PTAB

IPR2022-00877

Samsung Electronics Co Ltd v. Aire Technology Ltd

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Key Events
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 ’827 patent discloses a method for contactless communication between a portable data carrier (e.g., a smart card) with at least two applications and a reading device. The method involves generating communication-readiness signals with unique identification numbers for different applications or groups of applications to indicate their availability to the reader.

3. Grounds for Unpatentability

Ground 1A: Claims 1-3, 6-7, 19, 21-24, 30, and 35-38 are obvious over Jong

  • Prior Art Relied Upon: Jong (Application # 2005/0184163).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jong, which teaches a multi-application Java Card system, discloses all limitations of the challenged claims. Jong’s system uses Application Identifiers (AIDs) to present available applications (“applets”) to a terminal for selection. Petitioner contended that these AIDs function as the claimed "communication-readiness signals" and "identification numbers." Jong discloses that applications can be grouped by a common Registered Application Provider Identifier (RID), which is part of the AID. Petitioner asserted that transmitting an AID containing an RID for a group of applications meets the claim limitation of assigning a single identification number to every application in a group to indicate the communication readiness of that group. Jong also teaches using additional data within the AID, such as a Firewall ID, to distinguish individual applications within a group, mapping to the "additional selection information" of dependent claims.
    • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 1B: Claims 4-5, 8-9, 18, 20, 25-26, and 31-32 are obvious over Jong in view of Everett

  • Prior Art Relied Upon: Jong (Application # 2005/0184163) and Everett (Patent 6,220,510).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Jong by adding Everett to teach the "toggling" and parallel communication limitations. While Jong describes a session may require multiple transactions, Petitioner argued it lacks specific implementation details for switching between applications during a session. Everett was introduced to supply this teaching, as it describes a multi-application smart card with a "delegation function" that temporarily interrupts one application to execute another. Petitioner contended that this context switching or delegation mechanism in Everett is equivalent to the "toggling" recited in claims 4 and 25, which can be implemented by branching or context switching as claimed.
    • Motivation to Combine (for §103 grounds): A POSITA, seeking to implement the multi-transaction sessions suggested by Jong, would combine Jong's Java Card system with Everett's delegation scheme. This combination would allow multiple applications to communicate with a terminal sequentially or in parallel to accomplish complex tasks in a single session, improving efficiency and user experience.
    • Expectation of Success (for §103 grounds): Petitioner argued success was expected because both references describe mechanisms for executing smart card applications for contactless communication, and combining them involved applying known methods of context switching to a known multi-application card environment.

Ground 1C: Claims 10-11 and 33 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 addressed claims related to informing a reader of the presence of unselected applications using collision signals or time slots. Petitioner argued that while Jong teaches a card can emulate multiple cards and present multiple applications, it does not detail the anti-collision mechanism. RFIDH, a handbook on contactless smart cards, was introduced to provide this missing element. RFIDH describes standard anti-collision procedures (ISO-14443), including intentionally causing a data collision to signal the presence of multiple transponders (mapping to claim 10) and using a dynamic slotted ALOHA procedure where applications transmit their identifiers in allocated time slots (mapping to claim 11).
    • Motivation to Combine (for §103 grounds): A POSITA implementing Jong's multi-application card, which emulates multiple cards, would have been motivated to incorporate a standard anti-collision mechanism from a reference like RFIDH. This would ensure the card could communicate efficiently with conventional terminals that support ISO-14443 standards, allowing the terminal to quickly detect and select from multiple available applications.
    • Expectation of Success (for §103 grounds): Petitioner asserted success was predictable because the combination involved implementing well-known, standardized anti-collision protocols within the established framework of a Java Card system, a routine design choice for a POSITA.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These included combinations of Jong with Nozawa (for using selection history to prioritize applications), Deo (for authentication using digital certificates), and Messerges (for selecting a group of applications at once). Petitioner also presented a full set of parallel grounds (2A-2F) that added the JCVM (Java Card Virtual Machine) specification to each of the foregoing combinations to further support the baseline teachings of Jong's Java Card environment.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The related district court litigation was in its infancy, with minimal investment by the court or parties. Petitioner stipulated that it would not pursue in district court any invalidity grounds raised in the IPR petition, eliminating concerns of duplicative efforts. Petitioner contended that the scheduled trial date was only three months after the expected Final Written Decision (FWD), a gap that does not weigh strongly for denial, and asserted that the strong merits of the petition outweighed any potential inefficiencies.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-16, 18-33, and 35-38 of the ’827 patent as unpatentable.