UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`v.
`PAYRANGE, INC.,
`Patent Owner.
`
`
`
`IPR2023-01449
`U.S. Patent No. 11,481,772
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................. 7
`I.
`II. GROUNDS FOR STANDING ............................................................... 7
`III. NOTE ...................................................................................................... 7
`IV. SUMMARY OF THE ‘772 PATENT .................................................... 7
`V. PROSECUTION HISTORY .................................................................10
`VI. LEVEL OF ORDINARY SKILL IN THE ART ..................................12
`VII. CLAIM CONSTRUCTION ...............................................................13
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ............................................................................................13
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE ........13
`A. Discretionary denial under the Fintiv factors is not appropriate .......13
`B. Discretionary denial under General Plastic is not appropriate .........15
`C. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate ....16
`1. Factors (a) The Similarities and Material Differences Between the
`Asserted Art and the Prior Art Involved During Examination and (c) the Extent
`to Which the Asserted Art was Evaluated During Examination, Including
`Whether the Prior Art was the Basis for Rejection ..........................................16
`2. Factors (b) The Cumulative Nature of the Asserted Art and the Prior
`Art Evaluated During Examination and (d) the Extent of the Overlap Between
`the Arguments Made During Examination and the Manner in which Petitioner
`Relies on the Prior Art .....................................................................................18
`3. Factors (e) Whether Petitioner has Pointed Out Sufficiently How the
`Examiner Erred in its Evaluation of the Asserted Prior Art and (f) the Extent to
`Which Additional Evidence and Facts Presented in the Petition Warrant
`Reconsideration of the Prior Art or Arguments ...............................................19
`2
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`HOW
`THE
`CLAIMS
`ARE
`OF
`IDENTIFICATION
`X.
`UNPATENTABLE ..................................................................................................19
`A. Challenged Claims .............................................................................19
`B. Statutory Grounds for Challenges......................................................20
`C. Ground 1: Claims 1-6, 8, and 12-20 are obvious under 35 U.S.C. § 103
`over Zhou and Athwal further in view of Low. ...................................................21
`1. Summary of Zhou ...........................................................................21
`2. Summary of Athwal ........................................................................24
`3. Summary of Low ............................................................................27
`4. Reasons to Combine Zhou and Athwal ..........................................28
`5. Reasons to Combine Zhou and Low ...............................................31
`6. Claim 1 ............................................................................................33
`7. Claim 2 ............................................................................................55
`8. Claim 3 ............................................................................................56
`9. Claim 4 ............................................................................................57
`10. Claim 5 ..........................................................................................60
`11. Claim 6 ..........................................................................................62
`12. Claim 8 ..........................................................................................62
`13. Claim 12 ........................................................................................64
`14. Claim 13 ........................................................................................65
`15. Claim 14 ........................................................................................67
`16. Claim 15 ........................................................................................68
`17. Claim 16 ........................................................................................70
`18. Claim 17 ........................................................................................70
`19. Claim 18 ........................................................................................71
`20. Claim 19 ........................................................................................71
`
`3
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`21. Claim 20 ........................................................................................71
`D. Ground 2: Claim 9 is obvious under 35 U.S.C. § 103 over Zhou and
`Athwal further in view of Low and even further in view of Arora. ....................72
`1. Summary of Zhou ...........................................................................72
`2. Summary of Athwal ........................................................................72
`3. Summary of Low ............................................................................72
`4. Summary of Arora ..........................................................................72
`5. Reasons to Combine Zhou, Athwal, Low, and Arora ....................73
`6. Claim 9 ............................................................................................75
`E. Ground 3: Claim 10 is obvious under 35 U.S.C. § 103 over Zhou and
`Athwal further in view of Low and even further in view of Casey. ....................77
`1. Summary of Zhou ...........................................................................77
`2. Summary of Athwal ........................................................................77
`3. Summary of Low ............................................................................77
`4. Summary of Casey ..........................................................................77
`5. Reasons to Combine Zhou, Athwal, Low, and Casey ....................78
`6. Claim 10 ..........................................................................................80
`F. Ground 4: Claim 11 is is obvious under 35 U.S.C. § 103 over Zhou
`and Athwal further in view of Low and even further in view of Arora, Casey, and
`Freeny
`82
`1. Summary of Zhou ...........................................................................82
`2. Summary of Athwal ........................................................................82
`3. Summary of Low ............................................................................82
`4. Summary of Arora ..........................................................................82
`5. Summary of Casey ..........................................................................82
`6. Summary of Freeny ........................................................................83
`
`4
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`to Combine Zhou, Athwal, Low, Arora, Casey,
`7. Reasons
`and Freeny ........................................................................................................84
`8. Claim 11 ..........................................................................................85
`XI. CONCLUSION .....................................................................................91
`XII. MANDATORY NOTICES ................................................................93
`A. Real Party-in-Interest .........................................................................93
`B. Related Matters ..................................................................................93
`C. Lead and Back-up Counsel and Service Information ........................93
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`PETITIONER’S EXHIBIT LIST
`
`Ex.1001 U.S. Patent No. 11,481,772
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 11,481,772
`
`Ex.1003 Declaration of Dr. B. Clifford Neuman
`
`Ex.1004 U.S. Patent No. 7,458,510 to Zhou
`
`Ex.1005 U.S. Patent App. Pub. No. 2003/0130902 to Athwal
`
`Ex.1006 U.S. Patent No. 10,210,501 to Low et al.
`
`Ex.1007 U.S. Patent No. 9,898,884 to Arora et al.
`
`Ex.1008 U.S. Patent No. 8,255,323 to Casey et al.
`
`Ex.1009 U.S. Patent No. 8,958,846 to Freeny
`
`Ex.1010 U.S. Patent Application Publication No. 2010/0082485 to Lin
`
`Ex. 1011 Curriculum Vitae of Dr. B. Clifford Neuman
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`
`CSC ServiceWorks, Inc. (“Petitioner”) respectfully requests the Board
`
`institute Inter Partes Review of and cancel claims 1-6 and 8-20 (“the Challenged
`
`Claims”) of U.S. Patent No. 11,481,772 (“the ‘772 Patent,” Ex.1001).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ‘772 patent is eligible for Inter Partes Review
`
`(“IPR”) and that Petitioner is neither barred nor estopped from requesting IPR
`
`challenging the patent claims. 37 C.F.R. § 42.104(a).
`
`III. NOTE
`
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
`
`IV. SUMMARY OF THE ‘772 PATENT
`
`The ‘772 patent, titled “Method and System for Presenting Representations of
`
`Payment Accepting Unit Events,” issued on October 25, 2022. Ex.1001, codes (45),
`
`(54). The ‘772 patent explains that the concept of payment on a machine, or a
`
`“payment accepting unit,” has been known for “thousands of years.” Ex.1001 at
`
`7
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`1:45-46. By the earliest priority date of the ‘772 patent, the concept of payment on
`
`machines was well known and used in commercial applications such as “vending
`
`machines,” “parking meters, toll booths, laundromat washers and dryers, arcade
`
`games, kiosks, photo booths, toll booths, [and] transit ticket dispensing machines.”
`
`Ex.1001 at 1:54-65.
`
`The ’772 patent presents representations of payment accepting unit events on
`
`the display of a mobile device. Ex.1001 at Abstract, 37:27-30. Figures 27A-27B are
`
`illustrative and reproduced below:
`
`8
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`
`Ex.1001, Figs. 27A-27B.
`
`Figure 27A is a flowchart diagram for presenting representations of payment
`
`accepting unit events. Ex.1001 at 37:27-33. “In some implementations, the method
`
`1400 is performed by the mobile device 150…or a component thereof (e.g., the
`
`application 140).” Ex.1001, 37:30-35. The mobile device sends a request to a
`
`payment module to initiate a transaction with a payment accepting unit (e.g., a
`
`9
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`vending machine). Id. at 37:43-50. “After sending [the] request…the mobile device
`
`obtains (1402) a notification from the payment module via the first communication
`
`capability, where the notification indicates an event at the payment accepting unit
`
`associated with the payment module.” Id. Next, “the mobile device provides (1406)
`
`a representation of the notification to a user of the mobile device via the one or more
`
`output devices of the mobile device.” Id. at 38:4-7. The mobile device may provide
`
`this representation visually, aurally, or tactilely. Id. at 38:24-41. The representation
`
`may indicate inter alia that a transaction is complete or has been aborted. Id. at 38:4-
`
`16, 38:51-39:8, 39:22-34.
`
`
`
`As shown below, the functionalities and concepts claimed by the ‘772 patent
`
`were previously known in the art. Ex.1003 ¶¶26-28.
`
`V.
`
`PROSECUTION HISTORY
`
`The ‘772 patent application was filed as Application Number 17/654,732 on
`
`March 14, 2022. Ex.1001, codes (21), (22). The ‘772 patent claims priority through
`
`a chain of continuations and continuations-in-part to Provisional Application
`
`Number 61/917,936, filed on December 18, 2013. Id., codes (63), (60). The prior art
`
`relied upon here pre-dates the earliest alleged priority date of the ‘772 patent.
`
`10
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`During prosecution of the application issuing as the ‘772 patent, the Applicant
`
`faced only one rejection, which was based on non-statutory double patenting with
`
`respect to U.S. Patent Nos. 9,659,296 and 10,891,614, as well as provisionally over
`
`U.S. Patent Application No. 17/147,305 (which issued on November 15, 2022 as
`
`U.S. Patent No. 11,501,296). Ex.1002 at 1329-35. The Applicant filed a terminal
`
`disclaimer to overcome the double patenting rejection. Id. at 1310-13. In the Reasons
`
`for Allowance, the Examiner stated that the prior art failed to teach or suggest the
`
`limitations of “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,” and “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
`
`11
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`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.” Id. at 17-19.
`
`As discussed below, these steps and concepts were previously known in the
`
`art. Ex.1003 ¶¶26-28.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) of the ‘772 patent in
`
`December of 2013 would have had a bachelor’s degree in electrical engineering,
`
`computer engineering, computer science, or equivalent training, and approximately
`
`three years of experience with electronic payment systems, vending machine
`
`technologies, or distributed network systems. Additional education can substitute
`
`for less work experience, and vice versa. Ex.1003 ¶¶18-20.
`
`12
`
`
`
`
`
`
`
`
`
`

`

`
`VII. CLAIM CONSTRUCTION
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`Petitioner submits that for the purposes of this proceeding, the terms of the
`
`challenged claims should be given their plain and ordinary meaning, and no terms
`
`require specific construction.1
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF
`
`Petitioner asks that the Board institute a trial for Inter Partes Review and
`
`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`Under the “Interim Procedure for Discretionary Denials in AIA Post-Grant
`
`Proceedings with Parallel District Court Litigation, dated June 21, 2022 (Interim
`
`Guidance”), “the PTAB will not discretionarily deny institution of an IPR or PGR
`
`in view of parallel district court litigation where a petitioner stipulates not to pursue
`
`
`1 Petitioner does not concede that any term in the challenged claim meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged terms recite
`
`patentable subject matter under 35 U.S.C. § 101.
`
`13
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`in a parallel district court proceeding the same grounds as in the petition or any
`
`grounds that could have reasonably been raised in the petition.” Interim Guidance,
`
`7. Referred to as a Sotera stipulation, “[t]his clarification avoids inconsistent
`
`outcomes between the PTAB and the district court and allows the PTAB to review
`
`grounds that the parallel district court litigation will not resolve.” Id., 7-8. The
`
`Interim Guidance is “binding agency guidance” to the Board. Id., 3.
`
`Consistent with this guidance, Petitioner stipulates that, if the instant IPR is
`
`instituted, it will not pursue against the ‘772 patent in the parallel district court
`
`proceeding the same grounds as in the petition or any grounds that could have
`
`reasonably been raised in the petition.
`
`Furthermore, (1) the parallel district court litigation between PayRange Inc.
`
`(“PayRange” or “Patent Owner”) and CSC that is currently pending in the District
`
`of Delaware is at an early stage of the litigation and no Claim Construction Order
`
`has been entered. (See PayRange Inc. v. CSC ServiceWorks, Inc., 1:23-cv-00278-
`
`MN (D.Del.) (“PayRange Litigation”)); (2) Petitioner intends to seek a stay of the
`
`PayRange Litigation pending IPR; and (3) the Petition presents compelling evidence
`
`of unpatentability in light of the combinations of prior art references, such that, if
`
`14
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`unrebutted in trial, would lead to a conclusion that the Challenged Claims are
`
`unpatentable by a preponderance of the evidence. Interim Guidance, 4-5.
`
`Accordingly, the Board should not discretionarily deny institution under Fintiv.
`
`B. Discretionary denial under General Plastic is not appropriate
`
`The General Plastic factors also weigh heavily against discretionary denial.
`
`While there has been one prior PGR challenging the ‘772 patent, CSC is a different
`
`petitioner than the petitioner in that proceeding. See PGR2023-00042. Furthermore,
`
`CSC was not involved in any prior suit involving the petitioner in PGR2023-00042.
`
`The Board routinely finds that General Plastic does not apply to the circumstances
`
`here, where the petitioner was sued independently, was sued on largely different
`
`products, and has no significant relationship with the prior petitioner. See, e.g.,
`
`NetNut Ltd. v. Bright Data Ltd., IPR2021-00465, Paper 11 at 8-11 (Aug. 12, 2021).
`
`Further, no patent owner preliminary response has been filed in PGR2023-00042,
`
`and the grounds advanced in this petition differ from those presented in that
`
`proceeding. For example, the primary reference relied on in this petition, Zhou, is
`
`not relied on in PGR2023-00042.
`
`15
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`C. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ‘772
`
`patent. Under § 325(d), discretionary denial is only warranted when the same, or
`
`substantially the same, prior art or arguments were previously presented to the Office
`
`in a proceeding pertaining to the challenged patent. See Advanced Bionics, LLC v.
`
`MED-EL Elektromedizinishe Gerate Gmbh, IPR2019-01469, Paper 6, p. 7 (P.T.A.B.
`
`Feb. 13, 2020). This factual inquiry is guided by six factors set forth in Becton,
`
`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (P.T.A.B.
`
`Dec.15, 2017) (precedential as to § III.C.5, first paragraph). Each factor is addressed
`
`below:
`
`1.
`
`Factors (a) The Similarities and Material Differences
`Between the Asserted Art and the Prior Art Involved During
`Examination and (c) the Extent to Which the Asserted Art
`was Evaluated During Examination, Including Whether the
`Prior Art was the Basis for Rejection
`
`
`During prosecution, the ‘772 patent faced only non-statutory double-patenting
`
`rejections based on U.S. Patent No. 9,659,256; U.S. Patent No. 10,891,614; and then
`
`co-pending Application No. 17/147,305. The Examiner simply stated that “the prior
`
`16
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`art taken alone or in combination failed to teach or disclose the limitations of claims
`
`1, 13 and 15,” citing two publications: U.S. Pub. No. 2018/0374076 to Wheeler,
`
`filed June 21, 2018, and published December 27, 2018, and U.S. Pub. No.
`
`2018/0197167 to Ganesan, filed January 11, 2017, and published July 12, 2018, each
`
`of which have earliest possible priority dates after the December 18, 2013, earliest
`
`possible priority date of the ‘772 patent. Ex.1002, p.1333. The original claims of
`
`the ‘772 patent were not amended. Ex.1002, pp. 1314-1318.
`
`Zhou, Athwal, Low, and Arora were submitted on August 21, 2022, as part of
`
`an IDS containing a total of 415 references. Ex.1002, pp. 165-175. The Examiner
`
`signed the voluminous IDS “considered” on August 31, 2022—10-days after it was
`
`submitted—Ex.1002, pp. 31-42.
`
`Thus, while Zhou, Athwal, Low, and Arora may constitute the “same art”
`
`under factor (a), this does not appreciably weigh against institution, as the
`
`Examiner’s consideration of those references was limited to signing off on an IDS,
`
`and the Examiner “merely signed the [IDS] without explaining why he disagreed
`
`with the [prior art at issue].” Apple, Inc. v. Seven Networks, LLC, IPR2020-00285,
`
`Paper 10, p. 30 (P.T.A.B. July 28, 2020) (declining to exercise discretionary denial
`
`17
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`under § 325(d)); see also Samsung Electronics Co., Ltd. et al. v. Power 2B, Inc.,
`
`IPR2021-01190, Paper 11, p.19 (P.T.A.B. Jan. 6, 2022). Further, Casey, Lin, and
`
`Freeny were not of record during prosecution and do not constitute the “same art”
`
`previously presented to the Office.
`
`Factor (c) strongly favors institution. Zhou, Athwal, Low, and Arora were not
`
`substantively evaluated—either alone or in combination with Casey, Lin, and/or
`
`Freeny—during examination of the ‘772 patent. None of them formed the basis for
`
`a rejection. Indeed, Zhou, Athwal, Low, and Arora were only listed in an IDS during
`
`prosecution. See Lyft, Inc. v. RideShare Displays, Inc., IPR2021-01602, Paper 7, pp.
`
`14-15 (P.T.A.B. Apr. 11, 2022) (declining to exercise discretion when a reference
`
`was not discussed by the Patent Owner or Examiner during prosecution).
`
`2.
`
`Factors (b) The Cumulative Nature of the Asserted Art and
`the Prior Art Evaluated During Examination and (d) the
`Extent of the Overlap Between the Arguments Made During
`Examination and the Manner in which Petitioner Relies on
`the Prior Art
`
`
`The combination of Zhou, Athwal, and Low has not been considered by the
`
`Examiner or this Board. There were no anticipatory or obviousness-based rejections
`
`levied against the ‘772 patent during prosecution. Accordingly, the references cited
`
`18
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`by Petitioner cannot be cumulative of the art considered by the Examiner and/or
`
`cited in an Office Action. Further, this Petition asserts unpatentability based on
`
`obviousness grounds, which does not overlap with the double-patenting rejection
`
`asserted during prosecution of the ‘772 patent. Thus, factors (b) and (d) strongly
`
`weigh in favor of institution.
`
`3.
`
`Factors (e) Whether Petitioner has Pointed Out Sufficiently
`How the Examiner Erred in its Evaluation of the Asserted
`Prior Art and (f) the Extent to Which Additional Evidence
`and Facts Presented in the Petition Warrant Reconsideration
`of the Prior Art or Arguments
`
`
`Petitioner has sufficiently shown that the Examiner did not evaluate, or erred
`
`in its evaluation, of the asserted Zhou, Athwal, Low, Arora, Casey, and Freeny
`
`references. The arguments set forth in this Petition provide substantial evidence that
`
`was not considered by the Examiner and has not been considered by the Board.
`
`Thus, the Board’s consideration of the prior art and arguments is warranted, and
`
`factors (e) and (f) strongly favor institution.
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-6 and 8-20 of the ‘772 patent.
`
`19
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`Statutory Grounds for Challenges
`
`B.
`
`
`
`
`
`Grounds
`#1
`
`#2
`
`#3
`
`#4
`
`9
`
`Basis
`Claims
`1-6, 8, 12-20 35 U.S.C. § 103; these claims are obvious over
`Zhou and Athwal further in view of Low.
`35 U.S.C. § 103; this claim is obvious over Zhou
`and Athwal further in view of Low and even
`further in view of Arora.
`35 U.S.C. § 103; this claim is obvious over Zhou
`and Athwal further in view of Low and even
`further in view of Casey.
`35 U.S.C. § 103; this claim is obvious over Zhou
`and Athwal further in view of Low and even
`further in view of Arora, Casey, and Freeny.
`
`10
`
`11
`
` U.S. Patent No. 7,458,510 to Zhou (“Zhou,” Ex.1004) was filed on April 19,
`
`2005, and issued on December 2, 2008. Zhou is thus prior art under at least 35 U.S.C.
`
`§ 102(a)(1).
`
`U.S. Patent Pub. No. US 2003/0130902 to Athwal (“Athwal,” Ex.1005) was
`
`filed on November 4, 2002, and published July 10, 2003. Athwal is thus prior art
`
`under at least 35 U.S.C. § 102(a)(1).
`
`20
`
`
`
`
`
`
`
`
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`U.S. Patent No. 10,210,501 to Low et al. (“Low,” Ex.1006) was filed on July
`
`25, 2013. Low is thus prior art under at least 35 U.S.C. § 102(a)(2).
`
`U.S. Patent No. 9,898,884 to Arora et al. (“Arora,” Ex.1007) was filed on
`
`April 4, 2013. Arora is thus prior art under at least 35 U.S.C. § 102(a)(2).
`
`U.S. Patent No. 8,255,323 to Casey et al. (“Casey,” Ex.1008) was filed on
`
`January 9, 2009, and issued on August 28, 2012. Casey is thus prior art under at
`
`least 35 U.S.C. § 102(a)(1).
`
`U.S. Patent No. 8,958,846 to Freeny (“Freeny,” Ex.1009) was filed on August
`
`23, 2006. Freeny is thus prior art under at least 35 U.S.C. § 102(a)(2).
`
`U.S. Patent Application Publication No. 2010/0082485 to Lin et al. (“Lin,”
`
`Ex.1010) was filed on September 30, 2008, and published on April 1, 2010. Lin is
`
`thus prior art under at least 35 U.S.C. § 102(a)(1).
`
`C. Ground 1: Claims 1-6, 8, and 12-20 are obvious under 35 U.S.C. §
`103 over Zhou and Athwal further in view of Low.
`
`
`
`1.
`
`Summary of Zhou
`
`Zhou relates to using wireless communications devices to authenticate and
`
`effect transactions with automated vending machines. Ex.1004 at Abstract, 1:7-11.
`
`Zhou discloses a method “for conducting a transaction between a wireless
`21
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`communication device, such as a cell phone, personal digital assistant, pocket
`
`personal computer, and the like, and a vending machine.” Id. at 2:15-18. Figure 3,
`
`excerpted below, details a preferred process:
`
`
`
`Ex.1004, Fig.3.
`
`
`
`First, Zhou teaches launching a “vending machine application” on the
`
`processor of a mobile device once said mobile device enters into close proximity of
`
`22
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`a vending machine. Id. at 5:29-31. Next, “the vending machine scanner/reader 16
`
`performs an authentication of the IC card 14.” Id. at 5:42-53. After the vending
`
`machine authenticates the IC card, “the wireless device (and more specifically the
`
`IC card 14 in this example) authenticates the vending machine 12.” Id. at 5:54-59.
`
`Figure 4 is illustrative of this authentication step:
`
`
`
`Ex.1004, Fig.4.
`
`
`
`As shown in Figure 4, the IC card “sends a challenge message to the
`
`scanner/reader 16.” Id. at 6:28-30. The scanner/reader then responds with credential
`23
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`information, which the wireless device passes to a “vending machine authorization
`
`server 46” for validation. Id. at 6:37-49. The authorization server validates the
`
`vending machine and responds to the wireless device, indicating the vending
`
`machine is “OK or NOT OK.” Id. at 6:58-67. The response message is “display[ed]
`
`to the user.” Id. at 7:1-3. These messages include “VENDING MACHINE NOT
`
`APPROVED” and “VENDING MACHINE APPROVED[.]” Id. at 7:3-10.
`
`2.
`
`Summary of Athwal
`
`Athwal relates to the field of electronic commerce, for instance, electronic
`
`commerce transactions conducted with short-range mobile communications systems
`
`including mobile or cellular telephones (“mobile devices”) and electronic retail
`
`systems for providing goods/services to customers (“payment accepting units,”)
`
`such as vending machines and kiosks. Ex.1005, Abstract; [0002]; [0004]. Athwal
`
`describes an electronic retail system utilizing short-range wireless technology (e.g.,
`
`Bluetooth, 802.11, etc.) to establish a data connection via a customer’s mobile phone
`
`to authenticate and complete electronic commerce transactions. Ex.1005, [0005];
`
`[0014].
`
`
`
`
`
`
`
`
`
`24
`
`

`

`
`
`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`Athwal, Fig. 1, annotated.
`
`
`
`As shown above in Fig. 1, Athwal describes an electronic commerce system
`
`100 that includes a mobile communication device (MCD) 110 communicating with
`
`an electronic retail system (ERS) 120 via short range wireless technology (SRWT)
`
`130 and communicating with a financial system 160 via long range wireless
`
`technology (LRWT) 140 over a network (e.g., the Internet) 150. Ex.1005, [0015]. A
`
`customer first searches for all available ERS in their vicinity via their MCD.
`
`25
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`Ex.1005, [0017]. The ERS’s respond to a Wireless Electronic Signal (“WES”)
`
`inquiry sent by the MCD with a WES that includes the ERS name, available
`
`products, and prices. Id. The MCD displays this information to the customer, who
`
`selects the desired product or service from the appropriate ERS. Id. As shown by
`
`arrows 1 and 2 in Fig. 1, the MCD and ERS exchange information via WES, such as
`
`the customer request to perform a transaction, confirmation of the availability of the
`
`desired product/service, an electronic “bill” for the amount of the purchase, payment
`
`account information, and authorization information. Ex.1005, [0017-18].
`
`Athwal teaches that, prior to delivering the good/service to the customer, the
`
`ERS contacts a third-party payment system (e.g., financial system 160) via a LRWT
`
`data connection from the ERS to the financial system created using the SRWT and
`
`the customer’s MCD in order to transfer the required funds from the customer
`
`account to the ERS account. Ex.1005, [0019]; [0022]. For instance, a secure LRWT
`
`140 connection is established (see arrows 3 in Fig. 1) from MCD 110 to financial
`
`system 160. Ex.1005, [0027]. Software on the ERS uses the secure data connection
`
`provided by the MCD to request a funds transfer (at financial system 160) for the
`
`price of the good/service. Ex.1005, [0028]. Financial system 160 notifies the ERS
`
`26
`
`
`
`
`
`
`
`
`
`

`

`IPR2023-01449 Petition
` Inter Partes Review of U.S. 11,481,772
`
`that the transaction has been completed (see arrows 4 in Fig. 1.). At arrow 5 in Fig.
`
`1, the ERS notifies the MCD to close the secure LRWT data connection 140 and
`
`provides feedback to the MCD about whether or not the funds transferred correctly.
`
`Ex.1005, [0028-29]. If the funds were correctly transferred, the ERS provides an
`
`electronic receipt to the MCD and delivers the product/service to the customer.
`
`Ex.1005, [0030-35].
`
`3.
`
`Summary of Low
`
`Low relates to “wireless electronic payments to non-Internet connected
`
`machines through user devices.” Ex.1006, 1:16-20. Low discloses a non-Internet
`
`connected machine (i.e., a vending machine), having “capability of wireline or
`
`wireless communication with user device 110, for example using