Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 1 of 12 PageID #: 903
`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 1 of 12 PagelD #: 903
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`Exhibit C
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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 2 of 12 PageID #: 904
`Paper No. _____
`Filed: November 24, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`KIOSOFT TECHNOLOGIES, LLC and TECHTREX, INC.,
`Petitioners,
`v.
`
`PAYRANGE INC.,
`Patent Owner.
`_____________________________
`
`Case No. PGR2023-00042
`Patent 11,481,772
`_____________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.207
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 3 of 12 PageID #: 905
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`TABLE OF CONTENTS
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`I.
`Introduction ...................................................................................................... 1
`II.
`Claim Construction .......................................................................................... 2
`III. Ground 1 Fails ................................................................................................. 2
`A.
`Petitioners Are Collaterally Estopped ................................................... 3
`B.
`Petitioners Fail to Prove Claims 7 and 11 Are Patent Ineligible ........ 10
`IV. Ground 2 Fails ............................................................................................... 13
`A.
`The Petition Fails to Show that the Proposed Combination Satisfies
`All Requirements of the Independent Claims ..................................... 13
`1.
`The Petition Fails to Show that the Proposed Combination
`Teaches Element 1.3 ................................................................. 13
`The Petition Fails to Show that the Proposed Combination
`Teaches Element 1.7.2 .............................................................. 18
`The Petition Fails to Show that the Proposed Combination
`Teaches Element 1.9 ................................................................. 20
`The Petition Fails to Show that the Proposed Combination
`Teaches Element 1.11 ............................................................... 26
`The Petition Fails to Show that a POSA Had Reason to Arrive at the
`Additional Limitations of Claim 7 ...................................................... 30
`The Petition Fails to Show that the Proposed Combination Satisfies
`the Additional Limitations of Claim 11 .............................................. 32
`V.
`Conclusion ..................................................................................................... 35
`VI. Appendix ........................................................................................................ 36
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`2.
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`3.
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`4.
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`B.
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`C.
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`-i-
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 4 of 12 PageID #: 906
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`I.
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`Introduction
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`The Board should deny institution of inter partes review (IPR) of U.S.
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`Patent No. 11,481,772 (“the ’772 patent”) because Petitioners KioSoft
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`Technologies, LLC and TechTrex, Inc. fail to demonstrate a reasonable likelihood
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`of prevailing. The petition presents two grounds of challenge, both of which fall
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`short.
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`Ground 1 attempts to relitigate Petitioners’ failed patent eligibility
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`challenges to materially identical claims in a previous PGR. In arguing that the
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`claims are patent ineligible under 35 U.S.C. §101, Petitioners invoke the Board’s
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`previous decision in PGR2021-00093—Petitioners’ challenge to claims of related
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`U.S. Patent No. 10,891,614 (“the ’614 patent”)—where the Board found “very
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`similar claims” patent ineligible. Pet., 38 (emphasis in original) (citing PGR2021-
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`00093, Paper 38). Petitioners are correct that the Board has already resolved §101
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`challenges against very similar claims, and Patent Owner has now disclaimed
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`claims 1-6, 8-10, and 12-20 of the ’772 patent, leaving only claims 7 and 11. See
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`EX2001 (statutory disclaimer under 37 C.F.R. §1.321(a) filed on November 22,
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`2023). Petitioners overlook, however, that this prior decision found that
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`Petitioners failed to prove patent ineligibility for claims 7 and 11 of the ’614
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`patent, which are virtually identical to claims 7 and 11 of the ’772 patent.
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`-1-
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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 5 of 12 PageID #: 907
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`Petitioners are collaterally estopped from relitigating the patent ineligibility of
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`these materially identical claims, and in any event the petition fails to prove that
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`the Board should reach a different outcome here.
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`Ground 2 also contains numerous facial deficiencies. This ground argues
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`that the claims were obvious over a combination of Low, Arora, and Casey, but
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`Petitioners fail to show that the proposed combination satisfies multiple elements
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`of claim 1, which claims 7 and 11 inherit via dependency. Petitioners also fail to
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`show that the proposed combination satisfies the additional limitations recited in
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`claims 7 and 11.
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`Petitioners thus fail to meet their burden of proving that claims 7 and 11 are
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`patent ineligible under §101 or obvious under §103. Accordingly, institution of
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`inter partes review should be denied.
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`II.
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`Claim Construction
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`In an IPR, a claim is given its ordinary and customary meaning in light of
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`the specification. 37 C.F.R. §42.200(b). No constructions are necessary to deny
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`institution because denial is warranted for numerous reasons that do not depend on
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`claim construction. Infra, §§III-IV.
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`III. Ground 1 Fails
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`Ground 1 seeks a do-over of Petitioners’ failed patent-ineligibility
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`challenges to claims 7 and 11 of the ’614 patent. Petitioners correctly argue that
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`-2-
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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 6 of 12 PageID #: 908
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`the Board addressed “very similar” claims of the related ’614 patent in PGR2021-
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`00093. Pet., 38 (emphasis in original). But Petitioners fail to contend with the
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`consequences of the admitted similarities with respect to claims 7 and 11, as these
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`claims are materially identical to claims that the Board found Petitioners had not
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`proven to be patent ineligible. PGR2021-00093, Paper 38 at 45-47, 49. In view of
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`the Board’s prior decision addressing materially identical patent eligibility issues,
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`Petitioners are collaterally estopped from challenging the patent eligibility of
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`claims 7 and 11. Even if collateral estoppel does not apply, Petitioners’ repetition
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`of the same facially deficient arguments from the previous PGR only confirms that
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`Petitioners have failed to meet their burden of proving that either claim is patent
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`ineligible.
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`A.
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`Petitioners Are Collaterally Estopped
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`Petitioners are collaterally estopped from arguing that claims 7 and 11 are
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`patent ineligible under §101. Collateral estoppel applies to AIA proceedings
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`when:
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`(1) the issue is identical to one decided in the first action; (2) the issue
`was actually litigated in the first action; (3) resolution of the issue was
`essential to a final judgment in the first action; and (4) [the party against
`whom collateral estoppel is being asserted] had a full and fair opportunity
`to litigate the issue in the first action.
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`-3-
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 7 of 12 PageID #: 909
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`Google LLC v. Hammond Dev. Int'l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022).
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`As explained below, all four elements are satisfied here.
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`First, the issues here—the patent eligibility of claims 7 and 11 under §101—
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`are identical to issues decided in PGR2021-00093 because these claims are
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`materially identical to claims challenged under §101 in that proceeding. “It is
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`well-understood that patent claims need not be identical for collateral estoppel to
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`apply.” Id. “Rather, collateral estoppel requires that the issues of patentability be
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`identical,” meaning collateral estoppel may apply even when the claims “use
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`slightly different language to describe substantially the same invention, so long as
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`the differences between the unadjudicated patent claims and adjudicated patent
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`claims do not materially alter the question of invalidity.” Id. (internal quotations
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`omitted). Such is the case here.
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`Claim 7 of the ’772 patent describes substantially the same invention as
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`claim 7 of the ’614 patent, containing only slight differences that do not materially
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`alter the question of invalidity. The limitations of the parent claims are virtually
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`identical, as shown in the following table, which identifies differences with
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`bold/underline emphasis:
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`’614 claim 1
`A method of presenting
`representations of payment
`accepting unit events, comprising:
`at a mobile device with one or
`more processors, memory, one or
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`’772 claim 1
`A method of presenting
`representations of payment
`accepting unit events, comprising:
`at a mobile device with one or
`more processors, memory, one or
`-4-
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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 8 of 12 PageID #: 910
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`’614 claim 1
`more output devices including a
`display, and one or more radio
`transceivers:
`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 including
`detecting predefined radio
`messages broadcast by the one or
`more payment accepting units,
`wherein the one or more payment
`accepting units are vending
`machines that accept payment for
`dispensing of products and/or
`services;
`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 vending
`transaction initiated by the user of
`the mobile device with the available
`payment accepting unit of the one or
`more payment accepting units;
`establishing via the one or more
`radio transceivers a wireless
`connection between the mobile
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`’772 claim 1
`more output devices including a
`display, and one or more radio
`transceivers:
`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;
`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;
`establishing via the one or more
`radio transceivers a wireless
`communication path including the
`-5-
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 9 of 12 PageID #: 911
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`’614 claim 1
`device and the available payment
`accepting unit of the one or more
`payment accepting units;
`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;
`exchanging information with the
`available payment accepting unit via
`the one or more radio transceivers,
`in conjunction with the vending
`transaction; and
`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.
`
`’772 claim 1
`mobile device and the available
`payment accepting unit of the one or
`more payment accepting units;
`after establishing the wireless
`communication path, enabling user
`interaction with the user interface of
`the mobile payment application to
`complete the transaction;
`
`exchanging information with the
`available payment accepting unit via
`the one or more radio transceivers,
`in conjunction with the transaction;
`and
`after exchanging the
`information, displaying, on the
`display, an updated user interface of
`the mobile payment application to
`the user of the mobile device.
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`These slight differences do not meaningfully alter the patentability analysis,
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`and Petitioners even expressly invoke the previous Board decision, representing
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`that “the Board in the parent ’614 PGR found very similar claims to be ineligible
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`for patent protection.” Pet., 38 (emphasis in original). Indeed, Petitioners
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`themselves emphasize that the Patent Office previously determined that the ’772
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`claims “are not patentably distinct” from the claims of the ’614 patent. EX1002,
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`147; Pet., 14-15. The additional limitations of ’772 claim 7 similarly mirror ’614
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`claim 7, as shown in the following table, which identifies the sole difference with
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`bold/underline emphasis:
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`-6-
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 10 of 12 PageID #: 912
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`’614 claim 7
`The method of claim 1, wherein
`the mobile device includes an
`accelerometer and the method
`further comprises:
`based on data from the
`accelerometer, determining whether
`the user is walking away from the
`available payment accepting unit;
`and
`in accordance with a
`determination that the user is
`walking away from the available
`payment accepting unit, canceling
`the wireless connection.
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`’772 claim 7
`The method of claim 1, wherein
`the mobile device includes an
`accelerometer and the method
`further comprises:
`based on data from the
`accelerometer, determining whether
`the user is walking away from the
`available payment accepting unit;
`and
`in accordance with a
`determination that the user is
`walking away from the available
`payment accepting unit, canceling
`the wireless communication path.
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`Petitioners do not even attempt to show—nor could they—that canceling the
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`wireless “communication path,” instead of canceling the wireless “connection,”
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`materially alters the patent eligibility analysis. Accordingly, the differences
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`between ’772 claim 7 and ’614 claim 7 do not materially alter the question of
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`patent eligibility.
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`Claim 11 of the ’772 patent similarly mirrors claim 11 of the ’614 patent
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`while adding a wherein clause that further narrows the claim. The following table
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`identifies the differences with bold/underline emphasis:
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`’614 claim 11
`The method of claim 1, wherein
`the user interface of the mobile
`payment application presented after
`establishing via the wireless
`connection includes:
` a visual representation of
`available payment accepting unit;
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`’772 claim 11
`The method of claim 1, wherein
`the user interface of the mobile
`payment application, after
`establishing the wireless
`communication path, includes:
`a visual representation of the
`available payment accepting unit;
`-7-
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`

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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 11 of 12 PageID #: 913
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`’614 claim 11
` an indication of a prepared
`balance; and
` an affordance that when slid,
`indicates the initiation of the
`vending transaction.
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`’772 claim 11
`an indication of a prepared
`balance; and
`an affordance that when slid,
`indicates the initiation of the
`transaction;
`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.
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`As with claim 7, the recitation of the wireless “communication path,” instead
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`of the wireless “connection,” is a trivial difference that does not materially alter the
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`patent eligibility analysis, as is the recitation of the user interface “after
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`establishing” the wireless communication path instead of the user interface
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`“presented after establishing” the wireless connection. (emphasis added). The
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`additional wherein clause at the end of ’772 claim 11 does not help Petitioners
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`since it only narrows the claim further, meaning the bar for proving patent
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`eligibility is, if anything, even higher than before. Accordingly, the differences
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`between ’772 claim 11 and ’614 claim 11 do not materially alter the question of
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`patent eligibility.
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`Second, these issues were “actually litigated in the first action.” Google, 54
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`F.4th at 1381. The identical patent-eligibility issues were addressed in the
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`previous petition (PGR2021-00093, Paper 2 at 25-27) and litigated during the trial
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`phase (e.g., PGR2021-00093, Paper 19 at 14).
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`-8-
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`Case 1:24-cv-00733-MN Document 16-3 Filed 09/13/24 Page 12 of 12 PageID #: 914
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`Third, resolution of these issues was “essential to a final judgment in the
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`first action.” Google, 54 F.4th at 1381. The Board’s final written decision in the
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`previous PGR expressly addressed Petitioners’ failure to prove that ’614 claims 7
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`and 11 were patent ineligible. PGR2021-00093, Paper 38 at 45-47. Those
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`findings were essential to the Board’s ultimate determination upholding claims 7
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`and 11. See id., 68-69.
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`Fourth, Petitioners had a “full and fair opportunity to litigate the issue in the
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`first action.” Google, 54 F.4th at 1381. As noted above, these patent eligibility
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`issues were fully litigated during the trial phase of the previous PGR. The Board
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`even expressly considered Petitioners’ belated arguments regarding claim 11.
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`PGR2021-00093, Paper 38 at 46-47 (“Even if we were to consider this belatedly-
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`developed articulation of its theory, we agree with Patent Owner that Petitioner
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`still has failed to adequately address the claim as a whole.”). Petitioners chose not
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`to file a request for rehearing or appeal the Board’s decision to the Federal Circuit.
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`Petitioners thus had a full and fair opportunity to litigate the same patent eligibility
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`issues.
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`All four requirements of collateral estoppel are therefore satisfied.
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`Petitioners are thus estopped from challenging the patent eligibility of claims 7 and
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`11 of the ’772 patent, and the Board should deny institution accordingly.
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`-9-
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