PTAB

IPR2025-00641

Samsung Electronics Co Ltd v. iCashe Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Contactless Smartcard Devices
  • Brief Description: The ’053 patent discloses a mobile computing device, such as a mobile phone, incorporating Near Field Communication (NFC) smartcard functionality. The device includes a smartcard controller and an active transmit driver circuit, both powered by the device's internal power source, to communicate with an external NFC reader via an antenna tuned to 13.56 MHz.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Bangs - Claims 1-8 and 17-20 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 communication enabled...mobile telephone," teaches every limitation of the challenged claims. Bangs described a mobile device with a power source (battery 11), a controller (controller 107) for overall NFC operation compliant with ISO/IEC 14443 standards (consistent with a smartcard controller), an antenna circuit tuned to 13.56 MHz, and an active transmit driver circuit (signal generator 109 and driver 111) for an "active communication mode." Petitioner contended that Bangs’ disclosure of these components, coupled together and powered by the device's battery to communicate with external NFC readers for applications like payment and ticketing systems, meets all limitations of independent claims 1 and 17 and their dependents.
    • Key Aspects: Petitioner asserted that Bangs directly addresses the very features the Examiner previously found lacking in the prior art of record during prosecution, namely a 13.56 MHz antenna for interacting with an NFC reader and a powered active transmit driver circuit.

Ground 2: Obviousness over Bangs in view of Kerdraon - Claims 1-8 and 17-20 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 to the extent Bangs’ "controller 107" is not considered an explicit "smartcard controller," Kerdraon supplied this teaching. Kerdraon disclosed a mobile terminal with an NFC module controlled by a "Smart MX card component," which it explicitly identified as a "smart card controller."
    • Motivation to Combine: A POSITA would combine Kerdraon's smartcard controller with the NFC-enabled mobile phone of Bangs to eliminate the need for a user to carry a separate smartcard. Integrating established smartcard functionality for authentication and secure transactions into a mobile phone, which users already carry, was a well-known goal for improving convenience. Both references operated in the same field of contactless communications and addressed the same problem of integrating such functionality into mobile devices.
    • Expectation of Success: Because Bangs already taught a controller managing NFC communications and Kerdraon taught a smartcard controller performing analogous functions, integrating Kerdraon's specific smartcard controller into Bangs' system would have been a straightforward modification with predictable results.

Ground 3: Obviousness over Bangs in view of Koh - Claims 1-8 and 17-20 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 argued that Koh provided any missing disclosure for a "smartcard controller" or an external "NFC reader." Koh disclosed an NFC-enabled cellphone with a "Smart MX (SMX) module" described as a "smart card module" (a smartcard controller) that interacts with an external "RFID reader 310" compliant with ISO 14443, making it an NFC reader.
    • Motivation to Combine: The motivation was identical to that for combining Kerdraon: to advantageously integrate known smartcard functionality into a mobile phone to improve user convenience and security. A POSITA would have looked to references like Koh to implement specific, commercially known smartcard solutions (the SmartMX family, which the ’053 patent itself acknowledges as suitable) into the general NFC framework provided by Bangs.
    • Expectation of Success: The combination was argued to be predictable, as it involved implementing a known type of smartcard controller (from Koh) into a compatible NFC mobile phone system (from Bangs) to perform its expected functions.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 4-6) based on Bangs, alone or in combination with Kerdraon or Koh, in further view of Fisher (Application # 2007/0156436). Fisher was cited to provide explicit teachings for using NFC mobile devices for mass transit ticketing and point-of-sale mobile payments, as recited in dependent claims 2-4, 19, and 20.

4. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: Petitioner argued the challenged claims were not entitled to the 2008 priority date of the '346-App. The petition contended that the parent application failed to provide adequate written description for the "active transmit driver circuit" and its specific coupling to the power source and antenna, as required by the independent claims. Therefore, the effective filing date is the 3/1/2011 date of the '341-App., which renders Koh prior art under §102(b).

5. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued against denial under §325(d), stating the primary reference, Bangs, and the secondary references were never cited or considered by the Examiner during prosecution. The petition asserted that Bangs teaches the very limitations the Examiner found missing from the art of record, and therefore the Examiner erred in a manner material to patentability.
  • §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weighed in favor of institution. It noted that the co-pending district court case was in its infancy, with a Markman hearing not scheduled until October 2025 and trial not until April 2026. Petitioner stated its intent to seek a stay and offered a Sotera stipulation, agreeing not to pursue in district court any invalidity ground raised or that reasonably could have been raised in the IPR. Petitioner emphasized its diligence in filing the petition and the strong merits of the challenge.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 17-20 of the ’053 patent as unpatentable.