaction data, including an electronic invoice and settlement information, from a "checkout token" (a tag) generated by a POS device. The mobile device displays the invoice, allows the user to select a payment method from several options including a "stored value" account (an e-purse), and allows the user to add a tip before sending a payment request to a transaction management system (a payment gateway). However, Petitioner contended that Laracey does not explicitly teach verifying sufficient funds in the e-purse locally on the mobile device before sending the payment request. Jogu was introduced to supply this missing element. Jogu discloses a mobile payment system where the mobile device receives a payment amount from a POS terminal and its data processing unit "determines whether or not the received payment amount is within the current balance" before proceeding with the transaction. If funds are insufficient, Jogu teaches displaying a denial message.
    • Motivation to Combine: A POSITA would combine Jogu’s local balance check with Laracey’s system to improve its functionality and user experience. This modification would prevent transactions from being sent to the payment gateway that are destined to fail for insufficient funds, thus avoiding unnecessary processing and user frustration. The combination represents using a known technique (local verification) to improve a similar system (mobile payments).
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Both Laracey and Jogu describe systems where a mobile device maintains an account balance and receives an invoiced amount from a POS terminal, making the integration of a simple comparison step straightforward.

Ground 2: Obviousness over Laracey, Jogu, and Tang - Claim 17 is obvious over Laracey in view of Jogu and in further view of Tang.

  • Prior Art Relied Upon: Laracey (Application # 2011/0251892), Jogu (Japanese Patent No. 4901053), and Tang (PCT No. 2009/116954).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Laracey and Jogu from Ground 1 to address the limitations of claim 17, which further requires that the data exchange between the mobile device and payment gateway occurs over a "secured channel." Petitioner argued that while the Laracey/Jogu combination teaches the core payment method, it does not explicitly disclose securing the communication channel. Tang was introduced to teach this element, as it explicitly discloses that for payments, a "proper secured channel may be implemented and addressed to communicate with the payment gateway."
    • Motivation to Combine: A POSITA would be motivated to add Tang's security teachings to the Laracey/Jogu system for the predictable benefit of protecting sensitive financial information during transmission. Securing financial transactions was a well-known and necessary practice in the art.

Ground 3: Obviousness over Laracey, Jogu, and Dorsey - Claim 18 is obvious over Laracey in view of Jogu and in further view of Dorsey.

  • Prior Art Relied Upon: Laracey (Application # 2011/0251892), Jogu (Japanese Patent No. 4901053), and Dorsey (Patent 9,916,581).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also builds on the Laracey/Jogu combination to address claim 18, which recites a specific temporal sequence: an additional amount (tip) is added after the user verifies the invoice and authorizes payment. Petitioner asserted that Laracey's native process involves verifying the invoice, adding a tip, and then authorizing payment by pressing "Confirm." To meet the claimed sequence, Petitioner introduced Dorsey, which teaches authorizing a mobile transaction with a captured signature, mimicking a classic credit card transaction.
    • Motivation to Combine: A POSITA would integrate Dorsey's signature authorization into the Laracey/Jogu system to improve user experience by aligning the mobile payment process with one familiar to users of credit cards, and to add a layer of security. Petitioner argued that implementing signature authorization would allow a user to "authorize" the payment before adding a tip, thereby making the device capable of performing the claimed temporal steps.

4. Key Claim Construction Positions

  • "payment gateway": Petitioner noted the parties agreed in parallel litigation to the construction "server or collection of servers for settling a payment."
  • "E-purse" / "e-purse applet": Petitioner noted a dispute in parallel litigation, with Patent Owner proposing "software that stores electronic financial information in a local device" and Petitioner proposing a more specific definition including "electronic value" on a "local portable device." Petitioner argued its grounds satisfy both constructions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under the General Plastic factors, stating this is its first IPR against the ’046 patent and it did not coordinate with the petitioner in a prior PGR.
  • Petitioner also argued against discretionary denial under Fintiv, stipulating (a Sotera stipulation) that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same grounds raised in the petition or any grounds that could have reasonably been raised.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 12-14, and 17-18 of the ’046 patent as unpatentable.