DeCurtis LLC v. Carnival Corp

1. Case Identification

• Case #: IPR2021-00782
• Patent #: 10,045,184
• Filed: April 7, 2021
• Petitioner(s): DeCurtis LLC
• Patent Owner(s): Carnival Corporation
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wireless Guest Engagement System
• Brief Description: The ’184 patent describes a guest engagement system where users carry portable devices that communicate wirelessly using protocols like Bluetooth Low Energy (BLE) and Near Field Communication (NFC). The system uses a network of sensors (e.g., in door access panels) to detect these devices, track locations, authenticate users for access to secured areas, and provide personalized services.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barry, Trani, and Elfstrom - Claims 1-8 and 10 are obvious over Barry in view of Trani and Elfstrom.

• Prior Art Relied Upon: Barry (Application # 2016/0308859), Trani (Application # 2016/0284147), and Elfstrom (Patent 8,730,004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Barry disclosed the foundational guest access system, including portable devices, a network of sensors in access panels next to doors, and a central server for logging events. Trani was cited to explicitly teach the use of periodic BLE "beacon" signals for broadcasting a unique identifier, a feature Petitioner argued was inherent but not explicit in Barry. Elfstrom was used to supplement Barry’s disclosure of the access panel’s components, teaching the use of distinct first and second transceivers for communicating with the guest device (via BLE) and the central server (via a network), respectively, and for storing lists of authorized users on a central reservation server.
  • Motivation to Combine: A POSITA would combine these references as they address the same problem (guest authentication and engagement) using the same core technology (BLE). Combining Trani’s explicit beaconing method with Barry’s system was argued to be a predictable improvement for tracking and identification. Adding Elfstrom’s specific hardware (transceivers) and server-side user lists was presented as a straightforward implementation choice to improve system efficiency and functionality.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success because the combination involved applying conventional BLE features and well-known network components to Barry's base system, representing minor and predictable modifications.

Ground 2: Obviousness over Barry, Trani, Elfstrom, and Brule - Claim 9 is obvious over Barry, Trani, and Elfstrom in view of Brule.

• Prior Art Relied Upon: Barry (Application # 2016/0308859), Trani (Application # 2016/0284147), Elfstrom (Patent 8,730,004), and Brule (Application # 2015/0178532).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1 to address the payment-related limitations of claim 9. Petitioner contended that while Barry suggested financial transactions, Brule explicitly disclosed a central payment server that associates guest device identifiers with user payment accounts. Brule further taught processing a payment in response to receiving a payment authorization request from an interface device, which includes the unique identifier transmitted from the user's device.
  • Motivation to Combine: A POSITA would be motivated to add Brule's payment processing teachings to the system of Barry/Trani/Elfstrom to increase its commercial utility. Providing integrated payment options was argued to be a known method for enhancing guest experience systems, and Brule provided a clear roadmap for implementing this functionality using the existing system architecture.
  • Expectation of Success: Success was expected because Brule leverages existing credit card infrastructure for electronic payments, a mature technology that could be reliably integrated into Barry’s system.

Ground 3: Obviousness over Soleimani and Berg - Claims 11-15 are obvious over Soleimani in view of Berg.

• Prior Art Relied Upon: Soleimani (Patent 9,483,887) and Berg (International Publication No. WO 2016/177668).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner used Soleimani as the primary reference, asserting it taught a guest engagement system with portable devices, a sensor network, a central server, and critically, the ability for a guest device to selectively operate in two different modes: a bi-directional communication mode and a beacon-only mode. Berg was added to teach a portable guest device that includes separate first and second wireless antennas specifically configured for BLE and NFC communications, respectively.
  • Motivation to Combine: A POSITA would combine Soleimani and Berg to create a more versatile and robust guest device. Incorporating dedicated antennas for both BLE and NFC, as taught by Berg, would allow the system to leverage the distinct advantages of each protocol—such as BLE's longer range for location tracking and NFC's security for close-proximity payments—within a single device.
  • Expectation of Success: The combination was presented as a routine design choice, as modern mobile devices commonly include multiple antennas for different wireless standards. Modifying Soleimani’s device to include dedicated antennas as shown in Berg would be a conventional and predictable implementation for a POSITA.
• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 16-20 based on combinations of Soleimani, Berg, Trani, Barry, and Brule to add teachings for specific sensor types, sensor network peripherals, and vending terminal payments.

4. Key Claim Construction Positions

• Petitioner noted that it may argue in parallel district court litigation that the phrase “storing a log associating each unique identifier of a portable guest device received using BLE or NFC communications by a sensor of the sensor network” is indefinite.
• For the purposes of the IPR petition, however, Petitioner adopted the Patent Owner’s apparent construction from litigation, which requires the stored log to associate each unique identifier with some other data (e.g., a timestamp or location).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the primary references asserted in the petition (Barry, Soleimani, Berg, Brule) were not considered during the original prosecution.
• Petitioner further argued that discretionary denial under Fintiv was unwarranted. It stipulated that if the IPR was instituted, it would not pursue the same grounds or any other grounds that could have been reasonably raised in the IPR in the parallel litigation. Petitioner also contended that the litigation was in its early stages with minimal investment from the court, and that the scheduled trial date was uncertain due to pandemic-related delays, weighing in favor of institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’184 patent as unpatentable under 35 U.S.C. §103.