PTAB

IPR2025-01344

Google LLC v. CardWare Inc

Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Payment Card and Method of Using Same
  • Brief Description: The ’579 patent discloses a method and electronic device for performing a financial transaction using a "limited-duration number." The device receives an input to prime it for a transaction, receives a payment request via a near-field communication (NFC) interface, displays payment card options, and then generates and transmits limited-use payment information to complete the transaction.

3. Grounds for Unpatentability

Ground 1A: Claims 1-2, 4, 6-9, 11-12, and 15-23 are obvious over Royyuru, Phillips, and Casey.

  • Prior Art Relied Upon: Royyuru (Application # 2010/0185545), Phillips (Application # 2012/0310760), and Casey (Patent 8,255,323).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Royyuru teaches a base system for conducting contactless financial transactions using a mobile device that generates single-use, dynamic payment information (a “dynamic PAN” and a “Dynamic Transaction Cryptogram” or DTC) for transmission to a point-of-sale (POS) terminal via NFC. Petitioner contended that Phillips and Casey supply the missing user interface and authentication elements. Specifically, Phillips was alleged to teach displaying multiple payment card options on a screen for user selection and using a PIN for user authentication to add a layer of security. Casey was alleged to disclose displaying transaction details (e.g., merchant, price) for user confirmation or denial before transmitting payment information, and displaying a receipt after the transaction.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to improve the user experience and security of Royyuru’s system. Petitioner asserted that a POSITA would integrate the well-known user interface features from Phillips (card selection) and Casey (transaction confirmation) into Royyuru's secure but functionally basic system to provide users with more control, choice, and security, thereby yielding a more commercially desirable product.
    • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success because all three references operate in the same field of mobile payments and address complementary aspects of a transaction. Combining known user interface elements with a known secure transaction protocol was presented as a predictable integration of existing technologies.

Ground 2A: Claims 1-9, 11-12, 15-20, and 22-23 are obvious over Gomez, Amacker, and Spodak.

  • Prior Art Relied Upon: Gomez (Patent 9,600,808), Amacker (Patent 8,423,462), and Spodak (Application # 2012/0123937).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented an alternative invalidity combination. Petitioner argued Gomez teaches a mobile payment system that generates a unique, time-limited "secure authentication cryptogram" for each transaction after user authentication (e.g., fingerprint or PIN). To this base system, Amacker was argued to add a "mobile wallet server" that receives a payment request from a merchant, displays transaction details, and allows the user to approve or reject the request before transmitting payment data, thereby satisfying limitations related to receiving a payment request and user authorization. Spodak was alleged to disclose a "universal card" with a display that could show payment information (including only the last four digits of an account number for security) and use dynamic magnetic stripe or NFC technology for communication, meeting limitations regarding payment method display.
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to modify Gomez's system with Amacker's teachings to improve the user interaction model, allowing users to visually review and approve transaction requests on a touchscreen display. Spodak would be added to enhance hardware compatibility, enabling the device to work with both modern NFC terminals and legacy magnetic stripe readers, thus increasing its versatility and market appeal.
    • Expectation of Success: Petitioner contended that success was predictable, as the combination involved integrating known mobile wallet UI features (Amacker) and hardware communication methods (Spodak) with a known secure payment cryptogram system (Gomez), all within the established field of electronic payments.
  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These grounds added single references to the primary combinations above to meet specific dependent claim limitations. These included adding Spodak, Giordano, Deibert, Power, and Carlson to the Royyuru combination, and Deibert, Power, Carlson, and Royyuru to the Gomez combination. The added references were argued to teach, for example, generating cryptograms for magnetic stripe emulation (Spodak), disabling payment functions after a timeout (Deibert), requiring biometric contact to maintain a primed state (Power), and using limited-duration device account numbers (Carlson).

4. Arguments Regarding Discretionary Denial

  • Petitioner noted that it would address discretionary denial under 35 U.S.C. §314(a) during a subsequent discretionary denial briefing, in accordance with the Patent Office's interim procedures.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-23 of the ’579 patent as unpatentable.