RFCyber Corp.

Patent Trials and Appeals Board

Dec 14, 2021

IPR2021-00979 (P.T.A.B. Dec. 14, 2021)

Trials@uspto.gov Paper 10 571-272-7822 Entered: December 14, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. RFCYBER CORP., Patent Owner. IPR2021-00979 Patent 8,118,218 B2 Before PATRICK R. SCANLON, KEVIN W. CHERRY, and KRISTI L. R. SAWERT, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-00979 Patent 8,118,218 B2 2 I. INTRODUCTION Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. (“Petitioner”) filed a petition to institute inter partes review of claims 1-18 of U.S. Patent No. 8,118,218 B2 (Ex. 1001, “the ’218 patent”). Paper 2 (“Pet.”). RFCyber Corp. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response. Paper 8 (“Reply”). Patent Owner filed a Sur-Reply. Paper 9 (“Sur-Reply”). We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’218 patent. II. BACKGROUND A. Real Parties in Interest Petitioner identifies its real parties in interest as Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd. Pet. 2. Patent Owner identifies RFCyber Corp. as its real party in interest. Paper 4, 1 (Patent Owner’s Mandatory Notices). IPR2021-00979 Patent 8,118,218 B2 3 B. Related Matters The parties identify the following proceeding as a related matter involving the ’218 patent: RFCyber Corp. v. Google LLC, No. 2:20-cv- 00274 (EDTX); RFCyber Corp. v. LG Electronics, Inc., No. 2:20-cv-00336 (EDTX); and RFCyber Corp. v. Samsung Electronics Co., 2:20-cv-00335 (EDTX). Pet. 2-3; Paper 4, 2. The parties also identify the following Board proceedings involving petitioner Google LLC and related patents: IPR2021- 00954 (U.S. Patent No. 8,448,855 B1); IPR2021-00955 (U.S. Patent No. 9,189,787 B1); IPR2021-00956 (U.S. Patent No. 9,240,009 B2); IPR2021-00957 (U.S. Patent No. 8,118,218 B2); PGR2021-00028 (U.S. Patent No. 10,600,046 B2); and PGR2021-00029 (U.S. Patent No. 10,600,046 B2). Pet. 3; Paper 4, 1. The parties also identify the following Board proceedings filed by Petitioner and involving related patents: IPR2021-00978 (U.S. Patent No. 8,448,855 B2); IPR2021-00980 (U.S. Patent No. 9,189,787 B1); and IPR2021-00981 (U.S. Patent No. 9,240,009 B2). Pet. 4; Paper 4, 1-2. C. The ’218 Patent The ’218 patent, titled “Method and Apparatus for Providing Electronic Purse,” issued February 21, 2012, with claims 1-18. Ex. 1001, codes (45), (54), 8:37-10:63. The ’218 patent “is related to a mechanism provided to devices, especially portable devices, functioning as an electronic purse (e-purse) to be able to conduct transactions over an open network with a payment server without compromising security.” Id. at 1:50-54. Figure 2 of the ’218 patent is reproduced below. IPR2021-00979 Patent 8,118,218 B2 4 Figure 2 illustrates shows an exemplary architecture diagram 200 according to one embodiment. Id. at 2:63-64, 4:57-59. The architecture includes cellphone 202 embedded with a smart card module. Id. at 4:59-60. The smart card module is pre-loaded with Mifare emulator 208 for storing values. Id. at 4:62-64. Cellphone 202 includes purse manager midlet 204, which, for m- commerce, can act as an agent to facilitate communications between e-purse applet 206 and one or more payment network and servers 210 to conduct transactions. Id. at 5:5-9. Purse manager midlet 204 is also configured to provide administrative functions such as changing a PIN, viewing a purse balance and a history log. Id. at 5:16-18. A card issuer provides security authentication module (“SAM”) 212 that is used to enable and authenticate transactions between a card and a payment server. Id. at 5:19-22. IPR2021-00979 Patent 8,118,218 B2 5 For e-commerce, web agent 214 is responsible for interacting with RFID reader 216 and network server 210. Id. at 5:30-32. Web agent 214 sends commands or receives responses through RFID reader 216 to or from e-purse applet 206 residing in cellphone 202. Id. at 5:32-35. Web agent 214 also composes network requests (such as HTTP) and receives responses thereto from payment server 210. Id. at 5:35-37. D. Challenged Claims As noted above, Petitioner challenges claims 1-18 of the ’218 patent. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. A method for providing an e-purse, the method comprising: providing a portable device including or communicating with a smart card pre-loaded with an emulator configured to execute a request from an e-purse applet and provide a response the e-purse applet is configured to expect, the portable device including a memory space loaded with a midlet that is configured to facilitate communication between the e-purse applet and a payment server over a wireless network, wherein the e-purse applet is downloaded and installed in the smart card when the smart card is in communication with the payment server, the portable device further includes a contactless interface that facilitates communication between the e-purse applet in the smart card and the payment server over a wired network; personalizing the e-purse applet by reading off data from the smart card to generate in the smart card one or more operation keys that are subsequently used to establish a secured channel between the e-purse applet and an e-purse security authentication module (SAM) external to the smart card, wherein said personalizing the e-purse applet comprises: IPR2021-00979 Patent 8,118,218 B2 6 establishing an initial security channel between the smart card and the e-purse SAM to install and personalize the e-purse applet in the smart card, and creating a security channel on top of the initial security channel to protect subsequent operations of the smart card with the e-purse SAM, wherein any subsequent operation of the emulator is conducted over the security channel via the e-purse applet. Ex. 1001, 8:37-67. E. Asserted Grounds of Unpatentability Petitioner contends that the challenged claims would have been unpatentable on the following grounds:1 Claims Challenged 35 U.S.C. § Reference(s)/Basis 1-6, 10-14, 18 103(a) Dua,2 GlobalPlatform,3 Philips4 7-9, 15-17 103(a) Dua, GlobalPlatform, Philips, Davis5 Pet. 6. Petitioner supports its challenge with the Declaration of Gerald W. Smith (Ex. 1003). III. ANALYSIS A. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, 35 U.S.C. § 103 requires us to resolve the level of 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’218 patent has an effective filing date before the March 16, 2013, effective date of the applicable AIA amendments, we apply the pre-AIA version of 35 U.S.C. § 103. 2 US 2006/0160060 A1, published July 27, 2006 (Ex. 1004). 3 GlobalPlatform Card Specification Version 2.1.1 (March 2003) (Ex. 1006). 4 P5CT072 Secure Dual Interface PKI Smart Card Controller, Koninklijke Philips Electronics N.V., Rev. 1.3 (Oct. 4, 2004) (Ex. 1012). 5 WO 98/49658 A1, published Nov. 5, 1998 (Ex. 1025). IPR2021-00979 Patent 8,118,218 B2 7 ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id. Petitioner contends that a person having ordinary skill in the art “would have been knowledgeable regarding mobile payment methods and systems pertinent to the ’218 patent.” Pet. 11. Petitioner also contends that an ordinarily skilled artisan “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, which would have exposed them to concepts like GlobalPlatform and SmartMX” and that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. at 11-12 (citing Ex. 1003 ¶¶ 27-28). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. IPR2021-00979 Patent 8,118,218 B2 8 B. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under that 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 of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313-14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317-19. Petitioner contends that the claim terms “emulator” and “midlet” are defined in the Specification of the ’218 patent, and those definitions should be controlling in this proceeding. Pet. 12 (citing Ex. 1001, 4:36-39, 5:9-11; Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012)). For all other terms, Petitioner indicates it applies “the plain and ordinary meaning to the claims as no specific constructions are required.” Id. Patent Owner argues that “claim construction is not required to resolve any issues” at this point in the proceeding. Prelim. Resp. 8. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). IPR2021-00979 Patent 8,118,218 B2 9 C. Asserted Obviousness Based on Dua, GlobalPlatform, and Philips Petitioner asserts that claims 1-6, 10-14, and 18 of the ’218 patent are unpatentable under 35 U.S.C. § 103(a) based on Dua, GlobalPlatform, and Philips. Pet. 17-60. Patent Owner provides arguments addressing this asserted ground of unpatentability. Prelim. Resp. 8-19. We first summarize the references and then address the parties’ contentions. 1. Dua Dua is a published U.S. patent application entitled “Method and Apparatus for Managing Credentials through a Wireless Network.” Ex. 1004, code (54). Dua discloses a “system and methodology for conducting financial and other transactions using a wireless device.” Id. at Abstract. Dua’s wireless device includes a “wallet application” that receives, stores, manages, and transmits multiple payment, identification, and other confidential information electronically. Id. ¶ 41. Card issuers like banks or merchants can develop custom “extensions” which are installed in the wallet application and stored in an embedded smart card. Id. ¶¶ 289, 295. One example of an extension is a stored-value card extension for paying subway fare. Id. ¶¶ 290, 293. The stored value card extension “need[s] to be programmed” to support “over-the-air reload,” i.e., wireless funding of the e-purse. Id. ¶ 293. 2. GlobalPlatform GlobalPlatform Card Specification version 2.1.1 describes the “[s]pecifications that shall be implemented on GlobalPlatform smart cards.” Ex. 1006, 16. GlobalPlatform describes its own security architecture and commands for use in installing and personalizing applications on GlobalPlatform cards. Ex. 1006, 65-67, 88-90. GlobalPlatform is a “hardware-neutral,” “vendor-neutral,” and “Application independent” “chip IPR2021-00979 Patent 8,118,218 B2 10 card standard” which “provides a common security and card management architecture.” Ex. 1006, 16; Ex. 1008, 290.6 “GlobalPlatform is intended to run on top of any secure, multi-application card runtime environment” including Java Card. Ex. 1006, 16 (§1), 29 (§3.1). GlobalPlatform specifies the card architecture, security architecture, Life Cycle models for smart cards and their Applications, the Card Manager, Security Domains for key management and establishing Secure Channels. Ex. 1003 ¶¶ 51-63. GlobalPlatform describes sequences of commands for installing, personalizing, and deleting applications on multi-application smart cards. Ex. 1006, 65-67, 88-90. 3. Philips Philips is a short form specification describing a Secure PKI Smart Card Controller for the SmartMX (Memory eXtension) multiple interface option platform. Ex. 1012, 1. The Smart Card Controller can be used as data memory and program memory. Id. According to Philips, “[t]he interface technology is well established in all products of the MIFARE® interface platform.” Id. at 2. “Compatibility with existing MIFARE® reader infrastructure and the optional free of charge emulation modes of MIFARE® 1K and MIFARE® 4K enable fast system integration and backward compatibility of standard MIFARE® and ProX family based cards.” Id. 4. Independent Claim 1 Petitioner argues that Dua discloses a system and method for conducting financial transactions in which a wireless device includes a 6 We follow Petitioner’s convention of citing to the actual page numbers of Exhibit 1008. See Pet. 1 n.2. IPR2021-00979 Patent 8,118,218 B2 11 wallet application “capable of receiving, storing, managing and transmitting multiple payment, identification, and other confidential information electronically.” Pet. 17 (citing Ex. 1004 ¶¶ 26, 41, 309). Petitioner also argues that Dua’s device has an embedded smart card, but Dua does not describe conventional smart card details. Id. at 17-18 (citing Ex. 1004 ¶¶ 7, 215, 295). According to Petitioner, however, Dua does refer to credit card organizations “working jointly over the last few years to develop specifications that define a set of requirements for security and interoperability between chip cards and terminals on a global basis, regardless of the manufacturer, financial institution, or where the card was used,” which a [person having ordinary skill in the art] would recognize as including GlobalPlatform. Id. at 18 (citing Ex. 1004 ¶ 14; Ex. 1006, 16; Ex. 1003, ¶¶ 122-124; Ex. 1008, 290-91; Ex. 1022, 33). In addition, Petitioner asserts that GlobalPlatform discloses a smart card management specification or standard useable with Dua’s wallet application. Id. (citing Ex. 1004 ¶ 525; Ex. 1006, 16, 32; Ex. 1003, ¶¶ 122- 124). Petitioner also asserts that both Dua and GlobalPlatform use the Java Card operating system, and GlobalPlatform facilitates loading and installing issuer specific applications, such as Dua’s extensions. Id. at 18-19 (citing Ex. 1004 ¶¶ 195, 216, 498-500; Ex. 1006, 24, 27, 29; Ex. 1003, ¶¶ 124-127; Ex. 1008, 290; Ex. 1022, 33). Thus, in Petitioner’s view, one of ordinary skill in the art would have been motivated and would have found it obvious to have used GlobalPlatform with Dua’s smart cards, wallet application, and extensions. Id. at 19 (citing Ex. 1003, ¶¶ 122-128). Furthermore, Petitioner argues that Philips Semiconductor SmartMX smart cards were well-known dual interface cards designed to work with Java Card. Id. (citing Exs. 1010-1013; Ex. 1028 ¶¶ 10, 23; Ex. 1030, 43- IPR2021-00979 Patent 8,118,218 B2 12 44; Ex. 1031, 32:23-36; Ex. 1032 ¶ 11). Thus, Petitioner argues that one of ordinary skill in the art would have been motivated and would have found it obvious to have used a Philips smart card in Dua’s wireless device. Id. at 20 (citing Ex. 1003, ¶¶ 132-133). Petitioner next provides analysis purporting to show where each limitation recited in independent claim 1 is disclosed by the combination of Dua, GlobalPlatform, and Philips. Id. at 20-51. Notably, Petitioner maps Dua’s wireless devices to the portable device of claim 1, Dua’s wallet application to the midlet, Dua’s secure value card extension (“SVCE”) to the e-purse applet, Dua’s Wireless Credential Manager (“WCM”) to the e-purse SAM, and Philips’s MIFARE® emulator to the claimed emulator. Id. at 20- 21. Petitioner also contends that Dua’s issuer card management system (“ICMS”) corresponds to the payment server of claim 1. Id. at 25, 28-29 (citing Ex. 1004 ¶¶ 40, 43-44, 57, 107, 253-256, 398, 422, Figs. 1, 3, 8; Ex. 1003 ¶¶ 160-162). Regarding the limitation “wherein the e-purse applet is downloaded and installed in the smart card when the smart card is in communication with the payment server,” Petitioner notes that Dua’s SVCEs (the e-purse applets) are distributed via Dua’s WCM and concedes that “Dua does not specifically disclose that its extensions are installed ‘when the smart card is in communication with the payment server’ [(i.e., Dua’s ICMS)] because Dua’s WCM (e-purse SAM) delivers SIP payload.”7 Id. at 29 (citing Ex. 1004 ¶¶ 215-216, 289, 295; Ex. 1003 ¶ 165). 7 “SIP” refers to “Session Initiation Protocol.” Ex. 1004 ¶ 42. Dua discloses that SIP payload is delivered “between the WCM and the wallet application on the wireless device,” and may include “software extensions the issuer wants to register with the wallet application.” Id. ¶ 215. IPR2021-00979 Patent 8,118,218 B2 13 Petitioner makes two arguments asserting that installing the extensions when the smart card is in communication with the payment server would have been obvious. First, Petitioner contends that it is a mere design choice as to whether to use Dua’s WCM or ICMS to deliver the SCVE, and it would have been obvious to install Dua’s extensions from the ICMS via the WCM. Id. at 29-30 (citing Ex. 1003 ¶ 166). Petitioner further contends that it would have been obvious to one of ordinary skill in the art “to complete the installation of the SVCE while the smart card was in communication with the ICMS so that the issuer could verify that the download and installation was successful to authorize use of the SVCE.” Id. at 30 (citing Ex. 1003 ¶ 167; Ex. 1008, 435, 651). Second, Petitioner contends that this limitation would have been obvious to one of ordinary skill in the art over the combination of Dua and GlobalPlatform. Id. at 30- 32. a) Design Choice In response to Petitioner’s first argument, Patent Owner argues that Dua does not disclose that its smart card is in communication with a payment server while an extension is being downloaded and installed, and one of ordinary skill in the art would not have been motivated to modify Dua to do so. Prelim. Resp. 11-12. We agree with Patent Owner for the following reasons. To support its first argument, Petitioner argues that: (1) Dua’s ICMS already issues requests to the WCM; (2) the WCM receives files from the ICMS and interprets and acts on the information; (3) the WCM can communicate with different issuer systems (e.g., the ICMS) in real-time or batch mode; and (4) Dua discloses making sure the appropriate software is downloaded and on the mobile device. Pet. 30 (citing Ex. 1004 ¶¶ 57, 199, IPR2021-00979 Patent 8,118,218 B2 14 216, 221, 253, 285, 447). Although these disclosures establish that Dua’s WCM and ICMS communicate with one another, neither the Petition nor Mr. Smith explains sufficiently why these disclosures would have caused one of ordinary skill in the art to use Dua’s ICMS to install extensions via the WCM. See Pet. 29-30; Ex. 1003 ¶ 166. At best, the cited disclosures suggest that one of ordinary skill in the art could make the proposed modification, not that they would make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). As for the assertion that one of ordinary skill in the art would have completed installation of the extension while the smart card was in communication with the ICMS so that the issuer could verify installation, both the Petition and Mr. Smith rely solely on Exhibit 10088 to support the assertion. See Pet. 30 (citing Ex. 1003 ¶ 167; Ex. 1008, 435, 651); Ex. 1003 ¶ 167 (citing Ex. 1008, 435, 651). The two cited passages of Exhibit 1008 are: Communications procedures between a terminal and a smart card are always based on the master-slave principle. This means that the terminal, acting as the master, sends a command to the card, which as the slave immediately processes the command, generates a response and returns its response to the terminal, and In principle, the entire administrative process must be performed in an atomic manner by the card management 8 Smart Card Handbook Third Edition, by Wolfgang Rankl and Wolfgang Effing (2003). IPR2021-00979 Patent 8,118,218 B2 15 system, since if it is somehow possible to prevent administration operations from being fully completed by means of some sort of interruption to the process, it must be possible to restore the original state. Ex. 1008, 435, 651. The first passage broadly describes communications between a smart card and a terminal; this passage does not appear to teach or suggest establishing communication with a smart card to verify an installation to the smart card. The second passage discusses preventing an interruption to administrative operations. As an example, Exhibit 1008 describes the operation of “downloading a Java applet into a SIM,”9 but describes avoiding any technical consequences for the SIM functionality in the event of a broken connection, such as a coverage gap in a tunnel. Id. at 651. Thus, this passage does not appear to teach or suggest verifying an installation to a smart card. Furthermore, neither the Petition nor Mr. Smith explains sufficiently how either of these passages would have caused one of ordinary skill in the art to reconfigure Dua to relocate the download functionality from the WCM to the ICMS and also consider establishing communication between Dua’s ICMS and the smart card while Dua’s extension was being downloaded for the purpose of verifying installation. In view of the above discussion, we do not find Petitioner’s first argument persuasive on the record before us. 9 “SIM” refers to a type of smart card referred to as the “subscriber identity module” used in telecommunications. Ex, 1008. 13. IPR2021-00979 Patent 8,118,218 B2 16 b) Obviousness over Dua and GlobalPlatform For its second argument, Petitioner argues that GlobalPlatform discloses using APDU10 commands between a Host and an Issuer Security Domain (“ISD”) to install an application. Pet. 30-31 (citing Ex. 1006, 66, Fig. 6-3). In particular, Petitioner contends that GlobalPlatform’s Host sends an “INSTALL [for load]” command to the ISD. Id. at 31-32. According to Petitioner, the Host is defined as “the back end systems that support the GlobalPlatform system,” and one of ordinary skill in the art “knew that such ‘back end systems’ included off-card entities, such as payment servers like those of Dua’s ICMSs.” Id. at 31 n.15 (citing Ex. 1003 ¶ 182; Ex. 1006, 27, Fig. 2-1). Petitioner then contends that [t]hese exchange[s] of APDU commands, which are required by GlobalPlatform’s Security Domains, show that Dua’s SVCEs (e-purse applets) are “downloaded and installed in the smart card when the smart card is in communication with” Dua’s ICMS (payment server) at least because INSTALL [for install] [sic] APDU commands are communicated between the Host and ISD. Id. at 32 (citing Ex. 1003 ¶¶ 71-78, 170-172; Ex. 1006, 30, 39, 102). In response, Patent Owner argues that Petitioner does not support its assertion that GlobalPlatform’s Host equates to Dua’s ICMS. Prelim. Resp. 13 (citing Pet. 31 n.15). We agree again with Patent Owner. As noted above, Petitioner relies on paragraph 182 of Mr. Smith’s declaration and GlobalPlatform’s Figure 2-1 to support its assertion. The cited testimony, however, states that GlobalPlatform uses the term “Host” “for any entity not on the card, such as 10 In GlobalPlatform, “APDU” refers to Application Protocol Data Unit and is defined as a “[s]tandard communication messaging protocol between a card accepting device and a smart card.” Ex. 1006, 18. IPR2021-00979 Patent 8,118,218 B2 17 a POS terminal, server, [or] other external off-card management system.” Ex. 1003 ¶ 182. Although this is a broad statement that does not necessarily preclude the Host from being a payment server, it fails to state explicitly that the Host is a payment server, such as Dua’s ICMS, or suggest relocating the download functionality of Dua’s WCM to Dua’s ICMS. Id. As such, this testimony fails to provide evidentiary support for Petitioner’s position. Mr. Smith also cites GlobalPlatform’s Figure 2-1 as illustrating various off-card entities. Id. Figure 2-1, reproduced below, shows the GlobalPlatform architecture. Figure 2-1 shows the GlobalPlatform architecture, which “is designed to provide Card Issuers with the system management architecture for managing . . . smart cards.” Ex. 1006, 27. Figure 2-1 depicts the GlobalPlatform IPR2021-00979 Patent 8,118,218 B2 18 architecture as interacting with various entities, such as “Key Management Systems,” “Card Management Systems,” “Personalization Systems,” “Applications Servers,” and “Terminal Management Systems,” but does not specifically identify a payment server. Neither the Petition nor Mr. Smith explains sufficiently why Dua’s ICMS fits into any of the particular off-card entities shown in Figure 2-1 or why a person of ordinary skill would be motivated, based on this disclosure, to relocate the particular download functionality (the download of Dua’s SCVE’s) from Dua’s WCM to Dua’s ICMS. At best, this evidence shows that the functionality could be relocated to the ICMS, but provides an insufficient explanation why a person of ordinary skill would have relocated it. See Belden Inc., 805 F.3d at 1073. Accordingly, we are not persuaded on this record that one of ordinary skill in the art would have known that GlobalPlatform’s Host includes a payment server. Accordingly, we do not find Petitioner’s second argument persuasive on the record before us. c) Summary For the above reasons, we are not persuaded that the combination of Dua, GlobalPlatform, and Philips discloses “wherein the e-purse applet is downloaded and installed in the smart card when the smart card is in communication with the payment server” recited in claim 1. Accordingly, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claim 1 is unpatentable over the combination of Dua, GlobalPlatform, and Philips. 5. Independent Claim 11 Independent claim 11 recites “[a] system for providing an e-purse” that recites limitation substantially similar to the limitations of claim 1, IPR2021-00979 Patent 8,118,218 B2 19 including the limitation “wherein the e-purse applet is downloaded from the payment server when the smart card is in communication with the payment server.” Ex. 1001, 9:51-10:19. Petitioner largely relies on the same analysis made in connection with claim 1 for showing where each limitation recited in independent claim 11 would have been obvious in view of the combination of Dua, GlobalPlatform, and Philips. Pet. 51-54. Thus, Petitioner’s challenge to claim 11 is based on the same deficient assertions as to the combination of Dua, GlobalPlatform, and Philips as discussed above in the analysis of the challenge to independent claim 1. For these same reasons, we find that Petitioner has not met its burden to show a reasonable likelihood that claim 11 is unpatentable over the combination of Dua, GlobalPlatform, and Philips. 6. Claims 2-10 and 12-18 Claims 2-10 depend from claim 1 and, thus, contain all the limitations of claim 1, and claims 12-18 depend from claim 11 and, thus, contain all the limitations of claim 11. Petitioner’s challenges to dependent claims 2-10 and 12-18 do not overcome the deficiencies discussed above with respect to the challenge to independent claims 1 and 11. See Pet. 55-60. Accordingly, for the same reasons discussed above in connection with claims 1 and 11, we find Petitioner has not met its burden to show a reasonable likelihood that claims 2-10 and 12-18 are unpatentable over the combination of Dua, GlobalPlatform, and Philips. D. Asserted Obviousness Based on Dua, GlobalPlatform, Philips, and Davis Petitioner challenges claims 7-9 and 15-17 as obvious under 35 U.S.C. § 103(a) over Dua, GlobalPlatform, Philips, and Davis. Pet. 61- 74. Each of these claims depends from either independent claim 1 or IPR2021-00979 Patent 8,118,218 B2 20 independent claim 11 and, thus, contains all the limitations thereof. Thus, Petitioner relies in part on the same assertions presented in the challenge of independent claims 1 and 11 based on Dua, GlobalPlatform, and Philips, discussed above, in support of its contentions that claims 7-9 and 15-17 would have been obvious over Dua, GlobalPlatform, Philips, and Davis. Id. at 61. Accordingly, each of these additional grounds suffers from the same deficiencies noted above (see supra § III.C.4) with respect to the proposed combination of Dua, GlobalPlatform, and Philips. Therefore, for the same reasons discussed above, we determine that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing that claims 7-9 and 15-17 are unpatentable. E. Discretion Under 35 U.S.C. §§ 314(a) Patent Owner argues that we should exercise our discretion to deny institution under § 314(a). Prelim. Resp. 19-27; Sur-Reply. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 8-11; Reply. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim (see supra §§ III.C., III.D.), we need not reach Patent Owner’s arguments regarding discretionary denial under § 314(a). IV. CONCLUSION For the foregoing reasons, we do not institute inter partes review. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’218 patent; and FURTHER ORDERED that no inter partes review is instituted. IPR2021-00979 Patent 8,118,218 B2 21 FOR PETITIONER: Heath J. Briggs Andrew R. Sommer GREENBERG TRAURIG, LLP briggsh@gtlaw.com sommera@gtlaw.com FOR PATENT OWNER: Vincent J. Rubino Peter Lambrianakos Enrique W. Iturralde Richard Cowell FABRICANT LLP vrubino@fabricantllp.com plambrianakos@fabricantllp.com eiturralde@fabricantllp.com rcowell@fabricantllp.com