PTAB

IPR2023-00211

Samsung Electronics Co Ltd v. CardWare Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Functional Credit Card Type Portable Electronic Device
  • Brief Description: The ’520 patent discloses a method for facilitating and authorizing an automated teller machine (ATM) transaction using an electronic device. The device wirelessly transmits transaction information, including statically and dynamically generated limited-use number portions, to the ATM.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gill, Smith, and Kay - Claims 18-21 and 24 are obvious over Gill in view of Smith and Kay.

  • Prior Art Relied Upon: Gill (Patent 9,098,846), Smith (Application # 2013/0232083), and Kay (Application # 2013/0124410).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gill taught a system for conducting contactless transactions at an ATM using a mobile device via near-field communication (NFC). However, Gill lacked specific details on securing the transaction data. Smith allegedly remedied this deficiency by disclosing a mobile device that uses a tokenized Mobile Cloud Account (MCA) number and a dynamic payment cryptogram for transactions, instead of the user’s real card account (RCA) number, to reduce fraud. This combination supplied the core method steps of independent claim 18, including providing account information wirelessly. To meet limitations regarding the user interface, Petitioner asserted that Kay taught a graphical user interface (GUI) on a mobile device specifically for ATM transactions, allowing a user to select operations like "withdraw" or "deposit" and enter a currency amount. Gill only generally disclosed a GUI, making Kay’s detailed interface an obvious implementation.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Smith with Gill to implement a known security solution (tokenization and cryptograms) to improve the security of the contactless ATM system described in Gill. A POSITA would also incorporate Kay’s well-understood GUI design into the Gill-Smith system to provide a logical and intuitive user experience for inputting transaction details on the mobile device, a feature Gill's system contemplated but did not detail.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying known and compatible techniques—security from Smith and a user interface from Kay—to an existing system framework from Gill to achieve the predictable results of enhanced security and improved usability.

Ground 2: Obviousness over Gill, Smith, Kay, and Gomez - Claims 18-24 are obvious over Gill in view of Smith, Kay, and Gomez.

  • Prior Art Relied Upon: Gill (Patent 9,098,846), Smith (Application # 2013/0232083), Kay (Application # 2013/0124410), and Gomez (Patent 9,600,808).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Gill-Smith-Kay combination by adding Gomez to provide specific details for generating the "dynamically generated limited-use number portions" required by claim 18. While Smith taught using a dynamic payment cryptogram, it did not specify how it was generated. Petitioner argued Gomez explicitly disclosed a method for generating a unique, time-limited authentication cryptogram for each transaction. Gomez's method was based on a "temporal signal" (e.g., date/time or a sequence number) combined with a secret "seed value" stored on the device. This directly taught the generation of a dynamic, single-use number that changes with each transaction.
    • Motivation to Combine: A POSITA seeking to implement the dynamic cryptogram taught by Smith within the Gill-Smith-Kay framework would have looked to known methods for generating such cryptograms. Gomez provided an established technique for creating time-sensitive, dynamic cryptograms to prevent replay attacks and enhance security. A POSITA would be motivated to integrate Gomez’s method to create a robust and secure implementation of the dynamic security feature.
    • Expectation of Success: Petitioner contended that incorporating Gomez's known method for generating dynamic cryptograms into the proposed system was a predictable application of a known technique to improve a similar system. The function of Gomez's cryptogram was highly similar to Smith's, ensuring a high likelihood of success in achieving more secure transactions.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §325(d) because the prior art references (Gill, Smith, Kay, and Gomez) were never cited or considered during the original prosecution of the ’520 patent, meaning the petition presented new arguments and art.
  • Petitioner also argued that discretionary denial under Fintiv was unwarranted. It asserted that the district court trial in a parallel litigation was scheduled for late May 2024, closely aligning with the expected date of a Final Written Decision (FWD), making the timing factor neutral. Furthermore, Petitioner argued that investment in the district court case was minimal at the time of filing and that it would stipulate not to pursue the same invalidity grounds in court if the IPR was instituted, thereby eliminating concerns of duplicative efforts.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 18-24 of the ’520 patent as unpatentable under 35 U.S.C. §103.