Apple Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2025-00074
• Patent #: 9,679,289
• Filed: November 4, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hybrid Device and Method
• Brief Description: The ’289 patent discloses a "hybrid device" containing an integrated secure memory (like a personal digital key or PDK) and an integrated receiver-decoder circuit (RDC). The device communicates wirelessly with external devices to enable applications, functions, or services, such as financial transactions or access control, based on locally stored secure information like biometric or financial data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Giobbi-157, Giobbi-139, and Dua - Claims 1-20 are obvious over Giobbi-157 in view of Giobbi-139, with Dua providing additional support.

• 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 secure memory element (a "PDK" for storing biometric or financial profiles) into a portable device like a cellphone for authenticating with external readers. Giobbi-139, from the same applicant, teaches integrating a reader-decoder circuit (RDC) into a portable device like a cellphone to secure the device and enable/disable functions based on communication with a PDK. The combination of these two references allegedly discloses a "hybrid device" with both an integrated secure memory and an integrated RDC. For dependent claims, Giobbi-157 was cited for its disclosure of biometric data (fingerprints), financial information, and using external PDKs in form factors like watches or jewelry.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of Giobbi-157 and Giobbi-139 to create a single, convenient mobile device with enhanced security. This combination would allow a user to leverage the integrated secure memory (PDK) to access external services (as in Giobbi-157) while also using an integrated RDC to secure the device itself and its internal data (as in Giobbi-139). Petitioner asserted this was a predictable combination of complementary technologies from the same applicant.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved integrating known, compatible components into a common platform (a mobile phone) to achieve the predictable benefits of convenience and layered security. Petitioner further argued that Dua, which discloses integrating both an RFID tag (analogous to a PDK) and an RFID reader (analogous to an RDC) in a single mobile device, confirms the conventional nature of such an integration.

Ground 2: Obviousness over Broadcom, alone or in view of Giobbi-157 - Claims 1-20 are obvious over Broadcom, with some claims also rendered obvious by the combination of Broadcom and Giobbi-157.

• Prior Art Relied Upon: Broadcom (European Patent No. EP 1 536 306 A1) and Giobbi-157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Broadcom alone renders most claims obvious. Broadcom allegedly discloses a "hybrid device" in the form of an "access device" (e.g., a cellular phone) comprising an integrated "wireless proximity reader" (an RDC) and a secure "authentication component" (an integrated secure memory). This device communicates wirelessly with an external "wireless proximity token" within a proximity zone to enable access to a secured service. Petitioner argued Broadcom discloses the use of biometric or financial data (credit cards) stored on the token or device to complete transactions. For claims requiring features like external databases separate from a merchant (claim 9) or tokens in jewelry (claims 12-13), Petitioner combined Broadcom with Giobbi-157.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Giobbi-157's teachings with Broadcom's system to incorporate additional, known features for commercial transactions. For instance, a POSITA would look to Giobbi-157's disclosure of third-party authentication registries to implement Broadcom's financial transactions in a way that separates the merchant from the financial authorization entity (e.g., a bank). Similarly, a POSITA would incorporate the various token form factors taught by Giobbi-157, such as watches, into Broadcom's system to enhance user convenience.
  • Expectation of Success: Success was expected because the combination merely integrated conventional features (third-party authentication, varied form factors) from Giobbi-157 into the analogous, compatible system of Broadcom to achieve predictable improvements in functionality and user options.

4. Key Claim Construction Positions

• "Hybrid Device": Petitioner argued this term should be construed as "a device comprising an integrated, secure memory storing local, secured information and an integrated receiver-decoder circuit." This construction is based on the language of the challenged claims themselves. Petitioner contended this is a necessary modification from a construction used in a litigation involving a related patent, where the term was construed to require an "integrated personal digital key (PDK)," because the independent claims of the ’289 patent do not recite a "PDK" but rather an "integrated, secure memory." This distinction is central to Petitioner's argument that the prior art meets the claim limitations as written.

5. Arguments Regarding Discretionary Denial

• Fintiv and General Plastic Factors: Petitioner argued that discretionary denial would be inappropriate. The petition is substantively identical to a co-pending IPR filed by Microsoft (IPR2024-00407) that has already been instituted. Petitioner asserted it would have filed a motion for joinder to that IPR, but Patent Owner strategically delayed asserting the ’289 patent in the parallel district court litigation until after the one-month joinder window had closed.
• Trial Date and Stipulation: Petitioner argued that the scheduled trial date in the parallel litigation (tentatively January 2026, but likely later) is well after the final written decision deadline of the instituted Microsoft IPR, weighing against denial under Fintiv. Furthermore, Petitioner argued that none of the cited prior art was considered during the original prosecution, making denial under 35 U.S.C. §325(d) unwarranted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’289 patent as unpatentable.