PTAB

PGR2021-00028

Google LLC v. RFCyber Corp

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and apparatus for mobile payments
  • Brief Description: The ’046 patent describes methods and systems for mobile payment that aim to simplify retail transactions. The system replaces a paper invoice with an electronic invoice stored on a tag (e.g., RFID), which a customer's mobile device reads to display, adjust, and settle the invoice.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description - Claims 1-17 are invalid under 35 U.S.C. § 112

  • Core Argument: Petitioner argued that claims 1-17 are invalid for failing to satisfy the written description requirement of §112. The petition contended that claim limitations added during prosecution to secure allowance, particularly those related to an "electronic purse (e-purse)," lack support in the as-filed specification. Petitioner asserted this lack of support not only invalidates the claims but also breaks the priority chain to pre-AIA applications, making the patent eligible for Post-Grant Review (PGR).
    • Prior Art Mapping: The argument focused on specific limitations added via the "E-purse Amendment" that were allegedly not disclosed in any embodiment described in the specification.
      • For independent claim 1, Petitioner argued the specification fails to describe sending a payment request to a gateway only when an e-purse balance is sufficient. The petition asserted that the embodiment in Figure 1B always sends the request to the gateway for verification, while the embodiment in Figure 6C (which checks a balance locally) involves no payment gateway at all.
      • Petitioner also contended that the limitation of "displaying a confirmation in the mobile device that the balance in the e-purse has been reduced by the total amount" lacks support, as the specification only describes the payment gateway sending a confirmation to the merchant's POS device, not the customer's mobile device.
    • Key Aspects: The core of this challenge was that the patentee combined disparate features from two fundamentally different, non-interchangeable embodiments (the "payment gateway" system of Fig. 1 and the local "e-purse" system of Fig. 6) to create claims reciting a hybrid system that the specification never described.

Ground 2: Ineligible Subject Matter - Claims 1-17 are invalid under 35 U.S.C. § 101

  • Core Argument: Petitioner argued that claims 1-17 are directed to patent-ineligible subject matter under §101 because they recite the abstract idea of presenting and settling an invoice, a fundamental economic practice, without adding an inventive concept.
    • Abstract Idea Identification: The petition asserted that the claims, with claim 1 being representative, focus on the well-established commercial practice of settling a bill. The claimed steps—receiving an invoice, adding an optional tip, verifying funds, and making a payment—were characterized as the ordinary course of a traditional payment settlement, merely automated on a computer.
    • Lack of an Inventive Concept: Petitioner contended the claims fail to transform the abstract idea into a patent-eligible application. It was argued that the claims simply implement the idea using a collection of generic, off-the-shelf e-commerce components (e.g., mobile device, NFC/RFID tag, POS device, payment gateway) that perform only their conventional functions. Petitioner argued that using standard technology to make a known business practice more efficient does not constitute an inventive concept. The ordered combination of steps was described as merely reflecting the logical flow of a standard transaction, adding nothing inventive to the abstract idea itself.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted that the parallel district court litigation was in its earliest stages, having been filed only three months prior, with no trial date set, no scheduling order issued, and minimal investment by the parties. Furthermore, Petitioner argued the challenges presented were not cumulative to prosecution, as the Examiner never rejected the claims based on §112 written description or §101 subject matter eligibility grounds, making the merits of the petition particularly strong and favoring institution.

5. Relief Requested

  • Petitioner requested institution of a post-grant review and cancellation of claims 1-17 of the ’046 patent as unpatentable.