Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 1 of 13 PageID #: 1617
`Case 1:24-cv-00733-MN Document 28-1
`Filed 11/25/24
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`Case 1:24-cv-00733-MN Document 28-1
`Filed 11/25/24
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 2 of 13 PageID #: 1618
`Trials@uspto.gov
`Paper No. 37
`Entered: October 25, 2022
`571-272-7822
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`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
`______________
`
`Record of Oral Hearing
`Held: September 16, 2022
`______________
`
`
`
`
`Before KEN B. BARRETT, STACEY G. WHITE, and
`GEORGE R. HOSKINS Administrative Patent Judges.
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 3 of 13 PageID #: 1619
`PGR2021-00093
`Patent 10/891,614 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`
`
`THOMAS RAMMER, ESQ.
`Ice Miller, LLP
`200 West Madison Street
`Suite 3500
`Chicago, IL 60606
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MICHAEL ROSATO, ESQ.
`Wilson, Sonsini, Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 90304
`
`
`
`
`
`The above-entitled matter came on for hearing on Friday, September
`16, 2022, commencing at 1:00 p.m., EDT, by video.
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 4 of 13 PageID #: 1620
`PGR2021-00093
`Patent 10/891,614 B2
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`P R O C E E D I N G S
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`JUDGE BARRETT: Good afternoon everybody. Looks
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`like people are coming online now, I think we’re all here. We’re
`on the record in PGR 2021-00093 Kiosoft Technologies v.
`Payrange. This is a virtual hearing today being conducted by
`video. I am Judge Barrett and with me are Judges White and
`Hoskins and let’s start by getting the parties’ appearances. Who
`do we have today for Petitioner?
`
`MR. RAMMER: Good afternoon. I’m Tom Rammer on
`behalf of the Petitioners Kiosoft Technologies, LLC and
`Techtrex, Inc. Also here is back-up lead counsel Safet Metjahic.
`
`JUDGE BARRETT: Welcome. And for Patent Owner?
`
`MR. ARGENTI: Good afternoon, Your Honor. Matt
`Argenti on behalf of Patent Owner Payrange, Inc. Also attending
`today are my co-counsel Mike Rosato and Jad Mills as well as
`Paresh Patel, the CEO of Payrange and the inventor on the ‘614
`patent.
`
`JUDGE BARRETT: Welcome everyone. Thank you for
`being here today. As you know, we set forth the procedure for
`today’s hearing in our Order but just as a reminder each party
`will have 60 minutes total to present their arguments. Petitioner
`of course will go first and may reserve time for rebuttal. Patent
`Owner then can respond and may reserve time for a brief
`surrebuttal. Petitioner then can present its rebuttal arguments
`and Patent Owner can present its surrebuttal. Judge Hoskins
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`3
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 5 of 13 PageID #: 1621
`PGR2021-00093
`Patent 10/891,614 B2
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`Thank you.
`MR. ARGENTI: So I want to briefly stop on slide 8. We
`were on slide 9, we can go back to slide 8. Just a little bit more
`on the articulation of the abstract idea. In the reply we see that
`Petitioners came back and argued now for the first time that the
`claims are directed to monopolizing the abstract idea that they
`had identified in the petition.
`So that’s an argument that just really illustrates how
`unhinged their 101 challenge is from the actual claim language.
`As I’m going to explain the claims recite specific technological
`elements and solutions and by no means simply recite the act of
`using a computer to identify a merchant and make a purchase
`from that merchant.
`Turning to slide 9. Petitioner’s characterization of the
`claims as directed to an abstract idea has another big problem.
`Their high level mischaracterization ignores numerous aspects of
`the claims. The claims provide specific solutions to multiple
`problems in a particular technological environment. That
`particular environment is one in which a user wishes to make a
`cashless payment on a vending machine that lacks a persistent
`network connection. The specification explains that traditional
`vending machines lack their own network connection which can
`prevent being able to accept cashless payments from instruments
`such as credit cards or debit cards as you see here.
`Turning to slide 10.
`JUDGE BARRETT: Before you move on counselor.
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 6 of 13 PageID #: 1622
`Case 1:24-cv-00733-MN Document 28-1
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`PGR2021-00093
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`]
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`MR. ARGENTI: Yes.
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`i)
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`no requirement that that somehow removes it from the invention
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`and the problem andthe solution that’s described in the
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`So, but at the same time there’s
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`specification.
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`So we see in cases like Uniloc that stand for the proposition
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`that a claim doesn’t need to articulate the advantage or the
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`problem in order to be directed to that technological solution.
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`So there is no requirement in the claims that the vending
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`that. We’re not reading that requirement in. That doesn’t make
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`it removed from the problem and the solution that’s described in
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 7 of 13 PageID #: 1623
`Case 1:24-cv-00733-MN Document 28-1
`Filed 11/25/24
`Page 7 of 13 PagelD #: 1623
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`PGR2021-00093
`Patent 10/891,614 B2
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`the specification.
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`JUDGE BARRETT: Okay.
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`I understand.
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`MR. AGENTI: So if we turn to slide 10. We’re talking
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`about the technological environmentstill of a vending machine
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`that lacks a network connection and the ‘614 patent addresses
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`this by providing a mobile device to machine payment processing
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`systems andthat’s reflected in the claims. A mobile device
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`dynamically creates a network connection with a vending
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`22 machine allowing the mobile device user to provide the vending
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`23 machine with a cashless payment even if the vending machine
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`has no network connection of its own.
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`But doing that also creates its own set of problems unique
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`to this environment and the claims reflect solutions to those
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`4]
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 8 of 13 PageID #: 1624
`PGR2021-00093
`Patent 10/891,614 B2
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`problems as well. That’s what I was getting at the distinction
`between the technological environment versus specific solutions
`that we see in the claims.
`So turning to slide 11. One such problem that arises in this
`technological environment is that vending machines are typically
`in public places where there may be other potential customers
`nearby and at times you can have multiple vending machines that
`are near each other. So if a user is sending a cashless payment
`to a vending machine using a mobile device application how can
`you ensure that that payment isn’t used by someone else? As our
`expert, Dr. Shamos, explained and we see here on this slide you
`want to be sure that the payment is provided to the right machine
`at the right time.
`Turning to slide 12. The solution to this --
`JUDGE BARRETT: Before you move on, and maybe that’s
`what you’re going to hit on the next slide but this is going to be
`kind of a recurring theme. Can you direct me to language in the
`claims, limitations in the claims that are directed to that feature?
`MR. ARGENTI: Absolutely. If we turn to slide 12, you
`had it right, Your Honor.
`JUDGE BARRETT: Okay.
`MR. ARGENTI: That’s what I was going to address next.
`So the solution to this problem that’s described and claimed in
`the ‘614 patent involves the user’s mobile device application
`identifying vending machines based on proximity and
`availability to accept payment and then giving the user control
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`Case 1:24-cv-00733-MN Document 28-1 Filed 11/25/24 Page 9 of 13 PageID #: 1625
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`here on the slide and point out in our briefing.
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`JUDGE HOSKINS: Mr. Argenti, you havealittle bit more
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`nA&WwNYee
`ooonDW
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`than five minutes left on your initial period.
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`MR.ARGENTI: Thank you, Your Honor. Turningto slide
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`28 and ground 6 Petitioners bring in the Faith reference for claim
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`7’s accelerometer requirements but while claim 7, as I mentioned
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`earlier, requires using accelerometer data to determine when a
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`user 1s walking away from a vending machine and then
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`cancelling the wireless connection all Petitioners can point to in
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`Faith is a purported teaching regarding using an accelerometerto
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`initiate interaction. That’s something very different obviously
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`and Petitioners provide no expert testimony or analysis to
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`explain how a POSA would get from one to another.
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`It’s a
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`conclusory deficient obviousness case.
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`Now turning to slide 29 and ground 7. Petitioners turn to
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`Mockus only for elements [1.2] and [1.5] so ground 7 cannot fix
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`the deficiency that the Board recognized with respect to [1.3] or
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`the additional problems with their theory that Low discloses
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`element [1.9].
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`Unless the panel has any questions, Ill reserve the
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`remainder of my time.
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`JUDGE BARRETT: Let me see.
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`I do have -- this is Judge
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`Barrett -- I do have a couple of questions to wrap up and I
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`apologize if you may havesaid this and I missed it, but in Patent
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`Owner’s response, you don’t need to necessarily pull this up, but
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`the briefing or from our expert that you could direct my attention
`to, I’d be happy to address them. But I don’t think that was our
`intent to say that the pre-defined radio message itself has to be
`the thing that indicates availability to accept payment. But what
`is necessary and what’s not a part of their challenges is that the
`identifying has to identify something that’s available to
`accepting payment.
`JUDGE BARRETT: Understood. Okay, thank you. I think
`we’re on the same page. That’s all from me.
`JUDGE HOSKINS: I have one last question for you, Mr.
`Argenti. In terms of trying to distinguish Low or arguing to
`distinguish Low, you referred to claim 1 does recite that phrase
`trigger payment which is done using the user interface and it also
`recites completing the vending transaction. So given those two
`phrases that appear in claim 1, I kind of circle back to where we
`started with your argument today which was that claim 1 does
`not require completing a purchase transaction and it seems to me
`that if you trigger payment and if you complete the vending
`transaction, then you have completed the purchase. So I’m
`wondering how those two things interact in terms of your view of
`the scope of claim 1?
`MR. ARGENTI: If you look at the claim language of both,
`this is all part of the displaying limitation, it says that you are
`presenting a user interface that’s configured to enable those
`things. It doesn’t say that it’s actually -- that that’s a
`requirement that it take place.
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`Unless there are any other questions, that’s all I wanted to
`point out.
`JUDGE BARRETT: Counsel, just one follow-up on the
`cashless transactions. I’m looking at the specification at the top
`of column 2, you don’t necessarily need to pull that up but it’s
`talking about a “number of people with Internet-connected
`mobile devices proliferates, so does the variety of uses . . . .
`Mobile payment is a logical extension. There is a large
`development effort around bringing mobile payment to the retail
`sector.” So do I read that as a concession that cashless payment
`was known at the time of this invention?
`MR. ARGENTI: Well, what it says is that there’s a large
`development after about bringing mobile payment to the retail
`sector so I don’t think that’s any sort of concession although
`that’s not a distinction that we’ve made over the prior art. Our
`distinctions are based on the actual limitations of the claims.
`JUDGE BARRETT: Okay. Thank you. I have nothing
`further. Judges, anything? All right. With that the case is
`submitted. We’ll go off the record but stay on gentlemen, I’ll
`ask the court reporter if he has any questions for spellings or
`anything like that before we let counsel go.
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`(The reporter and counsel confer.)
`JUDGE BARRETT: All right. Thank you everyone. We
`are concluded. Have a lovely weekend.
`
`(Whereupon, at 2:48 p.m., the oral hearing was
`concluded.)
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