Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-01318
• Patent #: 8,646,042
• Filed: August 22, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1, 5-6, 8-11, and 13-14

2. Patent Overview

• Title: Hybrid Device with Proximity-Based Authentication
• Brief Description: The ’042 patent describes a "hybrid device" that includes both an integrated personal digital key (PDK) for storing user information and an integrated receiver-decoder circuit (RDC). The device is configured to communicate wirelessly with external PDKs and RDCs to enable secure transactions and control access to applications, functions, and services based on proximity.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5-6, 8-11, and 13-14 are obvious over Giobbi-157, Giobbi-139, and 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 discloses a Personal Digital Key (PDK) that can be integrated into a mobile device like a cell phone for secure, proximity-based authentication with an external reader (RDC). Giobbi-139, from the same applicant, discloses integrating an RDC into a mobile device to enable or disable the device based on communication with an external PDK, thereby enhancing security for data stored on the device itself. Petitioner asserted the combination of these references teaches a "hybrid device" with both an integrated PDK and an integrated RDC, meeting the core limitations of independent claim 1. The secondary reference, Dua, was presented as corroborating evidence, as it discloses integrating analogous RFID components (a tag, analogous to a PDK, and a reader, analogous to an RDC) into a single mobile device for proximity-based access control.
  • Motivation to Combine: A POSITA would combine the teachings of Giobbi-157 and Giobbi-139 to create a single, more secure and convenient mobile device. This combination would leverage Giobbi-157's integrated PDK for authenticating with external systems (e.g., payment terminals) while using Giobbi-139's integrated RDC to secure the mobile device itself from unauthorized use. The motivation was to achieve enhanced security for both assets external to and internal to the device.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success because the Giobbi references are in the same technical field, address similar problems, were filed by the same applicant, and describe compatible PDK/RDC architectures. Dua's successful implementation of analogous RFID technology in a single device further confirmed the predictability of the combination.

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

• Prior Art Relied Upon: Broadcom (European Patent # EP 1 536 306 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Broadcom alone discloses the elements of the challenged method claims. Broadcom teaches a "hybrid device" (e.g., a mobile phone or "access device") that includes an integrated RDC ("wireless proximity reader") and an integrated PDK (an "authentication component" that securely maintains credential information). Petitioner asserted that Broadcom shows this hybrid device creating a first wireless link with an external PDK ("wireless proximity token") when it comes into proximity. This interaction involves receiving a signal from the external PDK, generating an enablement signal to access a secured service, and sending that signal to enable a function, thereby teaching the limitations of independent claim 10.
  • Motivation to Combine: As a single-reference ground, the motivation was inherent in Broadcom's disclosure. Petitioner argued that Broadcom teaches a complete system for secured access based on proximity, and a POSITA would have found it obvious to implement the disclosed method, which aligns directly with the steps of the challenged method claims.
  • Expectation of Success: Success would have been expected as Petitioner argued Broadcom provides a complete, functional description of the claimed method.

4. Key Claim Construction Positions

• Hybrid Device: Petitioner proposed this term be construed as "a device comprising an integrated personal digital key (PDK) and an integrated receiver-decoder circuit (RDC)." This construction was argued to be definitional to the invention and central to combining the teachings of Giobbi-157 (teaching an integrated PDK) and Giobbi-139 (teaching an integrated RDC).
• 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 these constructions were consistent with the specification and had been adopted in related district court litigation.

5. Arguments Regarding Discretionary Denial

• §325(d): Petitioner argued against discretionary denial under the Advanced Bionics framework because the prior art references and combinations asserted in the petition were never considered by the examiner during the original prosecution of the ’042 patent.
• Fintiv: Petitioner argued that denial under Fintiv would be inappropriate. A petition filed by Microsoft on identical grounds was already instituted, demonstrating a reasonable likelihood of success. This petition was filed with a motion for joinder, which would assume an understudy role and consume minimal resources from the Board and Patent Owner.
• General Plastic: Petitioner asserted that the General Plastic factors for follow-on petitions are inapplicable because this petition was filed independently and seeks to join a co-pending IPR, rather than remedy deficiencies in a prior FWD involving the same petitioner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-6, 8-11, and 13-14 of the ’042 patent as unpatentable.