PTAB

IPR2020-00756

Google LLC v. Uniloc 2017 LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Near Field Authentication Through Communication of Enclosed Content Sound Waves
  • Brief Description: The ’952 patent discloses a method for near-field authentication using encoded sound waves as the communication medium instead of radio waves. This approach leverages existing hardware components in computing devices, such as speakers and microphones, to avoid the need for expensive equipment upgrades.

3. Grounds for Unpatentability

Ground 1: Claims 9-12 are obvious over Paulson in view of Surprenant

  • Prior Art Relied Upon: Paulson (Patent 8,514,662) and Surprenant (Patent 8,837,257).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Paulson and Surprenant taught every element of the challenged claims. Paulson disclosed a general system for sonic communication, including scanning for and selecting a "free frequency" based on ambient noise characteristics to transmit data. Surprenant, which incorporated Paulson by reference and shared a common inventor, provided specific details of an "acoustic modulation protocol" that was absent from Paulson. This protocol included a "locking segment" (the claimed "begin indication"), a "data segment" (the "content"), and a cyclic redundancy check (CRC) (the "end indication"). Surprenant also disclosed generating a unique "AMP ID" derived from device-specific data, teaching the claimed generation of device identification data from user-configurable and non-user-configurable sources.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine these references because they are in the same field, share an inventor, and Surprenant expressly incorporates Paulson by reference. A POSITA would have been motivated to implement Surprenant's detailed and improved modulation protocol into Paulson's foundational sonic communication system to achieve more reliable data transmission.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as this was a mere substitution of one known modulation protocol for another to improve a known system, with predictable and beneficial results.

Ground 2: Claims 9-12 are obvious over Paulson, Surprenant, and Beenau

  • Prior Art Relied Upon: Paulson (Patent 8,514,662), Surprenant (Patent 8,837,257), and Beenau (Application # 2009/0171851).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground reinforced the arguments from Ground 1, with Beenau providing additional, explicit teachings for the "device identification data" limitation of claim 9. Beenau, which related to RFID technology, disclosed an authentication process for financial transactions using a combination of a unique device identifier like a "serial number" (non-user-configurable data) and a user-provided Personal Identification Number (PIN) (user-configurable data). This directly corresponded to the claimed bit array derived from both types of data.
    • Motivation to Combine (for §103 grounds): Petitioner argued that since Paulson and Surprenant expressly positioned their sonic communication systems as advantageous alternatives to RFID, a POSITA would have been motivated to implement the known authentication techniques from the RFID context (as taught by Beenau) into the superior sonic system. This would be an obvious substitution of one communication medium (sound) for another (radio frequency) to achieve the same authentication functions with the known benefits of the sonic system.
    • Expectation of Success (for §103 grounds): Success was predictable because the combination involved applying a well-understood authentication method (from Beenau) to a compatible communication system (Paulson/Surprenant) to perform similar applications, such as financial transactions, which all three references contemplated.

Ground 3: Claim 11 is obvious over Paulson and Surprenant in view of McConnell

  • Prior Art Relied Upon: Paulson (Patent 8,514,662), Surprenant (Patent 8,837,257), and McConnell (WO 97/31437).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground specifically addressed dependent claim 11, which added the limitation of "transmitting the modulated carrier wave until a stop indication is received from a user." Petitioner asserted that McConnell, which also disclosed a sonic communication system, explicitly taught this feature. McConnell described a "mode selection switch" that allowed a user to select between transmitting data "continuously at intervals" or "only upon user command." Switching from continuous to on-demand mode was argued to be a user-initiated "stop indication."
    • Motivation to Combine (for §103 grounds): A POSITA seeking to improve the Paulson/Surprenant system would have naturally looked to other acoustic communication systems like McConnell. Incorporating McConnell's user-operable switch would have been an obvious modification to provide benefits already contemplated in the primary references, such as preventing disturbance, conserving battery power, and enhancing security by avoiding unnecessary transmissions.
    • Expectation of Success (for §103 grounds): Adding a user-controlled switch to toggle transmission is a simple, predictable modification, so a POSITA would have had a high expectation of success.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 11 (Ground 4) based on the combination of Paulson, Surprenant, Beenau, and McConnell, relying on the same rationale provided in Grounds 2 and 3.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. First, under the General Plastic factors, this was the first IPR petition filed against the ’952 patent by any party. Second, regarding the Fintiv factors for co-pending district court litigation, Petitioner noted that the related case was stayed pending a motion to transfer venue. Key litigation milestones, including the Markman hearing and trial date, were not scheduled, and the case was not close to resolution. Therefore, Petitioner contended that the advanced state of the IPR would promote efficiency and not be a waste of resources.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 9-12 of the ’952 patent as unpatentable.