PTAB

IPR2025-01361

Google LLC v. CardWare Inc.

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1. Case Identification

2. Patent Overview

  • Title: Electronic Payment Card with Limited-Duration Payment Numbers
  • Brief Description: The ’634 patent describes a method and system for an electronic payment card that can generate a "limited-duration payment number" for use in a single transaction. The system is designed to enhance security by generating this temporary number based on user information, bank information, and transaction details.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Core Payment System References - Claims 1-2, 7-16, 27-34, and 36-38 are obvious over Gomez, Amacker, and Casey.

  • Prior Art Relied Upon: Gomez (Patent 9,600,808), Amacker (Patent 8,423,462), and Casey (Patent 8,255,323).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gomez taught the core of the invention: a mobile payment system that generates a unique, time-limited authentication cryptogram for each transaction to prevent fraud. Amacker taught a "mobile wallet server" on a personal device, allowing a user to control and approve the distribution of payment information. Casey taught a mobile payment system on a smartphone where a user can confirm or decline a transaction via various inputs (e.g., PIN, motion gesture) and receive a transaction receipt on the device's screen.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references to improve the usability and security of Gomez's system. Integrating Gomez’s functionality into a smartphone, as taught by Amacker and Casey, would reduce the number of devices a user must carry and leverage the superior user interface of a smartphone. Adding Casey's features would provide clear user confirmation steps and a transaction receipt, while incorporating Amacker's teachings would allow for the display of payment options and transaction details before approval, preventing fraudulent transactions.
    • Expectation of Success: Petitioner asserted that combining these known elements from the prior art to achieve a more secure and user-friendly payment device would have yielded predictable results.

Ground 1B: Obviousness over Core References and Law - Claims 3-6, 17-26, 35, and 39-72 are obvious over Gomez, Amacker, Casey, and Law.

  • Prior Art Relied Upon: Gomez (Patent 9,600,808), Amacker (Patent 8,423,462), Casey (Patent 8,255,323), and Law (Application # 2015/0134540).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Gomez-Amacker-Casey combination by adding the teachings of Law. Law disclosed a system for facilitating payments using a virtual card on a mobile device, where a static "funding card identifier"—different from the actual Primary Account Number (PAN)—is used for transactions. Law further taught generating dynamic transaction data based on secret information associated with the specific funding card selected. Petitioner argued this combination addresses limitations regarding the transmission of issued payment information prior to a transaction and generating a cryptogram based on secrets associated with the selected card.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Law’s teachings to solve a problem in the Gomez system, which did not explicitly disclose how a selected credit card's information is securely communicated. Law provided a known method for this: creating a unique, static identifier for each funding card, stored on the device and at the payment processor, to be used in place of the actual card details. This would improve security by obscuring the real PAN while still allowing the system to identify the correct funding source.
    • Expectation of Success: Petitioner contended that integrating Law's secure funding card identifier and associated dynamic data generation into the established mobile payment framework of the other references was a straightforward application of known techniques.

Ground 1C: Alternative Obviousness for Touch Gestures - Claim 13 is obvious over Gomez, Amacker, Casey, and Chin.

  • Prior Art Relied Upon: Gomez (Patent 9,600,808), Amacker (Patent 8,423,462), Casey (Patent 8,255,323), and Chin (Patent 7,593,000).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground provided an alternative basis for finding claim 13 obvious. Claim 13 requires a "known user touch gesture" stored on the device. Petitioner argued that to the extent the fingerprint swipe in Gomez was not considered a "touch gesture," Chin explicitly taught this feature. Chin disclosed a method for unlocking a mobile device by recognizing a tactile pattern drawn on the touchscreen, which is stored as a security gesture.
    • Motivation to Combine: A POSITA would have been motivated to implement Chin's tactile pattern authentication as an alternative to a PIN. Chin itself described PIN entry as potentially "slow and/or cumbersome" and difficult for users with certain disabilities. Applying Chin's tactile gesture would be a known technique to improve the user experience, accessibility, and security of the authentication process in the Gomez-Amacker-Casey system.
    • Expectation of Success: Petitioner argued that replacing or supplementing a known authentication method (PIN) with another known method (tactile gesture) to gain its known benefits was an obvious design choice with a high expectation of success.

4. Key Claim Construction Positions

  • Petitioner argued that the Board need not formally construe any claim terms, as the invalidity arguments hold under any reasonable construction.
  • Petitioner proceeded based on the assumption that several typographical errors in the challenged claims should be corrected to match their clear intent and prosecution history, noting that Patent Owner had agreed to these corrections in a related district court case. These include construing "reduce" as "produce" (claim 4), "Lather" as "further" (claim 5), and "army" as "array" (claim 54).
  • For the term "challenge-response" (claim 10), Petitioner adopted an interpretation consistent with Patent Owner's infringement contentions, where a request to enter a PIN constitutes the "challenge" and the PIN entry is the "response."
  • For "known user touch gesture" (claim 13), Petitioner argued that a fingerprint swipe as disclosed by Gomez meets the limitation. Alternatively, it argued that a PIN entry could be considered a touch gesture under the Patent Owner's broad interpretation in the related litigation.

5. Arguments Regarding Discretionary Denial

  • Petitioner noted its intent to substantively address why discretionary denial is not appropriate during the dedicated discretionary denial briefing phase, in view of the Patent Office's interim process on the matter.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-72 of the ’634 patent as unpatentable.