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`EXHIBIT A
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`Trials@uspto.gov
`Paper 14
`571-272-7822
`Date: April 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`v.
`PAYRANGE INC.,
`Patent Owner.
`
`IPR2023-01449
`Patent 11,481,772 B2
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, MEREDITH C. PETRAVICK, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`
`INTRODUCTION
`I.
`A. Background and Summary
`CSC ServiceWorks, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–6 and 8–20 of U.S. Patent No. 11,481,772 B2
`(Ex. 1001, “the ’772 patent”). Paper 1 (“Pet.”). PayRange Inc. (“Patent
`Owner”) filed a Preliminary Response (Paper 7 (“Prelim. Resp.”)) and
`disclaimed claims 1–6, 8–10, and 12–20 (Ex. 2017). Only claim 11, thus,
`remains challenged in this proceeding.
`With our authorization (Ex. 3001), Petitioner filed a Preliminary
`Reply (Paper 10 (“Prelim. Reply”)) and Patent Owner filed a Preliminary
`Sur-reply (Paper 11 (“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
`Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we
`determine the information presented in the Petition shows a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`the challenged claim of the ’772 patent.
`Accordingly, we institute an inter partes review of claim 11 of the
`’772 patent on the ground asserted in the Petition.
`
`B. Disclaimer of Claims 1–6, 8–10, and 12–20
`A “patent owner may file a statutory disclaimer under 35 U.S.C.
`253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or
`more claims in the patent. No inter partes review will be instituted based on
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`disclaimed claims.” 37 C.F.R. § 42.107(e). A disclaimer under 35 U.S.C.
`§ 253(a) is “considered as part of the original patent” as of the date on which
`it is “recorded” in the U.S. Patent and Trademark Office. 35 U.S.C.
`§ 253(a). For a disclaimer to be “recorded” in the Office, the document filed
`by the patent owner must:
`(1) Be signed by the patentee, or an attorney or agent of
`record;
`(2) Identify the patent and complete claim or claims, or
`term being disclaimed. A disclaimer which is not a disclaimer
`of a complete claim or claims, or term will be refused
`recordation;
`(3) State the present extent of patentee’s ownership
`interest in the patent; and
`(4) Be accompanied by the fee set forth in [37 C.F.R.]
`§ 1.20(d).
`37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is “recorded”
`on the date that the Office receives a disclaimer meeting the requirements of
`37 C.F.R. § 1.321(a), and that no further action is required in the Office).
`Here, Patent Owner filed a statutory disclaimer of claims 1–6, 8–10,
`and 12–20 of the ’772 patent. Ex. 2017; see Prelim. Resp. 1. Based on our
`review of Exhibit 2017, we determine that a disclaimer of claims 1–6, 8–10,
`and 12–20 of the ’772 patent under 35 U.S.C. § 253(a) has been filed with
`the Office as of November 22, 2023. Based on the information in the
`Office’s public record concerning the ’772 patent, we find that the
`disclaimer complies with the above-listed requirements of 37 C.F.R. §
`1.321(a). Because claims 1–6, 8–10, and 12–20 have been disclaimed under
`35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not
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`reach Petitioner’s challenges to claims 1–6, 8–10, and 12–20. As a result,
`the sole remaining challenged claim is claim 11.
`
`C. Real Parties-In-Interest
`Petitioner identifies itself, CSC ServiceWorks, Inc., as the real party-
`in-interest. Pet. 93. Patent Owner identifies itself, PayRange Inc., as the
`real party-in-interest. Paper 9, 2.
`Patent Owner argues that the Petition should be denied because the
`Petition fails to identify KioSoft Technologies, LLC (“KioSoft”) as a real-
`party-in-interest, as required by 35 U.S.C. § 312 (see also 37 C.F.R. § 42.8
`(a)(1), (b)(1)). 1 Prelim. Resp. 4–11; Prelim. Sur-reply 1–7.
`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 is an unnamed real-party-in-interest because, even
`if it was, it would not create a time bar or estoppel under 35 U.S.C. § 315.
`
`
`1 Patent Owner additionally requests that we impose the sanction of
`dismissal of the Petition under 37 C.F.R. § 42.12. Prelim. Resp. 10–11;
`Prelim. Sur-reply 6–7. Under 37 C.F.R. § 42.11(d)(2), a motion for
`sanctions must be made separately and a party must seek authorization from
`the Board prior to filing a motion for sanctions, a required by 37 C.F.R.
`§ 42.20. We, thus, do not reach Patent Owner’s request for sanctions.
`
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`D. Related Matters
`Petitioner and Patent Owner identify the following related court
`proceeding:
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:23-cv-00278
`(D. Del.)
`Pet. 93; Paper 9, 2.
`Patent Owner additionally identifies the following related court
`proceedings:
`PayRange Inc. v. Kiosoft Techs., LLC, Case No. 1-20-cv-20970
`(S.D. Fla.) (terminated)
`PayRange Inc. v. KioSoft Techs., LLC, Case No. 1-20-cv-24342
`(S.D. Fla.) (terminated)
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:22-cv-00502
`(D. Del.)
`Paper 9, 2–4.
`Petitioner and Patent Owner identify the following related Board
`proceeding:
`KioSoft Techs., LLC v. PayRange Inc., Case No. PGR2023-00042
`(U.S. Patent No. 11,481,772) (terminated)
`Pet. 93; Paper 9, 3–4.
`Patent Owner additionally 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. IPR2023-01186
`(U.S. Patent No. 8,856,045)
`CSC ServiceWorks, Inc. v. PayRange Inc., Case No. IPR2023-01187
`(U.S. Patent No. 10,438,208)
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`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)
`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. PGR2023-00045
`(U.S. Patent No. 11,488,174) (terminated)
`KioSoft Techs., LLC v. PayRange Inc., Case No. PGR2023-00050
`(U.S. Patent No. 11,501,296) (terminated)
`Paper 9, 2–4.
`
`E. The ’772 Patent (Ex. 1001)
`The ’772 patent, titled “Method and System for Presenting
`Representations of Payment Accepting Unit Events,” describes “a mobile-
`device-to-machine payment processing system for processing transactions
`over a non-persistent network connection.” Ex. 1001, code (54), 5:62–65.
`The mobile-device-to-machine payment processing system may be a
`“payment accepting unit” (i.e., “equipment that requires payment for the
`dispensing of products and/or services,” such as a vending machine, a
`parking meter, a toll booth, a laundromat washer and dryer, an arcade game,
`a kiosk, a photo booth, or a transit ticket dispensing machine). Id.
`at 1:54–65.
`The ’772 patent explains that some payment accepting units are
`capable of accepting cashless payments, such as “credit cards, debit cards,
`and alternative mobile device payment methods using, for example, smart
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`phones.” Id. at 6:42–50. However, “traditional payment accepting units that
`accept cashless payments . . . require a persistent connection to a network
`(wired or wireless) to facilitate the cashless payments.” Id. Thus, “[i]f the
`network connection to a traditional machine is temporarily interrupted,
`cashless payments will be temporarily unavailable. If the machine is located
`in a location where no network connection is available, cashless payment[]
`is not possible.” Id. at 6:56–60.
`The ’772 patent purports to solve this network connectivity problem
`by having a user’s mobile device serve as an intermediary between the
`payment accepting unit and the network. Id. at 6:1–6, 6:60–62. The
`described system in the ’772 patent purportedly also minimizes or even
`eliminates user interaction with the mobile device. Id. at 6:60–66. For
`example, one feature that the payment accepting unit may possess is a
`“manual (swipe to pay) mode.” Id. at 6:10–11. When a user’s mobile
`device is brought within range of a payment accepting unit running this
`manual mode, a pre-installed mobile application on the mobile device
`automatically connects to the payment accepting unit. Id. at 7:15–18. The
`mobile device then connects to a server, which maintains a balance of the
`user’s funds and authorizes the use of these funds. Id. at 10:17–22,
`11:28–40. From there, the mobile application may display the balance on
`the mobile device’s touchscreen, which the user then “swipes” to transfer
`payment to the payment accepting unit, “just as if cash was inserted in the
`machine 120 with the user inputting his selection on the payment accepting
`unit 120 and the payment accepting unit 120 dispensing the product or
`service.” Id. at 7:18–29 (reference numbers omitted).
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`F. Illustrative Claims
`Petitioner challenges claim 11 of the ’772 patent. Claim 11 depends
`from claim 1. Claims 1 and 11 are reproduced below, with the elements
`labeled in brackets.
`[1(pre]]1. A method of presenting representations of payment
`accepting unit events, comprising:
`[1(a)] at a mobile device with one or more processors,
`memory, one or more output devices including a display,
`and one or more radio transceivers:
`[1(b)] identifying one or more payment accepting units in
`proximity to the mobile device that are available to
`accept payment from a mobile payment application
`executing on the mobile device, the identifying based
`at least in part on an identifier corresponding to the one
`or more payment accepting units, wherein the one or
`more payment accepting units are payment operated
`machines that accept payment for dispensing of
`products and/or services;
`[1(c)] displaying a user interface of the mobile payment
`application on the display of the mobile device, the user
`interface being configured to display a visual
`indication of the one or more payment accepting units
`and accept user input to (i) receive selection by a user
`of the mobile device of an available payment accepting
`unit of the one or more payment accepting units and
`(ii) trigger payment by the mobile payment application
`for a transaction initiated by the user of the mobile
`device with the available payment accepting unit of the
`one or more payment accepting units;
`[1(d)] establishing via the one or more radio transceivers
`a wireless communication path including the mobile
`device and the available payment accepting unit of the
`one or more payment accepting units;
`[1(e)] after establishing the wireless communication path,
`enabling user interaction with the user interface of the
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`mobile payment application
`transaction;
`[1(f)] exchanging information with the available payment
`accepting unit via the one or more radio transceivers,
`in conjunction with the transaction; and
`[1(g)] after exchanging the information, displaying, on the
`display, an updated user interface of the mobile
`payment application to the user of the mobile device.
`
`to complete
`
`the
`
`
`[11(a)] 11. The method of claim 1, wherein the user interface
`of the mobile payment application, after establishing the wireless
`communication path, includes:
`[11(b)] a visual representation of the available payment
`accepting unit;
`[11(c)] an indication of a prepared balance; and
`[11(d)] an affordance that when slid, indicates the initiation
`of the transaction;
`[11(e)] wherein the affordance is slid in response to receiving
`a user input of swipe on the affordance displayed on the
`display of the mobile device.
`Ex. 1001, 47:2–41, 48:21–31.
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`G. Evidence
`Name
`Zhou
`
`Reference
`U.S. Patent No. 7,458,510 B1
`
`Exhibit
`1004
`
`Date
`Issued
`Dec. 2, 2008
`Published
`U.S. Patent App. Pub. No.
`Jul. 10, 2003
`2003/0130902 A1
`U.S. Patent No. 10,210,501 B2 Issued
`Feb. 19, 2019
`Issued
`Feb. 20, 2018
`Issued
`Aug. 28, 2012
`Issued
`Feb. 17, 2015
`Petitioner also relies on the Declaration of B. Clifford Neuman, Ph.D.
`(Ex. 1003).
`
`Athwal
`
`Low
`
`Arora
`
`Casey
`
`U.S. Patent No. 9,898,884 B1
`
`U.S. Patent No. 8,255,323 B1
`
`Freeny
`
`U.S. Patent No. 8,958,846 B2
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`H. Asserted Ground
`Petitioner asserts that claim 11 would have been unpatentable on the
`following ground:
`Ground Claim(s) Challenged 35 U.S.C. §
`4
`11
`103
`
`Basis
`Zhou, Athwal, Low,
`Arora, Casey, Freeny
`
`II. ANALYSIS
`A. Request for Discretionary Denial
`Patent Owner requests that we exercise discretion to deny the Petition
`under 35 U.S.C. § 314 because the ’772 patent was also challenged in
`proceeding PGR2023-00042. Prelim. Resp. 11–16 (citing General Plastic
`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, 15–
`16 (precedential as to § II.B.4.i)).
`
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`After Patent Owner filed the Preliminary Response, the proceeding
`PGR2023-00042 was terminated prior to entry of an institution decision.
`See Paper 9, 4; PGR2023-00042, Paper 9. In light of the termination of
`PGR2023-00042, we authorized the parties to file additional arguments in a
`Preliminary Reply and Sur-reply. Ex. 3001. Patent Owner did not provide
`any additional argument concerning this issue in its Preliminary Sur-reply.
`Paper 11.
`“Where the first-filed petition under [General Plastic] factor 1 was
`discretionarily denied or otherwise was not evaluated on the merits, factors
`1–3 only weigh in favor of discretionary denial when there are ‘road-
`mapping’ concerns.” Code200, UAB v. Bright Data, Ltd., IPR2022-00861,
`Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential). Here, there are no road-
`mapping concerns because Petitioner filed the Petition here prior to Patent
`Owner filing any preliminary response in PGR2023-00042. Prelim. Reply 7.
`Petitioner argues that General Plastics factors 4–7 are obviated
`because there are no longer multiple petitions pending against the ’772
`patent. Id. Under the circumstances here, we agree. “[T]he Patent Owner’s
`concerns of fairness are outweighed by the benefits to the patent system of
`improving patent quality by reviewing the merits of the challenges raised in
`the petitions, which have not been addressed to date.” Code200, Paper 18
`at 6.
`
`Patent Owner’s request that we discretionarily deny the Petition under
`35 U.S.C. § 314 because the ’772 patent was also challenged in proceeding
`PGR2023-00042 is denied.
`
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`B. 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 Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (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 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.
`
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`C. 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
`substitute for less work experience, and vice versa.” Pet. 12 (citing Ex. 1003
`¶¶ 18–20).
`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 ’772 patent and
`the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
`
`D. 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. 13. Patent Owner asserts that “[n]o constructions are
`
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`necessary to deny institution because denial is warranted for numerous
`reasons that do not depend on claim construction.” Prelim. Resp. 3.
`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,
`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))).
`
`E. Ground 4: Obviousness over Zhou, Athwal, Low, Arora, Casey, and
`Freeny
`1. Overview of Prior Art
`a) Zhou (Ex. 1004)
`Zhou is titled “Authentication of Automated Vending Machines by
`Wireless Communications Devices” and relates to conducting transactions
`between a wireless communications device and an automated vending
`machine and authenticating the vending machine prior to consummation of
`the transaction. Ex. 1004, code (54), 1:7–11, 2:15–18. Figure 1 of Zhou,
`reproduced below, is a schematic view of a wireless communications device
`used to conduct a transaction with a vending machine, a radio access
`network, and a vending machine authentication server which authenticates
`the vending machine for the wireless communications device. Id.
`at 3:43–47.
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`
`Figure 1 of Zhou shows wireless communications device 10 that is used to
`conduct a transaction with vending machine 12. Id. at 3:61–63. Wireless
`communications device 10 includes first contactless communications
`means 14 (e.g., a contactless IC card, RFID transponder, WiFi, Bluetooth,
`or 802.11 transmitter/receiver, etc.) for communication with corresponding
`second contactless communications means 16 (e.g., contactless IC
`scanner/reader, RFID transponder, etc.) in vending machine 12. Id.
`at 3:67–4:9.
`As described by Zhou, a user of wireless communications device 10
`comes into close proximity with vending machine 12 and launches a vending
`machine application on wireless communications device 10. Id. at 5:29–31.
`The vending machine application presents various screen displays to the user
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`and prompts to facilitate a transaction with vending machine 12. Id.
`at 5:32–34. Vending machine scanner/reader 16 performs an authentication
`of IC card 14, and IC card 14 authenticates vending machine 12 to ensure
`that vending machine 12 is not a rogue machine used to steal personal
`identification or credit card information. Id. at 5:42–59, 1:59–61.
`Specifically, wireless device 10 obtains credential information (e.g., private
`key signature and digital certificate) from vending machine 12 in response to
`a challenge message and provides that information (signature, challenge, and
`certificate) to vending machine authentication server 46 for authentication.
`Id. at 5:66–6:5. Server 46 compares the credential information with
`information of authorized vending machines stored in a database or performs
`some other authorization routine, and provides an authentication response
`back to wireless device 10. Id. at 6:5–10. If the authentication is positive,
`then IC card 14 provides a prompt to the vending machine application
`indicating that vending machine 12 is approved and that completion of the
`transaction and transfer of sensitive payment information from wireless
`device 10 to vending machine 12 may safely proceed. Id. at 6:12–20;
`7:8–10. Conversely, if authentication is negative, IC card 14 provides a
`prompt to the vending machine application indicating that vending
`machine 12 is not authorized or approved, in which case the user of wireless
`device 10 can abort the transaction without any transfer of sensitive payment
`information. Id. at 6:20–26, 7:3–8.
`
`b) Athwal (Ex. 1005)
`Athwal is titled “Short Range Wireless System” and relates to a
`mobile communication device (MCD), e.g., a mobile phone, operable to
`initiate and complete an electronic transaction with an electronic retail
`
`16
`
`
`
`Case 1:23-cv-00278-MN Document 77-1 Filed 04/16/24 Page 18 of 28 PageID #: 1858
`IPR2023-01449
`Patent 11,481,772 B2
`system (ERS), e.g., a vending machine. Ex. 1005, code (54), ¶¶ 6, 8–10, 14.
`Athwal discloses that a customer initiates an electronic transaction by first
`performing a search for all available ERS in their vicinity from their MCD,
`which sends a wireless electronic signal (WES) inquiry to all ERS. Id. ¶ 17.
`All ERS respond with WES that convey detailed information such as their
`name, available products, and prices. Id. The MCD displays this
`information to the customer, who selects the desired product or service from
`the appropriate ERS. Id. The MCD then sends a WES to the appropriate
`ERS indicating a customer request to perform a transaction. Id. The ERS
`confirms availability of the desired product/service, calculates the cost, and
`sends an electronic bill to the MCD for the amount of the purchase via a
`WES. Id. The customer is prompted by the MCD to verify the purchase and
`to select the customer’s account (e.g., credit, debit, etc.) that should be used
`to make the purchase. Id. The MCD then transmits payment account
`information and an authorization key (i.e., SIM chip ID or personal
`identification number) to the ERS via a WES. Id. The ERS performs the
`transaction and delivers the good/service to the customer. Id.
`
`c) Low (Ex. 1006)
`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. 1006,
`code (54), 1:17–20. 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. Low discloses that multiple machines may send their unique
`
`17
`
`
`
`Case 1:23-cv-00278-MN Document 77-1 Filed 04/16/24 Page 19 of 28 PageID #: 1859
`IPR2023-01449
`Patent 11,481,772 B2
`machine identifiers to the user device, such that the user is able to select one
`or more machines to purchase from. Id. at 2:25–28.
`
`d) Arora (Ex. 1007)
`Arora is titled “Method and System of Personal Vending” and
`discloses a “system and method for vending products to a customer that
`encompasses a group of vending machines managed by a vending
`company . . . and the use of a personal electronic device by the customer.”
`Ex. 1007, codes (54), (57). Arora describes using the customer’s personal
`electronic device and wireless communication to “direct the customer to the
`nearest qualified vending machine.” Id. at 2:58–59, 3:64–4:7.
`“Embodiments include the customer selecting either products or vending
`machines from a list of options provided via the user interface of the
`personal electronic device, wherein the list of options depends on the actual
`available inventory on vending machines co-located with customer, and the
`customer purchase history.” Id. at code (57).
`
`e) Casey (Ex. 1008)
`Casey is titled “Motion Based Payment Confirmation.” Ex. 1008,
`code (54). Casey discloses an electronic device having a graphical user
`interface with “one or more graphical elements that may be moved by a user
`to confirm or decline a payment transaction.” Id. at code (57).
`
`f) Freeny (Ex. 1009)
`Freeny is titled “Communication and Proximity Authorization
`Systems” and relates to a “pico pay phone system” that “allow[s] multiple
`wireless devices to access a single pay phone or other public kiosk
`communication unit designed to detect and recognize multiple wireless
`service providers’ signals and protocols at the same time.” Ex. 1009,
`
`18
`
`
`
`Case 1:23-cv-00278-MN Document 77-1 Filed 04/16/24 Page 20 of 28 PageID #: 1860
`IPR2023-01449
`Patent 11,481,772 B2
`code (54), 1:24–29. Freeny discloses that a vending machine system can be
`activated either automatically or manually by a proximity authorization unit
`when a person is within a predetermined proximity distance of the vending
`machine system. Id. at 32:49–55. Freeny further discloses that the
`proximity authorization unit “can operate just like a smart card with the
`approved credit amount stored in the proximity authorization unit,” and that
`“the amount [of remaining approved cash] can be checked at any time by the
`user of the proximity authorization unit.” Id. at 37:60–63, 38:3–5.
`
`2. Analysis
`Petitioner contends that claim 11 is unpatentable over Zhou, Athwal,
`Low, Arora, Casey, and Freeny. Pet. 82–91. Because claim 11 depends
`from claim 1, we also consider Petitioner’s contention that claim 1 is
`unpatentable over Zhou, Athwal, and Low. Id. at 28–55.
`After considering the Petition, the Preliminary Response, and all of
`the cited evidence of record, we determine that Petitioner sufficiently shows
`for the purposes of institution that all of limitations of claims 1 and 11 are
`taught by the combination of Zhou, Athwal, Low, Arora, Casey, and Freeny.
`Patent Owner argues that certain limitations are not taught by the prior
`art. Prelim. Resp. 17–32. We address Patent Owner’s arguments in turn
`below.
`
`a) Limitation 1(c)
`Limitation 1(c) recites:
`displaying a user interface of the mobile payment
`application on the display of the mobile device, the user
`interface being configured to . . . (ii) trigger payment
`by the mobile payment application for a transaction
`initiated by the user of the mobile device with the
`
`19
`
`
`
`Case 1:23-cv-00278-MN Document 77-1 Filed 04/16/24 Page 21 of 28 PageID #: 1861
`IPR2023-01449
`Patent 11,481,772 B2
`available payment accepting unit of the one or more
`payment accepting units.
`Ex. 1001, 47:17–26.
`Patent Owner argues that Petitioner fails to show that Zhou or Zhou
`combined with Athwal teaches this limitation. Prelim. Resp. 17–22. Taking
`into account Patent Owner’s argument, on this record, we determine that
`Petitioner has sufficiently shown that the prior art teaches this limitation.
`Pet. 28–31, 47–48.
`Zhou discloses that if a VENDING MACHINE APPROVED message
`is displayed on a vending machine application on a user’s device, then the
`user can complete the transaction. Ex. 1004, 7:8–10. “The vending machine
`application presents to the user via the device 10 display various screen
`displays and prompts to facilitate a transaction with the vending machine.”
`Id. at 5:32–34; see also id. at 4:52–58 (“graphical user interface module 72
`for presentation of information on the display of the device 10 and receiving
`user input via the screen display . . . “), 6:12–20 (“provide a prompt to the
`vending machine application indicating that the vending machine is
`approved and that completion of the transaction and transfer of sensitive
`payment information . . . may safely proceed.”).
`Based on Zhou’s disclosures, Dr. Neuman testifies2,
`A POSITA would have understood that by completing a
`transaction,
`including
`transferring “sensitive payment
`
`
`2 Patent Owner argues that we should give Dr. Neuman’s testimony little
`weight because Dr. Neuman’s testimony merely repeats attorney argument
`in the Petition witho
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