Samsung Electronics America Inc v. Telcom Ventures LLC

1. Case Identification

• Case #: IPR2025-00957
• Patent #: 11,937,172
• Filed: May 2, 2025
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Telcom Ventures LLC.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Financial Transactions Using a Smartphone
• Brief Description: The ’172 patent relates to methods of operating a smartphone to perform financial transactions. The methods comprise a two-step process: a first step for establishing a capability to perform a transaction, and a second step for using that established capability to conduct the transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over Jain

• Prior Art Relied Upon: Jain (Application # 2009/0069049).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jain disclosed the claimed two-step process for financial transactions on a mobile device. The "first step" of establishing a capability was mapped to Jain's process of user authentication (via PIN or biometrics), which enables cellular communication with a financial institution to request and receive an activation code. The "second step" of using the capability was mapped to Jain's disclosure of using the activated device to perform a transaction by detecting proximity to a point-of-sale (POS) terminal via a short-range NFC signal, performing a second user authentication, and transmitting payment information to the POS terminal.
  • Motivation to Combine: As a single-reference ground, Petitioner asserted that Jain taught all limitations. To the extent any minor differences exist, such as fully integrating Jain's "transaction card" functionality into the mobile device, a person of ordinary skill in the art (POSITA) would find it obvious to do so for commercial advantage, cost savings, and to prevent loss of a separate card.
  • Expectation of Success: A POSITA would have an expectation of success in making any minor modifications, such as replacing a PIN with well-known biometric authentication (which Jain also suggests), as these were common and predictable implementations for enhancing security in mobile devices at the time.

Ground 2: Claims 1-16 are obvious over Dua

• Prior Art Relied Upon: Dua (Application # 2006/0165060).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua disclosed the claimed two-step process under two alternative theories. For the "first step" (establishing capability), the "Card-Issuing Theory" mapped to Dua’s disclosure of a user authenticating (via PIN/biometrics) to open a wallet application, which then establishes a communication session with a credential manager to request and receive financial credentials. Alternatively, the "External-Storage-Authentication Theory" mapped to a user authenticating to retrieve credentials from a remote storage service. For the "second step" (using the capability), Petitioner mapped Dua's disclosure of the mobile device using the retrieved credentials to conduct a transaction at a POS terminal after detecting proximity and performing a transaction-specific user authentication.
  • Motivation to Combine: As a single-reference ground, Petitioner contended that Dua disclosed all elements or rendered them obvious. For example, requiring PIN entry to add a new credit card to Dua's wallet application would be an obvious security measure to protect existing credentials and control access to sensitive functions, a well-known practice at the time.
  • Expectation of Success: A POSITA would have expected success in implementing the claimed methods using Dua's teachings, as Dua described combining known technologies like biometric sensors, wallet applications, and NFC for the conventional purpose of enabling secure mobile payments.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), stating that the primary reference in Ground 1 (Jain) was never considered by the examiner during prosecution. For Ground 2 (Dua), which was cited, Petitioner contended that the examiner overlooked key disclosures, such as biometric authentication, and that new arguments and expert analysis are now being presented.
• Petitioner also argued against discretionary denial under Fintiv, asserting that the parallel district court litigation is in its earliest stages, with minimal investment by the court or parties. Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court any invalidity ground raised or that could have reasonably been raised in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’172 patent as unpatentable.