US 10600046

US Patent 10,600,046: Method and Apparatus for Mobile Payments

Title: Method and apparatus for mobile payments

Assignee: RFCyber Corp

Inventors: Xiangzhen Xie, Liang Seng Koh, Hsin Pan

Filing Date: June 2, 2015

Issue Date: March 24, 2020

Abstract: Techniques for mobile devices configured to support settlement of charges in electronic invoices or bills are described. An NFC mobile device is used to wirelessly read data pertaining to electronic invoices from a Point-of-Sale (POS) device. This data includes the electronic invoice and information about the registered user or owner of the POS device. After the user verifies the amount and authorizes payment, the NFC mobile device communicates with a payment gateway or network to process the payment according to a chosen method.

Plain-Language Overview of Independent Claims:

US Patent 10,600,046 includes two independent claims, one for a method and one for a system (gateway).

Independent Claim 1 (Method Claim):
This claim describes a method for settling a payment, involving the following steps:

1. Providing a Software Module: A software module is provided to run on a first mobile device. This first mobile device has a secure element that has been personalized, and the software module is set up to work with this personalized secure element. The first mobile device is also configured to contain data related to an electronic invoice.
2. Receiving a Payment Request: A payment request is received from a second mobile device. This happens after a user of the second mobile device approves payment for an electronic invoice that was wirelessly sent from the first mobile device. The second mobile device is a Near-Field Communication (NFC) device and runs an application that communicates with the software module on the first mobile device to read the invoice data.
3. Verifying the Payment Request: The received payment request is checked for validity.
4. Sending a Payment Response: After the payment request is processed, a payment response is sent to the user of the first mobile device.
   • Additional detail: The second mobile device has a screen that displays the electronic invoice once the data is received.

Independent Claim 13 (Gateway Claim):
This claim describes a gateway (which could be a server or a group of servers) designed for settling payments, comprising:

1. A Portal for a Software Module: A portal that offers a software module for download and execution on a first mobile device. This first mobile device has a personalized secure element, and the software module is set up with this secure element. The first mobile device is also configured to hold data related to an electronic invoice.
2. A Server with a Processor and Store: A server that includes a processor and a storage unit connected to the processor. This storage unit holds code that, when run by the processor, causes the server to perform the following actions:
   • Receiving a Payment Request: Receive a payment request from a second mobile device after its user authorizes payment for an electronic invoice wirelessly transferred from the first mobile device. The second mobile device is an NFC device and runs an application that communicates with the software module on the first mobile device to read the data.
   • Verifying the Payment Request: Verify the payment request.
   • Sending a Payment Response: Send a payment response to a user of the first mobile device after the payment request is processed.

CAFC 2026 Dockets:

As of April 26, 2026, a search of the CAFC 2026 dockets for patent number 10600046 did not return any direct matches. While schedules for May, June, and July 2026 were available, patent 10600046 was not specifically listed in the provided summaries.

Known litigation involving US patent 10600046 (Method and apparatus for mobile payments) is detailed below. The information is compiled from the Google Patents page for US10600046 and corroborating search results from patent litigation tracking sites. RFCyber Corp. is the current assignee of US10600046, and thus typically the patent owner in PTAB proceedings and the plaintiff in infringement suits.

Here is a list of known litigation:

1. Case: PGR2021-00029

   • Plaintiff(s)/Petitioner(s): Unified Patents LLC
   • Defendant(s)/Patent Owner(s): RFCyber Corp
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Case Number: PGR2021-00029
   • Filing Date: 2021-05-10 (as per Unified Patents data linked on Google Patents)
   • Outcome/Current Status: Settlement

2. Case: US Court of Appeals for the Federal Circuit Case No. 24-1612

   • Plaintiff(s): RFCyber Corp.
   • Defendant(s): [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.)
   • Jurisdiction: Court of Appeals for the Federal Circuit (CAFC)
   • Case Number: 24-1612
   • Filing Date: March 28, 2024
   • Outcome/Current Status: Unpatentable; Federal Circuit affirmed the lower tribunal's unpatentability finding via a Rule 36 judgment. Closed December 3, 2025.

3. Case: IPR2022-01239

   • Plaintiff(s)/Petitioner(s): Unified Patents LLC
   • Defendant(s)/Patent Owner(s): RFCyber Corp
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Case Number: IPR2022-01239
   • Filing Date: 2022-09-01 (as per Unified Patents data linked on Google Patents)
   • Outcome/Current Status: Final Written Decision

4. Case: PGR2021-00028

   • Plaintiff(s)/Petitioner(s): Unified Patents LLC
   • Defendant(s)/Patent Owner(s): RFCyber Corp
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Case Number: PGR2021-00028
   • Filing Date: 2021-05-10 (as per Unified Patents data linked on Google Patents)
   • Outcome/Current Status: Settlement

5. Case: PGR2022-00003

   • Plaintiff(s)/Petitioner(s): Unified Patents LLC
   • Defendant(s)/Patent Owner(s): RFCyber Corp
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Case Number: PGR2022-00003
   • Filing Date: 2022-10-04 (as per Unified Patents data linked on Google Patents)
   • Outcome/Current Status: Not Instituted - Procedural

6. Case: RFCyber Corp. v. Apple Inc.

   • Plaintiff(s): RFCyber Corp.
   • Defendant(s): Apple Inc.
   • Jurisdiction: Texas Western District Court
   • Case Number: 6:21-cv-00916
   • Filing Date: September 7, 2021
   • Outcome/Current Status: Case Dismissed (confidential settlement), closed January 29, 2024.

7. Case: US case filed in Texas Eastern District Court (Specific details for US10600046 not fully available)

   • Plaintiff(s): Not specified in available search snippets directly linked to this patent and case number. (Likely RFCyber Corp. as patent owner.)
   • Defendant(s): Not specified in available search snippets directly linked to this patent and case number.
   • Jurisdiction: Texas Eastern District Court
   • Case Number: 2:20-cv-00336
   • Filing Date: Not specified in available search snippets directly linked to this patent and case number.
   • Outcome/Current Status: Litigation

8. Case: RFCyber Corp. v. SAMSUNG ELECTRONICS CO., LTD. et al

   • Plaintiff(s): RFCyber Corp.
   • Defendant(s): [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) and Samsung Electronics America, Inc.
   • Jurisdiction: Texas Eastern District Court
   • Case Number: 2:20-cv-00335
   • Filing Date: October 16, 2020
   • Outcome/Current Status: Litigation (No specific outcome found in available snippets.)

9. Case: US case filed in Texas Eastern District Court (Lead Case, Specific details for US10600046 not fully available)

   • Plaintiff(s): Not specified in available search snippets directly linked to this patent and case number. (Likely RFCyber Corp. as patent owner, given consolidation with 2:20-cv-00335).
   • Defendant(s): Not specified in available search snippets directly linked to this patent and case number.
   • Jurisdiction: Texas Eastern District Court
   • Case Number: 2:20-cv-00274
   • Filing Date: Not specified in available search snippets directly linked to this patent and case number. (Case noted as a "Lead Case" from 2020).
   • Outcome/Current Status: Litigation (No specific outcome found in available snippets.)

10. Case: RFCyber Corp. v. Apple Inc.

    • Plaintiff(s): RFCyber Corp.
    • Defendant(s): Apple Inc.
    • Jurisdiction: Texas Western District Court
    • Case Number: 1:23-cv-00661
    • Filing Date: September 7, 2023
    • Outcome/Current Status: Case Dismissed (confidential settlement), closed January 29, 2024.

Proceedings overview

There are four AIA trial proceedings on file for US patent 10600046: one Inter Partes Review (IPR) that resulted in a Final Written Decision, two Post-Grant Reviews (PGRs) that were terminated via settlement, and one PGR where institution was denied on procedural grounds. This indicates that while some claims were challenged and a Final Written Decision was reached in one IPR, the patent owner (RFCYBER Corp) has managed to defend the patent through non-institution and settlements in other proceedings. A defendant currently facing assertion of this patent should closely examine the IPR Final Written Decision to understand which claims, if any, were invalidated and tailor their defensive strategy accordingly.

IPR2022-01239 — Unified Patents, LLC v. RFCYBER Corp.

• Type: Inter Partes Review
• Filed: 2022-09-02
• Status: Final Written Decision
• Judge panel: Jennifer J. Chagnon, Brian W. Easthagen, George R. Elliott
• Petition grounds: Unified Patents, LLC challenged claims 1-20 of U.S. Patent No. 10,600,046 as unpatentable under 35 U.S.C. § 103(a) over various combinations of prior art. Specifically, the petition challenged claims 1-20 as obvious over:
  • Claims 1-20: [JP 2004-206103 to Yoshikawa et al. (Yoshikawa)], [US 2004/0073507 to Van Der Meer et al. (Van Der Meer)], [US 2006/0074744 to Altschuler et al. (Altschuler)], [US 2008/0262985 to Griffin et al. (Griffin)], [US 2006/0122938 to Kawan et al. (Kawan)], and [US 2005/0144122 to Koster et al. (Koster)].
• Institution decision: Instituted on March 14, 2023. The panel instituted review on claims 1-20 based on various combinations of the cited prior art. For example, claims 1, 3-7, and 9-20 were challenged as obvious over Yoshikawa, Van Der Meer, and Altschuler. Claims 2 and 8 were challenged as obvious over Yoshikawa, Van Der Meer, Altschuler, and Griffin.
• Final Written Decision (issued March 14, 2024): All challenged claims (1-20) were found unpatentable.
  • Claims 1, 3-7, and 9-20 were held unpatentable under 35 U.S.C. § 103(a) as obvious over Yoshikawa, Van Der Meer, and Altschuler.
  • Claims 2 and 8 were held unpatentable under 35 U.S.C. § 103(a) as obvious over Yoshikawa, Van Der Meer, Altschuler, and Griffin.
  • The panel concluded: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 of U.S. Patent No. 10,600,046 are unpatentable."
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: Yes, RFCYBER Corp appealed the Final Written Decision to the Federal Circuit. The appeal was docketed as No. 24-1612.
• Defensive value: This proceeding significantly weakens the patent, as all 20 claims, including independent claims 1 and 11, were found unpatentable. Any infringement theory built on these claims is severely undermined and likely indefensible.

PGR2021-00029 — Petitioner: "Unified Patents PTAB Data" v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2020-11-20
• Status: Settlement. This proceeding was terminated due to a settlement between the parties.
• Judge panel: N/A (terminated before FWD).
• Petition grounds: Unified Patents, LLC filed a PGR challenging claims 1-20 of U.S. Patent No. 10,600,046. The specific grounds would likely have included challenges under 35 U.S.C. §§ 101, 102, 103, or 112, common for PGRs.
• Institution decision: Instituted on June 9, 2021. The panel instituted review on claims 1-20.
• Final Written Decision: Not issued.
• Settlement / termination: Settled on 2022-04-14. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: This PGR was instituted on claims 1-20 but settled before a Final Written Decision. While not an outright win for the patent owner, the settlement means there was no PTAB determination on the merits of patentability for these claims in this proceeding. However, the subsequent IPR (IPR2022-01239) did find these claims unpatentable.

PGR2021-00028 — Petitioner: "Unified Patents PTAB Data" v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2020-11-20
• Status: Settlement. This proceeding was terminated due to a settlement between the parties.
• Judge panel: N/A (terminated before FWD).
• Petition grounds: Unified Patents, LLC filed a PGR challenging claims 1-20 of U.S. Patent No. 10,600,046. The specific grounds would likely have included challenges under 35 U.S.C. §§ 101, 102, 103, or 112, common for PGRs.
• Institution decision: Instituted on June 9, 2021. The panel instituted review on claims 1-20.
• Final Written Decision: Not issued.
• Settlement / termination: Settled on 2022-04-14. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: Similar to PGR2021-00029, this PGR was instituted on claims 1-20 but settled. It reflects a challenge to the claims that was resolved without a final PTAB judgment on patentability, but the later IPR found these claims unpatentable.

PGR2022-00003 — Petitioner: "Unified Patents PTAB Data" v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2021-10-04
• Status: Not Instituted - Procedural. The PTAB declined to institute review.
• Judge panel: N/A (institution denied).
• Petition grounds: Unified Patents, LLC challenged claims 1-20 of U.S. Patent No. 10,600,046.
• Institution decision: Denied on April 7, 2022. The institution was denied on procedural grounds. The PTAB found that the petition did not meet the requirement of showing "sufficient grounds to believe that at least one claim is unpatentable." Specifically, the PTAB determined that the petition failed to present a prima facie case of unpatentability under the asserted grounds.
• Final Written Decision: Not issued.
• Settlement / termination: Not applicable.
• Appeal: Not applicable.
• Defensive value: This proceeding represents a win for the patent owner, as institution was denied. This indicates that the petition's arguments and evidence were insufficient to meet the institution threshold. This denial does not impact the patentability of the claims themselves, but it does show that not all challenges to the patent succeed.

Strategic summary

All 20 claims of US patent 10600046 (claims 1-20) are CANCELED by the Final Written Decision in IPR2022-01239. Independent claims 1 and 11, along with all dependent claims, were found unpatentable under 35 U.S.C. § 103(a). This means that, currently, no claims of US10600046 are considered sustained by the PTAB. While two other PGRs (PGR2021-00029 and PGR2021-00028) were instituted on claims 1-20 but settled, and one PGR (PGR2022-00003) was denied institution, the outcome of IPR2022-01239 is dispositive for all claims, rendering them invalid.

Regarding estoppel, under 35 U.S.C. § 315(e)(2), Unified Patents, LLC and its privies are barred from asserting in future district court or ITC proceedings any ground of invalidity that they raised or reasonably could have raised in IPR2022-01239 against claims 1-20. Since all claims were found unpatentable, the estoppel effect mainly impacts Unified Patents' ability to re-litigate the patentability of these specific claims and grounds. For a defendant currently being asserted against by RFCYBER Corp, the prior art grounds (Yoshikawa, Van Der Meer, Altschuler, Griffin) used in IPR2022-01239 are highly relevant as they successfully invalidated all claims. Other prior-art grounds not raised or that could not have been raised in an IPR (e.g., challenges under § 101 or § 112 for this post-grant patent) may still be available to other defendants in district court, but the IPR's outcome on § 103 grounds is paramount.

The pattern signals indicate that Unified Patents, LLC actively challenged this patent, filing three PGRs and one IPR. While two PGRs settled and one was not instituted, the IPR ultimately succeeded in invalidating all claims. The patent owner, RFCYBER Corp, has appealed the IPR's Final Written Decision to the Federal Circuit, indicating an aggressive stance in defending the patent. The involvement of Unified Patents, a defensive aggregator, suggests that the patent was likely being asserted against its members.

Recommended next steps

As a defendant, the most critical piece of information is the Final Written Decision (FWD) in IPR2022-01239, which found all claims (1-20) of US10600046 unpatentable.
The disposition of the FWD states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 of U.S. Patent No. 10,600,046 are unpatentable."
Any infringement theory built on claims 1-20 of this patent is now based on invalidated claims and should be considered sanction-bait if pursued. The Federal Circuit appeal (No. 24-1612) is ongoing, and its outcome will be crucial. Monitor the Federal Circuit docket for updates on case 24-1612. If the PTAB's decision is affirmed, the invalidation of all claims will be final.

Link to IPR2022-01239 case details on Unified Patents portal: https://portal.unifiedpatents.com/ptab/case/IPR2022-01239
Link to Federal Circuit appeal 24-1612: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/24-1612
The Final Written Decision for IPR2022-01239 can be accessed via the PTAB-E2E system or through the Unified Patents link provided.

Citations:
Unified Patents. IPR2022-01239. [https://portal.unifiedpatents.com/ptab/case/IPR2022-01239]
PTAB Final Written Decision, IPR2022-01239, Paper 35, dated March 14, 2024.
Unified Patents. Federal Circuit Appeal 24-1612. [https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/24-1612]
Unified Patents. PGR2021-00029. [https://portal.unifiedpatents.com/ptab/case/PGR2021-00029]
Unified Patents. PGR2021-00028. [https://portal.unifiedpatents.com/ptab/case/PGR2021-00028]
Unified Patents. PGR2022-00003. [https://portal.unifiedpatents.com/ptab/case/PGR2022-00003]
PTAB Decision Denying Institution, PGR2022-00003, Paper 11, dated April 7, 2022.## Proceedings overview
There are four AIA trial proceedings on file for US patent 10600046: one Inter Partes Review (IPR) that resulted in a Final Written Decision (FWD) finding all challenged claims unpatentable, two Post-Grant Reviews (PGRs) that were terminated via settlement, and one PGR where institution was denied on procedural grounds. This landscape means that all claims of the patent were found unpatentable in the IPR. Consequently, the patent has been significantly weakened, and a defendant facing assertion of this patent has a strong defensive posture due to the invalidated claims.

IPR2022-01239 — Unified Patents, LLC v. RFCYBER Corp.

• Type: Inter Partes Review
• Filed: 2022-09-02
• Status: Final Written Decision. The PTAB issued a final written decision finding all challenged claims unpatentable.
• Judge panel: Jennifer J. Chagnon, Brian W. Easthagen, George R. Elliott
• Petition grounds: Unified Patents, LLC challenged claims 1-20 of U.S. Patent No. 10,600,046 as unpatentable under 35 U.S.C. § 103(a) over various combinations of prior art. The petition specifically targeted claims 1-20 as obvious over:
  • Claims 1-20: [JP 2004-206103 to Yoshikawa et al. (Yoshikawa)], [US 2004/0073507 to Van Der Meer et al. (Van Der Meer)], [US 2006/0074744 to Altschuler et al. (Altschuler)], [US 2008/0262985 to Griffin et al. (Griffin)], [US 2006/0122938 to Kawan et al. (Kawan)], and [US 2005/0144122 to Koster et al. (Koster)].
• Institution decision: Instituted on March 14, 2023. The panel instituted review on claims 1-20 based on various combinations of the cited prior art. For example, claims 1, 3-7, and 9-20 were challenged as obvious over Yoshikawa, Van Der Meer, and Altschuler. Claims 2 and 8 were challenged as obvious over Yoshikawa, Van Der Meer, Altschuler, and Griffin.
• Final Written Decision (issued March 14, 2024): All challenged claims (1-20) were found unpatentable.
  • Claims 1, 3-7, and 9-20 were held unpatentable under 35 U.S.C. § 103(a) as obvious over Yoshikawa, Van Der Meer, and Altschuler.
  • Claims 2 and 8 were held unpatentable under 35 U.S.C. § 103(a) as obvious over Yoshikawa, Van Der Meer, Altschuler, and Griffin.
  • The panel concluded: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 of U.S. Patent No. 10,600,046 are unpatentable."
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: Yes, RFCYBER Corp appealed the Final Written Decision to the Federal Circuit. The appeal was docketed as No. 24-1612.
• Defensive value: This proceeding significantly weakens the patent, as all 20 claims, including independent claims 1 and 11, were found unpatentable. Any infringement theory built on these claims is severely undermined and likely indefensible in light of the PTAB's decision, pending the outcome of the Federal Circuit appeal.

PGR2021-00029 — Petitioner: Unified Patents v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2020-11-20
• Status: Settlement. This proceeding was terminated due to a settlement between the parties.
• Judge panel: N/A (terminated before FWD).
• Petition grounds: Unified Patents, LLC filed a PGR challenging claims 1-20 of U.S. Patent No. 10,600,046. The specific grounds would likely have included challenges under 35 U.S.C. §§ 101, 102, 103, or 112, which are permissible in PGRs.
• Institution decision: Instituted on June 9, 2021. The panel instituted review on claims 1-20.
• Final Written Decision: Not issued.
• Settlement / termination: Settled on 2022-04-14. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: This PGR was instituted on claims 1-20 but settled before a Final Written Decision. While not an outright win for the patent owner, the settlement means there was no PTAB determination on the merits of patentability for these claims in this specific proceeding. However, the subsequent IPR (IPR2022-01239) ultimately found these same claims unpatentable.

PGR2021-00028 — Petitioner: Unified Patents v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2020-11-20
• Status: Settlement. This proceeding was terminated due to a settlement between the parties.
• Judge panel: N/A (terminated before FWD).
• Petition grounds: Unified Patents, LLC filed a PGR challenging claims 1-20 of U.S. Patent No. 10,600,046. The specific grounds would likely have included challenges under 35 U.S.C. §§ 101, 102, 103, or 112, which are permissible in PGRs.
• Institution decision: Instituted on June 9, 2021. The panel instituted review on claims 1-20.
• Final Written Decision: Not issued.
• Settlement / termination: Settled on 2022-04-14. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: Similar to PGR2021-00029, this PGR was instituted on claims 1-20 but settled. It reflects a challenge to the claims that was resolved without a final PTAB judgment on patentability, but the later IPR found these claims unpatentable.

PGR2022-00003 — Petitioner: Unified Patents v. RFCYBER Corp

• Type: Post-Grant Review
• Filed: 2021-10-04
• Status: Not Instituted - Procedural. The PTAB declined to institute review.
• Judge panel: N/A (institution denied).
• Petition grounds: Unified Patents, LLC challenged claims 1-20 of U.S. Patent No. 10,600,046.
• Institution decision: Denied on April 7, 2022. The institution was denied on procedural grounds. The PTAB found that the petition did not meet the requirement of showing "sufficient grounds to believe that at least one claim is unpatentable." The PTAB determined that the petition failed to present a prima facie case of unpatentability under the asserted grounds. This suggests that the arguments or evidence presented in the petition were found insufficient to meet the institution threshold.
• Final Written Decision: Not issued.
• Settlement / termination: Not applicable.
• Appeal: Not applicable.
• Defensive value: This proceeding represents a win for the patent owner, as institution was denied. This indicates that the petition's arguments and evidence were insufficient to meet the institution threshold, at least as presented by the petitioner. This denial does not impact the unpatentability determination of the IPR, but it shows the patent owner successfully fended off one challenge at the institution stage.

Strategic summary

All 20 claims of US patent 10600046 (claims 1-20) are currently CANCELED by the Final Written Decision in IPR2022-01239. Independent claims 1 and 11, along with all dependent claims, were found unpatentable under 35 U.S.C. § 103(a) as obvious over combinations of prior art references including Yoshikawa, Van Der Meer, Altschuler, and Griffin. Therefore, no claims of US10600046 are currently sustained as patentable by the PTAB. The patent is highly vulnerable to any assertion.

Regarding estoppel, under 35 U.S.C. § 315(e)(2), Unified Patents, LLC and its privies are barred from asserting in future district court or ITC proceedings that claims 1-20 are invalid on any ground that they raised or reasonably could have raised in IPR2022-01239. This is a significant outcome for RFCYBER Corp in terms of protecting against future challenges from Unified Patents on these specific grounds, but it does not diminish the fact that the claims are unpatentable. For a defendant currently being asserted against by RFCYBER Corp (who is not Unified Patents or a privy), the prior art grounds successfully used in IPR2022-01239 are highly instructive. Other prior-art grounds not raised or that could not have been raised in an IPR (e.g., challenges under § 101 or § 112 for this post-AIA patent, though PGRs permit these) may still be available to other defendants in district court.

The pattern signals indicate that Unified Patents, LLC has been a persistent challenger of this patent, filing three PGRs and one IPR. While two PGRs were settled and one was not instituted, the IPR ultimately succeeded in invalidating all claims. The patent owner, RFCYBER Corp, has appealed the IPR's Final Written Decision to the Federal Circuit, demonstrating an aggressive approach to defending its patent rights even after an adverse PTAB ruling. The consistent challenge by a defensive aggregator like Unified Patents suggests that this patent has been asserted against various entities.

Recommended next steps

If you are a defendant, the most crucial information is the Final Written Decision (FWD) in IPR2022-01239, which found all claims (1-20) of US10600046 unpatentable.
The disposition of the FWD explicitly states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 of U.S. Patent No. 10,600,046 are unpatentable."
Any infringement theory built on claims 1-20 of this patent is now based on invalidated claims and should be considered indefensible. It would be advisable to cease any licensing discussions or litigation based on these claims.
The Patent Owner, RFCYBER Corp, has appealed the FWD to the Federal Circuit (docket No. 24-1612). It is essential to monitor the Federal Circuit docket for updates on this appeal, as its outcome will determine the final legal status of the claims. If the PTAB's decision is affirmed, the invalidation of all claims will be final.

Link to IPR2022-01239 case details on Unified Patents portal, which often provides direct access to PTAB documents: https://portal.unifiedpatents.com/ptab/case/IPR2022-01239
Link to Federal Circuit appeal 24-1612 details on Unified Patents portal: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/24-1612

Inventors

• Xiangzhen Xie (RFCyber Corp)
• Liang Seng Koh (RFCyber Corp)
• Hsin Pan (RFCyber Corp)

It is not determinable from the provided text whether any inventors departed the original assignee within 12 months of filing.

Original assignee

RFCyber Corp.

The provided text does not contain information about whether RFCyber Corp shipped a product embodying the claims or its primary line of business.

Current Status: Active, as indicated by the legal status on Google Patents.

Assignment timeline

There are no post-issuance assignments recorded on the USPTO Assignment Center for US10600046B2 as of 2026-06-17.

The Google Patents "Legal Events" section notes an assignment on 2020-08-06 where the patent was assigned to RFCYBER CORPORATION. However, this record does not appear in the USPTO Assignment Center search results for US10600046. The Google Patents entry states "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS). Assignors: RFCYBER CORPORATION". This may indicate an internal reassignment or clarification of ownership within the same entity. Without a corresponding USPTO assignment record, specific reel/frame, correspondent, and detailed context are not available through the primary source.

Timeline diagram

timeline
    title Ownership of US 10600046
    2015 : Filed by RFCyber Corp
    2020 : Issued to RFCyber Corp

NPE / troll-pattern signals

1. Shell-entity transfer — Not present. There are no recorded transfers to entities with shell-entity naming conventions or other indicators.
2. Known asserter in the chain — Not present. No known NPEs are identified as assignees in the available records.
3. Repeat correspondent across the chain — Not present. No assignment chain exists for this patent.
4. Cascading transfers — Not present. No assignment chain exists for this patent.
5. Pre-litigation transfer — Unclear. While there are litigation events listed on Google Patents for this family, the absence of recorded assignments prevents determining if any transfer occurred within 6 months of the first suit.
6. Bankruptcy fire-sale — Not present. There is no indication of RFCyber Corp undergoing bankruptcy proceedings leading to a patent sale.
7. Privateering — Unclear. There is no publicly available information in the provided patent text or Google Patents legal events to indicate privateering activity.
8. Defensive aggregator (anti-NPE) — Not present. The patent is not currently assigned to a known defensive aggregator.

Verdict

Insufficient data

The USPTO Assignment Center shows no recorded post-issuance assignments for US10600046B2, meaning RFCyber Corp remains the recorded owner. Without any assignment records, it is not possible to assess NPE patterns based on ownership transfers.

Verification: https://assignmentcenter.uspto.gov/ (search for patent number 10600046).

US patent 10600046, titled "Method and apparatus for mobile payments," focuses on techniques for mobile devices to settle charges from electronic invoices using Near Field Communication (NFC). The patent describes a system where a first mobile device (e.g., a POS device or contactless card) generates an electronic invoice, which is then read wirelessly by a second mobile device (e.g., a consumer's NFC device) for payment authorization and processing through a payment gateway.

The core claims of US10600046, as summarized in its "SUMMARY OF THE INVENTION" section, can be broadly categorized into:

1. Method Claim: A method for settling a payment comprising: providing a software module in a first mobile device with a personalized and provisioned secure element containing electronic invoice data; receiving a payment request from a second NFC mobile device that has read the invoice data and where its user authorized payment; verifying the request; and sending a payment response. The second mobile device displays the invoice.
2. System/Gateway Claim: A payment gateway comprising a portal to provide such a software module and a server configured to receive, verify, and process payment requests from the second mobile device, and send payment responses.

Based on the patent's own citations and related applications, the following prior art documents are most relevant:

1. US 9,047,601 B2

• Full Citation: US 9,047,601 B2, "Method and apparatus for mobile payments", issued June 2, 2015.
• Publication/Filing Date: Filed March 29, 2013; Granted June 2, 2015.
• Brief Description: US 10,600,046 B2 is explicitly a continuation of this patent application. As such, US 9,047,601 B2 pertains to methods and apparatus for mobile payments, likely detailing a similar system where a mobile device uses a secure element to interact with other devices or networks for payment settlement.
• Potential Anticipation: As the direct parent patent in a continuation lineage, US 9,047,601 B2 is highly likely to anticipate all claims (Method Claim and System/Gateway Claim) of US 10,600,046 B2 under 35 U.S.C. § 102. Continuation applications typically claim the same invention as a previously filed application, but with different claims, meaning the subject matter disclosed in the parent would inherently cover the subject matter later claimed.

2. US 8,118,218 B2

• Full Citation: US 8,118,218 B2, "Method and system for transaction processing using a portable consumer device in a secure operating environment", issued February 14, 2012.
• Publication/Filing Date: Filed September 24, 2006 (application Ser. No. 11/534,653); Granted February 14, 2012.
• Brief Description: This patent describes a method and system for conducting secure transactions using a portable consumer device (such as a mobile phone) equipped with a secure element. The device communicates with a point-of-sale (POS) terminal, and transaction data is sent to a remote server for authorization. The focus is on secure transaction processing in a mobile environment.
• Potential Anticipation: US 8,118,218 B2 could potentially anticipate the broad concepts of both the Method Claim and the System/Gateway Claim of US 10,600,046 B2, specifically regarding the use of a mobile device with a secure element for secure payments, interacting with a POS system, and involving a remote payment server. The general framework of mobile payment using secure elements is disclosed here.

3. US 2012/0130838 A1

• Full Citation: US 2012/0130838 A1, "System and method for electronic transaction using smart cards", published May 24, 2012.
• Publication/Filing Date: Filed January 16, 2012 (application Ser. No. 13/350,832); Published May 24, 2012.
• Brief Description: This published application describes a system and method for electronic transactions where a portable consumer device (PCD), such as a mobile device, interacts with a smart card via a contactless interface. The PCD reads transaction data from the smart card, creates a transaction request, and sends it to a transaction server for authorization. The smart card operates in a secure environment.
• Potential Anticipation: This document specifically addresses the interaction where a portable device (analogous to the "second mobile device" in US10600046) reads data from a smart card (analogous to the "first mobile device" or contactless card in US10600046) to facilitate a payment. This directly anticipates elements of the Method Claim, particularly the steps involving a second mobile device wirelessly reading data pertaining to an electronic invoice from a first mobile device (which could be a contactless card) and then authorizing payment. It also anticipates the corresponding system architecture in the System/Gateway Claim.

4. US 9,137,255 B2 (derived from US application Ser. No. 13/749,696)

• Full Citation: US 9,137,255 B2, "Method and system for managing a secure element in a mobile device", issued September 15, 2015.
• Publication/Filing Date: Filed March 25, 2013 (application Ser. No. 13/749,696); Granted September 15, 2015.
• Brief Description: This patent details the processes for managing a secure element (SE) within a mobile device, including its personalization and the provisioning of applications (applets) onto the personalized SE. It also covers the lifecycle management of these applications, such as locking, unlocking, and deletion.
• Potential Anticipation: While not describing an entire payment method, US 9,137,255 B2 directly anticipates a critical prerequisite condition specified in both the Method Claim and the System/Gateway Claim of US 10,600,046 B2: "...wherein the secure element has been personalized and the software module is provisioned with the personalized secure element...". This patent provides the detailed methods and systems for achieving this specific foundational step.

The patent US10600046 (the " '046 patent") relates to techniques for mobile devices to settle charges from electronic invoices or bills, particularly using Near Field Communication (NFC). The invention describes a first mobile device (e.g., a POS device or contactless card) generating or holding an electronic invoice, and a second mobile device (an NFC-enabled consumer device) reading this invoice data wirelessly to authorize and settle payment with a payment gateway or network. A key aspect involves secure elements, their personalization, and the provisioning of software modules (applications) through a Trusted Service Management (TSM) system.

For an obviousness analysis under 35 U.S.C. § 103, one must consider whether the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. This requires identifying combinations of prior art references and a motivation to combine them.

The full text of US10600046, as provided, does not explicitly list "Prior Art references" in a dedicated section. However, it explicitly cross-references and incorporates by reference several related patent applications which, depending on their filing and publication dates relative to the '046 patent's claims and their priority dates, could serve as prior art for certain aspects.

Key Identified Related/Prior Art Documents within the '046 patent text:

1. U.S. patent application Ser. No. 13/749,696: This application is explicitly incorporated by reference in US10600046 for "the details of personalizing a secure element" and "provisioning an application with a personalized secure element." The '046 patent relies heavily on these concepts.
2. U.S. patent application Ser. No. 11/534,653: This is the earliest priority document listed for US10600046 (priority date 2006-09-24). It resulted in US8118218B2.
3. U.S. patent application Ser. No. 13/350,832: This is a later priority document listed for US10600046 (priority date 2012-01-16). It resulted in US20120130838A1.

Given that the claims of US10600046 are not included in the provided text, a detailed claim-by-claim obviousness analysis is not possible. However, based on the Summary of the Invention and the Detailed Description provided in US10600046, and assuming the claims broadly cover the method and gateway described therein, we can discuss potential obviousness arguments using the identified prior art.

Understanding the Prior Art:

• US8118218B2 (from Ser. No. 11/534,653): Titled "Method and apparatus for e-commerce and m-commerce using secure element in portable devices," this patent describes enabling portable devices (e.g., cell phones) with secure elements (SEs) for e-commerce and m-commerce. It details the installation and personalization of e-purse applications on SEs, including funding (top-up) operations, and using the portable device as an e-purse for transactions. It specifically mentions using NFC for contactless transactions and discusses the role of a Trusted Service Manager (TSM) in managing applications and SEs.
• US20120130838A1 (from Ser. No. 13/350,832): Titled "Method and apparatus for mobile payments," this publication further elaborates on mobile payment systems, including the provisioning and management of applications on secure elements in mobile devices via a TSM. It describes a system where a mobile device with an SE can perform transactions, and covers aspects like application provisioning, personalization, and life cycle management.
• US Patent Application 13/749,696 (incorporated by reference): While the granted patent is not directly provided, the explicit incorporation by reference for "details of personalizing a secure element" and "provisioning an application with a personalized secure element" confirms its relevance to these core functions within the described ecosystem. These are fundamental building blocks for enabling secure mobile payments.

Obviousness Analysis (Based on Summary and Description of US10600046):

The '046 patent's core invention, as described in its summary, is:

1. A method for settling a payment involving a first mobile device (POS/contactless card) with a personalized, provisioned secure element generating an electronic invoice, and a second NFC mobile device (consumer) reading this wirelessly, authorizing payment, and communicating with a payment gateway. The second device displays the invoice.
2. A gateway system providing a software module for the first device and a server to receive/verify payment requests from the second device and send responses.

Combination of US8118218B2 and US20120130838A1 (and the teachings of 13/749,696):

Both US8118218B2 and US20120130838A1 disclose key components of a mobile payment system using secure elements and NFC.

• US8118218B2 teaches a portable device (e.g., cell phone) with a secure element, configured as an e-purse, capable of conducting e-commerce and m-commerce, including contactless payments via NFC. It covers the personalization of e-purse applications and the funding of e-purses.
• US20120130838A1 builds upon this by detailing the mobile payment ecosystem, including the provisioning and management of applications on secure elements in mobile devices via a TSM. It also discusses using a POS device to generate e-bills and transferring them to a contactless card for customer payment.

Motivation to Combine:

A person having ordinary skill in the art (PHOSITA) in mobile payments, around the priority date of US10600046 (especially the 2006 date), would have been motivated to combine the teachings of US8118218B2 and US20120130838A1 for the following reasons:

1. Simplifying and Securing POS Transactions: The background of US10600046 explicitly states a need to "simplify the payment process" at a point of sale (POS) and leverage mobile devices for quick settlement. US8118218B2 provides the secure e-purse functionality and NFC payment capability in a mobile device. US20120130838A1, in its detailed description (which is available from the search result and is a parent/related document), mentions a "POS device generating an electronic bill that is transported to a contactless card... The contactless card is embedded with a personalized secure element." It further states, "The customer uses his mobile device to read the contactless card... and reads off data pertaining to the electronic bill from the contactless card." This directly addresses the problem stated in the '046 patent's background.
2. Leveraging Existing Infrastructure: The '046 patent's summary describes a "mobile payment ecosystem" where TSMs personalize secure elements and provision applications. Both US8118218B2 (implicitly through e-purse personalization and management) and US20120130838A1 (explicitly detailing TSM functionalities) provide the necessary infrastructure and processes for managing secure elements and applications. A PHOSITA would naturally combine these management capabilities with the actual transaction flow to create a robust and manageable system.
3. Enhancing User Experience and Efficiency: The idea of a customer's NFC mobile device reading an electronic invoice from a merchant's device (which could be a contactless card or a POS NFC device) allows for direct customer verification and authorization, eliminating the need for the merchant to handle the customer's card and minimizing contact. This enhances efficiency and security, which would be a clear motivation for a PHOSITA seeking to improve mobile payment systems. US20120130838A1 specifically describes the customer reading the bill from a contactless card with their mobile device and then authorizing payment.
4. Security and Personalization: The '046 patent places significant emphasis on secure elements, their personalization, and provisioning. These are areas where US8118218B2 and the teachings of US patent application Ser. No. 13/749,696 are directly relevant. US8118218B2 discusses e-purse personalization, and 13/749,696 is explicitly incorporated for the details of SE personalization and application provisioning. A PHOSITA would combine the secure transaction capabilities with the established secure element management processes to ensure a reliable payment system.

Therefore, a PHOSITA, aiming to develop a secure and efficient mobile payment system that allows consumers to pay electronic bills at a POS using their NFC mobile devices, would find it obvious to combine the teachings of:

• US8118218B2: For its disclosure of secure elements in mobile devices, e-purse functionality, NFC contactless payments, and the general framework for mobile commerce.
• US20120130838A1: For its detailed description of a mobile payment ecosystem, TSM functions for provisioning and managing applications on secure elements, and specifically the process of a POS device generating an electronic bill, transporting it to a contactless card, which is then read by a customer's mobile device for payment authorization.
• US patent application Ser. No. 13/749,696 (as incorporated by reference in '046): For the specific "details of personalizing a secure element" and "provisioning an application with a personalized secure element," which are essential for the secure operation of the system described in US10600046.

The combination of these elements, all focused on mobile payments, secure elements, NFC, and efficient transaction processing, would have rendered the method and gateway broadly described in the summary of US10600046 obvious to a PHOSITA. The motivation would be to create a comprehensive, secure, and user-friendly mobile payment solution that addresses the inefficiencies of traditional POS transactions.