PTAB

PGR2022-00003

Apple Inc v. RFCyber Corp

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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 replace a traditional paper invoice with an electronic invoice. The system involves a merchant writing invoice data to a tag (e.g., an RFID tag), which is then read by a customer's mobile device to display, optionally adjust (e.g., add a tip), and settle the payment.

3. Grounds for Unpatentability

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

  • Core Argument for this Ground: Petitioner argued that claims 1-17 are invalid because they contain limitations added during prosecution that are not supported by the specification as originally filed. These amendments were allegedly necessary to secure allowance but describe an invention the applicants did not possess at the time of filing. The core deficiencies relate to unsupported combinations of features from two distinct and incompatible embodiments disclosed in the specification: one involving a payment gateway (Figs. 1A-1B) and another involving a closed-loop e-purse system without a gateway (Figs. 6A-6D).
    • Prior Art Mapping: Petitioner contended that independent claim 1 recites functionality that is absent from the specification. Specifically, the claim requires sending a payment request to a gateway only when an e-purse balance is sufficient. Petitioner asserted the specification only discloses embodiments that either always send the payment request to a gateway regardless of the balance (Fig. 1B) or check an e-purse balance in a system with no payment gateway at all (Fig. 6C). The specification allegedly provides no support for this claimed contingent logic.
    • Prior Art Mapping: Petitioner further argued that claim 1’s requirement of “displaying a confirmation in the mobile device that the balance in the e-purse has been reduced” lacks written description. The specification allegedly only discloses a payment gateway sending a notice to the merchant's POS device, not the customer's mobile device displaying a confirmation of a reduced balance.
    • Key Aspects: For independent claim 12, Petitioner argued it also lacks support for its contingent payment logic and for the limitation that the payment gateway is “configured to cause the balance in the e-purse [to be] reduced,” a function Petitioner asserted is nowhere described in the specification. Dependent claims 2-11 and 13-17 were argued to be invalid for incorporating these unsupported limitations.

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

  • Core Argument for this Ground: Petitioner argued the claims are directed to the abstract idea of presenting and settling an invoice, a fundamental economic practice. The claims allegedly use generic, conventional technology to automate this longstanding practice without providing an inventive concept sufficient to confer patent eligibility under the Alice two-step framework.
    • Alice Step 1 (Directed To): Petitioner contended the claims are directed to an abstract idea. The focus of the claims is not on an improvement to computer functionality but on using computers to improve an economic process: making retail payments more efficient. The claimed steps—receiving an invoice, displaying it, adjusting the amount, calculating a total, verifying funds, and paying—were characterized as the basic steps of any retail transaction. Petitioner argued that implementing these steps using well-known e-commerce components (a mobile device, an NFC tag, an e-purse application, a payment gateway) does not change the abstract nature of the claims.
    • Alice Step 2 (Inventive Concept): Petitioner asserted that the claim elements, viewed individually and as an ordered combination, fail to provide an inventive concept. The hardware elements were described as unimproved, off-the-shelf components (e.g., a standard smartphone, a generic NFC tag, and existing payment infrastructure like PayPal). The recited software functionalities—such as capturing data from a tag, displaying information, calculating a total, and adding a tip—were argued to be routine and conventional activities in e-commerce by 2013. The ordered combination of these steps merely reflects the ordinary course of a payment transaction and does not add “significantly more” to the underlying abstract idea.

4. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended the allowed claims improperly combine elements from two distinct and incompatible embodiments disclosed in the specification without providing written description for the hybrid system. Specifically, the claims allegedly merge the "payment gateway" architecture of one embodiment (Figs. 1A-1B) with the local "e-purse" functionality of a different, closed-loop embodiment that lacks a payment gateway entirely (Figs. 6A-6C), resulting in claimed methods that are not described in the patent.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its earliest stage, with a complaint having just been filed and no answer from Petitioner. Petitioner also noted it had filed a motion to join a parallel post-grant review (PGR) proceeding on the same patent that the Board had already instituted, which would result in a Final Written Decision long before any potential trial date. Finally, Petitioner asserted that the merits of its § 112 and § 101 challenges were particularly strong, weighing in favor of institution.

6. Relief Requested

  • Petitioner requested institution of a post-grant review and cancellation of claims 1-17 of the ’046 patent as unpatentable under § 112 and § 101.