Samsung Electronics Co Ltd v. Fendgo LLC

1. Case Identification

• Case #: IPR2024-00113
• Patent #: 11,265,404
• Filed: November 1, 2023
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Fendgo, LLC
• Challenged Claims: 9-15

2. Patent Overview

• Title: Self-Defense Mechanism Integrated Mobile Device
• Brief Description: The ’404 patent discloses a self-defense mechanism for a mobile device, wherein activating a panic button causes the device to capture image and audio data and transmit it, along with location and owner information, to authorities. Activation can be triggered by a series of button depressions.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Walker and Kim - Claims 9, 10, 12-14 are obvious over Walker in view of Kim.

• Prior Art Relied Upon: Walker (U.K. Publication GB 2 401 752A) and Kim (WO 2004/056000 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Walker, which discloses a mobile device with an "eyewitness button," teaches most elements of the challenged claims. When pressed, Walker's button initiates the capture and transmission of streaming video, sound, and precise geographical coordinates to a remote facility. Walker also discloses linking this data with the "device owner's identity." Petitioner contended the primary element Walker lacks is activating the panic button via a "series of depressings." Kim was argued to supply this missing element, as it discloses an emergency key on a mobile phone that executes an emergency mode when "manipulated a plurality of times, e.g., three times."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Walker and Kim to improve the functionality of Walker's device. Both references address triggering an emergency function on a mobile device. Petitioner asserted a POSITA would have recognized that substituting Kim’s multi-press activation for Walker's single-press, recessed button was a simple substitution of one known method for preventing accidental activation for another to achieve the same predictable result.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because implementing a multi-press trigger was a well-known technique for panic buttons. Walker itself suggests that a "series of actions and/or inputs" could be used, demonstrating the foreseeability of such a modification.

Ground 2: Obviousness over Zellner and Kim - Claims 9-14 are obvious over Zellner in view of Kim.

• Prior Art Relied Upon: Zellner (Patent 6,807,564) and Kim (WO 2004/056000 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Zellner discloses a portable IP device with a built-in "panic button" that, when pressed, automatically transmits messages to an emergency service center (ESC). Zellner's device includes a camera, microphone, and GPS to capture and transmit images, the user's voice, location, and personal information to the ESC. Similar to the Walker combination, Petitioner argued Zellner teaches all elements except for activation by a series of depressions. Kim was again relied upon to teach this multi-press activation feature.
  • Motivation to Combine: The motivation was similar to Ground 1A. A POSITA would have been motivated to incorporate Kim's known technique for preventing false alarms into Zellner’s panic button device. Since Zellner's device could be a portable or wearable unit, the risk of inadvertent activation would be high, motivating a POSITA to adopt a known solution like a multi-press sequence.
  • Expectation of Success: Success was expected because modifying a button to require multiple presses was a straightforward and predictable design choice for improving reliability and preventing false activations, a recognized need in the art.

Ground 3: Obviousness over Walker - Claim 15 is obvious over Walker.

• Prior Art Relied Upon: Walker (U.K. Publication GB 2 401 752A).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Walker alone renders claim 15 obvious. Claim 15 recites an "emergency safety device" with a panic button activated by a "button sequence." Petitioner contended that Walker's disclosure of activating its eyewitness button remotely by "dialling [sic] a telephone number ... and entering a code" meets the "button sequence" limitation, as entering a number and code on a phone comprises a sequence of button presses. Further, claim 15 requires transmission "via text message." Petitioner argued that Walker’s disclosure of transmitting data via "an electronic messaging service," such as email or MMS, teaches this limitation, as a POSITA would understand MMS to be a form of text messaging.
  • Key Aspects: This ground is distinct as it relies on a single reference and a broader interpretation of "button sequence" to include remote activation via a code, which Walker explicitly discloses.

• Additional Grounds: Petitioner asserted several additional obviousness challenges, including:

  • Claims 9, 10, 12-14 over Martin (Patent 6,839,552) in view of Kim, arguing Martin's "keystroke sequence" on a wireless telephone was analogous to a panic button.
  • Claim 14 over the primary combinations further in view of Dixit (Patent 6,449,472), which explicitly teaches actuating a panic switch "five times" to summon police, directly mapping onto the limitation in claim 14.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The scheduled trial date in the parallel district court litigation is approximately 16 months away, and any final written decision (FWD) from the IPR would issue shortly after that date, a timeline the Board has previously found acceptable. Investment in the parallel litigation was argued to be low, with no substantive orders issued and key events like claim construction still many months away.
• Petitioner further argued that the merits of the petition are compelling and that none of the cited prior art references were considered during the original prosecution, weighing against discretionary denial under 35 U.S.C. §325(d). To address overlap, Petitioner submitted a stipulation that it would not pursue in district court any invalidity grounds raised or that could have been reasonably raised in the IPR.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 9-15 of the ’404 patent as unpatentable.