Google LLC v. SmartWatch Mobile Concepts LLC

1. Case Identification

• Case #: IPR2024-00852
• Patent #: 10,362,480
• Filed: April 26, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Smartwatch Mobile Concepts, LLC
• Challenged Claims: 1-9

2. Patent Overview

• Title: Method for Enabling a Wearable Device User to Access Secured Electronic Systems
• Brief Description: The ’480 patent describes methods for using wearable devices, such as smartwatches, to access secured electronic systems. The methods rely on user authentication via various techniques, including biometric data (voice, heart rate) and location information.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over Agrafioti in view of Berney.

• Prior Art Relied Upon: Agrafioti (Application # 2015/0028996) and Berney (Application # 2003/0046228).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Agrafioti disclosed a user authentication system centered on a wearable biometric device (e.g., a wristband) used to gain secure access to "access points," which are equivalent to the claimed "secured electronic systems." Agrafioti's wearable included cellular and short-range radios, a GPS module, a microphone, and biometric sensors like photoplethysmogram (PPG) sensors for pulse detection, thus teaching most limitations of the independent claims. Berney taught using a wearable watch with a GPS receiver to authenticate a user for "wireless transactions" (e.g., accessing a restricted area) and disclosed using GPS-derived location information as an additional security layer or "backup" to proximity-based authentication.
  • Motivation to Combine: A POSITA would combine Berney’s teachings on using GPS for enhanced security with Agrafioti’s system. Agrafioti already taught that its wearable could "employ additional non-biometric security factors," including proximity data and GPS location. A POSITA would thus have been motivated to implement Berney's specific method of using GPS location to "agree with proximity communications" to enhance the security of Agrafioti's system in a predictable way.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references described similar wrist-worn devices with comparable hardware platforms (processors, memory, GPS, biometric sensors). The implementation of GPS for location-based authentication in wearables was well-understood technology at the time.

Ground 2: Claims 1-9 are obvious over Tharappel in view of Berney.

• Prior Art Relied Upon: Tharappel (Patent 9,684,778) and Berney (Application # 2003/0046228).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Tharappel disclosed a wearable device (e.g., a watch) that authenticates a user via biometrics (e.g., voice, pulse) to extend authentication across a "trust group" of smart devices, such as unlocking a smartphone. Tharappel's wearable included cellular and short-range wireless adapters (e.g., Bluetooth), biometric sensors, a SIM interface, and a GPS component. Tharappel taught most limitations, including user authentication with the wearable and providing access to a secured electronic system (a locked smartphone). Berney was cited again for its teachings on using location and proximity data in conjunction with biometric authentication to heighten security.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Berney's use of GPS location data into Tharappel's system to further Tharappel's stated goal of providing "secure, convenient access." Tharappel expressly taught that its wearable could be configured to accept "other types of authentication credentials," and a POSITA would have recognized Berney's proximity authentication with GPS backup as such a credential. This addition would provide another layer of security, making forgery more difficult.
  • Expectation of Success: A POSITA would have expected success in combining these teachings. Both references described wearable watch-like devices with similar platforms, including GPS components and biometric authentication capabilities. The modification could be implemented with software changes to use GPS location data for authentication, a well-understood practice.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-9 are obvious over Agrafioti, Berney, and Lee (Application # 2014/0196131), where Lee added specific teachings on wrist vein pattern sensors. Further grounds argued claims 2, 5, and 8 are obvious over Agrafioti and Jun (Patent 9,836,900) for specific GPS-based access control, and that claims 1-9 are also obvious over the combination of Tharappel, Berney, and Lee.

4. Key Claim Construction Positions

• Petitioner argued that the phrase "at least one of," when followed by a list of options joined by "and" (e.g., "at least one of the microphone and the skin illumination and measurement hardware"), should be interpreted disjunctively. This means the claim is met if one or more of the listed items is present. This construction is critical to Petitioner's arguments, as the prior art often discloses one, but not necessarily all, of the listed authentication methods or hardware components in a single embodiment.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, asserting that the petition presented compelling evidence of unpatentability. It contended that the parallel district court litigation was at a very early stage, with no trial date set and a median time-to-trial of nearly 49 months, ensuring an FWD would issue long before trial. Further, litigation investment was minimal, and the IPR challenged all claims, whereas only claim 2 was asserted in the district court.
• Petitioner also argued against denial under §325(d), stating that the Office had never previously considered the patentability of the challenged claims over any of the asserted prior art combinations. While Agrafioti was considered during prosecution, it was only for anticipation and not in an obviousness combination. Petitioner contended the examiner erred materially by failing to identify teachings in Agrafioti that rendered the claims obvious and by allowing dependent claims to be rewritten as allowable independent claims without sufficient analysis.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’480 patent as unpatentable.