DeCurtis LLC v. Carnival Corp

1. Case Identification

• Case #: IPR2021-00783
• Patent #: 10,157,514
• Filed: April 7, 2021
• Petitioner(s): DeCurtis, LLC
• Patent Owner(s): Carnival Corp.
• Challenged Claims: 11

2. Patent Overview

• Title: Portable wireless devices for use in wireless guest engagement systems
• Brief Description: The ’514 patent relates to a portable wireless device for guest engagement systems, such as on cruise ships, that uses Bluetooth Low Energy (BLE) and Near Field Communication (NFC) to gain access to locations and services. The device stores and transmits public and private identifiers for identification and to establish secure communication links.

3. Grounds for Unpatentability

Ground 1: Claim 11 is obvious over Soleimani, Yuen, and Hulusi.

• Prior Art Relied Upon: Soleimani (Patent 9,483,887), Yuen (Patent 8,935,119), and Hulusi (Application # 2016/0198287).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Soleimani discloses the core system: a portable wireless device for access control that communicates via BLE and NFC. Soleimani’s device transmits a public identifier (a Universally Unique Identifier, or UUID, in a beacon) and establishes secure, encrypted communications to transmit a private identifier. Petitioner asserted Yuen teaches the specific small form factor and enclosed body dimensions recited in the claim. Hulusi was cited to expressly teach the inclusion of a processor, memory, battery, and separate, dedicated antennas for BLE and NFC within a similar portable device.
  • Motivation to Combine: A POSITA would combine Soleimani with Yuen to achieve a small, durable, and wearable form factor, which improves portability and user experience—goals consistent with Soleimani's disclosure. A POSITA would further incorporate the standard components taught by Hulusi (battery, separate antennas) to create a more versatile and robust device, enabling simultaneous or flexible use of both BLE and NFC protocols as suggested by Soleimani's system.
  • Expectation of Success: Petitioner contended that success was expected because the combination involved implementing standard components and well-known wireless protocols to achieve the predictable result of a small, self-powered, dual-protocol access device.

Ground 2: Claim 11 is obvious over Berg, Badinski, and Goosen.

• Prior Art Relied Upon: Berg (International Application # PCT/EP2016/059748), Badinski (Application # 2015/0220109), and Goosen (a 2014 university thesis).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Berg teaches a wearable device for accessing protected areas using BLE and NFC. Berg’s device stores and transmits public "credential information" for initial authentication and then transmits more sensitive private "access control information" over a secure, encrypted link. Badinski was cited to supply the claimed small, waterproof, ring-like form factor. As Berg did not explicitly teach periodic broadcasting, Goosen was cited to teach the implementation of a portable BLE-beacon that periodically transmits a public identifier (UUID) to a receiver.
  • Motivation to Combine: A POSITA would combine Berg with Badinski to enhance wearability and protect sensitive credentials within a durable, small form factor, which is a known design objective for such devices. A POSITA would be motivated to incorporate Goosen's teaching of a portable beacon into Berg's system as a logical and power-efficient method for broadcasting the public "credential information" required for initial authentication.
  • Expectation of Success: Success was deemed likely, as the combination involved integrating known features (a small form factor and standard BLE beaconing) into a well-understood BLE-based access control system.

Ground 3: Claim 11 is obvious over Raina, Yuen, and Hulusi.

• Prior Art Relied Upon: Raina (Application # 2016/0055697), Yuen (Patent 8,935,119), and Hulusi (Application # 2016/0198287).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Raina discloses a comprehensive access control system where a wearable device (e.g., fitness tracker) uses BLE and NFC. Raina's device calculates and broadcasts a "mobile device unique ID" (public identifier) after detecting a stationary beacon, and subsequently transmits "information for validation" (private identifier) from local storage over a secure link to a zone computer. Yuen and Hulusi were cited for the same purposes as in Ground 1: Yuen for the specific physical dimensions and Hulusi for the express disclosure of a battery and separate BLE/NFC antennas.
  • Motivation to Combine: The motivation to combine Raina with Yuen and Hulusi was argued to be the same as in Ground 1: to improve the device's portability, wearability, and versatility by implementing a known small form factor and adding standard components like a battery and dedicated antennas.
  • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success because the combination relies on straightforward integration of standard components and known technologies to produce a predictable outcome.
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) based on Berg, Badinski, and the BLE Specification. This ground was similar to Ground 2 but relied on the official BLE Specification itself, rather than Goosen, to teach the periodic beaconing function.

4. Arguments Regarding Discretionary Denial

• §325(d) Factors: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary references in all grounds (Soleimani, Berg, Raina) were not considered during prosecution. Petitioner contended this new art is more probative than the art reviewed by the Examiner because it provides exact disclosures for the very limitations (e.g., public/private identifiers, periodic beaconing) that formed the basis for allowance.
• NHK-Fintiv Factors: Petitioner argued that the Fintiv factors strongly favor institution of this inter partes review (IPR). Petitioner stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the parallel district court litigation, thereby eliminating concerns of duplicative efforts. Furthermore, Petitioner argued that the district court's trial schedule was uncertain due to procedural delays and the COVID-19 pandemic, and that minimal investment had been made in the parallel litigation, making IPR an efficient and equitable alternative for resolving the validity dispute.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claim 11 of Patent 10,157,514 as unpatentable.