Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 1 of 185 PageID #: 1150
`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 1 of 185 PagelD #: 1150
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 2 of 185 PageID #: 1151
`Trials@uspto.gov
`Paper 13
`571-272-7822
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`v.
`PAYRANGE INC.,
`Patent Owner.
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, MEREDITH C. PETRAVICK, and
`STACEY G. WHITE, Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 3 of 185 PageID #: 1152
`IPR2023-01186
`Patent 8,856,045 B1
`
`INTRODUCTION
`I.
`A. Background and Summary
`CSC ServiceWorks, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–26 (“the challenged claims”) of U.S. Patent
`No. 8,856,045 B1 (Ex. 1001, “the ’045 patent”). Paper 1 (“Pet.”).
`PayRange Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). We authorized the parties to submit additional briefing to
`address an argument raised by Patent Owner. Ex. 3001. Petitioner filed a
`Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a Sur-reply (“Paper
`8, “Prelim. Sur-reply”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`After considering the Petition, the Preliminary Response, the Reply,
`the Sur-reply, and the evidence of record, we determine the information
`presented shows a reasonable likelihood that Petitioner would prevail in
`establishing the unpatentability of at least one of the challenged claims of
`the ’045 patent. Accordingly, we institute an inter partes review of
`claims 1–26 of the ’045 patent on the grounds asserted in the Petition.
`
`B. Real Parties-In-Interest
`Petitioner identifies itself, CSC ServiceWorks, Inc., as the real party-
`in-interest. Pet. 84. Patent Owner identifies itself, PayRange Inc., as the
`real party-in-interest. Paper 4, 1.
`
`2
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 4 of 185 PageID #: 1153
`IPR2023-01186
`Patent 8,856,045 B1
`C. Related Matters
`Petitioner and Patent Owner identify the following related court
`proceedings:
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:23-cv-00278
`(D. Del.)
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:22-cv-00502
`(D. Del.)
`Pet. 84; Paper 4, 1.
`Patent Owner identifies additionally the following related court
`proceedings:
`PayRange Inc. v. Kiosoft Techs., LLC, Case No. 1-20-cv-20970
`(S.D. Fla.)
`PayRange Inc. v. KioSoft Techs., LLC, Case No. 1-20-cv-24342
`(S.D. Fla.)
`Paper 4, 1.
`Patent Owner also identifies the following related Board proceedings:
`KioSoft Techs., LLC v. PayRange Inc., Case No. CBM2020-00026
`(U.S. Patent No. 9,659,296)
`KioSoft Techs., LLC v. PayRange Inc., Case No. IPR2021-00086
`(U.S. Patent No. 9,659,296)
`CSC ServiceWorks, Inc. v. PayRange Inc., Case No. IPR2023-01187
`(U.S. Patent No. 10,438,208)
`CSC ServiceWorks, Inc. v. PayRange Inc., Case No. IPR2023-01188
`(U.S. Patent No. 10,891,608)
`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2021-00077
`(U.S. Patent No. 10,719,833)
`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2021-00084
`(U.S. Patent No. 10,891,608)
`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2021-00093
`(U.S. Patent No. 10,891,614)
`
`3
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 5 of 185 PageID #: 1154
`IPR2023-01186
`Patent 8,856,045 B1
`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2022-00035
`(U.S. Patent No. 11,074,580)
`KioSoft Techs., LLC v. PayRange Inc., Case No. PGR2023-00042
`(U.S. Patent No. 11,481,772)
`Paper 4, 1–2.
`
`D. The ’045 Patent (Ex. 1001)
`The ’045 patent, titled “Mobile-Device-To-Machine Payment
`Systems,” discloses a system that allows users with mobile devices to make
`cashless purchases of products or services from payment accepting units
`such as vending machines, parking meters, arcade games, kiosks, etc.
`Ex. 1001, code (54), 1:27–38, 9:30–35. Figure 5, reproduced below, shows
`components of the disclosed mobile-device-to-machine payment system and
`the interactions therebetween. Id. at 18:45–47.
`
`Figure 5 shows adapter module 100 connected to payment accepting
`unit 120 via a wired serial connection. Id. at 18:48–50. Adapter module 100
`is connected to mobile device 150 and its installed mobile application 140
`via short-range communication technology, e.g., Bluetooth. Id. at 18:50–54.
`
`
`
`4
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 6 of 185 PageID #: 1155
`IPR2023-01186
`Patent 8,856,045 B1
`Mobile device 150 and installed mobile application 140 are connected to
`system management server 130 via long-range communication technology,
`e.g., WiFi or cellular. Id. at 18:59–64.
`As disclosed by the ’045 patent, adapter module 100 sends an
`authorization request for funds to mobile device 150 using the short-range
`communication technology. Id. at 3:52–54. Mobile device 150 then
`forwards the authorization request for funds to server 130 using the long-
`range communication technology. Id. at 3:54–56, 13:65–67. If funds are
`available, server 130 sends an authorization grant for funds to mobile
`device 150 using the long-range communication technology. Id. at 3:56–58,
`13:65–67. Mobile device 150 then forwards the authorization grant for
`funds to adapter module 100 using the short-range communication
`technology. Id. at 3:58–60. Payment accepting unit 120 dispenses a product
`or service in response to receiving user input to an input mechanism of
`payment accepting unit 120 if adapter module 100 has received the
`authorization grant. Id. at 3:60–64.
`
`E. Illustrative Claims
`Petitioner challenges claims 1–26 of the ’045 patent. Claims 1, 10,
`and 18 are independent. Independent claim 1 is illustrative and reproduced
`below.
`1. A mobile-device-to-machine payment system for
`facilitating a cashless transaction for purchase of at least one
`product or service by a user from a payment accepting unit
`having input mechanisms, the user having a mobile device
`having both short-range communication technology and long-
`range communication technology, the payment accepting unit
`capable of dispensing at least one product or service, said
`system comprising:
`
`5
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 7 of 185 PageID #: 1156
`IPR2023-01186
`Patent 8,856,045 B1
`(a) an adapter module associated with the payment accepting
`unit, said adapter having short-range communication
`technology for communicating with the short-range
`communication technology of the mobile device;
`(b) a server having long-range communication technology
`for communicating with the long-range communication
`technology of the mobile device;
`(c) said adapter module for sending an authorization request
`for funds to the mobile device using short-range
`communication technology, the mobile device
`forwarding said authorization request for funds to said
`server using long-range communication technology; and
`(d) said server for sending an authorization grant for funds
`to the mobile device using long-range communication
`technology, the mobile device forwarding said
`authorization grant for funds to said adapter module
`using short-range communication technology;
`(e) wherein the payment accepting unit dispenses the at least
`one product or service in response to receiving user input
`to the payment accepting unit input mechanism if said
`adapter module has received said authorization grant.
`Ex. 1001, 32:24–53.
`
`F. Evidence
`Name
`Low
`
`Freeny
`
`Wilson
`
`U.S. Patent No. 7,455,223 B1
`
`Skowronek U.S. Patent Pub. No.
`2009/0106160 A1
`U.S. Patent No. 8,958,846 B2
`
`Date
`Reference
`U.S. Patent No. 10,210,501 B2 Issued
`Feb. 19, 2019
`Published
`Apr. 23, 2009
`Issued
`Feb. 17, 2015
`Issued
`Nov. 25, 2008
`Petitioner also relies on the Declaration of B. Clifford Neuman, Ph.D.
`(Ex. 1003).
`
`Exhibit
`1004
`
`1005
`
`1006
`
`1007
`
`6
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 8 of 185 PageID #: 1157
`IPR2023-01186
`Patent 8,856,045 B1
`G. Asserted Grounds
`Petitioner asserts that claims 1–26 would have been unpatentable on
`the following grounds:
`Ground Claim(s) Challenged 35 U.S.C. §
`1
`1 and 18
`102 and 103 Low
`2
`2, 3, 19, and 20
`103
`Low and Skowronek
`3
`4–6 and 21–23
`103
`Low and Freeny
`Low, Skowronek, and
`4
`10–14
`103
`Freeny
`5
`8, 9, 25, and 26
`103
`Low and Wilson
`6
`7 and 24
`103
`Low, Freeny, and Wilson
`Low, Skowronek, Freeny,
`7
`15–17
`103
`and Wilson
`
`Basis
`
`II. ANALYSIS
`A. Alleged Failure to Identify Real-Parties-In-Interest
`Patent Owner argues that the Petition should be denied because the
`Petition alleged fails to identify KioSoft Technologies, LLC (“KioSoft”) and
`TechTrex, Inc. (“TechTrex”) as real-parties-in-interest, as required by 35
`U.S.C. § 312 (see also 37 C.F.R. § 42.8 (a)(1), (b)(1)). Prelim. Resp. 6–10;
`Prelim. Sur-reply 1–7.
`Petitioner disputes that KioSoft and TechTrex are real-parties-in-
`interest. Prelim. Reply 1–7. And, argues that “there is no reason for the
`Board to address PayRange’s RPI argument at institution because no time-
`bar or estoppel issue exists.” Id. at 2–3 (“To date, PayRange has not
`asserted the ‘045 patent against Kiosoft or TechTrex, and thus no time bar
`ever triggered under § 315(b) based on separate litigation between PayRange
`and Kiosoft/TechTrex.”).
`
`
`7
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 9 of 185 PageID #: 1158
`IPR2023-01186
`Patent 8,856,045 B1
`The Board’s precedential decision SharkNinja Operating LLC v.
`iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020)
`(“SharkNinja”) held that it best serves the Office’s interests in cost and
`efficiency to not resolve an RPI issue when “it would not create a time bar or
`estoppel under 35 U.S.C. § 315” in that proceeding. SharkNinja, Paper 11;
`see also Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper
`76 at (USPTO Director May 22, 2023) (non-precedential). We do not
`address whether KioSoft and TechTrex are unnamed real-parties-in-interest
`because, even if they were, it would not create a time bar or estoppel under
`35 U.S.C. § 315.
`
`B. Alleged Failure to Comply with Word Limits
`Patent Owner argues that the Petition should not consider the Petition
`because the Petition violates 37 C.F.R. § 42.24, which sets a 14,000-word
`limit for a petition. Prelim. Resp. 10–11. Petitioner certifies that the
`Petition contains 13,997 words. Pet. 73. Patent Owner alleges that the
`Petition contains more than the 14,000 words because Petitioner’s 13,997-
`word count does not include the numerous words in an image of a block
`quotation located at the top of page 73 of the Petition. Prelim. Resp. 10.
`Citing the Board’s 2019 Consolidated Trial Practice Guide1 (“TPG”), Patent
`Owner argues that the Petition should not be considered. Id.
`The Consolidate Trial Practice Guide states:
`[W]hen certifying word count, a party need not go beyond the
`routine word count supplied by their word processing program.
`Parties should not abuse the process. Excessive words in
`figures, drawings, or images, deleting spacing between words,
`or using excessive acronyms or abbreviations for word phrases,
`
`1 Available at https://www.uspto.gov/sites/default/files/
`documents/tpgnov.pdf?MURL=TrialPracticeGuideConsolidated.
`
`8
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 10 of 185 PageID #: 1159
`IPR2023-01186
`Patent 8,856,045 B1
`in order to circumvent the rules on word count, may lead to a
`party’s brief not being considered. See, e.g., Pi-Net Int’l, Inc. v.
`JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015). . .
`. If a party feels that it would suffer undue prejudice from an
`opposing party’s alleged word count limit violation or abuse,
`that party should raise the issue with the Board promptly after
`discovering the issue. The Board expects the parties to take
`reasonable steps to remedy any such issues before approaching
`the Board. If an opposing party raises a word count limit
`violation or abuse, the Board will consider such a violation or
`abuse on a case-by-case basis.
`TPG, 40. The block quotation image on page 73 of the Petition contains
`approximately 105 words. On this record, whether or not Petitioner
`accounts for these words in its certification is unclear.
`
`In any event, Patent Owner does not allege that it has suffered any
`undue prejudice from the extra 102 words. Nor does Patent Owner indicate
`that it promptly raised the issue to allow for Petitioner to take reasonable
`steps to remedy the issue. Under the circumstances in this case, we are not
`persuaded the Petitioner is abusing the process by including excessive words
`in the image so as to warrant not considering the Petition.
`
`During trial, all future papers must comply with applicable word-
`count limits and the parties must avoid images of block quotations, so that
`the words of the quotation are included in word-count limits.
`
`C. Legal Standards
`“In an IPR, the petitioner has the burden from the onset to show with
`
`particularity why the patent it challenges is unpatentable.” Harmonic, 815
`F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v.
`Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the
`
`9
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 11 of 185 PageID #: 1160
`IPR2023-01186
`Patent 8,856,045 B1
`burden of proof in inter partes review). Although we may indicate in this
`Decision that certain Patent Owner arguments are not persuasive, in doing so
`we do not shift the ultimate burden from Petitioner.
`
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “[W]hen a patent
`claims a structure already known in the prior art that is altered by the mere
`substitution of one element for another known in the field, the combination
`must do more than yield a predictable result.” KSR, 550 U.S. at 416 (citing
`U.S. v. Adams, 383 U.S. 39, 50–51 (1966)). The question of obviousness is
`resolved on the basis of underlying factual determinations, including (1) the
`scope and content of the prior art; (2) any differences between the claimed
`subject matter and the prior art; (3) the level of skill in the art; and (4) when
`in evidence, objective indicia of non-obviousness (i.e., secondary
`considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Here, the present record contains no evidence of objective indicia of non-
`obviousness.
`
`D. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`had a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or equivalent training, and approximately three years of
`experience with electronic payment systems, vending machine technologies,
`or distributed network systems,” and that “[a]dditional education can
`
`10
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 12 of 185 PageID #: 1161
`IPR2023-01186
`Patent 8,856,045 B1
`substitute for less work experience, and vice versa.” Pet. 11 (citing Ex. 1003
`¶ 19).
`Patent Owner does not provide a description of the level of ordinary
`skill in the art. See generally Prelim. Resp.
`For purposes of this Decision, we adopt Petitioner’s assessment of the
`level of ordinary skill in the art as it is consistent with the ’045 patent and
`the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`
`E. Claim Construction
`In this inter partes review, we apply the same claim construction
`standard that would be used in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b). In applying this standard, we generally give claim
`terms their ordinary and customary meaning as would be understood by a
`person of ordinary skill in the art at the time of the invention and in the
`context of the entire patent disclosure. See id.; Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
`Neither party provides an explicit construction of any claim terms.
`Petitioner asserts that “the terms of the challenged claims should be given
`their plain and ordinary meaning, and no terms require specific
`construction.” Pet. 11. Patent Owner asserts that “no constructions are
`necessary to deny institution because the petition facially fails to show that
`the references satisfy the plain language of the claims.” Prelim. Resp. 6.
`Except to the extent as discussed in our patentability analysis below,
`we do not need to construe any terms explicitly to reach our decision. See
`Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`Board is required to construe ‘only those terms . . . that are in controversy,
`
`11
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 13 of 185 PageID #: 1162
`IPR2023-01186
`Patent 8,856,045 B1
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`F. Ground 1: Anticipation by and Obviouness over Low
`Petitioner contends that claims 1 and 18 are anticipated by and
`obvious over Low. Pet. 17–32.
`1. Overview of Low (Ex. 1004)
`Low is titled “Electronic Payments to Non-Internet Connected
`Devices Systems and Methods” and relates to “wireless electronic payments
`to non-Internet connected machines through user devices.” Ex. 1004, code
`(54), 1:17–20. Specifically, Low discloses a system that permits a user to
`select, purchase, and dispense products for sale at a vending machine, while
`using a user device such as a smart phone for electronic payment. Id. at
`2:11–16, 5:19–22. Figure 1 of Low, reproduced below, is a block diagram
`of the disclosed system. Id. at 2:63–63.
`
`
`Figure 1 shows networked system environment 100 including user 102
`utilizing user device 110 with vending machine 120. Id. at 3:20–21.
`
`12
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 14 of 185 PageID #: 1163
`IPR2023-01186
`Patent 8,856,045 B1
`Vending machine 120 includes product dispensing module 122, e.g., a
`keypad, touchscreen, or display, for a user to make selections, purchase, and
`dispense products 124. Id. at 5:19–24. Vending machine 120 further
`includes electronic payment module 130 which enables user 102 to make
`electronic payments for products 124 in the absence of physical money. Id.
`at 5:44–46. User device 110 contains purchase application 112 which
`interfaces with a corresponding module at vending machine 120. Id.
`at 4:5–13. User device 110 communicates over network 160 with payment
`providing server 140 and vendor server 150. Id. at 3:21–23. Vending
`machine 120 does not have Internet connection with network 160, but does
`have wireless communication such as Bluetooth with user device 110. Id.
`at 4:59–64.
`
`Low discloses that vending machine 120 and user device 110 are
`paired, e.g., through Bluetooth, and user device 110 transmits a user
`identifier to vending machine 120 for display. Id. at 2:38–41. During
`display of the user identifier, user 102 can select items for purchase from
`vending machine 120. Id. at 2:41–43. Vending machine 120 then transmits
`a purchase request, such as product name, product price, product code, a
`machine identifier, and/or a transaction number back to user device 110. Id.
`at 2:43–46. User device 110 displays the purchase request and, if the
`information is correct, user 102 selects a payment button or option on user
`device 110, which communicates the payment request to payment provider
`server 140. Id. at 2:46–49, 9:24–28. If transaction processing
`application 142 in payment provider server 140 approves the purchase
`request, an approval including a payment authorization is communicated to
`user device 110 for transmission to vending machine 120. Id. at 9:39–49.
`
`13
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 15 of 185 PageID #: 1164
`IPR2023-01186
`Patent 8,856,045 B1
`After vending machine 120 receives a payment authorization, vending
`machine 120 dispenses the purchased item of products 124. Id. at 9:55–58.
`
`2. Claim 1
`Petitioner contends that claim 1 is anticipated and obvious over Low.
`Pet. 19–28. Petitioner’s analysis maps each limitation of claim 1 to Low’s
`teaching and cites to supporting testimony of Dr. Neuman. See id. After
`reviewing Petitioner’s analysis and evidence, and taking into account Patent
`Owner’s argument, we determine that Petitioner shows a reasonable
`likelihood that claim 1 is unpatentable. We address each of Patent Owner’s
`argument below.
`
`a) “an adapter module”
`Claim 1 recites:
`an adapter module associated with the payment accepting unit,
`said adapter having short-range communication technology for
`communicating with the short-range communication technology
`of the mobile device.
`Ex. 1001, 32:28–35.
`Petitioner equates the claimed adapter module to Low’s electronic
`payment module 130. Pet. 21–22 (citing Ex. 1004, 4:64–67, 5:10–18, 5:14–
`17, 5:44–46, 5:49–53, 6:9–16; Ex. 1003 ¶¶ 86–89).
`Patent Owner argues that Low’s electronic payment module 13 is not
`an adapter module as required by claim 1. Prelim. Resp. 12–15. According
`to Patent Owner the plain language of the claim requires that
`an adapter module adapts a function of a machine. It uses the
`internet via mobile devices to connect a machine and it
`simulates physical forms of payment—such as coins and
`cash—in order to enable the machine to operate.
`
`14
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 16 of 185 PageID #: 1165
`IPR2023-01186
`Patent 8,856,045 B1
`Prelim. Resp. 12; see also id. 12–13 (citing Ex. 1001, 11:59–12:14, 19:64–
`67). Patent Owner argues that the Petition is deficient because it does not
`show that Low’s electronic payment module 130 is such an adapter module.
`Prelim. Resp. 12–13.
`On this record, Patent Owner’s argument is unpersuasive. We do not
`agree that the plain language of the term “adapter module” requires, for
`example, the adapter module to simulate physical forms of payment, such as
`coins and cash. We see nothing in the plain language of claim 1 that
`requires such. See generally Ex. 1001, 32:28–35. Nor do we agree that,
`because the ’045 patent discloses an “exemplary adapter module” that
`simulates physical forms of payment (id. at 11:62, 19:58–59), we should
`read such a limitation into claim 1. Our reviewing court has repeatedly
`“cautioned against limiting the claimed invention to preferred embodiments
`or specific examples in the specification.” Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1346–47 (Fed. Cir. 2015); SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is
`important not to import into a claim limitations that are not a part of the
`claim”). “[I]t is the claims, not the written description, which define the
`scope of the patent right.” Williamson, 792 F.3d at 1346–47; see
`also Phillips, 415 F.3d at 1312 (noting that “[i]t is a ‘bedrock principle’ of
`patent law that ‘the claims of a patent define the invention to which the
`patentee is entitled the right to exclude’”). Thus, “a particular embodiment
`appearing in the written description may not be read into a claim when the
`claim language is broader than the embodiment.” SuperGuide, 358 F.3d at
`875.
`At this stage of the proceeding, we are persuaded by Petitioner that
`Low’s electronic payment module 130 meets the claimed adapter module.
`
`15
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 17 of 185 PageID #: 1166
`IPR2023-01186
`Patent 8,856,045 B1
`As Petitioner points out, the ’045 patent describes the adapter module as “a
`physical device that is installed in a machine.” Pet. 22 (Ex. 1001, 11:59–
`61). Low describes electronic payment module 130 as being part of a
`vending machine and having at least one communication module 134 for
`communicating with a user device. Ex. 1001, 5:44–46, 6:9–11.
`Communication module 134 includes various types of short–range
`communication devices, such as Bluetooth. Id. at 6:11–16.
`
`On this record, we determine that Petitioner sufficiently shows that
`Low discloses the claimed adapter module.
`
`b) “a server”
`Claim 1 requires “a server having long-range communication
`technology for communicating with the long-range communication
`technology of the mobile device.” Ex. 1001, 32:36–38. Claim 1 also
`requires the server to receive an authorization request for funds from the
`mobile device and to send an authorization grant for funds to the mobile
`device using long-range communication technology. Id. at 32:41–46.
`Petitioner equates the claimed server to Low’s payment provider
`server 140 and vendor server 150, collectively. Pet. 23 (citing Ex.1004,
`3:18–25, 7:40–50, 8:48–57, and FIG. 4.; Ex. 1003 ¶¶ 90–92). Petitioner
`alleges that the ’045 patent discloses that the server may be comprised of
`multiple servers. Pet. 23, n.2 (citing Ex. 1001, 19:51–54). Petitioner,
`however, only points to Low’s payment provider server 140 as meeting the
`claimed receiving of an authorization request for funds and sending of an
`authorization grant, required by claim 1. Pet. 25–27; see Prelim. Resp. 19,
`n.3.
`
`16
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 18 of 185 PageID #: 1167
`IPR2023-01186
`Patent 8,856,045 B1
`Patent Owner argues that Low’s payment provider server 140 and
`vendor server 150 cannot meet the claimed server because they Low’s
`servers are separate components. Patent Owner contends:
`This attempt to recast separate, independent components
`as “a server” defies credulity. Far from being part of “a server,”
`the payment provider server 140 and the vendor server 150 are
`facially distinct servers operated by distinct entities to perform
`distinct functions. . . . Drawing a red box around two distinct
`servers does not transform them into “a server” as recited in
`claims 1 and 18.
`Prelim. Resp. 20 (citations omitted).
`In any event, as Patent Owner acknowledges, Petitioner relies upon
`only Low’s payment provider server 140 as meeting the claimed server
`receiving an authorization request for funds and sending an authorization
`grant, required by claim 1. Pet. 25–27 (citing Ex. 1004, 5:61–69, 9:24–62;
`10:41–61); see Prelim. Resp. 19, n.3. Patent Owner does not dispute that
`Low’s payment provider server 140 is a single server that performs both
`functions recited by claim 1 — receiving an authorization request for funds
`from the mobile device and sending an authorization grant for funds to the
`mobile device using long-range communication technology.
`On this record, we determine that Petitioner sufficiently shows that
`Low discloses the claimed server.
`
`c) “in response to receiving user input . . . if said adapter module
`has received said authorization grant”
`Claim 1 recites:
`
`wherein the payment accepting unit dispenses the at least
`one product or service in response to receiving user input to the
`payment accepting unit input mechanism if said adapter module
`has received said authorization grant.
`Ex. 1001, 32:49–53.
`
`17
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 19 of 185 PageID #: 1168
`IPR2023-01186
`Patent 8,856,045 B1
`
`Petitioner contends that Low meets this limitation because Low
`discloses:
`Once the user has used the product selection means “input
`mechanism” to select a product, and once the purchase request
`has been sent to the server via the user device and a payment
`authorization has been forwarded back to the electronic
`payment module (“adapter module”) of the vending machine
`via the user device, the “vending machine 120 may dispense the
`purchased item of products 124.” [Ex. 1004,] 9:39-62; see also
`id. at 10:55-61; 12:9-25; Ex.1003, ¶¶103-105.
`Pet. 28.
`Patent Owner argues that this limitation requires that the funds
`authorization grant is received by the adapter module before, or at the same
`time as, the payment accepting unit input mechanism receives the user input.
`Prelim. Resp. 27–28; see also id. at 24.
`On this record, Patent Owner’s argument is unpersuasive. Patent
`Owner does not sufficiently explain why the plain language of claim 1
`requires receiving the funds authorization grant before or at the same time as
`receiving the user input. Claim 1 recites that the dispensing of the product is
`in response to receiving a user input and is conditioned on whether the
`adapter module has received the funds authorization grant, but claim 1 does
`not specify that the funds authorization grant must be received, for example,
`before receiving the user input. See Ex. 1001, 32:49–53.
`On this record, we determine that Petitioner sufficiently shows that
`Low discloses that the payment accepting unit dispense a product in
`response to receiving user input to the payment accepting unit input
`mechanism if said adapter module has received the authorization grant.
`
`18
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 20 of 185 PageID #: 1169
`IPR2023-01186
`Patent 8,856,045 B1
`d) “an authorization request for funds”
`Claim 1 recites:
`said adapter module for sending an authorization request for
`funds to the mobile device using short-range communication
`technology, the mobile device forwarding said authorization
`request for funds to said server using long-range
`communication technology.
`Ex. 1001, 32:39–43.
`
`Petitioner equates the claim authorization request for funds to Low’s
`purchase request. Pet. 24 (citing Ex. 1004, 2:38–46, 4:45–56, 5:61–6:9; Ex.
`1003 ¶¶ 93–95). Low discloses that the electronic payment module 130’s
`payment verification application transmits a “purchase request” to the user
`device, and that the request includes “a product name, product price, product
`code, a machine identifier, and/or a transaction number to user device 110.”
`Ex. 1004, 5:66–6:3, 2:38–46.
`Patent Owner argues that Low’s purchase request is an authorization
`request for a transaction because it is sent after a user selects a product and
`includes transaction specific information, such as a product name. Resp.
`15–17. According to Patent Owner, claim 1’s “authorization request for
`funds is distinguishable from an authorization request for a transaction. Id.
`at 16 (emphasis original). Patent Owner argues:
`As recited [by claim 1], a product or service is dispensed in
`response to receiving user input to the payment accepting unit
`input mechanism if the adapter module has received the
`authorization grant. That is, the funds authorization grant is
`received by the adapter module before, or at the same time as,
`the claimed user input—which Petitioner maps to the user
`selecting a product. . . . A purchase request cannot serve as the
`authorization request for funds when the funds grant must be
`received no later than the product selection Petitioner relies on
`as user input.
`
`19
`
`

`

`Case 1:23-cv-00278-MN Document 60-1 Filed 02/23/24 Page 21 of 185 PageID #: 1170
`IPR2023-01186
`Patent 8,856,045 B1
`Prelim Resp. 16 (citations omitted). Patent Owner notes that the ’045 patent
`states: “[s]ignificantly, the AuthRequest is a request for authorization of
`funds, not a request for authorization of a transaction. The purpose of the
`funds is irrelevant to the server 30.” Prelim. Resp. 16 (quoting Ex. 1001,
`14:53–56).
`On this record, Patent Owner’s argument is unpersuasive. As
`explained above, we do not agree that the plain language of claim 1 requires
`the funds authorization grant to be