PTAB

IPR2025-00642

Samsung Electronics Co Ltd v. iCashe Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus with Smartcard Circuitry for Mobile Phone Transactions
  • Brief Description: The ’219 patent describes an apparatus for use within a mobile phone, featuring smartcard circuitry and a point-of-sale interface. The interface is powered by the mobile phone, enabling it to perform electronic transactions with external terminals.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Fox - Claims 1-6 are anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over Fox.

  • Prior Art Relied Upon: Fox (Patent 5,943,624).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fox discloses every element of the challenged claims. Fox teaches a cellular telephone that incorporates all electronics for a "smartcard function" onto a single semiconductor integrated circuit. This apparatus includes smartcard logic circuitry accessible by the mobile phone [1.a], a smartcard RF interface to communicate with a point-of-sale terminal [1.b], and a "battery and power conditioner" that powers the circuitry from the mobile phone [1.c]. Petitioner asserted that Fox also meets the dependent claims by disclosing circuitry for RF data transmission that produces a time-varying magnetic field [2], memory (RAM, ROM, EEPROM) accessible by the phone's main controller [3, 5], compatibility with an external "RF card reader" which would have been understood to include hybrid readers [4], and software in the form of "program control" for the phone's main controller [6].
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation is inherent in Fox's integrated design.
    • Expectation of Success (for §103 grounds): Not applicable for the primary anticipation argument. For obviousness, a POSITA would expect the integrated system taught by Fox to function as described.

Ground 2: Obviousness over Fox in view of Takekawa - Claims 1-6 are obvious over Fox in view of Takekawa.

  • Prior Art Relied Upon: Fox (Patent 5,943,624) and Takekawa (Application # 2005/0015275).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon Fox, introducing Takekawa to further support the limitation of "software to be installed on the mobile phone" recited in claim 6. Petitioner argued that to the extent Fox's disclosure of "program control" is deemed insufficient, Takekawa explicitly discloses an apparatus (an "IC card," which a POSITA would understand is interchangeable with a smartcard) that includes software designed to be installed on a mobile phone. Takekawa teaches that installing software from a removable card onto the phone allows the phone to communicate with the card.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Takekawa's teaching of software installation from a removable card with Fox's integrated smartcard system to enhance functionality and user convenience. This combination would allow a user to easily transfer their smartcard data and functionality to a new phone by simply moving the card and having it install the necessary software, simplifying the process and improving portability.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in this combination. Smartcards were known to have sufficient storage for application software, and installing software from removable media onto a phone was a well-known process. The combination would predictably result in a mobile phone with an integrated, software-driven smartcard function.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate under both §325(d) and §314(a). The prior art references, Fox and Takekawa, are new and were never considered by the examiner, making the petition non-cumulative under §325(d).
  • Regarding §314(a) and the Fintiv factors, Petitioner contended that the parallel district court case is in its infancy. The court has not made any significant investment, discovery is minimal, and the trial date is far off and likely to be delayed. Petitioner also intends to seek a stay and has stipulated that it will not pursue the same invalidity grounds in the district court if the IPR is instituted, which mitigates concerns of duplicative efforts. Finally, Petitioner asserted that the merits of the petition are strong, weighing in favor of institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’219 patent as unpatentable.