PTAB

IPR2023-00146

Askeladden LLC v. Kioba Processing LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Increased Security of Wireless Transactions
  • Brief Description: The ’792 patent describes a “smartlink module” designed to be coupled with a mobile communication device (e.g., a cell phone). The module facilitates secure wireless transactions by using a smartcard chip that communicates wirelessly with a third-party terminal (like a POS device) and electrically with the mobile device, incorporating an authentication step before data transfer.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Lauper and ISO Standards - Claims 1-7 and 24-31 are anticipated by Lauper or, in the alternative, are obvious over Lauper in view of admitted prior art ISO Standards.

  • Prior Art Relied Upon: Lauper (Application # 2002/0041175), ISO 7816-4, and ISO 14443 (admitted prior art).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lauper, which discloses an "interchangeable battery" for a mobile phone, teaches every limitation of the challenged claims. Lauper's battery functions as the claimed "smartlink module," containing an "integrated circuit (communication controller) 21" which Petitioner mapped to the claimed "smartcard chip." This circuit communicates wirelessly via an RFID antenna with an external device like a POS terminal (the "first data channel") and electrically via contacts with the mobile phone (the "second data channel"). Petitioner asserted that the critical limitation of claim 1—authenticating the mobile device before enabling data transfer to the third-party terminal—is disclosed in Lauper’s description of a "variant embodiment" where an authentication process using a digital signature ensures the battery belongs to the mobile phone's owner before monetary amounts are transferred.
    • Motivation to Combine (for §103 grounds): To the extent Lauper does not explicitly teach the authentication step or full compliance with smartcard standards, Petitioner argued a person of ordinary skill in the art (POSITA) would combine Lauper with the admitted prior art ISO standards. Lauper’s stated aim is to create a device compatible with a "plurality of different standards." A POSITA would have been motivated to incorporate the well-known authentication and communication protocols from ISO 7816 (for contact interfaces) and ISO 14443 (for contactless interfaces) to ensure security and interoperability with standard POS terminals, which were designed to comply with these very standards.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in implementing the ISO standards’ mutual authentication procedures in the Lauper device. This would involve a predictable application of conventional, well-documented security protocols to a known type of device to achieve the desired, well-known result of secure transactions.
    • Key Aspects: Petitioner contended the patent owner overcame prosecution by arguing that prior art ISO standards did not permit simultaneous contact and contactless operation. Petitioner asserted this was a mischaracterization and, more importantly, irrelevant to the claims, which only require authentication to occur before data transmission, not simultaneously.

4. Key Claim Construction Positions

  • "smartlink module" (claims 1, 24): Petitioner proposed this term should be construed as "a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device." This construction was central to mapping the functionality of Lauper's "interchangeable battery" to the preamble of the independent claims.
  • "smartcard chip" (claims 1, 24) and "said smartcard processor chip" (claims 2, 5, 7): Petitioner proposed these terms mean "a device including a processor and memory and including processor executable code for providing data processing capability." This construction allowed Petitioner to equate Lauper's disclosed "integrated circuit (communication controller)" with the claimed smartcard chip, arguing that a POSITA would understand them to be functionally equivalent components for secure data processing.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-7 and 24-31 of Patent 7,110,792 as unpatentable.