PTAB

IPR2022-01137

Apple Inc v. Aire Technology Ltd

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1. Case Identification

2. Patent Overview

  • Title: Method for Contactless Communication
  • Brief Description: The ’706 patent discloses methods and systems for contactless communication between a reading device and a portable data carrier (e.g., a smart card) that stores at least two distinct applications. The invention focuses on selectively addressing one of the applications using its specific identification number.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3 and 11-12 over Guthery and Nozawa

  • Prior Art Relied Upon: Guthery (Patent 6,824,064) and Nozawa (JP Application 2000-163539).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Guthery taught a multi-application smart card capable of wireless communication with a reader. In Guthery, the reader selects an application by sending a "Request-to-Send" packet containing a unique "application index," and the application, when ready, responds with a "permission-to-send" packet, which serves as a "communication-readiness signal." Nozawa taught improving efficiency in such systems by having the smart card maintain a selection history and automatically select the application with a high probability of being needed, such as the most recently selected application. For the limitation of storing information about the last-selected application in nonvolatile memory (claim 1), Petitioner pointed to Guthery’s disclosure of EEPROM and Nozawa’s teaching of storing selection history.
    • Motivation to Combine: A POSITA would combine Nozawa’s efficiency-improving technique with Guthery’s foundational system to solve a known problem: reducing the latency and number of initialization steps required before application execution. Guthery’s system represented the type of inefficient process that Nozawa was designed to improve.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Nozawa’s technique was specifically intended to improve multi-application smart card systems like Guthery’s. Modifying Guthery’s card manager software to track application history and preemptively select an application was argued to be a predictable implementation for a person of ordinary skill.

Ground 2: Obviousness of Claim 16 over Guthery, Nozawa, and the RFID Handbook

  • Prior Art Relied Upon: Guthery (Patent 6,824,064), Nozawa (JP Application 2000-163539), and the RFID Handbook (1999 textbook).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Guthery and Nozawa from Ground 1 and added the teachings of the RFID Handbook to address the limitations of claim 16. Claim 16 requires a memory divided into "sectors," with each sector storing no more than one application. Petitioner asserted that the RFID Handbook, a well-known textbook, explicitly taught this memory structure for security purposes, describing how a smart card’s EEPROM can be divided into independent sectors or segments to store different applications separately.
    • Motivation to Combine: A POSITA implementing the multi-application smart card of Guthery would look to a standard reference like the RFID Handbook for implementation details on memory management. The handbook’s technique of segmenting memory to isolate applications would have been an obvious and beneficial way to enhance the security of Guthery's system, an issue Guthery itself contemplated.
    • Expectation of Success: The RFID Handbook described segmenting EEPROM, the same type of non-volatile memory disclosed in Guthery. Therefore, a POSITA would expect this known memory organization technique to work predictably with Guthery’s system to provide enhanced security.

Ground 3: Obviousness of Claim 18 over Guthery and the Smart Card Handbook

  • Prior Art Relied Upon: Guthery (Patent 6,824,064) and the Smart Card Handbook (2003 textbook).

  • Core Argument for this Ground:

    • Prior Art Mapping: Claim 18 recites that the data carrier is configured as a "security module" in a device (e.g., a mobile phone) and has software to communicate contactlessly via the device's communication equipment. Petitioner argued Guthery taught using its smart card as a Subscriber Identity Module (SIM) in a mobile phone. The Smart Card Handbook, another standard reference, taught that a SIM card in a mobile phone functions as a "mandatory security module" and uses standard commands (per GSM 11.14) to instruct the mobile phone's communication equipment to open data channels and transmit data.
    • Motivation to Combine: Guthery explicitly disclosed its smart card could function as a SIM and incorporated GSM standards by reference. A POSITA would naturally look to a well-known text like the Smart Card Handbook for details on implementing these standards. The combination involved applying the standard, well-known functions of a SIM card as a security module to Guthery's smart card when used in its disclosed mobile phone embodiment.
    • Expectation of Success: A POSITA would expect success in applying standard GSM commands, as detailed in the Smart Card Handbook, to Guthery's SIM card, as Guthery itself stated its system was compatible with existing smart card standards and technology.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 20 over Guthery and the RFID Handbook, relying on similar arguments regarding memory segmentation.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The parallel district court litigation was in a very early stage, with no claim construction or significant discovery having occurred. Petitioner contended the trial date was uncertain due to a pending motion to transfer, and that the petition was filed expeditiously after infringement contentions were served, weighing against denial.
  • Petitioner also argued against denial under General Plastic. It emphasized that a separate IPR had been filed by Samsung, but Apple was a different, unrelated petitioner that was sued separately over different products. Petitioner asserted there was no coordination with Samsung, and denying this petition would unfairly deprive Apple of access to IPR.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 11-12, 16, 18, and 20 of the ’706 patent as unpatentable.