Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 1 of 71 PageID #: 1897
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`Exhibit (cid:20)
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`

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`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 2 of 71 PageID #: 1898
`Trials@uspto.gov
`
`Paper 38
`571-272-7822
`
`Date: December 14, 2022
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KIOSOFT TECHNOLOGIES, LLC and TECHTREX, INC.,
`Petitioner,
`
`v.
`
`PAYRANGE INC.,
`Patent Owner.
`____________
`
`PGR2021-00093
`Patent 10,891,614 B2
`____________
`
`
`
`Before KEN B. BARRETT, STACEY G. WHITE, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`ORDER
`Denying Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`

`

`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 3 of 71 PageID #: 1899
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`Patent 10,891,614 B2
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`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`
`
`KioSoft Technologies, LLC and TechTrex, Inc. (collectively,
`
`“Petitioner”)1 filed a Petition requesting post-grant review of U.S. Patent
`
`No. 10,891,614 B2 (“the ’614 patent,” Ex. 1001). Paper 2 (“Pet.”). The
`
`Petition challenges the patentability of claims 1–25 of the ’614 patent. We
`
`instituted a post-grant review of all challenged claims on all proposed
`
`grounds of unpatentability. Paper 12 (“Institution Decision” or “Inst.
`
`Dec.”), 48. PayRange Inc. (“Patent Owner”)2 filed a Response to the
`
`Petition. Paper 15 (“PO Resp.”). Petitioner filed a Reply (Paper 19, “Pet.
`
`Reply”) and Patent Owner filed a Sur-reply (Paper 23, “PO Sur-reply”).
`
`
`
`Additionally, Petitioner filed a Motion to Exclude Evidence
`
`(Paper 28, “Mot.”), to which Patent Owner filed an Opposition (Paper 30,
`
`“Opp. to Mot.”), and Petitioner filed a Reply (Paper 32, “Reply to Mot.”).
`
`
`
`An oral hearing was held on September 16, 2022, and a transcript of
`
`the hearing is included in the record. Paper 37 (“Tr.”).
`
`
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 328(a).
`
`For the reasons discussed below, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–6, 8–10, 14, 15, and 18–25 of
`
`the ’614 patent are unpatentable, but Petitioner has not shown by a
`
`preponderance of the evidence that claims 7, 11–13, 16, and 17 of the ’614
`
`patent are unpatentable. We also deny Petitioner’s Motion to Exclude.
`
`
`
`1 Petitioner identifies KioSoft Technologies, LLC and TechTrex, Inc. as real
`parties-in-interest. Pet. 2.
`2 Patent Owner identifies PayRange Inc. as the real party-in-interest.
`Paper 3, 2.
`
`2
`
`

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`B. Related Proceedings
`
`
`
`Both parties identify, as matters involving or related to the ’614
`
`patent, PayRange Inc. v. KioSoft Technologies, LLC et al., No. 1:20-cv-
`
`24342 (S.D. Fla.) (involving the ’614 patent) and PayRange, Inc. v. KioSoft
`
`Technologies, LLC et al., No. 1:20-cv-20970-RS (S.D. Fla.) (involving
`
`US 9,659,296, which Petitioner identifies as the parent of the ’614 patent).
`
`Pet. 2; Paper 3, 2. The parties also identify several Patent Trial and Appeal
`
`Board cases as related matters. Pet. 2–3; Paper 3, 2.
`
`C. The ’614 Patent
`
`
`
`The ’614 patent is titled “Method and System for Presenting
`
`Representations of Payment Accepting Unit Events” and issued on
`
`January 12, 2021. Ex. 1001, codes (45), (54). The ’614 patent claims
`
`priority, through a chain of patent applications, to a provisional patent
`
`application and a design patent application, both filed on December 18,
`
`2013. Id. at 1:5–25.3
`
`
`
`The Specification, in the Background of the Invention section, states:
`
`As the number of people with Internet-connected mobile
`
`devices proliferates, so does the variety of uses for such
`devices. Mobile payment is a logical extension. There is a
`large development effort around bringing mobile payment to
`the retail sector in an effort to not only provide options to the
`user, but also increased convenience.
`
`Ex. 1001, 2:1–6.
`
`
`
`3 Because the earliest possible effective filing date for the ’614 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the America Invents Act) and the Petition was filed within 9 months of its
`issue date, the ’614 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
`
`3
`
`

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`
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`The ’614 patent describes “a mobile-device-to-machine payment
`
`processing system for processing transactions over a non-persistent network
`
`connection.” Ex. 1001, 5:53–56. 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 1:45–55.
`
`
`
`The ’614 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
`
`phones.” See Ex. 1001, 6:36–42. 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 processing over the network connection is not possible.”
`
`Id. at 6:47–52.
`
`
`
`The ’614 patent purports to be able to solve this network connectivity
`
`problem by having a user’s mobile device serve as an intermediary between
`
`the payment accepting unit and network. Id. at 5:59–64, 6:52–54. At the
`
`same time, the described system in the ’614 patent purportedly also
`
`minimizes or even eliminates user interaction with the mobile device. Id.
`
`at 6:52–58. For example, one feature that the payment accepting unit may
`
`possess is a “manual (swipe-to-pay) mode.” Id. at 6:1–2. When a user’s
`
`4
`
`

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`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 7:7–10. 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 10:11–14, 11:20–
`
`31. 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 with the user inputting his selection on the payment accepting unit
`
`and the payment accepting unit dispensing the product or service.” Id.
`
`at 7:9–19 (reference numbers omitted).
`
`D. Illustrative Claim
`
`
`
`Of the challenged claims of the ’614 patent, claims 1, 14, and 20 are
`
`independent claims. Claim 1, reproduced below with bracketed annotations4
`
`inserted, is illustrative.
`
`[1.0] A method of presenting representations of payment
`1.
`accepting unit events, comprising:
`
`[1.1] at a mobile device with one or more processors,
`
`memory, one or more output devices including a display, and
`one or more radio transceivers:
`
`[1.2] 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, [1.3] the identifying
`including detecting predefined radio messages
`broadcast by the one or more payment accepting units,
`[1.4] wherein the one or more payment accepting units
`
`
`
`4 We utilize Petitioner’s annotations for claim 1 (see Pet. 39–46) and have
`retained the paragraph formatting from the issued patent.
`
`5
`
`

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`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 7 of 71 PageID #: 1903
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`are vending machines that accept payment for dispensing
`of products and/or services;
`
`[1.5] displaying a user interface of the mobile
`
`payment application on the display of the mobile device,
`[1.6] the user interface being configured to display a
`visual indication of the one or more payment accepting
`units and [1.7.1] 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 [1.7.2] (ii) trigger payment by the mobile
`payment application for a vending transaction initiated by
`the user of the mobile device with the available payment
`accepting unit of the one or more payment accepting
`units;
`
`[1.8] establishing via the one or more radio
`
`transceivers a wireless connection between the mobile
`device and the available payment accepting unit of the
`one or more payment accepting units;
`
`[1.9] after establishing the wireless connection,
`
`presenting the user interface of the mobile payment
`application and enabling user interaction with the user
`interface of the mobile payment application to complete
`the vending transaction;
`
`[1.10] exchanging information with the available
`
`payment accepting unit via the one or more radio
`transceivers, in conjunction with the vending transaction;
`and
`
`[1.11] in response to receiving the information,
`
`displaying, on the display, an updated user interface of
`the mobile payment application to the user of the mobile
`device.
`
`Ex. 1001, 46:61–47:34.
`
`6
`
`

`

`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 8 of 71 PageID #: 1904
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`
`E. Evidence
`
`
`
`Petitioner relies on the following references:
`
`Reference
`
`Dates
`
`Low
`
`US 10,210,501 B2
`
`Filed July 25, 2013;
`Issued Feb. 19, 2019
`
`Breitenbach US 2011/0172848 Al Filed Jan. 11. 2011;
`Published July 14, 2011
`
`Faith
`
`US 8,761,809 B2
`
`Filed Nov. 23, 2010;
`Issued June 24, 2014
`
`Mockus
`
`US 2012/0029691 Al Filed June 1, 2011;
`Published Feb. 2, 2012
`
`Exhibit
`No.
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`Petitioner also relies on the declaration of Mr. Gerald Smith
`
`(Ex. 1003) in support of its arguments, and Patent Owner relies on the
`
`declaration of Dr. Michael I. Shamos (Ex. 2019) in support of its arguments.
`
`The parties also rely on other exhibits as discussed below.
`
`F. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`
`Claim(s) Challenged
`1–25
`1–25
`21
`1, 14, 20
`1–25
`1–25
`7
`
`
`35 U.S.C. §
`101
`112(a)
`112(b)
`102
`103
`103
`103
`
`Reference(s)/Basis
`Subject Matter Eligibility
`Lack of Written Description
`Indefiniteness
`Low
`Low5
`Low, Breitenbach
`Low, Breitenbach, Faith
`
`5 The table of grounds in the Petition indicates that only the dependent
`claims are challenged as obvious over Low. Pet. 5. Elsewhere, the Petition
`asserts that all claims are challenged as being obvious over Low. See, e.g.,
`id. at 35.
`
`7
`
`

`

`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 9 of 71 PageID #: 1905
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`
`Claim(s) Challenged
`1–25
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Low, Mockus
`
`II. ANALYSIS
`
`A. The Burden of Persuasion
`
`
`
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`
`Owner. Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`
`1375, 1378 (Fed. Cir. 2015) (discussing burdens in the context of inter
`
`partes reviews). To prevail, Petitioner must establish by a preponderance of
`
`the evidence that the challenged claims are unpatentable. 35 U.S.C. § 326(e)
`
`(2018); 37 C.F.R. § 42.1(d) (2020).
`
`B. The Level of Ordinary Skill in the Art
`
`
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(internal quotation marks and citation omitted).
`
`
`
`Petitioner contends:
`
`A [person of ordinary skill in the art (“POSITA” or “POSA”)]
`at the time of the earliest claimed filing date of the ’614 Patent
`would have had an education background of, or practical
`experience providing an equivalent to, a Bachelor of Science in
`Electrical Engineering, Computer Science, Information
`Technology, or a related/equivalent field and at least 3 years of
`academic or industry experience in electronic payment systems.
`
`Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it
`
`does not dispute Petitioner’s asserted educational background of a person of
`
`ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute
`
`8
`
`

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`Petitioner’s proposed number of years of experience, instead contending that
`
`“the claims are patentable regardless of the number of years of work
`
`experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58).
`
`
`
`Petitioner’s definition is consistent with the level of ordinary skill
`
`reflected in the prior art references of record. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may
`
`reflect an appropriate level of skill in the art). We adopt Petitioner’s
`
`definition of the person of ordinary skill in the art.
`
`C. Claim Construction
`
`
`
`We apply the same claim construction standard used in district court
`
`actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.200(b)
`
`(2020). In applying that standard, claim terms generally are given their
`
`ordinary and customary meaning as would have been 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. Phillips, 415 F.3d at 1312–13. “In determining
`
`the meaning of the disputed claim limitation, we look principally to the
`
`intrinsic evidence of record, examining the claim language itself, the written
`
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`
`(citing Phillips, 415 F.3d at 1312–17).
`
`
`
`Petitioner proposes constructions of the following claim limitations
`
`and asserts that all other claim terms should be given their plain and
`
`customary meaning.
`
`9
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`(1) Payment accepting unit: vending machine, which means a
`machine that holds tangible goods and dispenses them on
`demand;
`
`(2) Identify one or more payment accepting units in
`proximity to the mobile device: determine the individual
`identities of one or more specific vending machines physically
`near the mobile device;
`
`(3) available to accept payment from the mobile payment
`application: [a specific vending machine identified in the
`foregoing identification step] capable at the time of the
`identification step of accepting payment from the mobile
`payment application;
`
`(4) establishing via the one or more radio transceivers a
`wireless connection between the mobile device and the
`available payment accepting unit of the one or more
`payment accepting units: establishing via the one or more
`radio transceivers a short-range communication connection
`between the mobile device and the specific vending machine
`identified in the foregoing identification step capable at the time
`of the identification step of accepting payment from the mobile
`payment application; and
`
`(5) exchanging information with the available payment
`accepting unit via the one or more radio transceivers, in
`conjunction with the vending transaction: exchanging
`information with the specific vending machine identified in the
`foregoing identification step capable at the time of the
`identification step of accepting payment from the mobile
`payment application via the short-range communication
`connection in the foregoing establishing step.
`
`Pet. 6–7. Petitioner does not provide any substantive explanation as to why
`
`we should adopt these proposed constructions. Id.; but see id. at 7 (“[B]y
`
`way of background, the claim construction order in the Related Litigation is
`
`attached herewith as Exhibit 1015.”).
`
`
`
`Patent Owner states that it “does not necessarily agree with
`
`Petitioners’ constructions, but the Board need not resolve any claim
`
`10
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`construction disputes to find that Petitioners have failed to satisfy their
`
`burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement
`
`with Petitioner’s proposed construction for the “identifying” limitation (id.
`
`at 9) and indicate its disagreement with certain of Petitioner’s proposals (id.
`
`at 9–14). Patent Owner confirmed at the oral argument that no claim term
`
`needs to be construed to reach a dispositive issue. Tr. 33:23–34:5.
`
`
`
`We determine that we need not expressly construe any claim terms to
`
`resolve the parties’ disputes.
`
`D. Section 101 Subject Matter Eligibility – Claims 1–25 (Ground 1)
`
`1. Principles of Law
`
`a. Section 101
`
`
`
`An invention is patent-eligible if it claims a “new and useful process,
`
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`
`However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
`
`include implicit exceptions: “[l]aws of nature, natural phenomena, and
`
`abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
`
`U.S. 208, 216 (2014).
`
`
`
`In determining whether a claim falls within an excluded category, we
`
`are guided by the Court’s two-part framework, described in Mayo and Alice.
`
`Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
`
`Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we
`
`first determine what concept the claim is “directed to.” See Alice, 573 U.S.
`
`at 219 (“On their face, the claims before us are drawn to the concept of
`
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`
`risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
`
`11
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`in petitioners’ application explain the basic concept of hedging, or protecting
`
`against risk.”).
`
`
`
`Concepts determined to be abstract ideas, and thus patent ineligible,
`
`include certain methods of organizing human activity, such as fundamental
`
`economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
`
`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
`
`mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
`
`determined to be patent eligible include physical and chemical processes,
`
`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
`
`(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
`
`rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
`
`U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
`
`(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
`
`
`
`In Diehr, the claim at issue recited a mathematical formula, but the
`
`Court held that “a claim drawn to subject matter otherwise statutory does not
`
`become nonstatutory simply because it uses a mathematical formula.”
`
`Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
`
`nothing more than a process for molding rubber products and not as an
`
`attempt to patent a mathematical formula.”). Having said that, the Court
`
`also indicated that a claim “seeking patent protection for that formula in the
`
`abstract . . . is not accorded the protection of our patent laws, and this
`
`principle cannot be circumvented by attempting to limit the use of the
`
`formula to a particular technological environment.” Id. (citation omitted)
`
`(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
`
`an application of a law of nature or mathematical formula to a known
`
`structure or process may well be deserving of patent protection.”).
`
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`If the claim is “directed to” an abstract idea, we turn to the second
`
`step of the Alice and Mayo framework, where “we must examine the
`
`elements of the claim to determine whether it contains an ‘inventive
`
`concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
`
`eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
`
`abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
`
`more than a drafting effort designed to monopolize the [abstract idea].’” Id.
`
`(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
`
`requir[ing] generic computer implementation[] fail[s] to transform that
`
`abstract idea into a patent-eligible invention.” Id.
`
`b. USPTO Section 101 Guidance
`
`
`
`In January 2019, the U.S. Patent and Trademark Office (USPTO)
`
`published revised guidance on the application of § 101. 2019 Revised Patent
`
`Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
`
`(“2019 Revised Guidance”).6 “All USPTO personnel are, as a matter of
`
`internal agency management, expected to follow the guidance.” Id. at 51;
`
`see also October 2019 Update at 1.
`
`
`
`Under the 2019 Revised Guidance and the October 2019 Update, we
`
`first look to whether the claim recites:
`
`(1) any judicial exceptions, including certain groupings of
`abstract ideas (i.e., mathematical concepts, certain methods of
`
`
`
`6 In response to received public comments, the Office issued further
`guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
`USPTO, October 2019 Update: Subject Matter Eligibility (the “October
`2019 Update”) (available at https://www.uspto.gov/sites/default/files/
`documents/peg_oct_2019_update.pdf).
`
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`organizing human activity such as a fundamental economic
`practice, or mental processes) (“Step 2A, Prong One”); and
`
`(2) additional elements that integrate the judicial exception into
`a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
`ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).[7]
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`2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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`
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`Only if a claim (1) recites a judicial exception and (2) does not
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`integrate that exception into a practical application, do we then look, under
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`Step 2B, to whether the claim:
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`(3) adds a specific limitation beyond the judicial exception that
`is not “well-understood, routine, conventional activity” in the
`field (see MPEP § 2106.05(d)); or
`
`(4) simply appends well-understood, routine, conventional
`activities previously known to the industry, specified at a high
`level of generality, to the judicial exception.
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`2019 Revised Guidance, 84 Fed. Reg. at 52–56.
`
`2. Analysis: Independent Claim 1
`
`a. Step 1
`
`
`
`Step 1 asks whether the claimed subject matter falls within the four
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`statutory categories of patentable subject matter identified by 35 U.S.C.
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`§ 101: process, machine, manufacture, or composition of matter.
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`
`
`Claim 1 recites “[a] method of presenting representations of payment
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`accepting unit events” and corresponding steps. Ex. 1001, 46:61–47:34.
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`Claim 1, thus, falls within the process category.
`
`
`
`7 This evaluation is performed by (a) identifying whether there are any
`additional elements recited in the claim beyond the judicial exception, and
`(b) evaluating those additional elements individually and in combination to
`determine whether the claim as a whole integrates the exception into a
`practical application. See 2019 Revised Guidance - Section III(A)(2), 84
`Fed. Reg. 54–55.
`
`14
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`b. Step 2A, Prong One
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`
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`Under Step 2A, Prong One, we determine whether the claims recite
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`any judicial exceptions, including certain groupings of abstract ideas (i.e.,
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`mathematical concepts, certain methods of organizing human activity such
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`as a fundamental economic practice, or mental processes).
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`
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`Petitioner asserts that the claims are directed to “identifying a
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`merchant and making a purchase from the merchant.” Pet. 19. Petitioner
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`states: “The claimed process of a purchaser and merchant communicating
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`information about a purchase is an abstract idea dressed in conventional
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`technical language. It is no less abstract than a customer noticing a store,
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`making a purchase, and receiving a receipt.” Id. at 20.
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`
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`In the Institution Decision, we determined, based on the record at that
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`time, that claim 1 recites “the concept of identifying a merchant and making
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`a purchase from the merchant.” Inst. Dec. 28. We stated that “[c]laim 1 also
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`recites steps for conducting the purchase.” Id.
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`
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`Patent Owner disagrees with Petitioner’s and our articulation of the
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`recited concept. PO Resp. 25–30. In particular, Patent Owner points out
`
`that “the independent claims do not recite making a purchase from the
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`merchant, and certain dependent claims (e.g., claims 5–6) specifically recite
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`that the vending transaction is aborted or fails.” Id. at 28. Patent Owner
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`contends that “‘making a purchase from the merchant’ is not the focus of the
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`claims; the independent claims are practiced ‘regardless of whether the user
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`makes a purchase from the merchant.’” Id. at 29. Patent Owner concedes
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`that “[t]he independent claims do recite enabling user interaction with the
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`user interface of the mobile payment application to complete a vending
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`transaction,” but contends that “[e]nabling a user interaction is a very
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`different operation than the concept of ‘making’ a purchase.” Id. at 28–29;
`
`15
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`see also id. at 26 (Patent Owner arguing that “Petitioners’ §101 arguments
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`are ‘untethered from the language of the claims.’” (quoting TecSec, Inc. v.
`
`Adobe Inc., 978 F.3d 1278, 1293 (Fed. Cir. 2020)). According to Patent
`
`Owner, “[r]ather than recite an abstract idea, as Petitioners argue, the claims
`
`instead recite ‘a specific process for transmitting specific information in a
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`specific order to achieve a specific result for a specific computer network
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`system’ in a technological environment that is ‘not analogous’ to the
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`scenario identified in the petition.” Id. at 27 (Ex. 2019 ¶¶ 45–47).
`
`
`
`Petitioner responds by again asserting that claim 1 is directed to the
`
`abstract idea of identifying a merchant and making a purchase from the
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`merchant. Pet. Reply 2–3.
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`
`
`Claim 1 recites, in part:
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`[1.2] 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, [1.3] the identifying including detecting
`predefined radio messages broadcast by the one or more
`payment accepting units, [1.4] wherein the one or more
`payment accepting units are vending machines that accept
`payment for dispensing of products and/or services;
`
`[1.5] displaying a user interface of the mobile payment
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`application on the display of the mobile device, [1.6] the user
`interface being configured to display a visual indication of the
`one or more payment accepting units and [1.7.1] 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 [1.7.2] (ii) trigger payment by the mobile
`payment application for a vending transaction initiated by the
`user of the mobile device with the available payment accepting
`unit of the one or more payment accepting units;
`
`[1.8] establishing via the one or more radio transceivers a
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`wireless connection between the mobile device and the
`
`16
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`Case 1:23-cv-00278-MN Document 81-1 Filed 04/17/24 Page 18 of 71 PageID #: 1914
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`available payment accepting unit of the one or more payment
`accepting units;
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`[1.9] after establishing the wireless connection,
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`presenting the user interface of the mobile payment application
`and enabling user interaction with the user interface of the
`mobile payment application to complete the vending
`transaction;
`
`[1.10] exchanging information with the available
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`payment accepting unit via the one or more radio transceivers,
`in conjunction with the vending transaction; and
`
`[1.11] in response to receiving the information,
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`displaying, on the display, an updated user interface of the
`mobile payment application to the user of the mobile device.
`
`Ex. 1001, 46:66–47:34.
`
`
`
`All of the claimed method steps of claim 1 occur “at the mobile
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`device” (element 1.1), and the method includes a step of enabling user
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`interaction with the user interface to complete the vending transaction
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`(element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite
`
`completing the purchase. The ’614 patent describes a commercial
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`transaction completed at the payment accepting unit (i.e. the vending
`
`machine), not at the mobile device. Ex. 1001, 7:15–19; see also id.
`
`at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent
`
`Owner that the claimed method does not require completing or conducting
`
`the transaction, but only enabling the completion of the transaction.
`
`
`
`On this complete record, we are persuaded that the elements block
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`quoted above recite the concept of identifying a merchant and enabling
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`completion of a purchase from the merchant. See Pet. 20 (arguing that the
`
`claimed method “is no less abstract than a customer noticing a store, making
`
`a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim
`
`describes “nothing more than a customer noticing and identifying a store
`
`17
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`amongst multiple stores based on the unique visual image of that store,
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`entering the store and communicating with the merchant, making a purchase,
`
`and receiving a receipt—all while using conventional tools.”). In
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`particular, claim 1 recites a step for identifying a merchant based on its
`
`advertised presence—identifying a nearby vending machine that is available
`
`to accept payment from a mobile payment application, with that identifying
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`involving the broadcasting of predefined radio messages.8 Claim 1 also
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`recites steps for enabling completion of a purchase from the merchant—
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`establishing a communication connection between the user’s device and the
`
`vending machine; displaying an interface that allows a user to select a
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`vending machine, to trigger payment for the vending transaction, and to
`
`enable the completion of the transaction; and updating the user interface
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`after receiving information from the vending machine regarding the
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`transaction (which, as indicated by dependent claim 3, may be information
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`indicating that the vending