PTAB

IPR2024-00114

Samsung Electronics Co Ltd v. Fendgo LLC

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1. Case Identification

2. Patent Overview

  • Title: Mobile Device with a Self-Defense Mechanism
  • Brief Description: The ’404 patent discloses a self-defense system integrated into a mobile device. The system features a panic button that, upon activation, captures image, audio, and location data and transmits this information to a predetermined emergency contact or authority.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over DiPerna964 in view of Strack.

  • Prior Art Relied Upon: DiPerna964 (Application # 2006/0201964) and Strack (Patent 10,460,590).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that DiPerna964 discloses nearly all elements of independent claim 1, including a mobile device with a camera unit, location unit, and transmitting unit for sending emergency data upon activation of a panic button. DiPerna964 also teaches activating the panic button via a simultaneous press of two buttons (limitation 1[e]) to prevent false alarms. However, Petitioner argued that DiPerna964 describes a panic button that directly triggers these functions, failing to disclose the claimed limitation of a panic button that "ready[s] itself to perform" the functions (limitation 1[d]). To meet this limitation, Petitioner turned to Strack, which discloses a security system on a mobile device where an initial "arming event" (e.g., a button press) does not immediately send an alarm but instead starts a "duress timer" and begins recording audio and video. Only upon expiration of this timer does the system enter an "alarm state" and transmit data and dial an emergency number. Petitioner contended this two-stage process of arming and then alarming corresponds to the claimed "ready itself to perform" functionality. Dependent claims 2-8 were argued to be obvious as they add features also taught by DiPerna964, such as including a time/date stamp (claim 2), pre-recorded messages (claim 3), silent or audible alarms (claims 4-6), a safety switch (claim 7), and owner identification information (claim 8).
    • Motivation to Combine: A POSITA would combine Strack's arming and timer technique with the system in DiPerna964 to advance DiPerna964's own stated objectives. DiPerna964 recognized the need for user flexibility in unpredictable situations and for safeguarding against false triggers. Petitioner argued that incorporating Strack’s timer would provide a user with a crucial evaluation period to assess a potential threat and disarm the device if the situation de-escalates, thereby improving flexibility and further reducing the likelihood of false alarms.
    • Expectation of Success: A POSITA would have a high expectation of success in this combination. The proposed modification involved applying a known technique (Strack's timer-based arming system) to a similar device (DiPerna964's mobile emergency device) to achieve the predictable benefits of enhanced user control and false alarm prevention.

4. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner’s entire invalidity case is predicated on the argument that the challenged claims are not entitled to a priority date earlier than January 30, 2019. The core of this argument is that the claim limitation "a panic button, adapted to, when activated, ready itself to perform..." lacks written description support under 35 U.S.C. §112 in the parent applications. Petitioner asserted that these earlier specifications only describe a panic button that directly triggers functions, not one that enters a preliminary "ready" state. This alleged break in the priority chain makes DiPerna964—a 2006 publication that is part of the patent's own family—qualifying prior art under 35 U.S.C. §102(a)(1).

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under either 35 U.S.C. §314(a) (Fintiv) or §325(d).
  • Fintiv Factors (§314(a)): Petitioner contended that the factors weigh against denial. It argued that the parallel district court litigation is in its early stages with minimal investment, a Final Written Decision would issue only a few months after the scheduled trial date, and the overlap between the proceedings is minimal because the IPR challenges claims not asserted in the litigation. Furthermore, Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR is instituted.
  • Prior Art and Arguments (§325(d)): Petitioner asserted that the primary prior art and arguments in the petition were not previously before the Patent Office. Strack is a new reference not cited during prosecution. While DiPerna964 was part of the file history, the examiner never considered it as potential prior art because the critical issue of the patent’s entitlement to its claimed priority date was never raised or examined. Therefore, the core of the Petitioner's obviousness ground is novel and warrants review.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’404 patent as unpatentable.