Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00782
• Patent #: 8,646,042
• Filed: April 19, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-6, 8-15, and 17-20

2. Patent Overview

• Title: Proximity-Based Device Interaction Using Integrated Keys and Readers
• Brief Description: The ’042 patent relates to a "hybrid device," such as a cellular phone, that includes both an integrated personal digital key (PDK) and an integrated receiver-decoder circuit (RDC). These components enable the hybrid device to communicate with external PDKs and RDCs to authorize and enable various applications, functions, or services based on proximity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua and Kotola - Claim 10 is obvious over Dua alone, or alternatively, Dua in view of Kotola.

• Prior Art Relied Upon: Dua (Application # 2006/0258289) and Kotola (Application # 2004/0176032).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua taught all limitations of method claim 10. Dua disclosed a cellular phone ("hybrid device") containing an "RFID Tag-Reader Module" that includes components for both "RFID tag functionality" (the integrated PDK) and "RFID reader functionality" (the integrated RDC). This module establishes a wireless link with an external device's RFID tag (external PDK), receives "RFID transmission data" (a first signal), and then the hybrid device automatically generates "a Bluetooth paging message" (an enablement signal) to enable a service, such as wireless media transmission, on the external device.
  • Motivation to Combine: For the alternative ground involving Kotola, Petitioner asserted that Dua's explicit incorporation of Kotola by reference for "other RFID Tag-Reader Module designs" provided a clear justification for the combination. A POSITA would combine Kotola's teaching of using separate antennas for the integrated tag and reader components with Dua's device to improve signal reception and enable simultaneous transmission and reception, which are known benefits of antenna diversity.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the modification involved implementing a known antenna configuration from an incorporated reference to achieve a predictable improvement in performance.

Ground 2: Obviousness over Buer - Claims 1, 3-6, 8-15, and 17 are obvious over Buer.

• Prior Art Relied Upon: Buer (European Patent Application Publication No. EP 1536306).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Buer disclosed a "hybrid device" (an access device, such as a mobile phone) comprising an "authentication component" (the integrated PDK) and a "proximity reader" (the integrated RDC). Buer’s authentication component acts as a PDK by storing and processing user credentials, while its proximity reader acts as an RDC by wirelessly receiving information from an external "wireless token" (the external PDK). Upon verifying the token's proximity, the authentication component generates an enablement signal (e.g., encrypted or signed credentials) that is sent to a service provider (an external RDC) to enable access to secured services like data networks or financial transactions.
  • Key Aspects: Petitioner argued Buer's teachings extend to dependent claims by disclosing that the hybrid device can be a "cellular phone" (claim 6), that enabling services is subsequent to the token entering proximity (claim 5), and that the integrated PDK stores information like network credentials that are passed to other components for use, satisfying the "inheritance information" limitation (claim 9).

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Buer with Lee (WO 90/06633) for claim 2 (adding a second PDK/RDC), Buer with Nishikawa (EP 1600885) for claim 12 (adapting the external PDK with a SIM card), and Buer with Hoffmann (Application # 2005/0151623) for claims 3 and 18-20 (enabling simultaneous communication and inheriting feature/personality information).

4. Key Claim Construction Positions

• Petitioner noted that in pending litigation, the court adopted constructions from a prior case for key terms. While arguing the prior art renders all claims obvious regardless of construction, Petitioner referenced the court's adopted constructions:
  • "hybrid device" means "[a] device comprising an integrated personal digital key (PDK) and an integrated receiver-decoder circuit."
  • "personal digital key" means "[a]n 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."

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued against discretionary denial because none of the asserted prior art references were previously considered by the examiner during prosecution. The petition therefore presented grounds based on new combinations of art, satisfying the first part of the Advanced Bionics framework.
• §314(a) (Fintiv): Petitioner contended that the Fintiv factors weighed against denial. Key arguments included: the scheduled trial date in the parallel district court case is close to the projected date for a Final Written Decision (FWD), leaving Factor 2 neutral; the parties have not significantly invested in the parallel proceeding as discovery had only recently opened (Factor 3); and this IPR challenges significantly more claims than are at issue in the litigation, making the IPR more efficient (Factor 4).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8-15, and 17-20 of Patent 8,646,042 as unpatentable under 35 U.S.C. §103.