Apple Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2025-00075
• 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 describes a "hybrid device," such as a cellular phone, that includes both an integrated personal digital key (PDK) for storing secure information and an integrated receiver-decoder circuit (RDC) for communicating with external devices. The patent discloses using these components to enable applications, functions, or services based on proximity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua and Giobbi157 - Claims 1-6, 8-11, and 14-19 are obvious over Dua in view of Giobbi157.

• Prior Art Relied Upon: Dua (Application # 2006/0258289) and Giobbi157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua disclosed the core "hybrid device" of independent claims 1 and 14. Specifically, Dua taught a cellular phone with an integrated RFID Tag-Reader Module that functions as both the claimed integrated PDK (secure memory) and integrated RDC (reader circuit). Dua's device establishes a wireless link and communicates with external RFID tags to enable services like electronic payments. Petitioner contended that Giobbi157 supplied the remaining limitations, teaching the use of a secure, tamper-proof memory in a hybrid device to store biometric profiles and financial information (e.g., credit card data) to authenticate users and complete transactions, as required by various dependent claims.
  • Motivation to Combine: A POSITA would combine Giobbi157’s teachings with Dua’s device to enhance its security and functionality. For example, adding biometric authentication (from Giobbi157) would further Dua’s stated goal of enhanced security for financial transactions, and storing financial information in Dua’s tamper-resistant memory was a logical and predictable design choice.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because storing biometric or financial data in a secure memory, as taught by Giobbi157, was a known technique that would require only minimal modification of Dua's device to yield predictable results.

Ground 2: Obviousness over Buer - Claims 1-7, 10-11, and 14-19 are obvious over Buer.

• Prior Art Relied Upon: Buer (European Patent Application # EP 1536306).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Buer, by itself, rendered the independent claims and several dependent claims obvious. Buer disclosed an "access device," such as a mobile device, that includes an integrated authentication component (the claimed PDK) and an integrated wireless proximity reader (the claimed RDC). This device communicates with an external wireless token to authenticate a user and enable access to services, such as performing a sales transaction. Petitioner argued that Buer’s system met all limitations of the independent claims, including storing local, secured information (credentials) and enabling a service based on proximity communication between the integrated RDC and an external device.

Ground 3: Obviousness over Buer and Giobbi157 - Claims 4, 8-10, 12, 13, 17, and 20 are obvious over Buer in view of Giobbi157.

• Prior Art Relied Upon: Buer (European Patent Application # EP 1536306) and Giobbi157 (Application # 2007/0245157).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground supplemented Buer's primary teachings with specific features from Giobbi157 to meet the remaining dependent claims. Petitioner argued that while Buer taught a complete hybrid device system, Giobbi157 explicitly taught storing a biometric profile in a secure memory for authentication (claims 4, 17) and using an external validation database to authorize financial transactions (claim 8). Giobbi157 also taught storing multiple user profiles with different accessibility levels (claim 10) and integrating a PDK into wearable items like jewelry or a watch (claims 12, 13, 20).
  • Motivation to Combine: A POSITA would combine these references because they are in the same field of endeavor (incorporating RDC/PDK technology into hybrid devices) and use similar techniques to solve the same problems. A POSITA would have been motivated to add Giobbi157's specific authentication and transaction methods to Buer’s system to improve security and expand its capabilities in a predictable way.
  • Expectation of Success: The combination would have been successful because Giobbi157 and Buer used similar hardware and security concepts. Integrating a biometric sensor or a process for querying an external database into Buer's device was a straightforward application of known technologies.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Dua in view of Giobbi157 and Kotola, and Buer in view of Nishikawa, but relied on similar design modification theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Regarding Fintiv, Petitioner noted that a parallel district court trial is scheduled for January 2026, well after the November 2025 statutory deadline for a Final Written Decision (FWD) in this IPR. Petitioner also stipulated that it would not pursue the same invalidity grounds in the district court if trial is instituted. Regarding 35 U.S.C. §325(d), Petitioner argued the asserted grounds rely on combinations of prior art not previously considered by the USPTO examiner. Finally, Petitioner asserted that General Plastic factors do not apply because this is a petition for joinder with an existing IPR, not a serial petition.

5. Relief Requested

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