KioSoft Technologies LLC v. PayRange Inc

1. Case Identification

• Case #: PGR2021-00093
• Patent #: 10,891,614
• Filed: June 10, 2021
• Petitioner(s): KioSoft Technologies, LLC and TechTrex, Inc.
• Patent Owner(s): PayRange, Inc.
• Challenged Claims: 1-25

2. Patent Overview

• Title: Method and system for presenting representations of payment accepting unit events
• Brief Description: The ’614 patent discloses mobile-device-to-machine payment processing systems allowing a user to make a cashless purchase from a payment accepting unit, such as a vending machine, over a non-persistent network. The system involves a mobile device with an application that acts as a bridge between an adapter on the payment unit and a remote server.

3. Grounds for Unpatentability

Ground 1: Claims 1, 14, and 20 are anticipated by Low, and claims 1-25 are obvious over Low

• Prior Art Relied Upon: Low (Patent 10,210,501).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Low, which was not considered during prosecution, discloses all limitations of the challenged claims. Low teaches a system for facilitating wireless electronic payments between a mobile device and a non-Internet connected machine (NICM), including vending machines. Independent claim 1 is mapped by Low’s disclosure of a mobile user device (with processor, memory, display, and transceivers) executing a purchase application to identify a nearby vending machine via broadcasted identifiers, display a user interface (UI) to select the machine and trigger payment, establish a wireless connection (e.g., Bluetooth), and exchange transaction information. Petitioner contended that Low’s teachings for independent method claim 1 similarly anticipate the corresponding limitations in independent system claim 14 and computer-readable medium claim 20.
  • Motivation to Combine (for §103 grounds): For any limitation not explicitly disclosed but deemed inherent by Petitioner, a person of ordinary skill in the art (POSITA) would have found it obvious to include. For example, a POSITA would have understood that Low's described smart devices inherently include displays and that its GUI would be used to display information from the vending machine, making such a modification a standard design choice to achieve predictable results.

Ground 2: Claims 1-25 are obvious over Low in view of Breitenbach

• Prior Art Relied Upon: Low (Patent 10,210,501) and Breitenbach (Application # 2011/0172848).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that while Low provides the foundational system for mobile payments with vending machines, Breitenbach supplies the specific UI features recited in the claims. Breitenbach teaches a "smart visi-cooler" system with a mobile application that presents a detailed graphical user interface (GUI). This GUI allows a user to identify a specific machine from a list, confirm the selection, view products, and proceed to checkout. Petitioner argued that these specific UI disclosures in Breitenbach map directly to the limitations in the ’614 patent concerning a UI configured to display a visual indication of payment units and accept user input for selection and payment triggering.
  • Motivation to Combine (for §103 grounds): A POSITA implementing Low’s general system would be motivated to incorporate Breitenbach’s well-defined UI to provide a more flexible, effective, and user-friendly interaction for purchasing products from a smart vending machine. Both references address cashless vending, and combining them would involve a simple software modification to implement a known UI on a known system architecture.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination merely applies a known, detailed user interface (Breitenbach) to a functionally similar, albeit more general, mobile payment system (Low), which is a predictable integration of known software components.

Ground 3: Claims 1-25 are obvious over Low in view of Mockus

• Prior Art Relied Upon: Low (Patent 10,210,501) and Mockus (Application # 2012/0029691).

• Core Argument for this Ground:

  • Prior Art Mapping: Similar to the Breitenbach combination, Petitioner argued that Mockus provides alternative or additional teachings for the specific UI and interaction elements of the claims. Mockus describes a system where a mobile device interacts with a vending machine, recognizes users in proximity, and provides a visual selection interface for users to select products, submit payment, and receive a retrieval code. The interactive purchase process and visual interface in Mockus, which shows product selection on a grid, were argued to teach the UI limitations of the challenged claims.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to combine Mockus's visual selection interface with Low’s backend system to overcome the shortcomings of prior art systems, namely inconvenience for the consumer. This combination would provide an improved, intuitive interface for visualizing and purchasing products, a known design goal in the field.
  • Expectation of Success: Success would be expected because the combination requires only minimal modifications to Low's existing purchase and GUI applications to incorporate the known interface concepts from Mockus, representing a straightforward application of known technologies to achieve a predictable improvement in user experience.

• Additional Grounds: Petitioner asserted that all claims are ineligible under 35 U.S.C. §101 as being directed to the abstract idea of a commercial transaction using generic computer components. Petitioner also argued that all claims are invalid under §112(a) for lack of written description and that claim 21 is indefinite under §112(b). A further obviousness ground was asserted against claim 7 based on Low, Breitenbach, and Faith (Patent 8,761,809), which adds teachings on using an accelerometer to detect user movement.

4. Key Claim Construction Positions

• Payment accepting unit: Petitioner proposed construing this term as "vending machine," arguing this aligns with the specification and limitations added during prosecution to overcome prior art.
• Identify one or more payment accepting units in proximity to the mobile device: Petitioner proposed this means to "determine the individual identities of one or more specific vending machines physically near the mobile device."
• available to accept payment from the mobile payment application: Petitioner argued this requires the identified vending machine to be capable of accepting payment at the time of identification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §324(a) and the Fintiv factors, asserting that the parallel district court litigation was in a very early stage with no discovery exchanged and a distant, uncertain trial date. Petitioner also committed to not pursuing the same grounds or prior art in the district court, eliminating overlap.
• Petitioner further argued against denial under §325(d), stating that the primary prior art references relied upon in the petition (Low, Breitenbach, Faith, Mockus) were not substantively considered by the examiner during prosecution. Therefore, the petition raised new arguments material to patentability that warrant consideration.

6. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-25 of the ’614 patent as unpatentable.