‘Trialsiauspto. gov
`
`571-272-7822
`
`Paper13
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`
`V.
`
`PAYRANGEINC.,
`Patent Owner.
`
`IPR2023-01186
`Patent 8,856,045 BI
`
`Before KEN B. BARRETT, MEREDITH C. PETRAVICK,and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 US.C. $314
`
`
`
`571-272-7822
`
`Paper13
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CSC SERVICEWORKS, INC.,
`Petitioner,
`
`V.
`
`PAYRANGEINC.,
`Patent Owner.
`
`IPR2023-01186
`Patent 8,856,045 BI
`
`Before KEN B. BARRETT, MEREDITH C. PETRAVICK,and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofInter Partes Review
`35 US.C. $314
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`CSC ServiceWorks,Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 1—26 (“the challenged claims”) ofU.S. Patent
`
`No. 8,856,045 B1 (Ex. 1001, “the ’045 patent”). Paper 1 (“Pet.”).
`
`PayRangeInc. (“Patent Owner”) filed a Preliminary Response. Paper6
`
`(“Prelim. Resp.”). We authorized the parties to submit additional briefing to
`
`address an argumentraised by Patent Owner. Ex. 3001. Petitioner filed a
`
`Reply (Paper7, “Prelim. Reply”) and Patent Ownerfiled a Sur-reply (“Paper
`
`8, “Prelim. Sur-reply”’).
`
`Under 35 U.S.C. § 314(a), an interpartes review maynotbeinstituted
`
`unless the information presented in the petition “showsthat thereis a
`
`reasonablelikelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.”
`
`After considering the Petition, the Preliminary Response, the Reply,
`
`the Sur-reply, and the evidence ofrecord, we determine the information
`
`presented showsa reasonablelikelihood that Petitioner would prevail in
`
`establishing the unpatentability of at least one ofthe challenged claimsof
`
`the ’045 patent. Accordingly, we institute an interpartes review of
`
`claims 1—26 ofthe ’045 patent on the groundsassertedin the Petition.
`
`B. Real Parties-In-Interest
`
`Petitioner identifies itself, CSC ServiceWorks,Inc., as the real party-
`
`in-interest. Pet. 84. Patent Owneridentifies itself, PayRange Inc., as the
`
`real party-in-interest. Paper 4, 1.
`
`
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`IPR2023-01186
`Patent 8,856,045 B1
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`C. RelatedMatters
`
`Petitioner and Patent Owneridentify the following related court
`
`proceedings:
`
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:23-cv-00278
`(D. Del.)
`PayRange Inc. v. CSC ServiceWorks, Inc., Case No. 1:22-cv-00502
`(D. Del.)
`
`Pet. 84; Paper 4, 1.
`
`Patent Owneridentifies additionally the following related court
`
`proceedings:
`
`PayRangeInc. v. Kiosoft Techs., LLC, Case No. 1-20-cv-20970
`(S.D. Fla.)
`
`PayRangeInc. v. KioSoft Techs., LLC, Case No. 1-20-cv-24342
`(S.D. Fla.)
`
`Paper4, 1.
`
`Patent Owneralso identifies the following related Board proceedings:
`
`KioSoft Techs., LLC v. PayRangeInc., Case No. CBM2020-00026
`(U.S. Patent No. 9,659,296)
`
`KioSoft Techs., LLC v. PayRangeInc., Case No. IPR2021-00086
`(U.S. Patent No. 9,659,296)
`
`CSC ServiceWorks, Inc. v. PayRange Inc., Case No. IPR2023-01187
`(U.S. Patent No. 10,438,208)
`
`CSC ServiceWorks, Inc. v. PayRange Inc., Case No. IPR2023-01188
`(U.S. Patent No. 10,891,608)
`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2021-00077
`(U.S. Patent No. 10,719,833)
`
`Kiosoft Techs., LLC v. PayRangeInc. , Case No. PGR2021-00084
`(U.S. Patent No. 10,891,608)
`
`Kiosoft Techs., LLC v. PayRange Inc. , Case No. PGR2021-00093
`(U.S. Patent No. 10,891,614)
`
`
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`IPR2023-01186
`Patent 8,856,045 B1
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`Kiosoft Techs., LLC v. PayRange Inc., Case No. PGR2022-00035
`(U.S. Patent No. 11,074,580)
`
`KioSoft Techs., LLC v. PayRangeInc. , Case No. PGR2023-00042
`(U.S. Patent No. 11,481,772)
`
`Paper 4, 1-2.
`
`D. The ’045 Patent (Ex. 1001)
`
`The ’045 patent,titled “Mobile-Device-To-Machine Payment
`
`Systems,” discloses a system that allows users with mobile devices to make
`
`cashless purchases ofproducts or services from payment accepting units
`
`such as vending machines, parking meters, arcade games, kiosks,etc.
`
`Ex. 1001, code (54), 1:27—38, 9:30—-35. Figure 5, reproduced below, shows
`
`components ofthe disclosed mobile-device-to-machine payment system and
`
`the interactions therebetween. /d. at 18:45—47.
`
`poo noo -- 2-2-2252------ Handheld computer syne or cellular ------------------------
`
`Server
`
`120-~..
`
`f50 ~~
`1og-~
`a“Meteo
`Wired Serial
`Bluetooth
`Adapter
`
`i7@
`
`
`
`
`
`arvera
`
`
`
`
`140 Apo
`Mobile Device
`
`130.
`
`pannaantennaetan_—
`Wii or Cellular
`
`
`
`Wired Intamet
`
`Systam
`Management
`Server
`
`
`WiradInternat
`
`FIG. 5
`
`Funding Source
`
`Figure 5 shows adapter module 100 connected to payment accepting
`
`unit 120 viaa wired serial connection.
`
`/d. at 18:48—50. Adaptermodule 100
`
`is connected to mobile device 150 andits installed mobile application 140
`
`via short-range communication technology, e.g., Bluetooth. /d. at 18:50—S4.
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`Mobile device 150 andinstalled mobile application 140 are connectedto
`
`system managementserver 130 via long-range communication technology,
`
`e.g., WiFiorcellular.
`
`/d. at 18:59-64.
`
`Asdisclosed by the 045 patent, adapter module 100 sends an
`
`authorization request for funds to mobile device 150 using the short-range
`
`communication technology. /d. at 3:52-54. Mobiledevice 150 then
`
`forwards the authorization request for funds to server 130 using the long-
`
`range communication technology. /d. at 3:54—56, 13:65—67. Iffunds are
`
`available, server 130 sends an authorization grant for funds to mobile
`
`device 150 using the long-range communication technology. /d. at 3:56—-58,
`
`13:65-67. Mobile device 150 then forwards the authorization grant for
`
`funds to adapter module 100 using the short-range communication
`
`technology. /d. at 3:58-60. Payment accepting unit 120 dispenses a product
`
`or service in responseto receiving user inputto an input mechanism of
`
`paymentaccepting unit 120 1f adapter module 100 hasreceived the
`
`authorization grant. /d. at 3:60—64.
`
`FE.
`
`Illustrative Claims
`
`Petitioner challenges claims 1—26 ofthe ’045 patent. Claims1, 10,
`
`and 18 areindependent. Independentclaim 1 is illustrative and reproduced
`
`below.
`
`1. A mobile-device-to-machine paymentsystem for
`facilitating a cashless transaction for purchase ofat least one
`productor service by a user from a paymentaccepting unit
`having input mechanisms,the user having a mobile device
`having both short-range communication technology and long-
`range communication technology, the payment accepting unit
`capable of dispensing at least one productor service, said
`system comprising:
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
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`(a) an adapter module associated with the payment accepting
`unit, said adapter having short-range communication
`technology for communicating with the short-range
`communication technology ofthe mobile device;
`
`(b) a server having long-range communication technology
`for communicating with the long-range communication
`technology ofthe mobile device;
`
`(c) said adapter module for sending an authorization request
`for funds to the mobile device using short-range
`communication technology, the mobile device
`forwarding said authorization request for fundsto said
`server using long-range communication technology; and
`
`(d) said server for sending an authorization grant for funds
`to the mobile device using long-range communication
`technology, the mobile device forwarding said
`authorization grant for funds to said adapter module
`using short-range communication technology;
`
`(ce) wherein the paymentaccepting unit dispensestheat least
`one productor service in responseto receiving user input
`to the paymentaccepting unit input mechanism ifsaid
`adapter module hasreceivedsaid authorization grant.
`
`Ex. 1001, 32:24-53.
`
`F. Evidence
`
`amd=al
`2009/0106160 AI
`Apr. 23, 2009
`
`Feb. 19, 2019
`
`
`
`Feb. 17, 2015
`
`Nov. 25, 2008
`
`Petitioner also relies on the Declaration ofB. Clifford Neuman, Ph.D.
`
`(Ex. 1003).
`
`
`
`Land 18
`2,3, 19, and 20
`4-6 and 21-23
`10-14
`
`102 and 103
`
`Low and Skowronek
`
` 1
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`IPR2023-01186
`Patent 8,856,045 B1
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`G. Asserted Grounds
`
`Petitioner asserts that claims 1-26 would have been unpatentable on
`
`the following grounds:
`
`Low, Skowronek, and
`Freen
`LowandWilson
`8, 9,25, and 26
`|6
`Low, Freeny, and Wilson
`7 and 24
`Low, Skowronek,Freeny,
`
`3
`
`Il. ANALYSIS
`
`A. AllegedFailure to Identify Real-Parties-In-Interest
`
`Patent Ownerarguesthat the Petition should be denied because the
`
`Petition alleged fails to identify KioSoft Technologies, LLC (“KioSoft’”) and
`
`TechTrex,Inc. (“TechTrex’”) as real-parties-in-interest, as required by 35
`
`U.S.C. § 312 (see also 37 C.F.R. § 42.8 (a)(1), (b)(1)). Prelim. Resp. 6—10;
`
`Prelim. Sur-reply 1-7.
`
`Petitioner disputes that KioSoft and TechTrexarereal-parties-in-
`
`interest. Prelim. Reply 1-7. And, argues that “there is no reason for the
`
`Board to address PayRange’s RPI argumentat institution because no time-
`
`bar or estoppel issue exists.” /d. at 2-3 (“To date, PayRangehas not
`
`asserted the ‘045 patent against Kiosoft or TechTrex, and thus no time bar
`
`ever triggered under § 315(b) based on separate litigation between PayRange
`
`and Kiosoft/TechTrex.”’).
`
`
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`IPR2023-01186
`Patent 8,856,045 B1
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`The Board’s precedential decision SharkNinja Operating LLCv.
`
`iRobot Corp. , IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020)
`
`CSharkNinja”’) heldthat it best serves the Office’s interests in cost and
`
`efficiency to not resolve an RPI issue when “it would not create a time baror
`
`estoppel under 35 U.S.C. § 315”in that proceeding. SharkNinja, Paper 11;
`
`see also UnifiedPatents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper
`
`76 at (USPTO Director May 22, 2023) (non-precedential). We do not
`
`address whether KioSoft and TechTrex are unnamed real-partics-in-interest
`
`because, even ifthey were, it would not create atime bar or estoppel under
`
`35U. S.C. 8315.
`
`B. AllegedFailure to Comply with WordLimits
`
`Patent Ownerarguesthat the Petition should not consider the Petition
`
`becausethe Petition violates 37 C.F.R. § 42.24, whichsets a 14,000-word
`
`limit fora petition. Prelim. Resp. 10—11. Petitioner certifies that the
`
`Petition contains 13,997 words. Pet. 73. PatentOwneralleges that the
`
`Petition contains morethan the 14,000 words because Petitioner’s 13,997-
`
`word count does not include the numerous wordsin an image of a block
`
`quotation located at the top ofpage 73 of the Petition. Prelim. Resp. 10.
`
`Citing the Board’s 2019 Consolidated Trial Practice Guide! (“TPG”), Patent
`
`Ownerarguesthat the Petition should not be considered. /d.
`
`The Consolidate Trial Practice Guidestates:
`
`[W|hen certifying word count, a party need not go beyond the
`routine word count supplied by their word processing program.
`Parties should not abuse the process. Excessive wordsin
`figures, drawings, or images, deleting spacing between words,
`or using excessive acronymsor abbreviations for word phrases,
`
`' Available at https:/Avww.uspto.gov/sites/default/files/
`documents/tpgnov. pdf?MURL=TrialPracticeGuideConsolidated.
`
`8
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`in order to circumventthe rules on word count, may lead toa
`party’s briefnot being considered. See, e.g., Pi-Net Int’l, Inc. v.
`JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015). ..
`. Ifa party feels that it would suffer undue prejudice from an
`opposing party’s alleged word countlimit violation or abuse,
`that party should raise the issue with the Board promptly after
`discovering theissue. The Board expects the parties to take
`reasonable steps to remedy any such issues before approaching
`the Board. Ifan opposing party raises a word countlimit
`violation or abuse, the Board will consider such a violation or
`abuse on a case-by-casebasis.
`
`TPG, 40. The block quotation image on page 73 of the Petition contains
`
`approximately 105 words. On this record, whetheror not Petitioner
`
`accounts for these wordsinits certification is unclear.
`
`In any event, Patent Ownerdoesnotallege that it has sufferedany
`
`undue prejudice from the extra 102 words. Nor does Patent Ownerindicate
`
`that 1t promptly raised the issue to allow for Petitioner to take reasonable
`
`steps to remedy the issue. Underthe circumstancesin this case, we are not
`
`persuaded the Petitioner is abusing the process by including excessive words
`
`in the image so as to warrant not considering the Petition.
`
`Duringtrial, all future papers must comply with applicable word-
`
`count limits and the parties must avoid imagesofblock quotations, so that
`
`the words ofthe quotation are included in word-countlimits.
`
`C. Legal Standards
`
`“Tn an IPR, the petitioner has the burden from the onset to show with
`
`particularity why the patentit challenges is unpatentable.” Harmonic, 815
`
`F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring interpartes review
`
`petitions to identify “with particularity ... the evidence that supports the
`
`groundsfor the challengeto each claim”)); Dynamic Drinkware, LLC v.
`
`Nat’! Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`burden ofproof in interpartes review). Although we mayindicate in this
`
`Decision that certain Patent Owner arguments are not persuasive, in doing so
`
`wedo not shift the ultimate burden from Petitioner.
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter andthe prior art are such that the subject matter, as a
`
`whole, would have been obviousat the time the invention was made toa
`
`person having ordinary skill in the art to which said subject matterpertains.
`
`KSR Int’! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “[W]hen a patent
`
`claims a structure already known in thepriorart that is altered by the mere
`
`substitution of one element for another knownin the field, the combination
`
`must do more thanyield a predictable result.” KSR,550 U.S. at 416 (citing
`
`U.S. v. Adams, 383 U.S. 39, 50-51 (1966)). The question of obviousnessis
`
`resolved on the basis ofunderlying factual determinations,including (1) the
`
`scope and content ofthe priorart; (2) any differences between the claimed
`
`subject matter andthepriorart; (3) the level of skill in the art; and (4) when
`
`in evidence, objective indicia ofnon-obviousness (1.e., secondary
`
`considerations). Graham vy. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`Here, the present record contains no evidence of objective indicia ofnon-
`
`obviousness.
`
`D. Level ofOrdinary Skill in the Art
`
`Petitioner asserts that a person ofordinary skill in the art “wouldhave
`
`hada bachelor’s degree in electrical engineering, computer engineering,
`
`computerscience, or equivalent training, and approximately three years of
`
`experience with electronic payment systems, vending machine technologies,
`
`or distributed network systems,” and that “[a]dditional education can
`
`10
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`substitute for less work experience, and vice versa.” Pet. 11 (citing Ex. 1003
`
`q 19).
`
`Patent Ownerdoesnot provide a description ofthe level of ordinary
`
`skill in the art. See generally Prelim. Resp.
`
`For purposes ofthis Decision, we adopt Petitioner’s assessment ofthe
`
`level of ordinary skill in the art as it is consistent with the ’045 patent and
`
`the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001).
`
`E. Claim Construction
`
`In this interpartes review, we apply the sameclaim construction
`
`standard that would be usedin acivil action under 35 U.S.C. § 282(b).
`
`37 C.F.R. § 42.100(b). In applying this standard, we generally give claim
`
`terms their ordinary and customary meaning as would be understood by a
`
`person of ordinary skill in the art at the time ofthe invention and in the
`
`context ofthe entire patent disclosure. See id.; Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc).
`
`Neither party provides an explicit construction of any claim terms.
`
`Petitioner asserts that “the terms ofthe challenged claims shouldbe given
`
`their plain and ordinary meaning, and no termsrequire specific
`
`construction.” Pet. 11. Patent Ownerasserts that “no constructions are
`
`necessary to denyinstitution becausethe petition facially fails to show that
`
`the referencessatisfy the plain language ofthe claims.” Prelim. Resp.6.
`
`Except to the extentas discussed in our patentability analysis below,
`
`we do not need to construe any termsexplicitly to reach ourdecision. See
`
`Realtime Data LLC v. lancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`
`Boardis required to construe ‘only those terms. . . that are in controversy,
`
`11
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`and only to the extent necessary to resolve the controversy.’”
`
`299
`
`(quoting Vivid
`
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`F. Ground 1: Anticipation by and Obviouness over Low
`
`Petitioner contends that claims 1 and 18 are anticipated by and
`
`obvious over Low. Pet. 17-32.
`
`1. Overview ofLow (Ex. 1004)
`
`Lowistitled “Electronic Payments to Non-Internet Connected
`
`Devices Systems and Methods”andrelates to “wireless electronic payments
`
`to non-Internet connected machines through user devices.” Ex. 1004, code
`
`(54), 1:17—20. Specifically, Low discloses a system that permits a user to
`
`select, purchase, and dispense productsfor sale at a vending machine, while
`
`using a user device such as a smart phonefor electronic payment. /d. at
`
`2:11—16, 5:19-22. Figure 1 of Low, reproduced below,is a block diagram
`
`of the disclosed system. /d. at 2:63-63.
`
`pee eeeceeue eeee ease ene c seek cneeeenee ee cceeeeaseebenceneceee 1
`
`Pastment Prowider
` peTN,
`
`Panannsnnes,
`ne
`
`
`ot Metwork [4G
`3
`*
`A a
`on
`
`N
`4
`Nant
`nwene,
`a
`
`
`
`
`iceMpOLEi
`
`Figure 1 shows networked system environment 100 including user 102
`
`utilizing user device 110 with vending machine 120.
`
`/d. at 3:20—21.
`
`12
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
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`Vending machine 120 includes product dispensing module 122, e.g.,a
`
`keypad, touchscreen,or display, for a user to makeselections, purchase, and
`
`dispense products 124.
`
`/d. at 5:19-24. Vending machine 120 further
`
`includes electronic payment module 130 which enables user 102 to make
`
`electronic payments for products 124 in the absence ofphysical money. /d.
`
`at 5:44-46. User device 110 contains purchase application 112 which
`
`interfaces with a corresponding module at vending machine 120.
`
`/d.
`
`at 4:5-13. User device 110 communicates over network 160 with payment
`
`providing server 140 and vendorserver 150.
`
`/d. at 3:21—23. Vending
`
`machine 120 doesnot have Internet connection with network 160, but does
`
`have wireless communication such as Bluetooth with user device 110.
`
`/d.
`
`at 4:59-64.
`
`Low discloses that vending machine 120 and user device 110 are
`
`paired, e.g., through Bluetooth, anduser device 110 transmits a user
`
`identifier to vending machine 120 for display.
`
`/d. at 2:38—-41. During
`
`display of the useridentifier, user 102 can select items for purchase from
`
`vending machine 120.
`
`/d. at 2:41—-43. Vending machine 120 then transmits
`
`a purchase request, such as product name, product price, product code, a
`
`machine identifier, and/or a transaction number backto user device 110. Jd.
`
`at 2:43-46. User device 110 displays the purchase request and,ifthe
`
`informationis correct, user 102 selects a payment button or option on user
`
`device 110, which communicates the payment request to payment provider
`
`server 140.
`
`/d. at 2:46—49, 9:24—28. Iftransaction processing
`
`application 142 in paymentprovider server 140 approves the purchase
`
`request, an approvalincluding a payment authorization is communicated to
`
`user device 110 for transmission to vending machine 120.
`
`/d. at 9:39-49.
`
`13
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`After vending machine 120 receives a payment authorization, vending
`
`machine 120 dispenses the purchased item ofproducts 124.
`
`/d. at 9:55—58.
`
`2. Claim 1
`
`Petitioner contendsthat claim 1 is anticipated and obvious over Low.
`
`Pet. 19-28. Petitioner’s analysis maps each limitation of claim 1 to Low’s
`
`teaching andcites to supporting testimony ofDr. Neuman. See id. After
`
`reviewing Petitioner’s analysis and evidence, and taking into account Patent
`
`Owner’s argument, we determine that Petitioner showsareasonable
`
`likelihood that claim 1 is unpatentable. We address each ofPatent Owner’s
`
`argument below.
`
`a)
`
`“an adapter module”
`
`Claim 1 recites:
`
`an adapter module associated with the paymentaccepting untt,
`said adapter having short-range communication technology for
`communicating with the short-range communication technology
`of the mobile device.
`
`Ex. 1001, 32:28-35.
`
`Petitioner equates the claimed adapter module to Low’s electronic
`
`payment module 130. Pet. 21—22 (citing Ex. 1004, 4:64—67, 5:10—18, 5:14—
`
`17, 5:44—-46, 5:49-53, 6:9-16; Ex. 1003 49 86-89).
`
`Patent Ownerarguesthat Low’s electronic payment module 13 is not
`
`an adapter module as required by claim 1. Prelim. Resp. 12—15. According
`
`to Patent Ownerthe plain language ofthe claim requires that
`
`an adapter module adapts a function ofa machine. It uses the
`internet via mobile devices to connect a machineandit
`simulates physical forms ofpayment—suchas coins and
`cash—inorderto enable the machineto operate.
`
`14
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`
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`IPR2023-01186
`Patent 8,856,045 B1
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`Prelim. Resp. 12; see also id. 12—13 (citing Ex. 1001, 11:59—12:14, 19:64—
`
`67). Patent Ownerargues that the Petition is deficient becauseit does not
`
`show that Low’s electronic payment module 130 is such an adapter module.
`
`Prelim. Resp. 12—13.
`
`On this record, Patent Owner’s argumentis unpersuasive. We do not
`
`agree that the plain language ofthe term “adapter module”requires, for
`
`example, the adapter module to simulate physical forms ofpayment, such as
`
`coins andcash. We see nothing in the plain language of claim 1 that
`
`requires such. See generally Ex. 1001, 32:28-35. Nor do we agreethat,
`
`because the ’045 patent discloses an “exemplary adapter module”that
`
`simulates physical forms ofpayment(id. at 11:62, 19:58—59), we should
`
`read such a limitation into claim 1. Ourreviewing court has repeatedly
`
`“cautioned against limiting the claimed invention to preferred embodiments
`
`or specific examplesin the specification.” Williamson v. Citrix Online, LLC,
`
`792 F.3d 1339, 1346-47 (Fed. Cir. 2015); SuperGuide Corp. v. DirecTV
`
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it 1s
`
`important not to import into a claim limitations that are nota part ofthe
`
`claim’’). “[I]t is the claims, not the written description, which define the
`
`scope of the patent right.” Williamson, 792 F.3d at 1346-47; see
`
`also Phillips, 415 F.3d at 1312 (noting that “[i]t is a “bedrock principle’ of
`
`patent law that ‘the claims of a patent define the invention to which the
`299
`patentee is entitled the right to exclude’”’). Thus, “a particular embodiment
`
`appearing in the written description maynot be read into a claim when the
`
`claim language is broader than the embodiment.” SuperGuide, 358 F.3d at
`
`875.
`
`Atthis stage ofthe proceeding, we are persuadedby Petitioner that
`
`Low’s electronic payment module 130 meets the claimed adapter module.
`
`15
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`
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`IPR2023-01186
`Patent 8,856,045 B1
`
`AsPetitioner points out, the ’045 patent describes the adapter module as“a
`
`physical device that is installed in a machine.” Pet. 22 (Ex. 1001, 11:59-
`
`61). Low describes electronic payment module 130 as being part ofa
`
`vending machine and havingat least one communication module 134 for
`
`communicating with a user device. Ex. 1001, 5:44—46, 6:9-11.
`
`Communication module 134 includes various types of short-range
`
`communication devices, suchas Bluetooth. /d. at 6:11—16.
`
`On this record, we determinethat Petitioner sufficiently showsthat
`
`Low discloses the claimed adapter module.
`
`b)
`
`“aserver”
`
`Claim 1 requires “a server having long-range communication
`
`technology for communicating with the long-range communication
`
`technology ofthe mobiledevice.” Ex. 1001, 32:36—38. Claim 1 also
`
`requires the serverto receive an authorization request for funds from the
`
`mobile device and to send an authorization grant for funds to the mobile
`
`device using long-range communication technology. /d. at 32:41—46.
`
`Petitioner equates the claimed server to Low’s payment provider
`
`server 140 and vendorserver 150, collectively. Pet. 23 (citing Ex. 1004,
`
`3:18—25, 7:40—S0, 8:48—57, and FIG.4.; Ex. 1003 4] 90-92). Petitioner
`
`alleges that the ’045 patent discloses that the server may be comprised of
`
`multipleservers. Pet. 23, n.2 (citing Ex. 1001, 19:51—54). Petitioner,
`
`however, only points to Low’s paymentprovider server 140 as meeting the
`
`claimed receiving of an authorization request for funds and sending of an
`
`authorization grant, required by claim 1. Pet. 25—27; see Prelim. Resp. 19,
`
`n.3.
`
`16
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`Patent Ownerargues that Low’s paymentproviderserver 140 and
`
`vendorserver 150 cannot meet the claimed server because they Low’s
`
`servers are separate components. Patent Owner contends:
`
`This attemptto recast separate, independent components
`as “a server”defies credulity. Far from being part of “a server,”
`the payment provider server 140 and the vendorserver 150 are
`facially distinct servers operated by distinct entities to perform
`distinct functions... . Drawing ared box around twodistinct
`servers does not transform them into “a server” as recited in
`claims 1 and 18.
`
`Prelim. Resp. 20 (citations omitted).
`
`In any event, as Patent Owner acknowledges, Petitioner relies upon
`
`only Low’s paymentproviderserver 140 as meeting the claimed server
`
`receiving an authorization request for funds and sending an authorization
`
`grant, required by claim 1. Pet. 25—27 (citing Ex. 1004, 5:61-69, 9:24—62;
`
`10:41-61); see Prelim. Resp. 19, n.3. Patent Ownerdoesnotdispute that
`
`Low’s paymentproviderserver 140 is a single server that performs both
`
`functions recited by claim 1 — receiving an authorization request for funds
`
`from the mobile device and sending an authorization grant for funds to the
`
`mobile device using long-range communication technology.
`
`On this record, we determinethat Petitioner sufficiently showsthat
`
`Lowdiscloses the claimed server.
`
`c)
`
`“inresponse to receiving user input... ifsaid adapter module
`has received said authorization grant”
`
`Claim1recites:
`
`wherein the payment accepting unit dispensestheat least
`one productor service in responseto receiving user input to the
`paymentaccepting unit input mechanism if said adapter module
`has received said authorization grant.
`
`Ex. 1001, 32:49-53.
`
`17
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`Petitioner contends that Low meets this limitation because Low
`
`discloses:
`
`Once the user has used the product selection means“input
`mechanism’to select a product, and once the purchase request
`has been sent to the server via the user device and a payment
`authorization has been forwardedbackto the electronic
`payment module (“adapter module’) ofthe vending machine
`via the user device, the “vending machine 120 may dispense the
`purchased item ofproducts 124.” [Ex. 1004,]9:39-62; see also
`id, at 10:55-61; 12:9-25; Ex. 1003, 9103-105.
`
`Pet. 28.
`
`Patent Ownerarguesthat this limitation requires that the funds
`
`authorization grant is received by the adapter module before,or at the same
`
`time as, the payment accepting unit input mechanism receivesthe user input.
`
`Prelim. Resp. 27—28; see alsoid. at 24.
`
`On this record, Patent Owner’s argumentis unpersuasive. Patent
`
`Ownerdoesnotsufficiently explain why the plain language of claim 1
`
`requires receiving the funds authorization grant before or at the same timeas
`
`receiving the userinput. Claim 1 recites that the dispensing ofthe productis
`
`in responseto receiving a user input and is conditioned on whetherthe
`
`adapter module has received the funds authorization grant, but claim 1 does
`
`not specify that the funds authorization grant must be received, for example,
`
`before receiving the userinput. See Ex. 1001, 32:49-53.
`
`On this record, we determinethat Petitioner sufficiently showsthat
`
`Low discloses that the payment accepting unit dispensea product in
`
`responseto receiving user input to the payment accepting unit input
`
`mechanism if said adapter module has received the authorization grant.
`
`18
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`d)
`
`“an authorization requestforfunds”
`
`Claim 1 recites:
`
`said adapter module for sending an authorization request for
`funds to the mobile device using short-range communication
`technology, the mobile device forwarding said authorization
`request for fundsto said server using long-range
`communication technology.
`
`Ex. 1001, 32:39-43.
`
`Petitioner equates the claim authorization request for funds to Low’s
`
`purchase request. Pet. 24 (citing Ex. 1004, 2:38—46, 4:45—56, 5:61—6:9; Ex.
`
`1003 4] 93-95). Low discloses that the electronic payment module 130’s
`
`paymentverification application transmits a “purchase request” to the user
`
`device, and that the request includes “a product name,product price, product
`
`code, a machineidentifier, and/or a transaction numberto user device 110.”
`
`Ex. 1004, 5:66—6:3, 2:38—46.
`
`Patent Ownerargues that Low’s purchase request is an authorization
`
`request for a transaction becauseit is sent after a user selects a product and
`
`includes transaction specific information, such as a product name. Resp.
`
`15-17. According to Patent Owner, claim 1’s “authorization requestfor
`
`funds is distinguishable from an authorization requestfor a transaction. Id.
`
`at 16 (emphasis original). Patent Owner argues:
`
`Asrecited [by claim 1], a productor service is dispensed in
`response to receiving user input to the payment accepting unit
`input mechanism ifthe adapter module has received the
`authorization grant. That is, the funds authorization grantis
`received by the adapter module before,or at the same time as,
`the claimed user input—which Petitioner mapsto the user
`selecting a product. ... A purchase request cannot serve as the
`authorization request for funds when the funds grant must be
`received no later than the product selection Petitionerrelies on
`as user input.
`
`19
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`Prelim Resp. 16 (citations omitted). Patent Ownernotesthat the ’045 patent
`
`states: “[s]ignificantly, the AuthRequest is a request for authorization of
`
`funds, not a request for authorization ofa transaction. The purpose ofthe
`
`fundsis irrelevant to the server 30.” Prelim. Resp. 16 (quoting Ex. 1001,
`
`14:53—56).
`
`On this record, Patent Owner’s argument is unpersuasive. As
`
`explained above, we do not agreethat the plain language of claim 1 requires
`
`the funds authorization grant to be received by the adapter module before,or
`
`at the same time, as the user input. We, thus, do not agree that Low’s
`
`purchase request, which1s sent after the user input, cannot meet the claimed
`
`authorization request for funds.
`
`On this record, we determinethat Petitioner sufficiently shows that
`
`Low discloses the claimed authorization request for funds.
`
`e) Conclusionfor Claim |
`
`After considering the Petition and the evidence ofrecord, and taking
`
`into account the Preliminary Response, we determine the information
`
`presented in the Petition showsa reasonable likelihood that Petitioner would
`
`prevail in establishing the unpatentability of claim 1.
`
`3. Claim 18
`
`“Wheninstituting interpartes review, the Board will authorize the
`
`review to proceedonall of the challenged claims and onall grounds of
`
`unpatentability asserted for each claim.” 37C.F.R. § 42.108(a). We must
`
`“either (1) institute as to all claims challenged in the petition and onall
`
`groundsin thepetition, or (2) institute on no claims and denyinstitution.”
`
`TGPat 5-6, 64; see also PGS Geophysical AS v. lancu, 891 F.3d 1354,
`
`1359-60 (Fed. Cir. 2018) (stating a decisionto institute is “a simple yes-or-
`
`20
`
`
`
`IPR2023-01186
`Patent 8,856,045 B1
`
`no institution choice respecting a petition, embracingall challenges included
`
`in the petition”). Thus, because we have decidedto grant institution based
`
`upon anticipation by and obviousness over Low with respect to claim 1, we
`
`must do the same for claim 18.
`
`Patent Ownerat this stage doesnotraise any additional arguments
`
`specifically directedto claim 18.
`
`G. Remaining Grounds
`
`Asdiscussed above, because we have decidedtoinstitute interpartes
`
`review based upon ground 1, we must do the same for the remaining
`
`groundsaswell, as institution must includeall challenged claims underall
`
`asserted grounds.
`
`Wenotethat for the remaining claims andgrounds,Petitioner has
`
`mappedthe limitations ofthe challenged claimsto the teachings ofthe prior
`
`art combinations and articulated reasons why oneof ordinary skill in the art
`
`would have combinedthe references, supporting its contentions with
`
`citations to its expert’s declaration. See Pet. 32-83.
`
`Patent Ownerat this stage doesnot raise any additional arguments
`
`specifically directedto the remaining grounds.
`
`I. CONCLUSION
`
`After considering the evidence and arguments presented in the
`
`Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-
`
`reply, we determine that the information presented showsa reasonable
`
`likelihood that Petitioner would prevail in establishing that at le
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