Apple Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2025-00562
• Patent #: 9,049,188
• Filed: February 7, 2025
• Petitioner(s): Apple Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Hybrid Device and Method
• Brief Description: The ’188 patent describes a "hybrid device," such as a cell phone, containing an integrated Personal Digital Key (PDK) and an integrated Receiver-Decoder Circuit (RDC). The system is designed to provide secure access to data, applications, or services by using the PDK as a digital key to interact with an RDC, which acts as a digital lock.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Giobbi ’157 in view of 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 the fundamental elements of claim 1, including a hybrid device (cell phone) with an integrated PDK that stores secured biometric information and communicates wirelessly with an external RDC. However, Giobbi ’157 does not explicitly disclose an integrated RDC within the hybrid device itself. Petitioner asserted that Giobbi ’139 and Dua remedy this deficiency by teaching the integration of RDC functionality into the same type of hybrid device. Giobbi ’139 expressly teaches integrating RDCs into cell phones, and Dua discloses an integrated RFID Tag-Reader Module in a cell phone, where the Reader functions as an integrated RDC and the Tag as an integrated PDK. For the limitation requiring the integrated RDC and PDK to be coupled by a signal line, Petitioner pointed to Giobbi ’139, which explicitly teaches a non-wireless connection, such as a serial cable, between a PDK and an RDC within the same device.
  • Motivation to Combine: A POSITA would combine these references because they are in the same field of endeavor—secure access using PDK/RDC technology in portable devices. Giobbi ’139 identified integrating an RDC into a cell phone as an "enhancement" for hardware-key-based security. Dua similarly taught that integrating both reader (RDC) and tag (PDK) functionality into a single device provides desirable interconnection and convenience. A POSITA would be motivated by these teachings to add an integrated RDC to Giobbi '157's hybrid device to improve security and transaction flexibility, allowing the device to act on both sides of a secure transaction.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success, as Giobbi ’139 and Dua expressly teach the integration of both PDK and RDC components into a single hybrid device like a cell phone, confirming the technical feasibility of the combination.

Ground 2: Claims 1-7, 9-15, and 17-18 are obvious over Broadcom

• Prior Art Relied Upon: Broadcom (European Patent # 1536306 A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Broadcom, standing alone, discloses every limitation of the challenged claims. Broadcom teaches a hybrid device (a mobile phone) that acts as an "Access Device." This device includes an integrated wireless proximity reader (the claimed "integrated RDC") and an internal authentication component and data memory for storing user credentials like biometric data (the claimed "integrated PDK"). Broadcom's Access Device communicates wirelessly with an external "token" (the claimed "external PDK") to authenticate a user and grant access to services, such as a wireless network controlled by an "access controller" (the claimed "external RDC"). Petitioner asserted that Broadcom's disclosure of internal signal lines coupling the reader, authentication circuitry, and other components meets the signal line limitations.

Ground 3: Claims 8, 16, and 19-20 are obvious over Broadcom in view of Giobbi ’157

• Prior Art Relied Upon: Broadcom (European Patent # 1536306 A1) and Giobbi ’157 (Application # 2007/0245157).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims requiring the external PDK to be included in jewelry or a watch. Petitioner argued that Broadcom discloses its external PDK ("token") can be incorporated into various form factors, including a wearable "badge."
  • Motivation to Combine: A POSITA would look to other known form factors for such tokens to enhance user convenience. Giobbi ’157 explicitly teaches that a PDK can be integrated into jewelry, including "watches, rings, necklaces or bracelets." A POSITA would combine Broadcom's system with Giobbi '157's teaching to implement the external token in a well-known, convenient wearable format like jewelry, which would have been a simple and predictable design choice.
  • Expectation of Success: Success would be expected, as modifying the form factor of a token into jewelry is a routine design implementation.

4. Key Claim Construction Positions

• "Personal Digital Key (PDK)" (claims 1, 10): Petitioner argued that the prior art discloses this element under either the Board's construction from a prior IPR on the ’188 patent or the district court's construction from related litigation. The Board construed the term to encompass "a local memory for storing biometric information for authenticating a user, wherein the information is secured." The district court construed it as "[a]n 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." Petitioner contended its invalidity arguments hold under either interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under General Plastic, Fintiv, and 35 U.S.C. §325(d). The petition is substantially similar to a prior IPR filed by Samsung that was terminated before a Final Written Decision (FWD). Petitioner asserted that since it was not a party to the Samsung IPR, denial is not warranted. Further, Petitioner argued that Fintiv analysis is inapplicable because the Patent Owner has dismissed the ’188 patent from the parallel district court litigation, meaning no parallel proceeding exists. Finally, Petitioner contended that denial under §325(d) is inappropriate because the primary prior art references (Giobbi ’157, Giobbi ’139, Dua, and Broadcom) were never cited or substantively considered by the Examiner during the original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’188 patent as unpatentable.