PTAB

IPR2025-00639

Samsung Electronics Co Ltd v. iCashe Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Contactless Smartcard Devices
  • Brief Description: The ’965 patent describes a mobile device, such as a mobile phone, incorporating Near Field Communication (NFC) smartcard functionality. The technology focuses on using "performance enhancement circuits," including an amplifier and specific driver circuits (load modulation or active transmit), coupled between the antenna and a smartcard controller to improve communication performance, particularly in smaller devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are anticipated by or obvious over Bangs

  • Prior Art Relied Upon: Bangs (Application # 2010/0112941).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bangs, which discloses an NFC-enabled mobile phone, teaches every element of the challenged claims. Bangs describes a mobile device with a "controller 107" (argued to be a smartcard controller), an "antenna element 309," and circuitry between them. This circuitry includes an "amplifier 119" that amplifies a received RF signal before it is provided to the controller. Bangs also discloses transmitter circuitry for both "passive" communication using "load modulation" (via a switchable resistor) and "active" communication using a signal generator and driver, which Petitioner contended meets the "active transmit driver circuit" limitation.
    • Key Aspects: Petitioner asserted that Bangs discloses the key limitation—an amplifier coupled between the antenna and the smartcard controller—that the applicant added during prosecution to overcome prior art rejections.

Ground 2: Claims 1-20 are obvious over Bangs in view of Kerdraon

  • Prior Art Relied Upon: Bangs (Application # 2010/0112941) and Kerdraon (Application # 2009/0215489).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that Bangs provides the primary framework of an NFC-enabled mobile phone with the requisite amplifier and driver circuits. To the extent Bangs’ "controller 107" is not considered an explicit disclosure of a "smartcard controller," Petitioner argued that Kerdraon provides this teaching. Kerdraon discloses a mobile terminal with an NFC module and a "Smart MX card component 33," which is explicitly identified as a "smart card controller" compatible with the ISO 14443 standard mentioned in the ’965 patent.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kerdraon's smartcard controller with the system in Bangs to advantageously provide secure transaction functionality within a mobile phone, thereby eliminating the user's need to carry a separate smartcard. This combination would predictably integrate known smartcard functions into a known NFC-enabled mobile device architecture.
    • Expectation of Success: Petitioner argued success would be expected because implementing Kerdraon’s application-specific smartcard functions into Bangs’ general controller would be a straightforward modification for a POSITA.

Ground 3: Claims 1-20 are obvious over Bangs in view of Koh

  • Prior Art Relied Upon: Bangs (Application # 2010/0112941) and Koh (Application # 2008/0073426).
  • Core Argument for this Ground:
    • Prior Art Mapping: Similar to Ground 2, this ground relied on Bangs for the foundational mobile device and NFC circuitry. The combination supplemented Bangs with Koh's disclosure of a smartcard controller. Koh describes an NFC-enabled cellphone that explicitly includes a "Smart MX (SMX) module," which it describes as a "smart card module." Petitioner noted the ’965 patent itself identifies the "SmartMX" family of controllers as suitable examples.
    • Motivation to Combine: The motivation was identical to that in Ground 2: integrating known smartcard functionality into a mobile phone for user convenience, security, and to leverage the existing platform of a mobile device for payment and authentication applications.
    • Expectation of Success: Petitioner asserted a POSITA would have found it straightforward to implement the smartcard functions taught by Koh into the controller of Bangs' device, as it involved combining known elements for their intended purposes to achieve a predictable result.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and §314(a) (Fintiv).
  • §325(d): Petitioner contended that the primary references relied upon (Bangs, Kerdraon, and Koh) are new and noncumulative, as they were never cited, considered, or applied by the Examiner during the prosecution of the ’965 patent.
  • §314(a) (Fintiv): Petitioner argued that the co-pending district court case is in a very early stage, with a Markman hearing not scheduled until after the institution decision and a trial date far in the future. Petitioner also noted its intent to seek a stay and offered a Sotera stipulation, agreeing not to pursue the same invalidity grounds in the district court case if an IPR is instituted. Finally, Petitioner asserted the merits of the petition are strong, weighing in favor of institution.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of Patent 9,122,965 as unpatentable under 35 U.S.C. §102 and/or §103.