Be Smarter LLC v. Yonder Inc

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Case Number: [IPR2025-00970](https://ai-lab.exparte.com/case/ptab/IPR2025-00970)
- Patent #: [9,819,788](https://ai-lab.exparte.com/patent/9819788)
- Filed: May 6, 2025
- Petitioner(s): [BE SMARTER, LLC](https://ai-lab.exparte.com/party/be-smarter-llc) and [JAMES GUERRA](https://ai-lab.exparte.com/party/guerra-james)
- Patent Owner(s): [YONDER, INC.](https://ai-lab.exparte.com/party/yonder-inc)
- Challenged Claims: 1-4 and 6-8

## 2. Patent Overview
- Title: System and Apparatus for Selectively Limiting User Control of an Electronic Device
- Brief Description: The [’788 patent](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1001) discloses a system and apparatus involving a lockable case or pouch for mobile electronic devices. The case is designed to render the device inaccessible to the user until a predetermined condition, such as the case's physical location or the passage of time, is met.

## 3. Grounds for Unpatentability

#### Ground 1: Anticipation over Samuel - Claim 1 is anticipated under 35 U.S.C. §102 by Samuel.
- **Prior Art Relied Upon:** Application # 2003/0011455 to [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) (“[Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005), which discloses a device for the secure transport of an object, teaches every element of claim 1. [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) describes a lockable case that can be remotely unlocked based on a predetermined condition, such as its arrival at a specific address. Petitioner asserted that although [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) depicts a hard case, it explicitly teaches that the device could be a flexible, "envelope" style pouch suitable for objects similar in size to a mobile phone. The locking means in [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) are non-disengageable by the user and are only unlocked upon receiving an electronic signal when the location-based condition is met, directly mapping to the limitations of claim 1.

#### Ground 2: Obviousness over Samuel and Shin - Claims 1, 3-4, and 6-7 are obvious over Samuel in view of Shin.
- **Prior Art Relied Upon:** [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005), Korean Patent Laid-open No. 10-2007-0041248 to [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006) (“[Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner contended that [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) teaches the core concept of a conditionally-unlocked secure container. [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006) discloses a flexible, radio-wave blocking envelope specifically designed for storing a mobile phone to prevent its use in certain locations (e.g., concert halls). Petitioner argued that [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005)’s express suggestion of using an "envelope" format provides a clear motivation to combine its conditional locking system with the specific mobile phone envelope taught by [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006). This combination allegedly renders the limitations of independent claims 1 and 3 obvious, including the shell structure (from [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006)) and the conditional locking means (from [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005)). Dependent claims 4 and 6 were argued to be obvious as they describe using mateable plates for locking (taught by both [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) and [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006)) and a microprocessor to receive a wireless signal (taught by [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005)).
    - **Motivation to Combine:** A person of ordinary skill in the art (POSITA) would combine the references because [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) explicitly suggests a flexible "envelope" structure for its security device, and [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006) provides a well-defined example of such an envelope tailored for mobile phones. Both references address the same problem of restricting access to an object in a container.
    - **Expectation of Success:** A POSITA would have a reasonable expectation of success in applying [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005)'s electronic, condition-based locking mechanism to [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006)'s flexible phone pouch, as it would be a straightforward integration of known security features into a known container type.

#### Ground 3: Obviousness over Samuel, Shin, and Simpson - Claims 2 and 8 are obvious over Samuel in view of Shin, in further view of Simpson.
- **Prior Art Relied Upon:** [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005), [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006), and Application # 2014/0298492 to [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) (“[Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008)”).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground builds on the Samuel/Shin combination to address claims 2 and 8, which require the predetermined condition to be "passage of time." While [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) and [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006) provide the basic locked pouch system, [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) was introduced for its explicit teaching of a security case with a lock that can be programmed to open based on time. [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) discloses an electronic key programmed to open a case only at a certain time or within a specific time frame. Petitioner argued it would have been obvious to a POSITA to modify the Samuel/Shin combination by incorporating [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008)'s time-based unlocking condition, as both [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) and [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) disclose programmable, condition-based unlocking for nearly identical security cases.
    - **Motivation to Combine:** A POSITA seeking to develop a secure case would naturally consider different unlocking conditions. Since [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) and [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) both teach nearly identical security cases unlocked by electronic means based on conditions (location in [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005), location or time in [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008)), it would be an obvious design choice to use the time-based condition from [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) in the flexible pouch of [Samuel](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1005) and [Shin](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1006).
    - **Expectation of Success:** A POSITA would expect success in implementing a time-based trigger for the unlocking mechanism, as [Simpson](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1008) demonstrates its feasibility in a similar security context.

## 4. Key Claim Construction Positions
- **"locking means" (Claims 1-3):** Petitioner argued this term should be construed under §112(f) as a means-plus-function element.
    - **Function:** At least partially securing the opening of the shell so the device is inaccessible and non-disengageable by the user until a predetermined condition is met.
    - **Structure:** Opposing plates with mateable members, magnetic plates, selectively releasable mesh, or lockable zippers. Petitioner argued that a manual, key-operated latch is explicitly excluded from the construction because it cannot be programmed to meet the claimed functional requirement of unlocking based on a predetermined electronic condition.
- **"means for unlocking the case" (Claim 3):** Petitioner argued this term should also be construed under §112(f).
    - **Function:** Unlocking the case.
    - **Structure:** An electronic signal transmitter. Petitioner asserted that structures requiring user action, such as a manual key or an Electronic Article Surveillance (EAS) detacher, are inconsistent with the claim language requiring the case to remain locked *until a condition is met* and should be excluded from the construction.

## 6. Arguments Regarding Discretionary Denial
- To preempt discretionary denial under *Fintiv* due to parallel district court litigation, Petitioner provided a *Sotera* stipulation. Petitioner stipulated that if the Board institutes this IPR, it will not pursue in the parallel district court proceeding the same grounds raised in the Petition or any grounds that could have reasonably been raised.

## 7. Relief Requested
- Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 6-8 of the [’788 patent](https://ai-lab.exparte.com/case/ptab/IPR2025-00970/doc/1001) as unpatentable.

Lockable phone pouch patent faces anticipation & obviousness challenges. Samuel, Shin & Simpson art cited against 7 claims for conditional, time-based locks.