Opinion

RFCyber Corp. v. Google LLC

Court: District Court, E.D. Texas
Filed: Nov 17, 2021
Cited by: 0 cases
Authority: More cited than 29.8%

“[D]istrict courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.”

How later courts described this case

“[D]istrict courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.”
noting that “a patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”
“that [a] phrase in the preamble . . . provides a necessary structure for [the] claim . . . does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.”
finding preambles limiting because “‘containers’ as recited in the claim body depend on ‘a plurality of containers’ in the preamble as an antecedent basis”

Written by the judges who cited it.

The opinion

THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

RFCYBER CORP., §

v. § CASE NO. 2:20-CV-274-JRG

§ [LEAD CASE]

GOOGLE LLC, GOOGLE PAYMENT §

CORP. §

___________________________________ §

RFCYBER CORP., §

v. § CASE NO. 2:20-CV-335-JRG

§ [MEMBER CASE]

SAMSUNG ELECTRONICS CO., LTD., §

SAMSUNG ELECTRONICS AMERICA, §

INC. §

CLAIM CONSTRUCTION

MEMORANDUM AND ORDER

Before the Court is the Opening Claim Construction Brief (Dkt. No. 116) filed by Plaintiff

RFCyber Corp. (“Plaintiff” or “RFCyber” or “RFC”). Also before the Court is the Responsive

Claim Construction Brief (Dkt. No. 122) filed by Defendants Samsung Electronics Co., Ltd. and

Samsung Electronics America, Inc. (“Defendants” or “Samsung”)1 as well as Plaintiff’s reply

(Dkt. No. 124).

The Court held a claim construction hearing on October 27, 2021.

1 Defendants Google LLC and Google Payment Corp. (collectively, “Google”) have been

dismissed. (See Dkt. Nos. 72–73, 127, 129.)

Table of Contents

I. BACKGROUND ....................................................................................................................... 2

II. LEGAL PRINCIPLES ........................................................................................................... 4

III. AGREED TERMS................................................................................................................. 8

IV. DISPUTED TERMS .............................................................................................................. 8

1. “security channel” .................................................................................................................. 9

2. “secured channel” ................................................................................................................ 11

3. “security channel on top of the initial security channel” ..................................................... 12

4. “applet” ................................................................................................................................ 13

5. “e-purse” and “electronic purse” ......................................................................................... 13

6. “install” and “installed” ....................................................................................................... 19

7. “payment server” ................................................................................................................. 23

8. “personalize,” “personalized,” “personalizing,” and “personalization” .............................. 26

9. “smart card pre-loaded with [an/the] emulator” .................................................................. 29

10. “smart card,” “card module,” and “smart card module” .................................................... 31

11. “security authentication module” and “SAM” ................................................................... 34

12. “device information of [a/the] secure element” ................................................................. 37

13. “key set installed on the secure element” .......................................................................... 40

14. “secure element” ................................................................................................................ 40

15. “method for funding an e-purse” ....................................................................................... 41

16. “contactless interface that facilitates communication between the e-purse applet in the

smart card and the payment server over a wired network” and “e-purse SAM originally

used to issue the e-purse / existing security authentication module (SAM) originally used

to issue the e-purse” ............................................................................................................ 45

V. CONCLUSION...................................................................................................................... 46

I. BACKGROUND

Plaintiff alleges infringement of United States Patent Nos. 8,118,218 (“the ’218 Patent”),

8,448,855 (“the ’855 Patent”), 9,189,787 (“the ’787 Patent”), and 9,240,009 (“the ’009 Patent”)

(collectively, “the patents-in-suit” or “the asserted patents”). (Dkt. No. 116, Exs. A–D). Plaintiff

submits that the patents-in-suit “are directed to various aspects of a mobile payment system.” (Dkt.

No. 116 at 2.)

The ’218 Patent, titled “Method and Apparatus for Providing Electronic Purse,” issued on

February 21, 2012, and bears a filing date of September 24, 2006. The Abstract of the ’218 Patent

states:

Techniques for portable devices functioning as an electronic purse (e-purse) are

disclosed. According to one aspect of the invention, a mechanism is provided to

enable a portable device to conduct transactions over an open network with a

payment server without compromising security. In one embodiment, a device is

loaded with an e-purse manager. The e-purse manager is configured to manage

various transactions and functions as a mechanism to access an emulator therein.

The transactions may be conducted over a wired network or a wireless network. A

three-tier security model is contemplated to support the security of the transactions

from the e-purse. The three-tier security model includes a physical security, an e-

purse security and a card manager security, concentrically encapsulating one with

another. Security keys (either symmetric or asymmetric) are personalized within

the three-tier security model.

The ’855 Patent resulted from continuations of the ’218 Patent. The ’787 Patent, in turn,

resulted from a continuation of the ’855 Patent. The ’009 Patent resulted from a continuation-in-

part of the ’218 Patent.

Samsung submits: “RFCyber has accused Samsung of infringing claims 1, 3, 7–9, 11, 14–

15, and 17 of the ’218 patent, claims 1–6, 10, and 12 of the ’855 patent, claims 1–3, 6, 8, 11, 13,

16, and 18 of the ’787 patent, and claims 1, 6–7, 10, 14, and 16 of the ’009 patent (collectively,

the ‘Asserted Claims’).” (Dkt. No. 122 at 2 n.3.)

Plaintiff previously also asserted United States Patent No. 10,600,046 (“the ’046 Patent”).

(Dkt. No. 1, Ex. E). Plaintiff did not elect any claims from the ’046 Patent in its election of asserted

claims filed on September 15, 2021 (Dkt. 110, Ex. A), so Plaintiff no longer asserts the ’046 Patent

in the present case.

II. LEGAL PRINCIPLES

It is understood that “[a] claim in a patent provides the metes and bounds of the right which

the patent confers on the patentee to exclude others from making, using or selling the protected

invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).

Claim construction is clearly an issue of law for the court to decide. Markman v. Westview

Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).

To ascertain the meaning of claims, courts look to three primary sources: the claims, the

specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must

contain a written description of the invention that enables one of ordinary skill in the art to make

and use the invention. Id. A patent’s claims must be read in view of the specification, of which

they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,

which explains the invention and may define terms used in the claims. Id. “One purpose for

examining the specification is to determine if the patentee has limited the scope of the claims.”

Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).

Nonetheless, it is the function of the claims, not the specification, to set forth the limits of

the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita

Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own

lexicographer, but any special definition given to a word must be clearly set forth in the

specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).

Although the specification may indicate that certain embodiments are preferred, particular

embodiments appearing in the specification will not be read into the claims when the claim

language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,

34 F.3d 1048, 1054 (Fed. Cir. 1994).

This Court’s claim construction analysis is substantially guided by the Federal Circuit’s

decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,

the court set forth several guideposts that courts should follow when construing claims. In

particular, the court reiterated that “the claims of a patent define the invention to which the patentee

is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water

Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim

are generally given their ordinary and customary meaning. Id. The ordinary and customary

meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in

the art in question at the time of the invention, i.e., as of the effective filing date of the patent

application.” Id. at 1313. This principle of patent law flows naturally from the recognition that

inventors are usually persons who are skilled in the field of the invention and that patents are

addressed to, and intended to be read by, others skilled in the particular art. Id.

Despite the importance of claim terms, Phillips made clear that “the person of ordinary

skill in the art is deemed to read the claim term not only in the context of the particular claim in

which the disputed term appears, but in the context of the entire patent, including the

specification.” Id. Although the claims themselves may provide guidance as to the meaning of

particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315

(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being

the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long

ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions

of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the

language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of

the specification, the Phillips court quoted with approval its earlier observations from Renishaw

PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):

Ultimately, the interpretation to be given a term can only be determined and

confirmed with a full understanding of what the inventors actually invented and

intended to envelop with the claim. The construction that stays true to the claim

language and most naturally aligns with the patent’s description of the invention

will be, in the end, the correct construction.

Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification

plays in the claim construction process.

The prosecution history also continues to play an important role in claim interpretation.

Like the specification, the prosecution history helps to demonstrate how the inventor and the

United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because

the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”

it may lack the clarity of the specification and thus be less useful in claim construction proceedings.

Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination

of how the inventor understood the invention and whether the inventor limited the invention during

prosecution by narrowing the scope of the claims. Id.; see also Microsoft Corp. v. Multi-Tech Sys.,

Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during

prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).

Phillips rejected any claim construction approach that sacrificed the intrinsic record in

favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court

condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193

(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through

dictionaries or otherwise) before resorting to the specification for certain limited purposes.

Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the

expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of

words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.

Phillips emphasized that the patent system is based on the proposition that the claims cover only

the invented subject matter. Id.

“In some cases, however, the district court will need to look beyond the patent’s intrinsic

evidence and to consult extrinsic evidence in order to understand, for example, the background

science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm.

USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those

subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that

extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we

discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”

Id. (citing 517 U.S. 370).

Phillips does not preclude all uses of dictionaries in claim construction proceedings.

Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the

court emphasized that claim construction issues are not resolved by any magic formula. The court

did not impose any particular sequence of steps for a court to follow when it considers disputed

claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate

weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind

the general rule that the claims measure the scope of the patent grant. Id.

The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a

patent’s claims, viewed in light of the specification and prosecution history, inform those skilled

in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig

Instruments, Inc., 572 U.S. 898, 910, 134 S. Ct. 2120, 2129 (2014). “A determination of claim

indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the

construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.

Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by

Nautilus, 572 U.S. 898. “Indefiniteness must be proven by clear and convincing evidence.” Sonix

Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).

III. AGREED TERMS

In their August 19, 2021 P.R. 4-3 Joint Claim Construction and Prehearing Statement (Dkt.

No. 101) and their October 14, 2021 P.R. 4-5(d) Joint Claim Construction Chart (Dkt. No. 73, Ex.

A at 3–4), the parties submitted the following agreements:

Term Agreed Construction

“emulator” “hardware device or program that pretends to be another

particular device or program that other components

’218 Patent, All Claims expect to interact with”

’855 Patent, All Claims

’787 Patent, All Claims

“midlet” “software component suitable for being executed on a

portable device”

’218 Patent, All Claims

’855 Patent, All Claims

’787 Patent, All Claims

“payment gateway” “server or collection of servers for settling a payment”

’046 Patent, All Claims

IV. DISPUTED TERMS

The parties organize the disputed terms slightly differently in their briefing. Rather than

attempt to divine an ideal arrangement of the disputed terms, the Court adopts the ordering set

forth in Plaintiff’s opening brief.

Also, the parties have set forth their positions on the qualifications of a person of ordinary

skill in the art, but neither side argues that any differences between the parties in this regard has

any significance when addressing the claim construction disputes. (See Dkt. No. 116 at 1–2; see

also Dkt. No. 122 at 6.)

1. “security channel”

“security channel”

(’218 Patent, All Claims; ’855 Patent, All Claims;

’787 Patent, All Claims; ’009 Patent, All Claims)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “protected channel established by keys”

(Dkt. No. 126, Ex. B at 2.)

(a) The Parties’ Positions

Plaintiff argues that “‘security’ is a readily understandable word,” and “Defendants identify

no disclaimer or definition that limits a security channel to one ‘established by keys.’” (Dkt. No.

116 at 4.) As to the prosecution history cited by Defendants, Plaintiff argues that “the question of

whether a channel established by keys could meet the limitation is distinct from whether only

channels established by keys can meet the limitation.” (Id.)

Defendants respond that “the Asserted Patents use the term ‘secured channel’

interchangeably with the term ‘security channel.’” (Dkt. No. 122 at 34.) Defendants also argue

that “a POSITA would understand that the secured channels and security channels described in the

patents are established using ‘keys,’” and “[t]he Asserted Patents do not disclose any secured

channel or security channel that is not established by keys.” (Id. at 35, 36.) Further, Defendants

argue that “there can be no genuine dispute that a security channel and secured channel must be

‘protected.’” (Id. at 36.) Finally, Defendants argue that “RFCyber fails to address the extrinsic

evidence that supports Defendants’ construction.” (Id. at 37.)

Plaintiff replies that “nothing in the specification requires the use of keys to create a

security channel,” which are only “one way of creating a security channel.” (Dkt. No. 124 at 2.)

At the October 27, 2021 hearing, Defendants argued that although the specification

contains no explicit disclaimer, the specification does not disclose any other way of providing a

“security channel” or “secure channel.” Plaintiff argued that keys do not perform the establishing.

At most, Plaintiff argued, keys are used during the process of establishing.

(b) Analysis

Claim 1 of the ’218 Patent, for example, recites in part (emphasis added):

1. A method for providing an e-purse, the method comprising:

. . .

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:

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.

As a threshold matter, Defendants’ proposal of requiring a “protected” channel is consistent

with disclosures in the specification regarding using “security” mechanisms to “protect data.” See,

e.g., ’218 Patent at 3:51–52. Plaintiff does not demonstrate that “security” has any other meaning

in this context.

As to Defendants’ proposal that the channel must be “established by keys,” Defendants

cite disclosure that:

Security keys (either symmetric or asymmetric) are personalized within the three-

tier security model so as to personalize an e-purse and perform secured transaction

with a payment server. . . . During a transaction, the security keys are used to

establish a secured channel between an embedded e-purse and an SAM . . . or

backend server.

’218 Patent at 1:65–2:8; ’009 Patent at 2:53–63 (similar);’218 Patent at 3:66–4:2 (similar).

Defendants also cite disclosure regarding “updat[ing] security keys to establish appropriate

channels for interactions between the server and the applets . . . .” ’218 Patent at 4:41–46; ’009

Patent at 10:36–40.

These disclosures regarding security keys, however, refer to specific details of particular

disclosed embodiments that should not be imported into the claims. See Phillips, 415 F.3d at 1323.

Defendants identify no definition or disclaimer in which the patentee limited the term “security

channel” so as to require being “established by keys.” Indeed, Claim 1 of the ’009 Patent, for

example, expressly recites “establishing a secured channel between the secure element and the

server using a key set installed on the secure element,” which is an additional reason to reject

Defendants’ proposal to introduce an “established by keys” requirement into all of the claims.

The Court therefore construes “security channel” to mean “protected channel.”

2. “secured channel”

“secured channel”

(’218 Patent, All Claims; ’009 Patent, All Claims)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “protected channel established by keys”

(Dkt. No. 126, Ex. B at 2.)

Prior to the start of the October 27, 2021 hearing, the parties notified the Court that the

parties now agree that the term “secured channel” should be given the same construction as the

above-discussed term “security channel.”

The Court therefore construes “secured channel” to mean “protected channel.”

3. “security channel on top of the initial security channel”

“security channel on top of the initial security channel”

(’218 Patent, All Claims;

’855 Patent, All Claims;

’787 Patent, Claims 6–7, 16–17)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning Indefinite

(Dkt. No. 116 at 7.)

Defendants asserted in their portion of the parties’ P.R. 4-3 Joint Claim Construction and

Prehearing Statement that this term is indefinite. (Dkt. No. 101, Ex. B at B-7.) Defendants’

response brief does not address this term, and this term does not appear in the parties’ P.R. 4-5(d)

Joint Claim Construction Chart. (See Dkt. No. 122; see also Dkt. No. 126, Ex. B.) At the October

27, 2021 hearing, the remaining Defendants confirmed that they are not asserting indefiniteness

and therefore this term is no longer in dispute.

The Court therefore construes “security channel on top of the initial security channel”

to have its plain and ordinary meaning.

4. “applet”

“applet”

(’218 Patent, Claims 1, 11, 14, 15;

’855 Patent, Claims 1, 3;

’787 Patent, Claims 1, 2, 6, 11)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “application configured to perform a specific

task”

Alternatively:

“software component configured to

perform one or more specific tasks”

(Dkt. No. 126, Ex. B at 2.)

Prior to the start of the October 27, 2021 hearing, the parties notified the Court that the

parties now agree that this term should be given its plain and ordinary meaning.

The Court therefore construes “applet” to have its plain and ordinary meaning.

5. “e-purse” and “electronic purse”

“e-purse” / “electronic purse”

(’218 Patent, Claims 1, 11, 14, 15;

’855 Patent, Claims 1, 3, 5;

’787 Patent, Claims 1, 2, 6, 11)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “application that stores electronic money

locally (i.e., in the user’s portable device)”

Alternatively:

“system that maintains electronic financial

information locally”

(Dkt. No. 126, Ex. B at 2.)

(a) The Parties’ Positions

Plaintiff argues that “[t]he term is readily understandable and can be applied without

construction,” and “Defendants’ construction finds no support in the intrinsic record.” (Dkt.

No. 116 at 11.) As to the prosecution history cited by Defendants, Plaintiff argues that “[t]he most

relevant Office Action actually demonstrates that Defendants’ construction is unwarranted and

unsupported.” (Id.) Plaintiff also argues, for example, that “[w]hile the specifications describe

functions related to stored values on a card, those discussions do not amount to any disclaimer.”

(Id. at 13.)

Defendants respond that “an ‘e-purse’ is a well-known term of art,” and “[d]uring

prosecution of the ’218 patent, RFCyber distinguished the prior art ‘Atsmon’ reference, which

discloses an ‘e-wallet,’ by arguing that, as ‘is commonly known in the art,’ an ‘e-wallet is not the

same as [an] e-purse’ and, unlike an e-wallet which stores credit cards or e-cards, an e-purse stores

‘electronic money in a local portable device’ . . . .” (Dkt. No. 122 at 7.) Defendants also cite the

specification as well as the prosecution of a related patent. (See id. at 8–12.)

Plaintiff replies that “an e-purse, just like a physical purse, is not limited to only storing

money (or being a stored-value card) and can store credit card numbers and other financial-related

materials.” (Dkt. No. 124 at 4.) Plaintiff argues that “[w]hile the asserted patents disclose

embodiments that include locally stored money, Samsung identifies no disclaimer or lexicography

that would justify limiting the claims.” (Id. at 6.) Plaintiff also argues that “[n]othing in the

prosecution history or in the specification amounts to a clear and unambiguous disavowal of claim

scopes [sic] that would limit the claims to a local-only implementation, or to an ‘application that

stores electronic money locally.’” (Id. at 4.) As an alternative, Plaintiff proposes: “a system that

maintains electronic financial information locally.” (Id. at 7.)

At the October 27, 2021 hearing, Plaintiff argued that in the prosecution history relied upon

by Defendants, the patentee distinguished accessing information remotely (as opposed to storing

information locally) and did not limit the term “e-purse” in the manner proposed by Defendants.

Moreover, Plaintiff argued that “electronic money” is not the same as cash because electronic

money may still need to be settled after use.

(b) Analysis

Defendants cite prosecution history of the ’218 Patent in which the patentee stated:

Atsmon teaches an interactive authentication system to allow a consumer to interact

with a base station to receive coupons, special sales and other information with an

electronic card. After a careful review, the Applicant concludes that Atsmon does

not teach how to use a security channel to install and personalize an e-purse applet

in a smart card. Atsmon only says that special client remote access software is

downloaded, see Col. 32, lines-56-63, where that special client remote access

software is for access to the website (e.g., a base station), no encryption, or any

mechanism for a security channel are mentioned or described.

. . . [T]he Applicant submits [the] Shmueli [reference] could not be modified with

[the] Atsmon [reference] or such modification would render Shmueli inoperable.

The Applicant wishes to further point out that Atsmon describes entirely about

e-wallet. It is commonly known in the art that e-wallet is not the same as e-purse.

An e-wallet system has a user credit-card and personal info at the backend, an

e-card in the e-wallet system is used as an identity card for logging in into the

system. When shopping, the e-card can be used to identify the user to retrieve the

info and submit the info to the merchant site. Evidently, an e-purse in the instant

application describes about electronic money in a local portable device.

Accordingly, the combination of Shmueli and Atsmon neither teaches nor suggests

Claim 1, and Claim shall be allowable over Shmueli and Atsmon.

(Dkt. No. 116, Ex. E, Dec. 31, 2010 Response to Final OA, at 9–10 (p. 132–33 of 259 of Ex. E)

(emphasis added).)

The patentee thus distinguished Shmueli and Atsmon based on the claimed invention using

information stored locally rather than retrieving information from somewhere else. This

prosecution history therefore does not amount to a definitive statement by the patentee that the

term “e-purse” requires money stored locally. See Omega Eng’g Inc. v. Raytek Corp., 334 F.3d

1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation, prosecution disclaimer

promotes the public notice function of the intrinsic evidence and protects the public’s reliance on

definitive statements made during prosecution.”) (emphasis added). To whatever extent this

prosecution history can be read according to Defendants’ interpretation, this would be only one of

“multiple reasonable interpretations,” and as a result there is no disclaimer. Golight, Inc. v. Wal-

Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004).

Defendants’ reliance on the prosecution history of the ’046 Patent is unavailing as well, in

particular because the no-longer-asserted ’046 Patent (attached to Defendants’ responsive claim

construction brief as Exhibit 1) includes different claim language that is not here at issue, such as

the recital of “a balance in the e-purse.” (See Dkt. No. 122, Ex. 2, Nov. 28, 2019 Response to First

OA, at 8–10.)

Defendants also rely on disclosures regarding “funding” an e-purse. See, e.g., ’218 Patent

at 7:19–55 (“The user desires to fund the e-purse from an account associated with a bank.”).

Further, Defendants cite disclosure of a “purse balance” or an “e-purse balance.” ’218 Patent at

5:9–18; see ’009 Patent at 15:6 (continuation-in-part of the patents at issue for this disputed term).

Defendants argue that these disclosures only make sense if an e-purse must hold stored value, not

merely other financial information such as a credit card number, because typically a credit card is

not “funded.” The disclosures relied upon by Defendants, however, do not “clearly set forth a

definition” for “e-purse” but rather describe the e-purse used in particular embodiments. See

CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (emphasis added).

Defendants also cite extrinsic evidence regarding the term “e-purse.” (See Dkt. No. 122,

Ex. 11, GSA Government Smart Card Handbook 63, § 2.4.6 (SAMSUNG00104563) (defining

“Electronic Purse” as: “A chip-based application where cash or value is recorded on a chip and is

available for use in vending machines and at participating merchants, typically for small

transactions. Through this application, merchants can replace labor-intensive cash transactions

(counting, sorting, bundling, and transporting) with electronic transactions vending service

providers can eliminate loading and emptying coins from machines, as well as eliminate the

incentive for vandalism. Customers are able to reduce the need to carry and make payments with

cash, particularly when exact change is required.”); see also id., Ex. 7, Common Electronic Purse

Specifications, Technical Specification, Version 2.3, at 268 (Mar. 2001) (defining “Electronic

Purse” as: “An electronic purse uses an integrated circuit for the storage and processing of

monetary value that is used for purchase of goods or services. It is generally positioned to displace

small value coins and cash purchase amounts. The card may be disposable or reloadable.”); id.,

Ex. 16, Smart Card Handbook 924 (3d ed. 2002) (defining “Electronic purse (e-purse)” as: “A

card with a chip that must be loaded with an amount of money before it can be used for making

payments. This type of payment is often called ‘pay before’. Some typical examples are the

German Geldkarte, the Austrian Quick purse, Visa Cash, Proton and Mondex. Electronic purses

may also support . . . purse-to-purse transactions.”) (emphasis added).) Defendants also cite the

opinions of their experts. (See Dkt. No. 116, Ex. J, Aug. 19, 2021 Vanderhoof Decl., at ¶ 102; see

also id., Ex. K, Aug. 19, 2021 Smith Decl., at ¶¶ 71–72.)

Plaintiff, however, submits a technical dictionary that defines “e-purse” as “same as digital

wallet” and that defines “digital wallet” as: “a piece of personalised software on the hard drive of

a user’s computer that contains, in coded form, such items as credit card information, digital cash,

a digital identity certificate, and standardized shipping information, and can be used when paying

for a transaction electronically.” (Dkt. No. 124, Ex. N, Dictionary of Banking and Finance 101,

122 (3d ed.).) At the October 27, 2021 hearing, Defendants argued that this dictionary should not

be relied upon because although the Third Edition was “published 2003,” this dictionary was then

“Reprinted 2005, 2009” (id. at p. 3 of 5 of Ex. N.), and 2009 was three years after the 2006 filing

date of the application to which the patents-in-suit claim priority. Defendants asserted that a

reprinting could include substantive revisions, although Defendants did not present any evidence

of a change in this dictionary’s definition of “digital wallet.” Based on the record before the Court,

and even assuming (without deciding) that a three year difference is not contemporaneous for

purposes of this claim construction analysis, the technical dictionary submitted by Plaintiff at a

minimum raises doubts about Defendants’ assertion that Defendants’ proposed construction

represents a well-established meaning of “e-purse” in the relevant art.

In light of this evidence, as well as the above-discussed absence of any definitive statement

in the prosecution history that would support Defendants’ proposed limitation, Defendants’

proposal of “stores electronic money locally” would improperly limit the disputed term to a

specific feature of particular disclosed embodiments. See Phillips, 415 F.3d at 1323.

As to Defendants’ proposal of “(i.e., in the user’s portable device),” this example of a

“portable” device is not necessary for understanding the concept of an “e-purse.” Nonetheless,

referring to a “device” will provide helpful context for how the word “locally” is being used.

Further, Plaintiff argues that “an ‘e-purse’ is a system, not a single application.” (Dkt. No. 124 at

6.) However, even the disclosure cited by Plaintiff refers to “an e-purse embedded in a device

(e.g., a cellphone)” (’218 Patent at 5:60–61 (emphasis added)), which weighs against Plaintiff’s

proposal of referring to an amorphous “system.” Also, as cited by Plaintiff, the Summary section

of the specification states: “Broadly speaking, the invention 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 (emphasis added). The Court therefore rejects Plaintiff’s proposal of “system.”

As to Defendants’ proposal of “application,” the Background section of the ’009 Patent

states that “the present invention is related to . . . provisioning an application such as an electronic

purse that can be advantageously used in portable devices” (’009 Patent at 1:19–24), but the

Summary section then states that “[a]ccording to one embodiment, a device is installed with an e-

purse manager (i.e., an application),” wherein the disclosure of an “e-purse manager” application

implies that the term “e-purse” could be something less than an entire “application.” Id. at 2:41–

52. The construction should therefore not be limited to an “application” but should instead refer

more generically to “software.”

The Court therefore construes “e-purse” and “electronic purse” to mean “software that

stores electronic financial information in a local device.”

6. “install” and “installed”

“install” / “installed”

(’218 Patent, Claims 1, 11;

’855 Patent, Claim 1;

’787 Patent, Claims 2, 6;

’009 Patent, Claim 14)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “[store / stored] in non-volatile memory”

Alternatively:

“to set in place and prepare for operation”

(Dkt. No. 126, Ex. B at 2–3.)

(a) The Parties’ Positions

Plaintiff argues that “Defendants’ construction adds needless verbiage and is redundant

with other portions of the claim language.” (Dkt. No. 116 at 14.) Plaintiff also argues:

“Defendants do not provide any reason that an ‘installed’ application must be stored in non-volatile

memory; an application can be installed in volatile memory so long as it is ready for use. If the

memory is blanked after a power loss, the application would just need to be reinstalled.” (Id.)

Defendants respond that “RFCyber’s position is nonsensical and not supported by any

intrinsic or extrinsic evidence.” (Dkt. No. 122 at 28.) Defendants argue, for example, that “[n]ot

only does the fact that the claim requires the e-purse applet to be ‘downloaded and installed’ refute

RFCyber’s argument, it confirms that there is a difference between ‘downloading’ something onto

a smart card – which can occur in volatile memory (e.g., RAM) – and ‘installing’ something onto

a smart card – which must occur in non-volatile memory so that it remains on the smart card when

the device loses power.” (Id. at 28–29.)

Plaintiff replies that “nothing in the intrinsic or extrinsic evidence requires non-volatile

memory,” and “if the Court finds [Defendants’] added limitation inappropriate, it need not construe

the term.” (Dkt. No. 124 at 7.) Alternatively, Plaintiff proposes that “if the Court feels that

construction is necessary, it should construe install as ‘to set in place and prepare for operation.’”

(Id. at 8.)

At the October 27, 2021 hearing, Defendants urged that it makes no sense for an e-purse

to disappear when a device is turned off because the user would lose all stored value and would

need to install, configure, and fund the e-purse again.

(b) Analysis

Defendants cite the recital in Claim 1 of the ’218 Patent that “the e-purse applet is

downloaded and installed in the smart card.” Defendants argue that because downloading can be

into volatile memory, installing must occur in non-volatile memory. But Defendants do not

persuasively support the premise that downloading occurs into volatile memory, let alone that

installing must occur in a different type of memory than downloading. Instead, “downloaded”

could refer to using either volatile or non-volatile memory, and “installed” can refer to operations

that are carried out to make something ready for use.

This is also consistent with the understanding of the examiner during prosecution of the

’218 Patent, wherein the examiner stated: “The conventional definition of installation is to set-up,

establish, or place something that does not already exist in the ultimate location.” (Dkt. No. 116,

Ex. E, Oct. 1, 2010 Office Action, at 3 (p. 106 of 259 of Ex. E).) The examiner’s understanding

of this term can be given some weight. See Salazar v. Procter & Gamble Co., 414 F.3d 1342,

1347 (Fed. Cir. 2005) (“Statements about a claim term made by an Examiner during prosecution

of an application may be evidence of how one of skill in the art understood the term at the time the

application was filed.”).

Thus, Defendants do not demonstrate that the intrinsic evidence compels interpreting the

term “install” as necessarily using non-volatile memory.

Extrinsic evidence cited by Defendants, which for example defines “install” as to place in

a “permanent location,” does not compel otherwise. (See Dkt. No. 122-16, Oxford Dictionary of

Computing (5th ed. 2004).) As with their above-discussed arguments based on intrinsic evidence,

Defendants make inferences that lack persuasive support as to requiring non-volatile memory. The

technical documents cited by Defendants are also unpersuasive because those documents relate to

particular implementations rather than the invention as claimed. See Phillips, 415 F.3d at 1318,

1323; see also Dkt. No. 122, Ex. 10, GlobalPlatform Card Specification, Version 2.1.1, at p. 31, §

3.5 (Mar. 2003) (“The installation of an Application creates an instance from an Executable

Module plus possibly Application data within Mutable Persistent Memory.”).

The Court therefore expressly rejects Defendants’ proposed construction, and no further

construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir.

1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope, to

clarify and when necessary to explain what the patentee covered by the claims, for use in the

determination of infringement. It is not an obligatory exercise in redundancy.”); see also O2 Micro

Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts

are not (and should not be) required to construe every limitation present in a patent’s asserted

claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike

O2 Micro, where the court failed to resolve the parties’ quarrel, the district court rejected

Defendants’ construction.”); ActiveVideo Networks, Inc. v. Verizon Commcn’s, Inc., 694 F.3d

1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291

(Fed. Cir. 2015); Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 977–79 (Fed. Cir. 2021).

The Court therefore construes “install” and “installed” to have their plain and ordinary

meaning.

7. “payment server”

“payment server”

(’218 Patent, Claims 1, 8, 11, 14, 15;

’787 Patent, Claims 1, 11)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning; “server for settling a payment”

Alternatively

“server for enabling a payment”

(Dkt. No. 126, Ex. B at 3.)

(a) The Parties’ Positions

Plaintiff argues that this term is easily understandable, and “Defendants offer no

justification, much less any clear and unmistakable reason, to alter the inventors’ chosen

language.” (Dkt. No. 116 at 15.) Plaintiff also argues: “At most, the specification provides

examples in which a ‘payment server’ may be ‘used to enable and authenticate’ transactions with

a card. There is no lexicography or disclaimer to justify Defendants’ new requirement for a ‘server

for settling a payment.’” (Id. at 16.) Further, Plaintiff argues that Defendants’ expert “conflates

this term with the term ‘payment gateway’ recited in the ’046 Patent and attempts to import the

construction for which Patentee advocated before the PTAB.” (Id. (citation omitted).)

Defendants respond that “the intrinsic evidence makes clear that the ‘payment server’ is

involved in settling payments.” (Dkt. No. 122 at 41.) As to Plaintiff’s statements regarding the

term “payment gateway,” Defendants argue that “the ‘payment server’ of the e-purse patents has

the same functionality as the payment gateway of the ’046 patent, and it too is situated between

the user’s personal device and a SAM, which in turn enables and authenticates transactions and is

behind the payment server.” (Id. at 42 (citation omitted).) Finally, Defendants argue that “the fact

that the payment server may do other things, such as personalizing and funding the e-purse, does

not negate the fact that the patents require the ‘payment server’ to be involved in settling

payments.” (Id. at 43.)

Plaintiff replies that “the specifications of the Asserted Patents say nothing about ‘settling

a payment,’” and “the words ‘settle’ or ‘settling’ do not appear anywhere in the patents.” (Dkt.

No. 124 at 8.) “Instead,” Plaintiff argues, “Samsung’s limitation is imported . . . from a different

claim term (‘payment gateway’) in the ’046 Patent, which is actually directed to settling

payments.” (Id.) Plaintiff urges that “[t]he construction of a different term, in a different patent,

with a different specification, does not govern this term.” (Id.; see id. at 9.)

At the October 27, 2021 hearing, Defendants argued that requiring the “payment server”

to be for settling payments is appropriate because otherwise the “security authentication module”

would be redundant.

(b) Analysis

Claim 1 of the ’218 Patent, for example, recites in part (emphasis added):

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;

. . . .

As another example, Claim 1 of the ’787 Patent recites an interface “configured to perform

mobile commerce with a payment server.”

Defendants do not show that the claim language implies “settling,” which is a word that

appears nowhere in the patents here at issue, despite there being various disclosures regarding

“transactions,” “commerce,” and “purchasing” cited by Defendants. See, e.g., ’218 Patent at 1:8–

11, 5:6–9, 8:8–10. Defendants’ proposal would therefore tend to confuse rather than clarify the

scope of the claims. The opinions of Defendants’ experts are likewise unpersuasive. (See Dkt.

No. 116, Ex. J, Aug. 19, 2021 Vanderhoof Decl., at ¶ 195; see also id., Ex. K, Aug. 19, 2021 Smith

Decl., at ¶¶ 123–25.)

As for Defendants’ reliance on Post Grant Review (“PGR”) proceedings involving the no-

longer-asserted ’046 Patent (attached to Defendants’ responsive claim construction brief as Exhibit

1), the Patent Trial and Appeal Board stated: “we agree with Patent Owner and construe ‘payment

gateway’ as ‘a server or collection of servers for settling a payment.’” (Dkt. No. 122, Ex. 3,

PGR2021-00029, Paper 10, July 23, 2021 Decision at 27–28.)

Although authority generally counsels in favor of interpreting terms consistently in related

patents, see, e.g., SightSound Technologies, LLC v Apple Inc., 809 F3d 1307, 1316 (Fed. Cir.

2015), here the weight of the interpretation cited by Defendants is lessened by the attenuated nature

of the familial relationship, the patents here at issue being related to the ’046 Patent through

multiple continuation-in-part applications. See id. Also, the ’046 Patent is a descendent of the

’218 Patent, not an ancestor, and the cited term at issue as to the ’046 Patent, “payment gateway,”

is not the same term here at issue, “payment server.” Defendants do not persuasively support their

assertion that a person of ordinary skill in the art would understand the terms “payment gateway”

and “payment server” to be interchangeable.

Finally, and perhaps most compellingly, whereas neither the ’218 Patent nor the ’787

Patent mention “settling” anywhere in the claims or the specification, the ’046 Patent that was at

issue in the above-cited PGR discusses “settlement” and settling payments repeatedly throughout

its specification. See ’046 Patent at cols. 5–8, 19–21.

The Court therefore expressly rejects Defendants’ proposed construction, and no further

construction is necessary. See U.S. Surgical, 103 F.3d at 1568 (“Claim construction is a matter of

resolution of disputed meanings and technical scope, to clarify and when necessary to explain what

the patentee covered by the claims, for use in the determination of infringement. It is not an

obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d at 1362 (“[D]istrict courts are

not (and should not be) required to construe every limitation present in a patent’s asserted

claims.”); Finjan, 626 F.3d at 1207 (“Unlike O2 Micro, where the court failed to resolve the

parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo, 694 F.3d at

1326; Summit 6, 802 F.3d at 1291; Bayer, 989 F.3d at 977–79.

The Court accordingly construes “payment server” to have its plain and ordinary

meaning.

8. “personalize,” “personalized,” “personalizing,” and “personalization”

“personalize” / “personalized” / “personalizing” / “personalization”

(’218 Patent, Claims 1, 11;

’855 Patent, Claims 1, 3;

’787 Patent, Claims 1, 2, 6, 11)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “[configuring / configure / configured /

configuration] with information specific to the

user”

(Dkt. No. 126, Ex. B at 3.)

(a) The Parties’ Positions

Plaintiff argues that these terms are readily understandable, that “Defendants offer no

justification, much less any clear and unmistakable reason, to alter the inventors’ chosen

language,” and that “the cited portions of the file history say nothing about the meaning of

‘personalize.’” (Dkt. No. 116 at 17.)

Defendants respond that “personalize” is a well-established term in the art of mobile

payments, and also “it is logical that a smart card used for payment transactions must be

personalized with information that uniquely identifies the user, in the same way that each credit

card has its own card number.” (Dkt. No. 122 at 37–38.)

Plaintiff replies that Defendants fail to account for the disclosure of “default PINs” as part

of “the essential data to be personalized into an e-purse.” (Dkt. No. 124 at 10 (quoting ’218 Patent

at 2:1–5).) Moreover, Plaintiff argues, “the extrinsic evidence that Samsung and its experts cite

does not support its construction.” (Id. at 10.)

At the October 27, 2021 hearing, Defendants argued that “personalization” makes a card

unique relative to all other cards.

(b) Analysis

The disclosure of “default PINs,” cited by Plaintiff, is as follows:

In one embodiment, the essential data to be personalized into an e-purse include

one or more operation keys (e.g., a load key and a purchase key), default PINs,

administration keys (e.g., an unblock PIN key and a reload PIN key), and passwords

(e.g., from Mifare).

’218 Patent at 2:1–5 (emphasis added); see id. at 5:54–59 (similar). These “default PINs,”

however, could vary from user to user and, in any event, can subsequently be personalized by a

user. See id. at 6:26–7:9. The disclosure of “default PINs” therefore does not undercut

Defendants’ argument that “personalizing” refers to configuring with information specific to

the user.

The extrinsic evidence submitted by Defendants is also persuasive that the term

“personalize” has a well-established meaning in the relevant art as adding information that,

although not necessarily specific to a particular person, is specific information that prepares a card

for use. (See Dkt. No. 122, Ex. 11, GSA Government Smart Card Handbook, at A-2

(SAMSUNG00104654) (“Card Personalization — Refers to the modification of a card such that

it contains data specific to the cardholder.”); see also id., Ex. 7, Common Electronic Purse

Specifications, Technical Specification, Version 2.3, at 274 (Mar. 2001) (defining

“Personalization” as: “The process of initializing a card with data that makes it unique from all

other cards. This includes account data and cardholder information in the case of credit or debit

accounts.”); id., Ex. 16, Smart Card Handbook 954 (3d ed. 2002) (defining “Personalization” as:

“The process of associating a card with a person. This can be done using physical personalization

(e.g. embossing or laser engraving) as well as by electronic personalization (loading personal data

in the memory of the smart card). The term ‘individualization’ would be a more exact description

of this process, since it is not always necessary to enter personal data into the chip when electronic

personalization is performed, for instance in the production of anonymous [] prepaid SIMs”)

(emphasis added).) The opinions of Defendants’ experts do not compel limiting these terms so as

to be “specific to the user.” (See Dkt. No. 116, Ex. J, Aug. 19, 2021 Vanderhoof Decl., at ¶ 123;

see also id., Ex. K, Aug. 19, 2021 Smith Decl., at ¶¶ 91–92.)

The Court therefore construes these disputed terms as set forth in the following chart:

Term Construction

“personalize” “configure with specific information”

“personalized” “configured with specific information”

“personalizing” “configuring with specific information”

“personalization” “configuration with specific information”

9. “smart card pre-loaded with [an/the] emulator”

“smart card pre-loaded with [an/the] emulator”

(’218 Patent, Claims 1, 11)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning [smart card with an] “emulator installed by the

smart card issuer”

(Dkt. No. 126, Ex. B at 3.)

(a) The Parties’ Positions

Plaintiff argues that “[t]he plain meaning of ‘preloaded’ does not limit the preloading as

done by any particular entity,” and “Defendants identify no lexicography or clear and unmistakable

disclaimer to support their additional limitation.” (Dkt. No. 116 at 18.)

Defendants respond that the opinions of Defendants’ experts are unrebutted that a person

of ordinary skill in the art would have understood that a smart card “pre-loaded with an emulator”

is one in which an emulator has been installed by the smart card issuer, and “there is no disclosure

in the specification of an emulator being loaded by anyone other than the card issuer.” (Dkt. No.

122 at 20 (citations omitted).)

Plaintiff replies that “[u]nder Samsung’s proposed construction, it is not even clear who a

‘smart card issuer’ is,” that “Samsung and its experts do not even identify any passages in the

specification where a card issuer pre-loads the emulator,” and that “Samsung identifies no

disclaimer that would limit the emulator to being preloaded by the issuer.” (Dkt. No. 124 at 11

(citations omitted).)

At the October 27, 2021 hearing, Plaintiff argued “pre-loaded” refers to when, not who,

performs the loading. Defendants responded that “pre-loaded” refers to both when and who.

(b) Analysis

Claim 1 of the ’218 Patent recites (emphasis added):