Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 7
`Entered: November 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SENTEGRA, LLC,
`
`Patent Owner.
`____________
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`_______________
`
`
`
`
`
`
`Before JOSIAH C. COCKS, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 7
`Entered: November 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SENTEGRA, LLC,
`
`Patent Owner.
`____________
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`_______________
`
`
`
`
`
`
`Before JOSIAH C. COCKS, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`IPR2016-01109
`Patent 8,706,627 B2
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1, 4, 6, 7, 10–13, and 16 (the “challenged claims”)
`of U.S. Patent No. 8,706,627 B2 (Ex. 1001, “the ’627 patent”). Paper 1
`(“Pet.”). Sentegra, LLC (“Patent Owner”) filed a Preliminary Response to
`the Petition. Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review must 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.” 35 U.S.C. § 314(a). Upon considering the
`Petition and Preliminary Response, we determine that Petitioner has
`established a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one of the challenged claims. Accordingly, we
`institute an inter partes review.
`A.Related Proceedings
`The parties have identified several district court proceedings relating
`to the ’627 patent, including Sentegra, LLC v. Asus Computer International,
`No. 1:15-cv-03768 (S.D.N.Y. May 15, 2015); Sentegra, LLC v. Samsung
`Electronics America, Inc., No. 1:15-cv-09266 (S.D.N.Y. Nov. 24, 2015);
`Sentegra, LLC v. BLU Products, Inc., No. 1:16-cv-00158 (D. Co. Jan. 21,
`2016); Sentegra, LLC v. Azend Group Corp., No. 1:16-cv-00263 (D. Co.
`Feb. 4, 2016); Sentegra, LLC v. LG Electronics MobileComm USA, Inc., No.
`1:15-cv-01535 (S.D.N.Y. Mar. 2, 2015) (settled & dismissed Nov. 17,
`2015); Sentegra, LLC v. Lenovo Group Ltd., No. 1:14-cv-09096 (S.D.N.Y.
`Nov. 14, 2014) (settled & dismissed Apr. 28, 2015); Sentegra, LLC v.
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`Blackberry Ltd., No.1:14-cv-08389 (S.D.N.Y. Oct. 21, 2014) (settled &
`dismissed Feb. 27, 2015); Sentegra, LLC v. Asus Computer Int’l, No.
`1:16-cv-00132-MSK-MJW (D. Colo. Jan. 19, 2016); and Sentegra, LLC v.
`Asus Computer Int’l, No. 3:16-cv-03136-WHA (N.D. Cal. May 15, 2015).
`Pet. 2–3; Paper 5, 1.
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`B. The ’627 Patent
`The ’627 patent relates to “apparatus, systems and methods to
`wirelessly pay for purchases, electronically interface with financial
`accounting systems, and electronically record and wirelessly communicate
`authorization transactions using Personal Digital Assistant (‘PDA’).”
`Ex. 1001, Abstract. Figure 1e of the ’627 patent is shown below:
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`Id. at Fig. 1e. Figure 1e illustrates major node relationships when a PDA
`device is used to purchase an authorization transfer, tickets for example, in
`an exemplary embodiment of the invention. Id. at 1:44–45, 2:57–60. The
`’627 patent explains that the “purchase of various types of tickets is the
`purchase of the authorization to do something—to attend a movie, to take a
`particular airline flight, and the like.” Id. at 1:45–47.
`The ’627 patent explains that a user could use PC (760) hosting a
`browser client to order a ticket from ticket broker server (900) over the
`Internet. Id. at 7:55–59. Ticket broker (900) would open communications
`link (905) to Immtec ticket server (770) and request an eTicket certificate.
`Id. at 7:61–63. The certificate would be sent to PC (760), where it would be
`used to setup PDA device (700) by sending the eTicket certificate to the
`PDA device via communications link (795). Id. at 7:64–66, 8:7–9. Immtec
`ticket server (770) would send a copy of the eTicket certificate via
`communications link (775) to a POP (point of purchase) ticket server (780),
`located at or accessible by a POP ticket terminal at the site where the ticket
`would be used. Id. at 7:67–8:4. The ’627 patent also explains that PDA
`(700) would be equipped with a wireless interface (705) through which the
`PDA could communicate with POP eTicket client terminal (710) located at
`the site where the ticket would be used. Id. at 5:60–63, 6:1–3. The eTicket
`certificate would be verified by the POP eTicket client terminal via
`communications link (785) to the POP ticket server. Id. at 8:13–15.
`C. Challenged Claims of the ’627 Patent
`Challenged claims 1 and 11 are independent, and claims 4, 6, 7, 10,
`12, 13, and 16 depend therefrom. Claim 1 is illustrative and is reproduced
`below:
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`1. A wireless handheld device for executing a mobile transaction
`using the wireless handheld device, said wireless handheld
`device comprising:
`a data storage device adapted for storing data;
`a user input device;
`an executable memory storage device adapted for storing
`executable program instructions, the executable memory storage
`device encoded with a first set of executable computer program
`instructions, and a second set of executable computer program
`instructions;
`a microprocessor programmed for executing the first set of
`executable computer program instructions, and the second set of
`executable computer program instructions;
`wireless communication hardware adapted for communications
`using wireless Internet protocols over a wireless Internet
`connection;
`short-range wireless communication hardware adapted for
`communications using wireless short-range communication
`protocols;
`said microprocessor, executing the first set of executable
`computer program instructions, accesses a content host computer
`device at an Internet accessible address according to a user input
`through said user input device of an indication of said Internet-
`accessible address, said accessing said content host computer
`device comprising accessing said Internet-accessible address
`through said wireless communication hardware using wireless
`Internet protocols through said wireless Internet connection; and
`said microprocessor, executing the second set of executable
`computer program instructions:
`requests said content host computer device for a particular
`authorization certificate for exchange with a particular merchant,
`receives from said content host computer device a request for
`security and payment information to pay for said particular
`authorization certificate,
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`communicates security and payment information to said content
`host computer device to pay for said particular authorization
`certificate,
`receives an authorization from said content host computer device
`to download said particular authorization certificate,
`executes a downloading of data from a memory storage device
`associated with either the content host computer device or a
`content provider computer device, said executing said
`downloading of data comprising downloading said data from
`said memory storage device to said wireless handheld device
`through said wireless communication hardware using wireless
`Internet protocols through said wireless Internet connection, said
`data comprising said particular authorization certificate,
`activates a communication by said content host computer device
`to said content provider computer device of confirmation data
`comprising said payment information, security information, and
`said particular authorization certificate, said content provider
`computer system being accessible by point-of-sale devices for
`said particular merchant, and
`executes a storing of said data downloaded through the content
`host computer device in the data storage device of said wireless
`handheld device.
`Ex. 1001, 62:45–63:41. Independent claim 11 includes similar recitations.
`D. Evidence Relied Upon
`Petitioner relies upon the following references:
`Ex. 1004
`Jan. 18, 2000
`Maes
`US 6,016,476
`Ex. 10051
`Mar. 10, 1998
`Ikeda
`JN H10-69553
`Ex. 1006
`May 20, 1999
`Paltenghe
`WO 99/24892
`Pet. 5, 6. Petitioner also relies upon the Declaration of Herbert Cohen
`(“Cohen Decl.”). Ex. 1003.
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`1 Exhibit 1005 includes the Japanese language publication (pp. 1–24), an
`English translation (pp. 25–48), and an affidavit of accuracy (p. 49).
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`E. Asserted Grounds of Unpatentability
`Petitioner contends the challenged claims are unpatentable on the
`following grounds:
`References
`Maes and Ikeda
`Maes and Paltenghe
`
`Claims Challenged
`1, 4, 6, 7, and 11–13
`1, 4, 6, 10, 11, and 16
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Pet. 6.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent is given its
`broadest reasonable interpretation in light of the specification of the patent in
`which it appears. 37 C.F.R. § 42.100(b). Under this standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`The parties propose particular constructions for certain claim terms.
`Pet. 13–16; Prelim. Resp. 11–14. We determine that it is necessary at this
`time to address only the construction of “said microprocessor, executing the
`second set of executable computer program instructions . . . activates a
`communication.”
`Petitioner does not address this term. Patent Owner proposes to
`construe this term to mean “capable of ‘triggering a communication,’ and
`not in direct response to a user input.” Prelim. Resp. 11.
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`Figures 12 (12a–12d-2) and 13 (13a–13c) of the ’627 patent are high-
`level functional flow diagrams depicting exemplary embodiments of the
`ticket purchasing, downloading, and redeeming aspects of the claimed
`invention, some of the steps of which are recited in the disputed claims. Ex.
`1001, 3:39–45. Figures 12 and 13 illustrate some of the points of user
`interaction during these aspects of the claimed invention. Notably, step 402
`(Fig. 12a) indicates that the customer (user) has the choice to purchase
`tickets or not, and only if the customer chooses to purchase tickets does the
`transaction proceed toward completion. Step 408 indicates that the customer
`chooses the PDA Pay & eTicket option at the merchant’s web site. Step 418
`(Fig. 12b) indicates that the customer must input an ID and PIN, choose a
`payment method, account, and amount to pay, and transmit the data to the
`merchant before the transaction can proceed to completion. The system will
`not complete the transaction, including sending the transaction data (Step
`447) and the eTicket data (Step 450) to the redeeming merchant as well as
`the eTickets to the wireless PDA (Step 452) until after these steps have been
`completed by the customer (Fig. 12d-2).
`Similarly, Figure 13a shows that the user must first access the PDA
`(Step 500), choose the PDA Pay and eTicket software (Step 501), input the
`user ID and PIN (Step 503), choose the eTicket icon (Step 510), choose the
`eTickets to redeem (Step 512), and push the send button or icon to transmit
`the eTicket (Step 513) before the eTicket can be redeemed and used at the
`merchant.
`The ’627 patent’s explanation of the claimed invention indicates
`repeated user interaction in order to complete the ticket purchasing,
`downloading, and redeeming aspects of the claimed invention. Accordingly,
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`on the record before us, we decline to adopt Patent Owner’s proposed
`construction as the broadest reasonable interpretation. We determine it is
`not necessary to further construe this term to resolve the controversy before
`us.
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`B. Maes (Ex. 1004)
`Maes discloses a personal digital assistant (PDA) on which a user can
`store his or her credit card and other personal information and then interact
`with an ATM or point-of-sale (POS) system to perform a consumer
`transaction. Ex. 1004, 2:23–31.
`Maes discloses a “portable information and transaction processing
`(PDA) device 10,” that includes “a central processing unit (CPU) 12, which
`controls the operations of the PDA device 10 via programs stored in a
`memory 14 and executed by the CPU 12.” Ex. 1004, 4:65–5:4; Ex. 1003
`¶ 45. Figure 1 of Maes is reproduced below:
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`Ex. 1004, Fig. 1. Figure 1 is a block diagram illustrating elements of a
`portable information and transaction processing device. Maes’s PDA
`includes a touch screen or equivalent user interface 34, central processing
`unit (CPU) 12 for processing data, such as the biometric data used for user
`verification, memory 14 (data storage device) for storing user information,
`and ports that provide communication capability to other devices, such as a
`central server 60 and POS systems. Ex. 1004, 3:17–37, 7:57–8:9, 12:9–15.
`For example, Maes discloses user communication between PDA 10 and both
`central server 60 and a POS terminal using serial port 42, parallel port 44,
`modem 42, IR port 54, or RF port 50. Ex. 1004, 7:57–8:9, 12:9–15. Maes
`also discloses that PDA 10 can connect to central server 60 “through a
`digital communication channel such as internet, intranet, or local area
`network” or “may be established through wireless communication.” Ex.
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`1004, 7:36–8:2. Thus, Maes’s PDA could connect to external devices via
`the Internet wirelessly. Ex. 1004, 8:5–9; Ex. 1003 ¶ 46.
`As shown in Figure 4 of Maes, “[o]nce the communication has been
`established, the user is prompted . . . to enter certain verification data (step
`102),” which “is then transmitted to the central server via the
`communication link L1.” Ex. 1004, 8:13–18. Figure 4 of Maes is
`reproduced below:
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`
`Ex. 1004, Fig. 4. Figure 4 is a flow diagram illustrating the client/server
`mode of operation. For example, the central server may ask a series of
`questions or prompt the user to enter a PIN. Ex. 1004, 8:18–28.
`Additionally, the system can require biometric verification to obtain the
`digital certificate from the central server. Ex. 1004, 10:18–21; Ex. 1003
`¶ 47.
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`C. Ikeda (Ex. 1005)
`Ikeda discloses a remote, ticket-purchase system where a person can
`remotely request, purchase, and receive a ticket from a ticket-issuing device
`at a ticket-issuing facility. Ex. 1005 ¶ 10.2
`Figure 1 of Ikeda is reproduced below:
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`Ex. 1005, Fig. 1. Figure 1 illustrates the conceptual structure of the ticket
`issuing system. Ex. 1005 ¶ 75. Specifically, Ikeda discloses a personal
`device (user device 2) that a user uses to input a ticket-issue request; ticket-
`issuing device 102 that receives the request and issues a ticket; and ticket-
`using device 104 at, for example, the business that uses the purchased ticket
`(e.g., airline or hotel). Ex. 1005 ¶¶ 9, 76–82. For example, as shown in Fig.
`5, user device 2 can request a ticket, such as a hotel-lodging ticket, from
`ticket-issuing device 1. Ex. 1005 ¶ 129, Fig. 5, step S2; Ex. 1003 ¶¶ 48–49.
`
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`2 Citations are to the English translation beginning on page 25 of Exhibit
`1005.
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`Figure 5 of Ikeda is reproduced below:
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`Ex. 1005, Fig. 5. Figure 5 is a flowchart illustrating the ticket processing
`procedure when reserving a lodging ticket for a hotel. Ex. 1005 ¶ 128.
`Ikeda discloses that the ticket-issuing device can be “a WWW server
`installed in the travel agency or a WWW server installed in the hotel” in
`which case “the user receives the ticket issuing service over the internet.”
`Ex. 1005 ¶ 130. Once the ticket-issuing device retrieves the search results,
`the user can select the desired hotel, as illustrated in Figure 6(C), below,
`select a hotel (Fig. 6(G)), and input payment information (Fig. 5, step S6) to
`pay the reserved hotel’s lodging fee. Ex. 1005 ¶¶ 132–138; Ex. 1003 ¶ 50.
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`Figure 6 of Ikeda is reproduced below:
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`Figure 6 illustrates displays of the hotel ticket issuing processing procedure.
`Ex. 1005 ¶¶ 131–149. The ticket-issuing device requests user information,
`like name and password, to provide security for the ticket. Ex. 1005 ¶¶ 145–
`148. Once the hotel reservation and charging information are confirmed, the
`user device is alerted that the ticket information will be transmitted shortly
`and that a fee will be withdrawn from the credit card (Fig. 6(H)). Ex. 1005
`¶ 149. The ticket is then encoded and transmitted to the user device (Fig. 5,
`step S14), and the user device decodes the ticket information and either
`prints the ticket—as shown in Figure 7 below—or records the information
`on a portable recording medium. Ex. 1005 ¶¶ 150–151, 157; Ex. 1003 ¶ 51.
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`Figure 7 of Ikeda is reproduced below:
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`Figure 7 illustrates a hotel lodging ticket. Ex. 1005 ¶ 157.
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`D. Paltenghe (Ex. 1006)
`Paltenghe discloses a virtual wallet system with a broad range of
`functionalities, including allowing the owner to remotely request, purchase,
`and receive a ticket from a POS at a ticket-issuing facility. Ex. 1006, Title,
`21:12–26.
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`Figure 2 of Paltenghe is reproduced below:
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`Ex. 1006, Fig. 2. Figure 2 is a schematic representation of a virtual wallet
`system. Ex. 1006, 9:27–28. Specifically, as shown in Figure 2 above,
`Paltenghe’s virtual wallet system includes a personal storage device 12, that
`a user uses to “communicate with outside world 18 for purpose of point of
`sale transactions 15.” Ex. 1006, 12:10–16, 13:21–22.
`POS transactions may include purchasing a theater ticket, where the
`user shops for a particular theater ticket on a theater server using a PDA, the
`theater server requests payment and sends the ticket, which the user
`downloads and then uses at the theater to attend the show. Id. at 21:12–26.
`Paltenghe also discloses that a PDA may include multiple data types like
`“electronic currency (e-currency); coupons; tokens; tickets; loyalty credits
`and the like” and may be used for “authenticating; digital signing; or
`paying.” Id. at 12:21–25. Additionally, Paltenghe’s “virtual wallets include
`software programs that will reside on a … client PC/PDA/STB.” Id. at
`13:30–31; Ex. 1003 ¶ 55.
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`E. Obviousness over Maes and Ikeda (Ground 1)
`Petitioner contends that the subject matter of claims 1, 4, 6, 7, and 11–
`13 would have been obvious under § 103(a) over the combination of Maes
`and Ikeda. Pet. 29–60. Patent Owner disagrees. Prelim. Resp. 14–32.
`1. Independent claims 1 and 11
`Petitioner presents detailed explanations and relies on supporting
`evidence demonstrating how Maes and Ikeda teach the limitations of
`independent claims 1 and 11. Pet. 29–47, 52–60.
`Independent claim 1 recites in pertinent part “[a] wireless handheld
`device for executing a mobile transaction . . . comprising . . . a
`microprocessor programmed for executing . . . computer program
`instructions . . . activates a communication by said content host computer
`device to said content provider computer device of confirmation data
`comprising said payment information, security information, and said
`particular authorization certificate, said content provider computer system
`being accessible by point-of-sale devices for said particular merchant.” Ex.
`1001, 63:32–38. Independent claim 11 recites similar limitations. Ex. 1001,
`65:12–18.
`Petitioner argues that Ikeda’s ticket issuing device 102 is the claimed
`“content host computer device,” that Ikeda’s ticket using device 104 is the
`claimed “content provider computer device,” and that Ikeda teaches “the
`ticket issuing device [102] also transmits the ticket information and user
`code information transmitted to the user device 2 to the ticket using device
`[104].” Pet. 44–45 (citing Ex. 1005, Fig. 5, ¶¶ 108, 153).
`Petitioner argues that when a user presents a lodging ticket at a hotel,
`Ikeda’s “ticket using device [104] reads the user code information from the
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`lodging ticket” (id. at 45), and that when the information is stored on a
`portable storage medium or a small device, Ikeda teaches that a medium
`drive device, “connection cable, light, wireless communication device, or the
`like can be used” to read the information (id. at 45–46 (citing Ex. 1005
`¶ 113)). Petitioner also argues that Ikeda’s ticket using device “collates this
`user code information with the user code information transmitted from the
`ticket issuing device” and that if the information presented by the user
`matches the information sent from the ticket issuing device (content host
`computer device) to the ticket using device (content provider computer
`system), “it is discriminated that the lodging ticket … is a true lodging
`ticket.” Id. at 46 (citing Ex. 1005 ¶¶ 83, 112–113, 152, 154).
`Petitioner further argues that because Ikeda’s ticket using device
`(content provider computer device) is (1) accessible by a point-of-sale
`device that is able to read the user code information of the lodging ticket
`(particular authorization certificate) and (2) is able to collate with the
`information received from the ticket issuing device (content host computer
`device), a person of ordinary skill would understand that the content
`provider computer system is accessible by point-of-sale devices for a
`particular merchant and receives confirmation data from the content host
`provider device. Id. at 47 (citing Ex. 1003 ¶¶ 92–93).
`Patent Owner asserts, however, that Ikeda, at best, teaches that the
`ticket issuing device transmits ticket information to the ticket using device.
`Prelim. Resp. 30–31. Patent Owner argues that Ikeda does not teach “said
`microprocessor, executing the second set of executable computer program
`instructions . . . activates a communication” because that term means
`triggering a communication not in direct response to user input, whereas
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`Ikeda teaches that the communication by the ticket issuing device to the
`ticket using device occurs after receiving the communication from the user
`that the ticket information is the content of the desired ticket. Prelim. Resp.
`31 (citing Ex. 1005 ¶ 108). Specifically, Patent Owner argues that because
`the user operates the user interface to transmit the communication, Ikeda
`does not teach or suggest the disputed limitation. Id. at 32.
`Patent Owner’s argument is based upon its proposed claim
`construction, which we do not adopt for the reasons discussed above, and is,
`therefore, not persuasive.
`Patent Owner also contends that the motivation to combine Maes and
`Ikeda is lacking. Prelim. Resp. 1–3, 18–30. Patent Owner argues that Maes
`does not teach using its PDA to carry out an entire consumer transaction
`such as the purchase and redemption of an electronic ticket. Prelim. Resp. 2,
`19–23. Patent Owner also argues that even though Ikeda makes a reference
`to PDAs, there is no suggestion in Ikeda that a PDA can be used to interact
`with a ticket issuing device. Id. at 2, 26–27. Patent Owner further argues
`that Petitioner provides no evidence, except unsupported conclusory expert
`statements, that it would have been obvious to combine Maes and Ikeda.
`Prelim. Resp. 3, 24–28.
`Petitioner, however, argues it would have been obvious to a person of
`ordinary skill in the art to use Mae’s PDA device with Ikeda’s ticket-
`distribution system because Maes envisioned using its PDA device for point-
`of-sale and consumer transactions and teaches that the device could be
`“immediately employed without having to change the existing
`infrastructure” because it was designed to work with existing consumer-
`transaction systems. Pet. 23–24 (citing Ex. 1004, 2:23–30; 4:12–18).
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`Petitioner also argues that, because Ikeda teaches that its user device may be
`“a palm-sized ultra-small PC,” it would have been obvious to a person of
`ordinary skill that Ikeda’s ticket-purchasing and use processes could be
`incorporated onto Mae’s PDA device. Id. at 24–25 (citing Ex. 1003 ¶ 59;
`Ex. 1005 ¶¶ 107, 112). Using Maes’s PDA as Ikeda’s user device, Petitioner
`argues, would have been an obvious step with predictable results and a
`simple matter of design choice, because Maes’s PDA included all of the
`hardware capabilities required by Ikeda’s system. Id. at 25 (citing Ex. 1004,
`3:17–37). Based on this record, we are persuaded that Petitioner has
`provided a sufficient basis with a rational underpinning for combining Maes
`and Ikeda.
`Accordingly, Petitioner has demonstrated a reasonable likelihood that
`it would prevail in showing the unpatentability of independent claims 1 and
`11 of the ’627 patent over the combination of Maes and Ikeda.
`2. Claims 4, 6, 7, 12, and 13
`In its Preliminary Response, Patent Owner does not address separately
`Petitioner’s explanations and supporting evidence with respect to dependent
`claims 4, 6, 7, 12, and 13. See generally Prelim. Resp. 14–32. We have
`reviewed Petitioner’s explanations and supporting evidence regarding these
`dependent claims and find them persuasive. See Pet. 48–52, 60–61. Based
`on the record before us, Petitioner has demonstrated a reasonable likelihood
`that it would prevail on its assertion that dependent claims 4, 6, 7, 12, and
`13, of the ’627 patent would have been obvious over the combination of
`Maes and Ikeda.
`
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`F. Obviousness over Maes and Paltenghe (Ground 2)
`Petitioner contends that claims 1, 4, 6, 10, 11 and 16 would have been
`obvious under § 103(a) over the combination of Maes and Paltenghe. Pet.
`66–90. Patent Owner disagrees. Prelim. Resp. 32–41.
`For the “activates a communication . . . particular authorization
`certificate” limitation of claim 1, Petitioner relies upon Paltenghe’s teaching
`that “[u]pon arriving at the theater, the theater server requests a ticket and
`the owner plugs the chip device into the wallet interface to access the ticket,
`or alternatively into a theater interface. The owner is given access to the
`theater once the ticket is then transferred to the theater server after a mutual
`authentication process.” Pet. 76, 77 (quoting Ex. 1006, 21:24–26).
`Petitioner argues that the theater interface is the claimed “content
`provider computer device,” and that the theater server is the claimed
`“content host computer device.” Pet. 77. Petitioner argues that the ability to
`plug the chip device into the theatre interface (content provider computer
`device) means that the theatre interface is a hardware device, e.g., terminals
`at the theatre connected to the theatre server (content host computer device)
`that the ticket owners could interact with. Id.
`With respect to “said content provider computer system being
`accessible by point-of-sale devices for said particular merchant,” Petitioner
`argues that a person of ordinary skill in the art: (1) “would understand that it
`would be desirable to add additional connectivity to the theater interfaces”
`(Pet. 77); (2) “would have recognized the benefit of having wireless
`scanners or kiosks (POS devices) connected to the theater interfaces to more
`efficiently process tickets and provide the information to the theater
`interface” (id.); and (3) “would understand that the mutual authentication
`
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`process would require that the theater server (content host computer device)
`had sent payment information and security information . . . to the theater
`interface (content provider computer device)” (id. at 78).
`Patent Owner contends that the combination of Maes and Paltenghe
`fails to teach or suggest this limitation because “Paltenghe does not disclose
`any connectivity between the theater server and theater interface” (Prelim.
`Resp. 39), and “Petitioner offers no support for its conclusory allegations”
`about what a person of ordinary skill in the art would have known (id. at 39).
`We agree. On this record, Petitioner has not explained adequately
`why a person of ordinary skill in the art would have understood that (1) it
`would be desirable to add additional connectivity to Paltenghe’s theater
`interface, or (2) the mutual authentication process would require that the
`theater server send payment information and security information to the
`theater interface. Moreover, Petitioner admits that Paltenghe does not teach
`that the theatre server requests security information (Pet. 72) or that the
`virtual wallet sends security information (Pet. 73) and the testimony of Dr.
`Cohen merely repeats the same arguments made in the Petition. Compare
`Pet. 76–79, with Ex. 1003 ¶¶ 160–162.
`Based on this record, Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing the unpatentability of
`independent claims 1 and 11, as well as dependent claim 4, 6, 10, and 16, of
`the ’627 patent, over the combination of Maes and Paltenghe.
`
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`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has
`established that there is a reasonable likelihood that Petitioner would prevail
`in establishing the unpatentability of claims 1, 4, 6, 7, and 11–13 of the ’627
`patent.
`
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to the following ground:
`1. Claims 1, 4, 6, 7, and 11–13 of the ’627 patent as unpatentable
`under 35 U.S.C. § 103(a) over a combination of Maes and Ikeda; and
`FURTHER ORDERED that no other grounds are instituted; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ627 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
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`PETITIONER:
`
`Michael L. Kiklis
`Scott A. McKeown
`Thomas C. Yebernetsky
`Katherine D. Cappaert
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`cpdocketyebernetsky@oblon.com
`cpdocketcappaert@oblon.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Zachary Silbersher
`zsilbersher@kskiplaw.com
`Gaston Kroub
`gkroub@kskiplaw.com
`
`24
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