PTAB

IPR2025-00645

Samsung Electronics Co Ltd v. iCashe Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Phone Mimicking a Magnetic Card Swipe
  • Brief Description: The ’174 patent is directed to a mobile phone that emulates the swipe of a magnetic card (e.g., a credit card) by producing a time-varying magnetic field that represents transaction data. The system includes components for storing and downloading this data via a network.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Doughty in view of Abe

  • Prior Art Relied Upon: Doughty (Application # 2004/0133787) and Abe (Application # 2005/0086171).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Doughty disclosed all elements of the claimed mobile phone except for the network interface that allows transaction data to be downloaded. Doughty taught a mobile "telecommunications device" with a memory, a processor, a driver, and a current-carrying conductor (an inductive coil) that generates a time-varying magnetic field to emulate a magnetic card swipe for various transactions (e.g., credit card, access). Petitioner asserted that Abe supplied the missing element, which was added during prosecution to overcome a rejection. Abe taught a system for "safer electronic commercial transactions" where a mobile phone connects to a network to download transaction data, such as a "card identification number," from an authentication server to enhance security.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Abe's network-based security features with Doughty's transaction device to solve a problem explicitly identified in Doughty: the poor security of magnetic stripe cards due to theft and "skimming." Abe’s method of downloading authentication data over a network directly addressed this security vulnerability.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Doughty's device already used stored binary data for transactions. It would have been straightforward to modify it to download some of that data from a network, as taught by Abe, to predictably improve security.

Ground 2: Claims 1-9 are obvious over Doughty in view of Abe and Fox

  • Prior Art Relied Upon: Doughty (Application # 2004/0133787), Abe (Application # 2005/0086171), and Fox (Patent 5,943,624).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the combination of Doughty and Abe, adding Fox to further disclose specific hardware limitations related to the driver and processor. While Doughty disclosed a "control circuit" that "pulsed" its inductive coil, Petitioner argued it lacked implementation details. Fox provided these details, disclosing a cellular telephone with smartcard functionality that used a "transmitter driver" to control current to an inductor (the current carrying conductor) and a "microprocessor" and "coprocessor" coupled to control that driver for transmitting data.
    • Motivation to Combine: A POSITA implementing the system in Doughty would have looked to analogous art like Fox for well-known circuit designs to drive the inductive coil. Fox provided a clear, conventional example of a processor-controlled driver circuit for emitting a magnetic field from a mobile device, making it a logical and predictable choice for implementing Doughty's functionality.
    • Expectation of Success: A POSITA would have found it straightforward to apply Fox's conventional driver and processor architecture to implement the magnetic field generation described in Doughty, as it represented a known way to achieve the desired function.

  • Additional Grounds: Petitioner asserted additional obviousness challenges to address specific dependent claims. Grounds based on the further addition of Dua (Application # 2006/0165060) were argued to teach that the network could be a cellular or wireless local area network (claim 7). Grounds including Flitcroft (Patent 6,636,833) were argued to teach periodically downloading transaction data valid for a limited number of uses (claim 8). Grounds including Bursch (Patent 7,917,444) were argued to teach the use of a single-use transaction number for each transaction (claim 9).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was improper because the core grounds relied on combinations and references (Abe, Fox, Dua, Flitcroft, Bursch) that the Examiner never considered during prosecution. The petition asserted these new combinations and art were not cumulative to the prosecution record.
  • Petitioner also argued against discretionary denial under Fintiv (§314(a)), contending that the parallel district court case (E.D. Tex.) was in its infancy, with discovery just beginning and a trial date far in the future. Petitioner stated its intent to seek a stay and offered a Sotera stipulation, agreeing not to pursue in district court any grounds raised or that reasonably could have been raised in the IPR. These factors, combined with the petition's strong merits, were argued to weigh heavily in favor of institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’174 patent as unpatentable under 35 U.S.C. §103.