Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00783
• Patent #: 9,679,289
• Filed: April 19, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hybrid Device with Proximity-Based Secure Wireless Communication
• Brief Description: The ’289 patent relates to a "hybrid device," such as a cellular phone, that includes both an integrated personal digital key (PDK) for secure information storage and an integrated receiver-decoder circuit (RDC) for wireless communication. The system enables secure interactions with external devices within a proximity zone to authorize applications, functions, or services.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua and Giobbi157 - Claims 1-6, 8-11, and 14-19 are obvious over Dua in view of Giobbi157.

• Prior Art Relied Upon: Dua (Application # 2006/0258289) and Giobbi157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua disclosed the core limitations of a "hybrid device" by teaching a cellular phone with an integrated "RFID Tag-Reader Module" that functions as both the claimed integrated PDK (the tag component) and the integrated RDC (the reader component). Dua’s device established a wireless link with an external device, received signals, and generated an enablement signal (a Bluetooth paging message) to enable services like electronic payments. Petitioner contended that Giobbi157 was a well-known reference for enhancing security in such devices, teaching specific features like storing financial or biometric information in a tamper-proof memory and using an external validation database to authorize transactions.
  • Motivation to Combine: A POSITA would combine Giobbi157’s specific security features with Dua's general hybrid device framework to enhance the security and functionality of Dua's "electronic payments" capability. For example, storing financial data in a tamper-resistant memory as taught by Giobbi157 was an obvious and predictable way to improve the security of the system disclosed in Dua.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved applying known security techniques from Giobbi157 to a known device architecture from Dua to achieve the predictable result of a more secure and versatile device.

Ground 2: Obviousness over Buer - Claims 1-7, 10-11, and 14-19 are obvious over Buer.

• Prior Art Relied Upon: Buer (European Application # EP 1536306).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Buer, standing alone, rendered the claims obvious. Buer disclosed an "access device," such as a cellular phone, that functioned as the claimed "hybrid device" by including an "authentication component" (fulfilling the role of the integrated PDK) and a "wireless proximity reader" (the integrated RDC). Buer's device communicated with an external "wireless token" (an external PDK) to enable a wide variety of secure services, including access to data networks and financial transactions. Petitioner asserted that Buer’s authentication component generated an enablement signal, such as encrypted credentials sent to a service provider, to enable the claimed applications, functions, or services.

Ground 3: Obviousness over Buer and Nishikawa - Claim 4 is obvious over Buer in view of Nishikawa.

• Prior Art Relied Upon: Buer (European Application # EP 1536306) and Nishikawa (European Application # EP 1600885).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted claim 4, which required the local, secured information to include "biometric information for authenticating a user." Petitioner argued that while Buer disclosed authentication using credentials like passwords, Nishikawa taught improving a cellular phone by using a SIM card to store multiple applications, including fingerprint templates used to authenticate a user "on the basis of biometric data."
  • Motivation to Combine: A POSITA would combine Nishikawa's teaching of storing biometric data on a SIM card with Buer's secure access device to improve its authentication capabilities. This combination would further Buer's stated goal of restricting access and providing additional layers of verification, representing a predictable improvement to the system.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these teachings, as it involved integrating a known authentication method from Nishikawa into a known secure device architecture from Buer, using similar and compatible hardware.

• Additional Grounds: Petitioner asserted additional obviousness challenges, such as adding Kotola (Application # 2004/0176032) to the Dua combination to explicitly teach separate antennas for the integrated PDK and RDC. Petitioner also asserted grounds adding Giobbi157 to the Buer combination to teach features like external authentication databases, biometric storage, and implementing external devices in wearables like watches or jewelry.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that the primary prior art references relied upon in the petition (Dua, Buer, Nishikawa, and Giobbi157) were not considered by the examiner during the original prosecution.
• Petitioner also argued against discretionary denial under Fintiv, stating that although a trial is scheduled in a parallel district court case, the date is projected to be very close to the statutory deadline for a Final Written Decision in this IPR. Furthermore, discovery in the parallel case is in its early stages, and this petition challenges a broader set of claims than are at issue in the litigation, weighing in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’289 patent as unpatentable.