PTAB

IPR2025-00643

Samsung Electronics Co Ltd v. iCashe Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Phone for Mimicking a Magnetic Card Swipe
  • Brief Description: The ’156 patent discloses a mobile device, such as a mobile phone, capable of performing transactions by generating a time-varying magnetic field that emulates the swipe of a magnetic stripe card. The device uses a processor and memory to store and transmit transaction data via this magnetic field.

3. Grounds for Unpatentability

Ground 1: Obviousness/Anticipation over Doughty - Claims 1-5, 8-12 are unpatentable over Doughty

  • Prior Art Relied Upon: Doughty (Application # US2004/0133787).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Doughty discloses every element of the challenged claims. Doughty teaches a user device, which can be integrated into a "telecommunications device," containing a "magnetic field generator" (circuitry) to produce a "time-varying magnetic signal" that emulates the swipe of a magnetic card. Doughty's device also includes a "memory 312" to hold transaction data (e.g., "binary data to enable a transaction") and a "device processor or controller 314" coupled to the generator to activate it based on the stored data. Petitioner asserted that Doughty's disclosure of a "telecommunications device" would be understood by a Person of Ordinary Skill in the Art (POSITA) as a mobile phone, or at a minimum, it would have been obvious to integrate Doughty’s system into a mobile phone for portability and convenience.
    • Motivation to Combine (for §103 grounds): To the extent Doughty is not found to explicitly disclose a mobile phone, Petitioner argued a POSITA would be motivated to implement Doughty's user device in a mobile phone to leverage a device already carried by users, reduce the risk of theft or loss of a separate card, and utilize the phone's interface for managing transaction data.
    • Key Aspects: Petitioner emphasized that during the prosecution of a related patent (’174 patent), the Examiner rejected substantially similar claims over a continuation of Doughty (Doughty-CON), demonstrating that the core technology was already recognized by the USPTO as known in the art.

Ground 2: Obviousness over Doughty in view of Fox - Claims 1-5, 8-12 are obvious over Doughty in view of Fox

  • Prior Art Relied Upon: Doughty (Application # US2004/0133787) and Fox (Patent 5,943,624).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, asserting that if Doughty's "telecommunications device" is not considered a mobile phone, Fox explicitly supplies this teaching. Fox discloses a "cellular telephone 10" that incorporates "smartcard function" and a contactless interface for performing transactions. The combination of Doughty's magnetic field emulation system with Fox's implementation of transaction functionality within a mobile phone renders the claims obvious.
    • Motivation to Combine: A POSITA would combine Doughty's magnetic emulation payment system with Fox's teaching of a transaction-enabled cellular phone to gain the known advantages articulated in Fox. These benefits included enhanced security, ease of use, and the ability to leverage the phone's display and communication functions to manage the transaction data taught by Doughty.
    • Expectation of Success: Petitioner argued that since both references relate to electronic devices for performing transactions, a POSITA would have had a reasonable expectation of success in combining them. The integration was portrayed as a straightforward application of known technologies to achieve predictable results.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Substantially the Same Art: Petitioner contended that discretionary denial under §325(d) is inappropriate because the Examiner did not substantively consider Doughty or the Doughty/Fox combination during the original prosecution of the ’156 patent. Petitioner argued that the Examiner's failure to apply Doughty, despite its citation in an IDS, constituted a "material error," especially given that an Examiner in a related case rejected similar claims over a nearly identical reference (Doughty-CON).
  • §314(a) - Parallel Litigation (Fintiv Factors): Petitioner argued that the Fintiv factors weigh in favor of institution. A co-pending district court case is in its early stages, with a Markman hearing not scheduled until October 2025 and a trial date of April 2026 that is likely to be delayed due to a crowded docket. Petitioner asserted it would seek a stay in the district court and offered a stipulation not to pursue the same invalidity grounds in that forum if the inter partes review (IPR) is instituted. The petition's strong merits were also cited as a factor weighing heavily against denial.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-5 and 8-12 of the ’156 patent as unpatentable.