Google LLC v. DH Intl Ltd

1. Case Identification

• Case #: IPR2024-01321
• Patent #: 7,628,333
• Filed: September 11, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): DH Intl Ltd.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Portable Electronic Device and Method for Data Exchange
• Brief Description: The ’333 patent discloses a portable electronic device, such as a smart card, that performs different data conveyance operations based on the state of a "switching element." The state of this element is determined by an activation cue received from an external source, allowing a single control device (e.g., a button) to trigger different outcomes.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ong and Hoff - Claims 1-4, 6-9, and 11-13 are obvious over Ong in view of Hoff.

• Prior Art Relied Upon: Ong (Patent 7,278,581) and Hoff (WO 1990/013096 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ong, which discloses an electronic credit card with user verification (keypad, fingerprint scanner), a display, and multiple communication transceivers, teaches or suggests nearly every element of independent claims 1 and 11. Ong’s card performs transactions after user verification, which constitutes an "invariable activation command." However, Petitioner contended Ong does not explicitly detail the circuitry for its "disablement means" (the claimed "switching element") or its remote activation. Hoff was argued to supply these missing elements, as it discloses an electronic card with logical circuitry that receives remote signals (an "activation cue") to activate or deactivate the card, thereby controlling its validity status (e.g., displaying "VALID" or "VOID"). The combination, therefore, allegedly rendered all limitations of the independent claims obvious. Dependent claims were argued to be obvious as they recited features also found in the combination, such as a display screen (Ong), a biometric detector (Ong), or a microchip implementation (a well-known feature of smart cards taught by Hoff).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ong and Hoff as both relate to improving the functionality of electronic credit cards. Petitioner argued a POSITA would look to Hoff’s remote activation/deactivation circuitry to implement Ong’s "disablement means." This would improve the security and convenience of Ong’s card by allowing it to be remotely re-enabled if disabled, and preventing a thief from thwarting deactivation, yielding predictable results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references because it involved incorporating Hoff's known logical circuitry into Ong's similar smart card architecture to achieve the predictable function of remote status control.

Ground 2: Obviousness over Ong, Hoff, and Palmer - Claim 5 is obvious over Ong and Hoff in view of Palmer.

• Prior Art Relied Upon: Ong (Patent 7,278,581), Hoff (WO 1990/013096 A1), and Palmer (Patent 7,337,326).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Ong/Hoff combination to address the specific limitations of claim 5, which requires that a biometric detector (fingerprint scanner) is triggered when the scanned fingerprint "matches a fingerprint image pre-saved in said electronic circuit." While Ong disclosed a fingerprint scanner for user verification, Petitioner argued it did not explicitly describe matching the scan against a pre-saved template. Palmer was asserted to cure this alleged deficiency by expressly teaching a smart card that performs secure contactless transactions by comparing a currently scanned fingerprint to a stored "template analog" in the card's memory to validate the user's identity.
  • Motivation to Combine: A POSITA would combine Palmer with the Ong/Hoff combination to enhance the security of the biometric authentication already present in Ong. Petitioner argued that using a pre-saved template for fingerprint matching, as taught by Palmer, was a known and more robust method for biometric verification than what was minimally disclosed in Ong, and incorporating it would be a straightforward improvement.
  • Expectation of Success: Success was expected because Palmer provided a detailed, conventional method for implementing fingerprint template matching, a known technique for improving security on smart card devices like those in Ong and Hoff.

Ground 3: Obviousness over Ong, Hoff, and Rolf - Claim 10 is obvious over Ong and Hoff in view of Rolf.

• Prior Art Relied Upon: Ong (Patent 7,278,581), Hoff (WO 1990/013096 A1), and Rolf (Patent 7,376,583).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed system claim 10, which recites a "data exchange system" comprising a portable device and a separate "data exchange device" that has a "first data transceiver and a cue emitter." Petitioner asserted the Ong/Hoff combination taught the portable device elements. Rolf was introduced to explicitly teach the features of the external data exchange device. Rolf discloses a system for financial transactions where a central processing facility (equivalent to Ong's host computer) is adapted to handle a large volume of simultaneous transactions using multiple transceivers. Petitioner mapped one of Rolf's transceivers to the "first data transceiver" and an additional transmitter to the "cue emitter."
  • Motivation to Combine: A POSITA would combine Rolf's teachings with the Ong/Hoff system to improve the system's overall bandwidth and capacity. Rolf's central facility, designed to handle many users simultaneously, provided a known solution to the problem of scaling a transaction system like that suggested by Ong. Incorporating Rolf's multi-transceiver architecture into the host computer of the Ong/Hoff system was argued to be a predictable way to increase transaction volume.
  • Expectation of Success: A POSITA would expect success in implementing Rolf's multi-channel communication architecture into the host-side of the Ong/Hoff system, as it represented applying a known network scaling solution to a similar transaction processing system.

4. Key Claim Construction Positions

• "power means" (claims 1, 10, 11): Petitioner argued this means-plus-function term corresponds to an internal power source (e.g., a battery) or a component for receiving external power, with the function of "providing power to said portable electronic device."
• "switching element" / "data conveyance switching element" (claims 1, 10, 11): Petitioner argued these interchangeable means-plus-function terms correspond to a physical structure, virtual program, or logical circuit (e.g., gate array or instructions on a microchip), with the function of "switching between inactive and activated states based on the receipt of an activation cue."
• "control device" (claims 1, 10, 11): Petitioner argued this means-plus-function term corresponds to a biometric parameter detector or one or more buttons, with the function of "being selectively triggered to issue an[] invariable activation command."

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially the Same Art: Petitioner argued against discretionary denial under §325(d), asserting that none of the prior art references (Ong, Hoff, Palmer, Rolf) were before the Examiner during prosecution. The references were argued not to be cumulative of the prosecution art.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating that the co-pending district court litigation against Google was voluntarily dismissed without prejudice shortly after it was filed. Therefore, key Fintiv factors favored institution as there was no trial date to consider, minimal investment by the parties in the court case, and no overlapping issues.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-13 of the ’333 patent as unpatentable.