Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00784
• Patent #: 10,073,960
• Filed: April 19, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-13, 14-20

2. Patent Overview

• Title: Proximity-Based Secure Access and Data Transmission
• Brief Description: The ’960 relates to a "hybrid device," such as a cell phone, that integrates both a personal digital key (PDK) for storing secure local information and a receiver-decoder circuit (RDC) for proximity-based wireless communication with external devices to enable various 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), Giobbi157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua discloses the core invention: a hybrid device (a cellular phone) containing an integrated "RFID Tag-Reader Module" that performs the functions of both the claimed integrated secure memory (the RFID tag component) and the integrated wireless communication interface (the RFID reader component). This module is battery-powered and enables communication with external devices to trigger services, such as transferring media. Petitioner contended that while Dua discloses storing user information and enabling electronic payments, Giobbi157 explicitly teaches storing sensitive biometric profiles and financial information (e.g., credit card data) in a tamper-proof memory within a similar device (a cell phone) to authenticate users and complete financial transactions.
  • Motivation to Combine: A POSITA would combine Giobbi157's specific teachings on securely storing biometric and financial data with Dua's hybrid device to enhance the security of applications Dua already disclosed, such as electronic payments and secure access. This combination would be a predictable implementation to prevent hackers from accessing confidential information, a stated goal 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 (securely storing financial data as taught by Giobbi157) to a known system (Dua's RFID-enabled phone) to achieve a predictable improvement in security.

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

• Prior Art Relied Upon: Buer (European Patent Application # EP 1536306).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Buer, by itself, renders the key claims obvious. Buer discloses a mobile "access device" (e.g., a cellular phone) that includes an "authentication component" (the claimed integrated, secure memory) and a "wireless proximity reader" (the claimed integrated, wireless communication interface). This device communicates with an external wireless token to control access to secured services, such as data networks or financial transactions. Petitioner argued that Buer's authentication component stores encrypted credentials locally, and its proximity reader receives encrypted data from the external token, thereby teaching the core functionality of the ’960 patent. Although Buer does not explicitly show a battery, Petitioner argued it would have been obvious to a POSITA that a mobile device would include one for portability.
  • Motivation to Combine: Not applicable for this single-reference ground.
  • Expectation of Success: Not applicable for this single-reference ground.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 4, 8-10, 12, 13, 17, and 20 are obvious over Buer in view of Giobbi157 (adding teachings on external validation databases and integrating tokens into wearables like watches), and that claim 4 is obvious over Buer in view of Nishikawa (adding teachings on storing biometric data on a SIM card).

4. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued that discretionary denial is not warranted because none of the asserted prior art references (Dua, Buer, Giobbi157, Nishikawa) were considered by the Examiner during the original prosecution of the ’960 patent. The petition therefore raises arguments and art that the Patent Office has not previously evaluated.
• §314(a) (Fintiv): Petitioner contended that the Fintiv factors weigh against discretionary denial. Key arguments included that the trial date in the parallel district court proceeding (WDTX) is scheduled for February 2025, but the median time-to-trial in that venue suggests a likely slip, placing the Final Written Decision (FWD) in this IPR on a timeline to issue before or close to any potential trial. Furthermore, discovery in the parallel case is in its early stages, and this petition challenges a significantly larger set of claims than are at issue in the litigation, making the IPR a more efficient vehicle for resolving the patentability dispute.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 and 14-20 as unpatentable.