DeCurtis LLC v. Carnival Corp

1. Case Identification

• Case #: IPR2021-00784
• Patent #: 10,049,516
• Filed: April 7, 2021
• Petitioner(s): DeCurtis, LLC
• Patent Owner(s): Carnival Corporation
• Challenged Claims: 1-22

2. Patent Overview

• Title: Door Locks And Assemblies For Use In Wireless Guest Engagement Systems
• Brief Description: The ’516 patent discloses electronic door lock systems for managing access in environments like cruise ships or hotels. The system uses a portable user device (e.g., a smartphone) that communicates wirelessly with an access panel near a door to authenticate a user and unlock the door based on information from a central reservation server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Soleimani/Elfstrom - Claims 13-16 and 18 are obvious over Soleimani in view of Elfstrom.

• Prior Art Relied Upon: Soleimani (Patent 9,483,887) and Elfstrom (Patent 8,730,004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Soleimani taught the core electronic door lock assembly of independent claim 13, including a latch assembly, a door lock communication module, and a separate access panel with two transceivers (one for a user device, one for a server). However, to the extent Soleimani’s "access control server" was not considered a "reservation server," Elfstrom explicitly disclosed using a back-end server storing "guest reservation information" that communicates with access control modules at each door. Elfstrom also taught using a local data store at the access panel to speed up access decisions, which Petitioner mapped to the limitation of receiving and using "door access information" from the server.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they were in the same field of endeavor (access control for multi-room facilities like hotels or cruise ships) and addressed the same problem of bypassing front desk check-in. A POSITA would have been motivated to incorporate Elfstrom’s detailed reservation server and local data caching features into Soleimani’s system to improve its efficiency and tailor it specifically for the hospitality industry.
  • Expectation of Success: The combination would have been straightforward, as both systems used similar architectures (access panels communicating with a central server and a local lock). Integrating Elfstrom’s server functionality was a predictable improvement to Soleimani's system.

Ground 2: Obviousness over Soleimani/Elfstrom/Barry - Claims 17 and 19 are obvious over Soleimani in view of Elfstrom and Barry.

• Prior Art Relied Upon: Soleimani (Patent 9,483,887), Elfstrom (Patent 8,730,004), and Barry (Application # 2016/0308859).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Soleimani/Elfstrom combination to address dependent claims 17 (encrypted communications) and 19 (access panel display and camera). Petitioner asserted that while Soleimani taught encryption between the user device and the access panel, Barry explicitly taught using encrypted wireless signals between an access reader and the door lock controller to prevent "man-in-the-middle" attacks. For claim 19, Barry taught displaying personalized messages on an access panel (e.g., "Welcome Erin") and selectively capturing a user's image with a camera based on the authentication result (e.g., if the user is on a watch list), providing the specific functionality claimed.
  • Motivation to Combine: A POSITA would incorporate Barry's teachings to improve the security and user-friendliness of the base Soleimani/Elfstrom system. Adding encryption to the wireless link between the access panel and the lock is a well-known security measure. Similarly, adding personalized display messages and selective image capture would be an obvious way to enhance the user experience and add a layer of security, respectively.
  • Expectation of Success: Implementing these features was well within the skill of a POSITA, as encryption protocols and the use of displays and cameras in access control systems were common.

Ground 3: Obviousness over Soleimani/Elfstrom/Zacchio/Bliding - Claims 1-4, 6-9, 11-12, and 20-22 are obvious over Soleimani in view of Elfstrom, Zacchio, and Bliding.

• Prior Art Relied Upon: Soleimani (Patent 9,483,887), Elfstrom (Patent 8,730,004), Zacchio (Application # 2012/0218076), and Bliding (European Application # EP 2514888 A1).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground primarily addressed limitations in independent claim 1 and its dependents related to the physical door latch assembly. Petitioner argued Zacchio taught using an "electrical isolation sleeve" on the door spindle to isolate the doorknob from ground potential, which allows the doorknob itself to function as an effective antenna (as required by claim 8). Bliding was cited for its teaching of placing a capacitive touch/proximity sensor directly on the doorknob, which unlocks the latch only when a user touches it after successful wireless authentication. This combination allegedly met the limitations requiring an isolated doorknob with a proximity sensor that gates the final unlocking action.
  • Motivation to Combine: A POSITA would combine these teachings to improve performance and usability. Using the doorknob as an antenna, as taught by Zacchio, avoids signal degradation from placing an antenna inside a metal lock assembly. Adding Bliding’s touch sensor to the doorknob provides an intuitive and secure two-factor unlocking process (presence of credential + physical touch), which is a natural design choice for door access.
  • Expectation of Success: Integrating an isolation sleeve and a capacitive sensor into a doorknob were known and predictable mechanical and electrical engineering tasks.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 5 and 10 based on the combination of Soleimani, Elfstrom, Zacchio, Bliding, and Barry, relying on similar theories for combining the various features taught by the prior art.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was unwarranted because the primary prior art references were never considered during prosecution and were not cumulative of the art that was considered.
• Petitioner also argued against discretionary denial under Fintiv, stating that institution was favored. Key reasons included:
  • Petitioner stipulated that, if IPR is instituted, it would not pursue the same invalidity grounds in the parallel district court litigation, eliminating concerns of duplicative efforts.
  • Investment in the parallel litigation was minimal at the time of filing, with no claim construction briefing or depositions having occurred.
  • The district court trial date was uncertain due to pandemic-related backlogs, making it likely that a Final Written Decision (FWD) from the PTAB would issue well before any trial.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-22 of the ’516 patent as unpatentable.