PTAB

IPR2025-00644

Samsung Electronics Co Ltd v. iCashe Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile phone that mimics a magnetic card swipe
  • Brief Description: The ’423 patent discloses a mobile phone capable of performing transactions by producing a time-varying magnetic field that emulates the swipe of a magnetic card. The magnetic field represents transaction data, including single-use transaction account numbers for enhanced security.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 and 8-18 are obvious over Doughty in view of Bursch

  • Prior Art Relied Upon: Doughty (Application # 2004/0133787) and Bursch (Patent 7,917,444).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Doughty disclosed the core elements of the challenged claims, including a mobile "telecommunications device" with a processor and circuitry (a "magnetic field generator") that produces a time-varying magnetic signal to emulate a magnetic card swipe for transactions. While Doughty taught transmitting transaction data like a user number, it did not explicitly disclose using single-use account numbers. Petitioner contended that Bursch remedied this deficiency by teaching a method for improving transaction security using "single-use, transaction numbers" that can be generated on a handheld device like a telephone. Bursch further taught that these numbers could have a pre-defined sequence and be pre-assigned.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Bursch’s single-use transaction number system with Doughty’s mobile transaction device to improve security. Both references were in the analogous art of secure electronic transactions, and Doughty itself expressed a goal of providing a secure transaction system. Applying Bursch’s well-known security enhancement to Doughty’s system was presented as a predictable and simple design choice to achieve a known benefit.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Bursch explicitly taught that its single-use number generator could be implemented in handheld devices like telephones. Integrating this functionality into Doughty's device, which already transmitted transaction data via a magnetic field, would be a straightforward application of known technologies to achieve the predictable result of a more secure transaction.

Ground 2: Claims 1-5 and 8-18 are obvious over Doughty in view of Bursch and Fox

  • Prior Art Relied Upon: Doughty (Application # 2004/0133787), Bursch (Patent 7,917,444), and Fox (Patent 5,943,624).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Doughty and Bursch. Petitioner asserted that to the extent Doughty’s disclosure of a "telecommunications device" was argued to be too broad and not explicitly a mobile phone, Fox supplied this limitation. Fox explicitly taught a "cellular telephone" that incorporates smartcard functionality with a contactless interface for transactions.
    • Motivation to Combine: A POSITA looking to implement the secure transaction system of Doughty and Bursch would have been motivated to consult Fox for specific teachings on integrating such functionality into a cellular telephone. Fox explained the known advantages of such integration, including enhanced portability, ease of use, and security, providing a clear motivation to implement the Doughty/Bursch system in the specific form factor of a mobile phone as taught by Fox.
    • Expectation of Success: The combination was argued to be predictable. Given Doughty’s teaching that its system could be implemented in various mobile devices, applying the specific implementation details for a cellular telephone from Fox would have been a straightforward engineering task with a high likelihood of success.

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same Art or Arguments: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting the grounds were not substantially the same as those considered during prosecution. Although Doughty was cited in an Information Disclosure Statement, the Examiner never used it in a rejection, and the specific combination with Bursch and Fox was never considered. Petitioner further contended that the Examiner materially erred by failing to appreciate Doughty's teachings, pointing out that an Examiner in a related application rejected similar claims over a continuation of Doughty.
  • §314(a) - Parallel Litigation (Fintiv Factors): Petitioner argued that the Fintiv factors weighed strongly in favor of institution.
    • A stay of the co-pending district court case is likely, as the trial date (April 2026) is distant and the case is in its earliest stages with minimal investment from the court or parties.
    • Petitioner also committed to a Sotera-style stipulation, agreeing not to pursue in district court any invalidity grounds raised or that reasonably could have been raised in the inter partes review (IPR), which mitigates concerns of duplicative efforts.
    • Finally, Petitioner argued the petition presented compelling unpatentability arguments that were not previously considered, weighing in favor of institution in the public interest.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 and 8-18 of the ’423 patent as unpatentable under 35 U.S.C. §103.