PTAB

IPR2023-00147

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 system for increasing the security of wireless transactions conducted with a mobile communication device. The system comprises a "transaction controller" that includes a mobile user interface device (e.g., a cell phone) and a smartcard chip, which facilitates secure, wireless communication between the mobile device and a third-party terminal.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Lauper and ISO Standards - Claims 8-22 are anticipated by Lauper under 35 U.S.C. §102 or are obvious over Lauper in view of admitted prior art ISO Standards under 35 U.S.C. §103.

  • Prior Art Relied Upon: Lauper (Application # 2002/0041175), ISO 7816-4, and ISO 14443.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lauper discloses all limitations of independent claim 8 and dependent claims 9-22. Lauper teaches a "transaction controller" comprising a mobile telephone (the "mobile user interface device") and an interchangeable battery that contains an integrated circuit (the "smartcard chip"). This chip, equipped with an antenna, forms a wireless data channel to communicate with an external third-party terminal, such as a Point-of-Sale (POS) device. Petitioner contended the key limitation of claim 8—authenticating the mobile device before the smartcard chip provides data to the terminal—is expressly taught in Lauper's "variant embodiment," where an authentication process ensures the battery belongs to the mobile phone's owner before monetary amounts are synchronized and transmitted.
    • Motivation to Combine (for §103 grounds): To the extent Lauper does not explicitly teach every detail of the authentication process, a person of ordinary skill in the art (POSITA) would combine Lauper with the well-known ISO 7816 and ISO 14443 standards. The ’792 patent admits these standards are conventional. A POSITA would be motivated to implement these standards to ensure Lauper's electronic wallet system was interoperable and secure according to prevailing industry practices for smartcard transactions.
    • Expectation of Success: A POSITA would have a high expectation of success, as implementing the mutual authentication procedures detailed in the ISO standards was a conventional and well-understood practice for securing smartcard communications.

Ground 2: Obviousness over Lauper and Fu - Claim 23 is obvious over Lauper in view of Fu under §103.

  • Prior Art Relied Upon: Lauper (Application # 2002/0041175) and Fu (Application # 2001/0024066).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 23 depends from claim 21 and adds the limitation that the claimed "mobile communicator" is a "handheld computer." Lauper's system uses a mobile telephone. Fu discloses combining a smart card interface device with handheld devices like PDAs (e.g., PalmPilot, IBM WorkPad) to provide enhanced security capabilities, such as data encryption and secure storage, that the handhelds lack on their own. Petitioner argued that Fu explicitly teaches using smart cards to add transaction functionality to handheld computers.
    • Motivation to Combine: A POSITA would combine Lauper and Fu by substituting the mobile phone in Lauper's system with a handheld computer or PDA as taught by Fu. The motivation would be to expand the applicability of Lauper's secure transaction system to a wider variety of popular consumer devices beyond just mobile phones. This modification would also make the resulting combination more affordable and versatile, which was a known market driver at the time.
    • Expectation of Success: A POSITA would have a high expectation of success in making this combination. Substituting one type of portable electronic device (a mobile phone) for another (a PDA/handheld computer) within a secure transaction framework was a predictable design choice, as both devices served as user interfaces for mobile applications.

4. Key Claim Construction Positions

  • "transaction controller" (preamble of claim 8): Petitioner argued this term is a limitation and should be construed to mean "a mobile user interface device and a processor that comprises a data channel being adapted to wirelessly communicate transaction data between said processor and a third party terminal." This construction is based on the specification and defines the essential components of the claimed invention.
  • "smartcard chip" and "said processor" (claims 8, 10, 14, 15): Petitioner contended that the term "said processor" in dependent claims 10, 14, and 15 lacks a proper antecedent in claim 8. Based on the specification and prosecution history, a POSITA would understand that "said processor" refers to the previously recited "smartcard chip" in claim 8, as the chip itself contains the processing capabilities.
  • "mobile user interface device" (claims 8-11, 13, 15, 16, 18, 21): Petitioner proposed this term be construed as "a mobile communication device." The specification provides examples such as cellular phones, PDAs, and mobile communicators, supporting a construction that encompasses a range of portable electronic devices capable of user interaction and communication.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 8-23 of Patent 7,110,792 as unpatentable.