PTAB

IPR2022-00876

Samsung Electronics Co Ltd v. Aire Technology Ltd

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Data Storage Medium and Method for Contactless Communication Between the Data Storage Medium and a Reader
  • Brief Description: The ’706 patent discloses methods for contactless communication between a reading device and a portable data carrier (e.g., a smart card) that stores at least two applications. The data carrier generates distinct "communication-readiness signals," each containing a unique identification number, to inform the reading device of each application's availability for selection and communication.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jong and Nozawa - Claims 1-3, 9, 11-12, 14-17, and 19 are obvious over Jong in view of Nozawa.

  • Prior Art Relied Upon: Jong (Application # 2005/0184163) and Nozawa (Japanese Application # 2000-163539).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jong teaches the core system of the challenged claims: a Java Card (a portable data carrier) with multiple applications that communicates contactlessly with a terminal (a reading device). Jong’s card provides application identifiers (AIDs) for each available application to the terminal for selection. However, Jong does not explicitly teach using the history of application usage to prioritize communication. Petitioner asserted that Nozawa remedies this deficiency by disclosing an IC card that stores application selection history (e.g., the most recently used or most frequently used application) in non-volatile memory. Nozawa uses this history to automatically select an application when communication with a terminal begins, thereby teaching the limitation of storing information about the last selected application.
    • Motivation to Combine: A POSITA would combine these references to improve the efficiency and speed of transactions. Jong teaches storing dynamic data like the "date of the last transaction" but fails to specify how to use this data for application selection. A POSITA seeking to implement this feature would have looked to references like Nozawa, which explicitly teaches using such historical data to predict and pre-select the most likely desired application, thereby reducing transaction time.
    • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The combination involved implementing a known technique (storing and using selection history per Nozawa) into a known system (Jong's Java Card architecture) to achieve the predictable result of more efficient application selection.

Ground 2: Obviousness over Jong, Nozawa, and Deo - Claims 4-6 are obvious over Jong and Nozawa in view of Deo.

  • Prior Art Relied Upon: Jong (Application # 2005/0184163), Nozawa (Japanese Application # 2000-163539), and Deo (Patent 5,721,781).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Jong-Nozawa combination by adding the teachings of Deo to address claim limitations related to secure, session-based communication. Petitioner argued that Deo discloses a smart card authentication system where applications are assigned unique identifiers, such as RSA-generated digital certificates, which function as "dynamically allocated session numbers." These certificates are used to establish a secure, authenticated communication session between a specific application and a terminal. This combination, therefore, allegedly teaches addressing a selected application via a dynamically allocated session number linked to the application's identifier.
    • Motivation to Combine: A POSITA developing the multi-application smart card of Jong-Nozawa would have been motivated to incorporate Deo’s authentication mechanisms to improve transaction security. As smart cards are frequently used for sensitive transactions, adding robust, application-specific security as taught by Deo would be a logical and necessary improvement to the base system.
    • Expectation of Success: The expectation of success was argued to be high, as implementing standardized authentication techniques (digital certificates) into a smart card system was a well-understood practice.

Ground 3: Obviousness over Jong and RFIDH - Claims 18 and 20-22 are obvious over Jong in view of RFIDH.

  • Prior Art Relied Upon: Jong (Application # 2005/0184163) and RFIDH (RFID Handbook, 2nd Ed., 2003).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets claims requiring the data carrier to be configured as a "security module." Petitioner asserted that while Jong describes various security features for its Java Card (e.g., firewalls, cryptography), it lacks specific implementation details. RFIDH provides these details, describing a security logic module for contactless smart cards that incorporates a cryptological unit for authentication, data encryption, and key management. The combination of Jong’s system with RFIDH's detailed security architecture allegedly discloses a data carrier configured as a security module with software to communicate contactlessly.
    • Motivation to Combine: A POSITA implementing the security features mentioned in Jong would naturally turn to a standard reference text like RFIDH for guidance on building a robust security module. The motivation was to take the conceptual security of Jong and make it concrete and functional using the well-known and predictable techniques described in RFIDH, thereby improving the security of information on the card.
    • Expectation of Success: Success would be expected, as the combination involves applying established security hardware and software principles from a technical handbook to a smart card system designed to include such security.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on Jong alone, Jong in view of JCVM (a Java Card technical specification), and Jong in view of Messerges (disclosing a mobile device security module). These grounds relied on similar rationales of adding implementation details or known features to Jong's foundational system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its infancy, with minimal investment from the court and parties. The trial date was scheduled only three months before the expected Final Written Decision (FWD), a narrow gap that Petitioner argued favors institution. Critically, Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court any invalidity ground raised or that could have been reasonably raised in the petition, eliminating concerns of duplicative efforts. Finally, Petitioner asserted the strong merits of the petition, which relies on prior art not considered during prosecution, weigh heavily in favor of institution.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and cancellation of claims 1-6, 9-12, and 14-22 of the ’706 patent as unpatentable.