PTAB

IPR2022-01256

Apple Inc v. RFCyber Corp

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Mobile Device for Emulating Multiple Contactless Cards
  • Brief Description: The ’724 patent describes a mobile device with Near Field Communication (NFC) capabilities configured to emulate multiple contactless card applications. The system uses a secure element that contains the card applications, an emulator for running them, and a Trusted Mifare Service Manager (TMSM) to manage downloading, personalizing, and swapping applications into and out of the emulator for use in transactions.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 are obvious over Buhot, GPC, and Zhu

  • Prior Art Relied Upon: Buhot (Application # 2010/0207742), GPC (GlobalPlatform Card Specification Version 2.2.1), and Zhu (Patent 8,249,654).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Buhot, teaches the foundational elements of the challenged claims, including a mobile NFC device that emulates a plurality of payment cards, a display for a user to select an application, and a secure element. However, Petitioner contended Buhot is silent on certain key functions that are supplied by GPC and Zhu.
      • GPC, a smart card industry standard that Buhot expressly recommends using for implementation, allegedly provides the missing details for several security and management functions. Petitioner asserted GPC teaches using key sets within Supplementary Security Domains (SSDs) to establish secure communication channels for provisioning applications, as required by claims 1(c) and 1(d). GPC also describes application life cycle states (e.g., INSTALLED, LOCKED), which Petitioner mapped to the claims’ requirements for determining an application’s “locked or unlocked status.” Finally, GPC’s disclosure of a “Confirmation Counter” that increments upon successful application-related events (like loading) was argued to teach the counter limitation of claim 1(l)(i).
      • Zhu was asserted to remedy Buhot’s failure to describe a mechanism for loading and unloading applications to manage limited memory on a secure element. Petitioner argued Zhu discloses a smart card manager that, in response to a user selection, loads a required application from a separate memory onto the smart card. If there is insufficient space, Zhu’s manager replaces an existing application with the newly selected one. Petitioner mapped this process to the limitations in claims 1(h) and 1(j) requiring the loading and replacing of applications in the emulator device.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would have been motivated to combine the references for several reasons.
      • A POSITA implementing Buhot’s system would have been explicitly motivated to consult the GPC standard, as Buhot itself recommends implementing its device in accordance with “global platform standards.” GPC was the dominant and most recent version of that standard, providing necessary implementation details for security, life cycle management, and counters that Buhot described at only a high level.
      • A POSITA would have recognized that Buhot’s multi-application device would face the same smart card memory limitations that Zhu addresses. Zhu offered a known, practical solution to this problem by storing applications in a separate memory and loading them on-demand. A POSITA would combine Zhu’s memory management technique with Buhot’s device to increase the number of applications the device could support, a clear and desirable improvement.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success. The combination of Buhot and GPC was characterized as the straightforward implementation of a standard in a device expressly designed to be compliant with it. The combination with Zhu would also have been predictable, as both Buhot and Zhu describe systems based on common smart card architectures and ISO/IEC standards, ensuring their compatibility.

4. Key Claim Construction Positions

  • "emulator device": Petitioner noted that in parallel litigation, the parties agreed this term should be construed as a "hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with[.]"
  • "replac[ing]... a portion of or in entirety, the first application": Petitioner argued that the disjunctive term "or" means the claim requires replacing an application either partially or in its entirety, but does not require the capability for both. This construction supports their argument that Zhu, which Petitioner asserts replaces applications in their entirety, satisfies the claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors.
  • Petitioner made a Sotera stipulation, committing that if the IPR is instituted, it will not pursue in the parallel district court litigation the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner cited a USPTO memo clarifying that the Board will not discretionarily deny institution where such a stipulation is made.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of the ’724 patent as unpatentable under 35 U.S.C. §103.