PTAB

IPR2024-00573

Microsoft Corp v. Proxense LLC

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1. Case Identification

2. Patent Overview

  • Title: Hybrid Device Having a Personal Digital Key and Receiver-Decoder Circuit and Methods of Use
  • Brief Description: The ’042 patent discloses a “hybrid device” that contains both an integrated personal digital key (PDK) and an integrated receiver-decoder circuit (RDC). The integrated components are designed to communicate wirelessly with external RDCs and PDKs, respectively, to enable secure access to applications, functions, or services upon entering a proximity zone.

3. Grounds for Unpatentability

Ground 1: Obviousness over Giobbi-157, Giobbi-139, and Dua - Claims 1, 5-6, 8-11, and 13-14 are obvious over Giobbi-157 in view of Giobbi-139, and further rendered obvious by Dua.

  • Prior Art Relied Upon: Giobbi-157 (Application # 2007/0245157), Giobbi-139 (Application # 2004/0255139), and Dua (Patent 9,042,819).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Giobbi-157 taught a portable Personal Digital Key (PDK) for authenticating a user to an external Receiver-Decoder Circuit (RDC) to enable transactions, and expressly suggested integrating this PDK into a cell phone for convenience. Giobbi-139, in turn, taught integrating an RDC into a mobile device like a cell phone to secure the device itself by enabling or disabling its functions based on communication with an external PDK. The combination of these two references, Petitioner asserted, resulted in the claimed "hybrid device": a single mobile device containing both an integrated PDK (per Giobbi-157) and an integrated RDC (per Giobbi-139). This combined device would be capable of the claimed bidirectional communication—the integrated RDC communicating with external PDKs to secure the device, and the integrated PDK communicating with external RDCs for transactions. Petitioner further contended that Dua, which discloses a mobile device with an integrated RFID tag (analogous to a PDK) and an integrated RFID reader (analogous to an RDC), corroborates that integrating both transmitter and receiver components for proximity-based security into a single device was a known and obvious design choice.
    • Motivation to Combine: A POSITA would combine Giobbi-157 and Giobbi-139 to create a single, more secure and convenient device. The combination would leverage Giobbi-157’s teaching of an integrated PDK for accessing external services with Giobbi-139’s teaching of an integrated RDC for securing the device’s internal data. Petitioner noted the references were filed by the same applicant, describe compatible PDK/RDC architectures, and address the common goal of providing secure, proximity-based access control, making the combination logical and predictable.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the Giobbi references because it involved integrating known components (PDKs and RDCs) into a known device (a cell phone) to perform their established functions. The combination would predictably yield a device with enhanced security for both its internal assets and external transactions.

Ground 2: Obviousness over Broadcom - Claims 10-11 and 13-14 are obvious over Broadcom.

  • Prior Art Relied Upon: Broadcom (European Patent No. EP 1 536 306 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Broadcom alone teaches the method claimed in claims 10-11 and 13-14. Broadcom discloses a system where an "Access Device" (which can be a mobile phone, i.e., the "hybrid device") communicates with a "wireless proximity token" (the "external PDK"). The Access Device contains a "wireless proximity reader" (the "integrated RDC") and a secure "authentication component" that Petitioner argued functions as the "integrated PDK." Petitioner argued that Broadcom’s system performs the method of claim 10 by creating a first wireless link when the external token comes near the integrated reader, receiving a signal from the token, generating an enablement signal to authorize a service, and sending that signal to a service provider. Broadcom's disclosure that the hybrid device can be a cell phone was argued to render claim 11 obvious, and its teachings of electrical couplings and wireless links were asserted to meet the limitations of method claims 13 and 14.

4. Key Claim Construction Positions

  • Hybrid Device: Petitioner proposed construing this term as "a device comprising an integrated personal digital key (PDK) and an integrated receiver-decoder circuit."
  • Personal Digital Key (PDK): Proposed as "an operably connected collection of elements including an antenna and a transceiver for communicating with a RDC and a controller and memory for storing information particular to a user."
  • Receiver-decoder circuit (RDC): Proposed as "a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing."
  • Petitioner noted that these constructions were consistent with those adopted in a prior district court proceeding involving other patents in the same family.

5. Arguments Regarding Discretionary Denial

  • §325(d) (Advanced Bionics): Petitioner argued against discretionary denial, asserting that the primary references (Giobbi-157, Dua, Broadcom) were never considered by the examiner during prosecution. While Giobbi-139 was cited in an Information Disclosure Statement, Petitioner argued it was never substantively applied or discussed by the examiner, and therefore denial on this basis would be inappropriate.
  • §314(a) (Fintiv): Petitioner argued that the Fintiv factors weighed strongly against discretionary denial of institution. The key arguments were that the parallel district court litigation is in a very early stage with discovery stayed, and a pending motion to transfer venue has rendered the trial schedule highly uncertain. Petitioner contended that a Final Written Decision (FWD) from the PTAB would likely issue well before any potential trial, thus favoring institution to promote efficiency.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-6, 8-11, and 13-14 as unpatentable.