Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 43
`Date: April 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`4361423 CANADA INC.,
`Patent Owner.
`____________
`
`IPR2019-01649
`Patent 9,016,566 B2
`_______________
`
`
`Before JAMESON LEE, ROBERT J. WEINSCHENK, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
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`IPR2019-01649
`Patent 9,016,566 B2
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`I.
`INTRODUCTION
`A. Background and Summary
`Square, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–4 (“the challenged claims”) of U.S. Patent
`No. 9,016,566 B2 (Ex. 1001, “the ’566 patent”). 4361423 Canada Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to
`the Petition. We instituted an inter partes review of the challenged claims
`on April 27, 2020. Paper 11 (“Dec. on Inst.”), 21. After institution, Patent
`Owner filed a Response (Paper 23, “PO Resp.”) to the Petition, Petitioner
`filed a Reply (Paper 32, “Pet. Reply”) to the Response, and Patent Owner
`filed a Sur-reply (Paper 33, “PO Sur-reply”) to the Reply. We held an oral
`hearing on January 28, 2021, and a transcript of the hearing is included in
`the record. Paper 42 (“Tr.”).
`For the reasons set forth below, Petitioner has shown by a
`preponderance of the evidence that claims 1–4 of the ’566 patent are
`unpatentable.
`B. Real Parties in Interest
`Each party identifies itself as the only real party in interest. Pet. 1;
`Paper 4, 2.
`C. Related Matters
`The parties indicate that the ’566 patent is the subject of the following
`district court case: 4361423 Canada Inc. v. Square, Inc., No. 4:19-cv-04311
`(N.D. Cal.). Pet. 1; Paper 4, 2.
`D. The ’566 Patent
`The ’566 patent relates to an apparatus, system, and method “for
`commercial transactions using a transaction card via a communication
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`device.” Ex. 1001, 2:19–29. Specifically, the ’566 patent describes a
`transaction apparatus, such as a portable point of sale (“POS”) device, linked
`to a communication device, such as a mobile phone. Id. at 5:54–58, 6:1–6.
`Figure 2 is reproduced below.
`
`
`
`Id. at Fig. 2. Figure 2 shows an example of a transaction and
`communication assembly. Id. at 7:22–27. The assembly includes POS
`device 12 linked to mobile phone 14 via cable 30. Id. POS device 12
`includes card reader slot 39. Id. at 7:34–37. The ’566 patent explains that a
`user swipes a card through slot 39, a card reader captures information from
`the card, and the card reader transfers the information to a microcontroller
`unit (“MCU”). Id. at 7:45–46, 7:59–62. The MCU converts the information
`into an analog audio signal and transmits it via cable 30 to mobile phone 14.
`Id. at 8:1–7. Mobile phone 14 then transmits the information to a transaction
`server. Id. at 8:8–9. The transaction server responds to mobile phone 14 by
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`indicating whether a processor/issuer accepts or rejects the transaction. Id.
`at 8:9–22.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 3 are independent. Claim 1 is
`
`reproduced below.
`1. A portable smart card reader device for reading a
`smart card having recorded information stored on an integrated
`circuit incorporated into the card, the device comprising:
`a sensor for reading said recorded information stored on
`said integrated circuit incorporated into said card and for
`producing an analog signal indicative of the recorded
`information, said sensor including circuitry for converting said
`analog signal to a format suitable for transmission to a jack of a
`mobile communication device; and
`an output jack adapted to be inserted into a jack
`associated with said mobile communication device for
`providing the converted signal indicative of the recorded
`information to said mobile communication device for
`transmission to a transaction server for further processing.
`Id. at 12:4–17.
`F. Evidence
`Petitioner submits, inter alia, the following evidence:
`Evidence
`Declaration of Bruce McNair (“McNair Declaration”)
`Proctor, US 2002/0091633 A1, published July 11, 2002
`(“Proctor”)
`Vrotsos, US 2005/0236480 A1, published Oct. 27, 2005
`(“Vrotsos”)
`Morley, US 7,810,729 B2, issued Oct. 12, 2010
`(“Morley”)
`Colnot, US 2007/0067833 A1, published Mar. 22, 2007
`(“Colnot”)
`Eisner, US 5,838,773, issued Nov. 17, 1998 (“Eisner”)
`
`Exhibit No.
`1003
`1007
`
`1009
`
`1010
`
`1011
`1012
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`Exhibit No.
`1022
`
`Evidence
`Second Declaration of Bruce McNair (“McNair Second
`Declaration”)
`Patent Owner submits, inter alia, the Declaration of Ivan Zatkovich
`
`(Ex. 2004, “Zatkovich Declaration”), and the Second Declaration of Ivan
`Zatkovich (Ex. 2005, “Zatkovich Second Declaration”).
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1–4
`1–4
`1–4
`1–4
`
`Reference(s)/Basis
`35 U.S.C. §
`Proctor, Vrotsos
`1031
`Colnot, Vrotsos
`103
`Eisner, Vrotsos, Proctor
`103
`Proctor, Vrotsos, Morley
`103
`II. ANALYSIS
`
`A. Legal Standards
`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which the
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including 1) the scope and content of the prior art;
`2) any differences between the claimed subject matter and the prior art;
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’566
`patent has an effective filing date before the effective date of the relevant
`amendment, the pre-AIA version of § 103 applies.
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`3) the level of ordinary skill in the art; and 4) any objective indicia of non-
`obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art (“POSITA”)
`would have had “[(1)] a Bachelor of Science in Electrical Engineering or
`Computer Engineering, or the equivalent and [(2)] . . . at least one to two
`years of relevant experience in the fields of embedded systems and mobile
`communication device interfaces, or otherwise equivalent industry
`experience in the relevant field.” Pet. 16 (citing Ex. 1003 ¶¶ 13–17).
`According to Petitioner, “[l]ess work experience may be compensated by a
`higher level of education, such as a Master’s Degree, and vice versa.” Id.
`(citing Ex. 1003 ¶¶ 13–17). Petitioner’s description of the level of ordinary
`skill in the art is supported by the testimony of Petitioner’s declarant, Mr.
`Bruce McNair. Ex. 1003 ¶¶ 13–17. Patent Owner’s declarant, Mr. Ivan
`Zatkovich, agrees with Petitioner’s description. Ex. 2004 ¶ 15; Ex. 2005 ¶
`14. Therefore, we adopt Petitioner’s description except that we delete the
`qualifier “at least” to prevent the description from extending beyond the
`level of ordinary skill in the art.
`C. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in federal district court in a civil action under
`35 U.S.C. § 282(b), including construing the claim in accordance with the
`ordinary and customary meaning of the claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`37 C.F.R. § 42.100(b) (2019).
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`The parties’ disputes about the asserted grounds of unpatentability
`raise issues regarding the meaning of the following claim terms.
`1. Portable
`Patent Owner contends that the term “portable” requires “a means of
`power that could be supplied in a mobile setting.” PO Resp. 13. Patent
`Owner argues that the ’566 patent describes “a portable point-of-sale system
`that could be used in any number of mobile contexts, such as for taxi drivers
`and other merchants.” Id. According to Patent Owner, a person of ordinary
`skill in the art also would understand “that portability would require that a
`device cannot rely on fixed, non-portable connections for communication.”
`Id. (citing Ex. 2005 ¶ 36). Petitioner disagrees with Patent Owner’s
`interpretation, asserting that it is “unduly narrow.” Pet. Reply 3–4.
`As discussed below, even if we assume that the term “portable”
`requires a means of power and a communication connection that could be
`supplied in a mobile setting, the asserted prior art nonetheless teaches such a
`portable device. See Section II.D.2. As a result, we need not resolve this
`particular claim construction issue in order to resolve the parties’ disputes
`about the asserted grounds of unpatentability.
`2. Further Processing by Circuitry Contained in Said Mobile
`Communication Device
`Patent Owner contends that the phrase “further processing by circuitry
`contained in said mobile communication device” requires “the recovery of
`the information from the audio signal into digital information.” PO Resp.
`26. Patent Owner cites to a portion of the ’566 patent that states “[t]he
`analog signal from the magnetic card 24 is sent via the hands-free interface
`41 where the software application of the controller 51 [in the cell phone]
`converts the received signal back to binary data for example as stored on the
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`magnetic card 34.” Id. at 25 (citing Ex. 1001, 10:56–60). Patent Owner
`contends this disclosure “shows” that “the limitation of ‘further processing’
`is not merely relaying a signal or reformatting the signal for transmission to
`the transaction server.” Id. at 26.
`Petitioner disagrees with Patent Owner’s interpretation. Pet. Reply 9–
`10. Petitioner argues that “[t]he plain language of claim 3 does not require
`the further processing to be any specific type of processing.” Id. at 10.
`Petitioner also argues that Patent Owner’s declarant, Mr. Zatkovich, “admits
`that simple audio-to-digital conversion (for relaying of information from the
`mobile phone’s jack to the cellular network) . . . is further processing.” Id.
`(citing Ex. 1021, 153:16–19).
`Claim 3 recites “providing said analog signal indicative of the
`recorded information stored on the integrated circuit to said mobile
`communication device for further processing by circuitry contained in said
`mobile communication device.”2 Ex. 1001, 12:34–38. Thus, the claim
`language does not require that the mobile communication device perform a
`specific type of processing. See id.
`As discussed above, Patent Owner identifies one embodiment of the
`’566 patent in which the mobile communication device receives an analog
`signal and converts it “back to binary data for example as stored on the
`magnetic card.” Id. at 10:29–31, 10:56–60. But the ’566 patent describes
`other embodiments. For example, the ’566 patent describes an embodiment
`in which the mobile communication device receives an analog audio signal,
`“encodes the audio input using for example the normal GSM voice codec,”
`
`2 Claim 3 is the only challenged claim that recites the phrase “further
`processing by circuitry contained in said mobile communication device.”
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`and sends the encoded audio signal to the transaction server. Id. at 10:7–14.
`Thus, in that embodiment, the mobile communication device does not
`convert the received analog signal back to binary data as stored on the
`magnetic card. See id.
`Because, for the reasons discussed above, Patent Owner’s
`interpretation is not consistent with the scope of the claim language and the
`written description, we decline to adopt it. No further construction of the
`phrase “further processing by circuitry contained in said mobile
`communication device” is necessary to resolve the parties’ disputes about
`the asserted grounds of unpatentability. See Section II.D.4.
`D. Obviousness of Claims 1–4 over Eisner, Vrotsos, and Proctor
`Petitioner argues that claims 1–4 would have been obvious over
`Eisner, Vrotsos, and Proctor. Pet. 58–71. For the reasons discussed below,
`Petitioner has shown by a preponderance of the evidence that claims 1–4
`would have been obvious over Eisner, Vrotsos, and Proctor.
`1. Overview of Eisner, Vrotsos, and Proctor
`Eisner teaches a secure electronic financial transaction system.
`Ex. 1012, 1:10–16. Eisner’s Figure 2 is reproduced below.
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`Id. at Fig. 2. Figure 2 is a block diagram of personal reader capture transfer
`technology unit (“PRCTT”) 14. Id. at 3:4–6, 4:20–26. PRCTT 14 includes
`magnetic stripe reader 30, single chip computer 34, digital to analog dual
`tone multi-frequency (“DTMF”) tone generator 38, telephone-in jack 42, and
`line-out jack 44. Id. at 4:20–26.
`
`Eisner teaches that magnetic stripe reader 30 captures data from a
`transaction card. Id. at 4:27–40. Single chip computer 34 encodes the
`captured data. Id. at 5:3–14. DTMF tone generator 34 converts the encoded
`data to analog tones corresponding to the twelve tones of the DTMF
`standard. Id. at 5:15–26. The data is then output at line-out jack 44 to
`communication network 16. Id. at 5:26–36.
`Vrotsos teaches an attachment that is coupled to a wireless
`communication device, such as a cellular phone, to perform a commercial
`transaction. Ex. 1009, code (57), Fig. 1D. Vrotsos teaches that the
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`attachment includes a smart card read/write head for reading information
`stored on a smartchip in the smart card. Id. ¶ 41, Fig. 1E.
`Proctor teaches a financial transaction verification system that uses a
`wireless or cellular network. Ex. 1007 ¶ 7. Proctor’s Figure 1 is reproduced
`below.
`
`
`Id. at Fig. 1. Figure 1 shows a block diagram of financial transaction
`verification system 10. Id. ¶¶ 6–7. Financial transaction verification
`system 10 includes conventional credit card verification terminal 36 that is
`connected to converter 30 via cable 40. Id. ¶ 10. Converter 30 is connected
`to cellular telephone 22 via cable 32 and hands-free connector 26. Id. ¶¶ 8–
`9. Cellular phone 22 includes antenna 24 for communicating with central
`verification facility 20 via cellular network 12. Id. ¶¶ 7–8.
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`Proctor teaches that terminal 36 includes magnetic credit card reader
`slot 46, which reads unique data encoded on a magnetic stripe on credit
`card 48. Id. ¶ 10. Terminal 36 converts the scanned data from a digital form
`to an audible stream of tones. Id. ¶¶ 11, 16. Converter 30 converts the
`audible stream of tones to an encoded format that can be transmitted via
`cellular network 12. Id. ¶ 16. Cellular phone 22 then transmits the encoded
`stream to central verification facility 20 via cellular network 12. Id. Proctor
`also teaches that the components of merchant system 14 may be combined
`or integrated; for example, converter 30 may be incorporated into cellular
`phone 22 or terminal 36. Id. ¶ 18.
`2. Claim 1
`Claim 1 recites “[a] portable smart card reader device for reading a
`smart card having recorded information stored on an integrated circuit
`incorporated into the card.”3 Ex. 1001, 12:4–6. We agree with Petitioner’s
`arguments and evidence regarding the preamble. Eisner teaches a PRCTT
`that is a portable device for reading a smart card having information stored
`on an integrated circuit incorporated into the smart card. Pet. 58–60; Ex.
`1003 ¶ 170; Ex. 1012, 4:27–40, 7:52–59, Fig. 2. Alternatively, Vrotsos
`teaches a portable device with a smart card read/write head for reading
`information stored on a smartchip incorporated into the smart card. Pet. 20–
`22, 60; Ex. 1009 ¶¶ 36, 41, Figs. 1D, 1E. Further, Proctor teaches
`connecting a card reader device to a mobile phone’s “hands-free” jack.
`Pet. 66–67; Ex. 1007 ¶ 8, Fig. 1. As discussed in more detail below, it
`
`
`3 We need not decide whether the preamble in any of the challenged
`independent claims is limiting because we determine that the prior art
`teaches the recitations in each preamble.
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`would have been obvious to a person of ordinary skill in the art to combine
`the cited teachings of Eisner, Vrotsos, and Proctor so that Eisner’s PRCTT is
`a portable smart card reader device. Pet. 60, 67; Ex. 1003 ¶¶ 171, 182.
`Patent Owner responds that Eisner does not teach a portable card
`reader device. PO Resp. 37–38. Patent Owner argues that “all diagrams
`depicting the physical context of the PRCTT . . . suggest that it is not
`intended as a portable device.” Id. at 37 (citing Ex. 1012, Figs. 1, 2, 3a, 3b).
`According to Patent Owner, Eisner’s PRCTT “must be physically connected
`to [a] telephone land line phone (i.e., plugged into a wall socket) as well as
`be physically wired to a network connection.” Id. at 37–38 (citing Ex. 2005
`¶¶ 125–126).
`Patent Owner’s argument is unavailing. Even if the term “portable”
`requires a means of power and a communication connection that could be
`supplied in a mobile setting, the asserted prior art teaches such a device.
`Specifically, Eisner teaches that the PRCTT may receive power “from a
`battery pack,” and, thus, the PRCTT has a means of power that could be
`supplied in a mobile setting. Pet. Reply 14 n.9; Ex. 1012, 5:48–49.
`Alternatively, Vrotsos teaches a card reader with a means of power that
`could be supplied in a mobile setting, and it would have been obvious to a
`person of ordinary skill in the art to combine Eisner and Proctor so that
`Eisner’s PRCTT is portable. Ex. 1003 ¶ 171; Ex. 1009 ¶ 36, Fig. 1D.
`Further, as discussed in more detail below, it would have been obvious to
`combine the cited teachings of Eisner, Vrotsos, and Proctor so that Eisner’s
`PRCTT connects to Proctor’s mobile phone instead of a landline phone or a
`hardwired network connection. Pet. 67; Ex. 1003 ¶ 182.
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`Patent Owner further responds that Eisner does not teach a smart card
`reader device. PO Resp. 38; PO Sur-reply 16–17. Patent Owner argues that
`although Eisner mentions that a smart card may be used, Eisner’s “actual
`explanation . . . is limited to a magnetic stripe reader.” PO Resp. 38 (citing
`Ex. 2005 ¶¶ 129–130). According to Patent Owner, Eisner “offers no
`information at all regarding how . . . a smart card reader would even
`operate.” Id. (citing Ex. 2005 ¶¶ 128–129); see PO Sur-reply 16.
`Patent Owner’s argument is not persuasive. Eisner teaches the
`following:
`The present invention has been described wherein the
`information for card authorization has been initially derived
`from the magnetic stripe of standardized financial transaction
`cards. It should be understood that other technologies such as
`IC cards, sometimes referred to as smart cards, which may
`contain the same information as the magnetic stripe, but in an
`integrated circuit, may also be used, although, the card reader
`would be necessarily different.
`Ex. 1012, 7:52–59 (emphasis added). Although Eisner does not teach
`specifically how a smart card reader operates, the evidence of record
`indicates that smart card readers were well known by 2009. Pet. Reply 4–5,
`15; Ex. 1021, 69:18–70:4, 91:8–10. Thus, a person of ordinary skill in the
`art would have known how to implement Eisner’s PRCTT as a smart card
`reader device. Pet. Reply 15; Ex. 1022 ¶¶ 33–35.
`Alternatively, Patent Owner’s argument is not persuasive because it
`addresses Eisner individually, not the proposed combination of Eisner,
`Vrotsos, and Proctor. See Keller, 642 F.2d at 426. Vrotsos teaches a smart
`card reader device, and, as discussed in more detail below, it would have
`been obvious to a person of ordinary skill in the art to combine Eisner and
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`Vrotsos so that Eisner’s PRCTT is a smart card reader device. Ex. 1003
`¶ 171; Ex. 1009 ¶ 41, Fig. 1E.
`Patent Owner also responds that Vrotsos does not teach a smart card
`reader device. PO Resp. 18–21, 39; PO Sur-reply 7–8, 16. Patent Owner
`argues that Vrotsos’s “read/write ‘head’ refers to a magnetic read head used
`for magnetic tape” and “would not be compatible with a sensor required to
`read an integrated circuit within a smart card.” PO Resp. 18–19 (citing Ex.
`2005 ¶¶ 49–50); see PO Sur-reply 7. Patent Owner asserts that Vrotsos’s
`“mention of a smart card can only refer to [a Europay, MasterCard, and Visa
`(‘EMV’)] type smart card,” which “would require a sensor to access the
`contact pad of the IC chip.” PO Resp. 19–20 (citing Ex. 1009 ¶ 41; Ex.
`2005 ¶¶ 51–52). But, according to Patent Owner, Vrotsos “provides no
`disclosure of a sensor for reading this type of smart card.” Id. at 20 (citing
`Ex. 2005 ¶ 52). Patent Owner contends that Vrotsos’s Figure 2(a) shows a
`reader that “is only applicable to reading a magnetic stripe.” Id. (citing Ex.
`1009, Fig. 2(a); Ex. 2005 ¶ 53); see PO Sur-reply 7.
`
`Patent Owner’s argument is unavailing. Vrotsos is not limited to a
`read/write head that reads a magnetic stripe. See Ex. 1009 ¶ 41. Rather,
`Vrotsos teaches “a combined magnetic stripe reader and smartcard reader.”
`Id. (emphasis added). Vrotsos’s Figure 1E is reproduced below.
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`Id. at Fig. 1E. Figure 1E shows slot 22 for the combined magnetic stripe
`reader and smartcard reader. Id. ¶ 41. Vrotsos teaches that “[a] magnetic
`stripe reader head may be located within a surface of the shallow channel
`portion 54 so that the magnetic stripe 52 can be read as the card 51 is swiped
`through the shallow channel portion 54.” Id. (emphasis added). Vrotsos
`separately teaches that “[a] smartcard read/write head may be positioned
`within a surface of the deeper channel portion 55 of the slot 22 so that
`information may be read or written to the smartchip 53 when the card is
`positioned within the deeper channel portion 55.” Id. (emphasis added).
`Thus, contrary to Patent Owner’s argument, Vrotsos expressly teaches a
`smart card reader device.
`Claim 1 recites “a sensor for reading said recorded information stored
`on said integrated circuit incorporated into said card.” Ex. 1001, 12:7–8.
`We agree with Petitioner’s arguments and evidence regarding this limitation.
`Eisner teaches that the PRCTT includes a sensor for reading the information
`stored on an integrated circuit incorporated into a smart card. Pet. 63–64;
`Ex. 1003 ¶ 170; Ex. 1012, 4:27–40, 7:52–59, Fig. 2. Alternatively, Vrotsos
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`teaches a smart card read/write head for reading the information stored on a
`smartchip incorporated into a smart card. Pet. 25, 64; Ex. 1009 ¶ 41, Fig.
`1E. As discussed in more detail below, it would have been obvious to a
`person of ordinary skill in the art to combine the cited teachings of Eisner
`and Vrotsos so that Eisner’s PRCTT includes Vrotsos’s smart card
`read/write head. Pet. 60–61; Ex. 1003 ¶ 172.
`Patent Owner responds that Eisner does not teach a sensor for reading
`the information stored on an integrated circuit in a smart card. PO Resp. 39–
`40; PO Sur-reply 16–17. Patent Owner argues that although Eisner
`mentions that a smart card may be used, Eisner “contains no disclosure
`regarding what a [smart card] sensor would be or how it would operate.” PO
`Resp. 39–40 (citing Ex. 2005 ¶¶ 136–139).
`Patent Owner’s argument is not persuasive. As discussed above,
`although Eisner does not teach specifically how a smart card reader operates,
`a person of ordinary skill in the art would have known how to implement a
`smart card reader with a sensor for reading information stored on an
`integrated circuit in a smart card. Ex. 1021, 69:18–70:4, 91:8–10; Ex. 1022
`¶¶ 33–35. Alternatively, we are not persuaded by Patent Owner’s argument
`because it addresses Eisner individually, not the proposed combination of
`Eisner, Vrotsos, and Proctor. See Keller, 642 F.2d at 426. Vrotsos teaches a
`smart card read/write head for reading the information stored on a smartchip
`incorporated into a smart card, and, as discussed in more detail below, it
`would have been obvious to a person of ordinary skill in the art to combine
`Eisner and Vrotsos so that Eisner’s PRCTT includes Vrotsos’s smart card
`read/write head. Ex. 1003 ¶ 172; Ex. 1009 ¶ 41, Fig. 1E.
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`Patent Owner further contends that Vrotsos does not teach a sensor for
`reading the information stored on an integrated circuit in a smart card. PO
`Resp. 39; PO Sur-reply 16. Patent Owner relies on the same argument
`discussed above for the preamble. PO Resp. 18–21, 39. Patent Owner’s
`argument is unavailing for the same reasons discussed above.
`Claim 1 recites a sensor “for producing an analog signal indicative of
`the recorded information, said sensor including circuitry for converting said
`analog signal to a format suitable for transmission to a jack of a mobile
`communication device.” Ex. 1001, 12:8–12. We agree with Petitioner’s
`arguments and evidence regarding this limitation. Eisner teaches that the
`PRCTT includes a DTMF generator that “converts” the recorded
`information “to analog tones corresponding to the twelve tones generated by
`a touchtone phone or other device conforming to the dual tone multi-
`frequency (DTMF) standard.” Pet. 64–66; Ex. 1012, 5:15–26. The evidence
`of record indicates that a DTMF signal is an analog signal suitable for
`transmission to a hands-free jack of a mobile phone. Pet. 30; Ex. 1001,
`8:28–35; Ex. 1003 ¶¶ 103–104; Ex. 1021, 58:22–59:2; Tr. 55:1–10. Proctor
`teaches a mobile phone with a “hands-free” jack. Pet. 66–67; Ex. 1007 ¶ 8,
`Fig. 1. As discussed in more detail below, it would have been obvious to a
`person of ordinary skill in the art to combine the cited teachings of Eisner
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`and Proctor so that Eisner’s PRCTT connects to the hands-free jack on
`Proctor’s mobile phone.4 Pet. 67; Ex. 1003 ¶ 182.
`Patent Owner responds that Eisner does not teach converting the
`analog signal to a format suitable for transmission to a jack of a mobile
`communication device. PO Resp. 40–45; PO Sur-reply 17–18. Patent
`Owner argues that Eisner teaches an isolation transformer that conditions a
`signal for output on an RJ-11 jack. PO Resp. 41–42 (citing Ex. 2005
`¶¶ 141–144, 152). Thus, according to Patent Owner, Eisner’s output “would
`not be compatible” with the hands-free jack on Proctor’s mobile phone. Id.
`at 41; see PO Sur-reply 17. Patent Owner also argues that “[c]onsistent with
`Petitioner’s own assertions [in a related case], neither the plug nor the
`conductors of an RJ-11 connector would be compatible with a standard
`3.5 mm hands-free audio jack present on mobile phones.” PO Resp. 42
`(citing Ex. 2005 ¶¶ 142–151).
`Patent Owner’s argument is unavailing. First, although Eisner teaches
`an embodiment where the DTMF signal is output over an RJ-11 jack, Eisner
`teaches that the output jack may be “any other suitable interface.” Ex. 1012,
`5:34–36. And, as discussed above, Eisner’s DTMF signal is suitable for
`transmission over a hands-free jack. Ex. 1001, 8:28–35; Ex. 1003 ¶¶ 103–
`104; Ex. 1012, 5:15–26; Ex. 1021, 58:22–59:2; Tr. 55:1–10. Further, even if
`some additional conditioning would have been necessary to output Eisner’s
`
`
`4 Because the evidence of record indicates that Eisner’s DTMF signal is
`suitable for transmission over a hands-free jack, a person of ordinary skill in
`the art would have known that Eisner’s PRCTT can connect to the hands-
`free jack on Proctor’s mobile phone without using Proctor’s converter. See,
`e.g., Ex. 1003 ¶ 184 (“[A] POSITA would have known to transmit Eisner’s
`DTMF signals over the jack of the mobile phone.”).
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`DTMF signal over a hands-free jack, a person of ordinary skill in the art
`would have known how to incorporate that conditioning into Eisner’s
`PRCTT. Pet. 68; Ex. 1003 ¶ 184; Ex. 1021, 42:6–43:16.
`Second, Patent Owner’s argument misinterprets Petitioner’s proposed
`combination. Petitioner does not propose connecting Eisner’s RJ-11 jack to
`Proctor’s hands-free jack. See Pet. 67–69; Ex. 1003 ¶ 184. Rather,
`Petitioner asserts that Eisner’s PRCTT transmits the DTMF signal “over a
`mobile phone jack instead of an RJ-11 telephone jack.”5 Pet. 68; Ex. 1003
`¶ 184 (emphasis added). In other words, in the proposed combination,
`Eisner’s PRCTT includes a hands-free jack that is connected to the hands-
`free jack on Proctor’s mobile phone. Pet. 68; Ex. 1003 ¶ 184.
`Patent Owner further responds that “Eisner’s DTMF signal could not
`be converted by Proctor’s converter 30 before the signal is passed along to
`the mobile phone.”6 PO Resp. 42; see PO Sur-reply 17. Patent Owner
`argues that Proctor’s converter “accept[s] modem signals and then
`
`5 Petitioner argues in a related case that disclosure of an RJ-11 jack in a
`provisional application does not provide written description support for a
`hands-free jack. See IPR2019-01626, Paper 2 at 20–23. As discussed
`above, Petitioner argues in this case that it would have been obvious to use a
`hands-free jack instead of an RJ-11 jack. Pet. 68; Ex. 1003 ¶ 184.
`Petitioner’s arguments are not inconsistent because the standard for written
`description support is not the same as the standard for obviousness. See
`Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1365 (Fed. Cir.
`2018) (“[A] description which renders obvious a claimed invention is not
`sufficient to satisfy the written description requirement.”).
`6 Patent Owner also responds that Eisner’s DTMF generator could not be
`replaced with Proctor’s converter. PO Resp. 44–45. Because, for the
`reasons discussed herein, the Eisner, Vrotsos, and Proctor combination
`teaches the disputed limitation without replacing Eisner’s DTMF generator,
`we need not resolve Patent Owner’s argument.
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`produce[s] (not receive[s]) DTMF signals.” PO Resp. 42 (citing Ex. 2005
`¶ 154) (emphasis omitted); see PO Sur-reply 17. As a result, according to
`Patent Owner, “even if Eisner’s DTMF signals were somehow sent into the
`part of the Proctor converter intended to communicate with the mobile
`phone using audio signals, Proctor’s converter would only convert them to
`modem signals which are not transmissible on the cellular network.” PO
`Resp. 43 (citing Ex. 2005 ¶¶ 106, 156–157); see PO Sur-reply 17.
`Patent Owner’s argument is unavailing. The Eisner, Vrotsos, and
`Proctor combination teaches the disputed claim limitation without Proctor’s
`converter. As discussed above, Eisner’s DTMF signal is suitable for
`transmission over a hands-free jack. Ex. 1001, 8:28–35; Ex. 1003 ¶¶ 103–
`104; Ex. 1012, 5:15–26; Ex. 1021, 58:22–59:2; Tr. 55:1–10. As a result, a
`person of ordinary skill in the art would have known that Eisner’s PRCTT
`can connect to the hands-free jack on Proctor’s mobile phone without using
`Proctor’s converter. See, e.g., Ex. 1003 ¶ 184 (“[A] POSITA would have
`known to transmit Eisner’s DTMF signals over the jack of the mobile
`phone.”). Further, even if some additional conditioning would have been
`necessary to output Eisner’s DTMF signal over a hands-free jack, a person
`of ordinary skill in the art would have known how to incorporate that
`conditioning into Eisner’s PRCTT. Ex. 1003 ¶ 184; Ex. 1021, 42:6–43:16.
`Alternatively, even if the proposed combination incorporates Proctor’s
`converter into Eisner’s PRCTT, we disagree with Patent Owner’s assertion
`that Proctor’s converter simply accepts a modem signal and produces a
`DTMF signal. See Ex. 1007 ¶¶ 9, 16.