Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-01319
• Patent #: 9,679,289
• Filed: August 22, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hybrid Device for Proximity-Based Secure Services
• Brief Description: The ’289 patent describes a "hybrid device" containing both an integrated, secure memory (like a personal digital key, or PDK) and an integrated reader-decoder circuit (RDC). The device is designed to enable secure applications, functions, and services by communicating wirelessly with external devices within a proximity zone.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 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 teaches integrating a Personal Digital Key (PDK)—an integrated, secure memory for storing information like biometric or financial data—into a portable device such as a cellphone for user convenience. Giobbi-139, from the same inventor, separately teaches integrating a reader-decoder circuit (RDC) into the same type of device (a cellphone) to enhance security by enabling or disabling device functions based on proximity to an authorized PDK. The combination of Giobbi-157's integrated PDK and Giobbi-139's integrated RDC in a single cellphone creates the claimed "hybrid device" with all its core components as recited in independent claims 1 and 14.
  • Motivation to Combine: A POSITA would combine the teachings of Giobbi-157 and Giobbi-139 to create a single, more secure, and convenient device. This combination would allow a user to carry one device (e.g., a cellphone) that both stores their secure credentials locally (per Giobbi-157) and uses an integrated reader to secure the device itself and interact with external systems (per Giobbi-139). The combination addresses the common goal of both references—providing secure access to digital and physical assets.
  • Expectation of Success: The combination involved integrating known components (PDKs and RDCs) into a common platform (a mobile device) using established methods, yielding predictable security and convenience benefits. Dua further supported this expectation by disclosing a functional RFID system where an RFID Tag Unit (analogous to a PDK) and an RFID Reader Unit (analogous to an RDC) are integrated into a single mobile device to perform secure transactions, corroborating the feasibility and motivation for such an integration.

Ground 2: Claims 1-8, 10-11, and 14-19 are obvious over Broadcom

• Prior Art Relied Upon: Broadcom (European Patent # 1 536 306).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Broadcom alone discloses every element of the claimed hybrid device. Broadcom’s "access device 102," which can be a cellular phone, includes a "wireless proximity reader 106" (the claimed integrated RDC) and an "authentication component 114" with secure, tamper-resistant memory (the claimed integrated secure memory). This access device communicates with an external "wireless proximity token 104" to authenticate a user and enable access to a secured service, directly mapping to the functionality described in independent claims 1 and 14.
  • Key Aspects: Petitioner argued that Broadcom’s disclosure is not a combination of references but a single system that inherently embodies the claimed invention. The access device functions as a hybrid device by reading credentials from an external token and storing its own secure information, thereby enabling services based on proximity.

Ground 3: Claims 1-20 are obvious over Broadcom in view of Giobbi-157

• Prior Art Relied Upon: Broadcom (European Patent # 1 536 306) and Giobbi-157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Broadcom as the primary reference teaching the fundamental hybrid device, as detailed in Ground 2. Giobbi-157 was added to provide specific implementations for elements described more generally in Broadcom, thereby rendering additional dependent claims obvious. For example, where Broadcom teaches implementing its tokens in various portable objects, Giobbi-157 explicitly suggests including such tokens (PDKs) in "jewelry" and "watches," directly teaching the limitations of claims 12, 13, and 20.
  • Motivation to Combine: A POSITA, seeking to implement Broadcom's secure access system, would have been motivated to consult Giobbi-157 for well-known and conventional form factors for the external token. Giobbi-157 also provided teachings on separating an external authentication database from a merchant in a financial transaction (relevant to claim 9), a logical and beneficial modification for certain transactions that a POSITA would find obvious to incorporate into Broadcom's system for enhanced security and impartiality.

4. Key Claim Construction Positions

• Hybrid Device: Petitioner proposed this term be construed as "a device comprising an integrated, secure memory storing local, secured information and an integrated receiver-decoder circuit." Petitioner argued this construction is consistent with the patent’s specification and a prior district court construction, adapted to the specific claim language of the ’289 patent which, unlike related patents, does not explicitly recite a "PDK" in its independent claims.
• Personal Digital Key (“PDK”): For claim 20, Petitioner adopted the construction "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." This construction was previously adopted in related district court litigation.
• Receiver-decoder circuit (“RDC”): Petitioner proposed construing this term as "a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing," consistent with its use in the specification and prior court rulings.

5. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued against denial, stating that none of the asserted prior art references or their combinations were considered by the Examiner during the original prosecution. The Examiner’s search was limited and did not uncover the highly material art presented in the petition.
• Fintiv / General Plastic: Petitioner argued that discretionary denial would be inappropriate because this petition was filed with a motion for joinder to a substantively identical petition (filed by Microsoft) that has already been instituted. Petitioner asserted it would assume an "understudy role," which would conserve Board and Patent Owner resources. Because a reasonable likelihood of success has already been established for the grounds in the instituted IPR, Petitioner argued the merits are compelling and outweigh any concerns related to follow-on petitions.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,679,289 as unpatentable.