Be Smarter LLC v. Yondr Inc

1. Case Identification

• Case #: IPR2025-00970
• Patent #: 9,819,788
• Filed: May 6, 2025
• Petitioner(s): Be Smarter, LLC and James Guerra
• Patent Owner(s): Yonder, Inc.
• Challenged Claims: 1-4, 6-8

2. Patent Overview

• Title: System and Apparatus for Selectively Limiting User Control of an Electronic Device
• Brief Description: The ’788 patent discloses systems and lockable cases, such as pouches, for selectively limiting a user’s access to a mobile electronic device. The case remains locked, rendering the device inaccessible, until a predetermined condition, such as the case's geographic location or the passage of time, is met.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 1 - Claim 1 is anticipated under 35 U.S.C. §102 by Samuel.

• Prior Art Relied Upon: Samuel (Application # 2003/0011455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Samuel discloses every limitation of claim 1. Samuel teaches a secure transport case for objects that can be remotely unlocked only when a predetermined condition is met, such as arrival at a specific address. Petitioner asserted that Samuel’s case constitutes the claimed "shell" with an "opening," and its locking mechanisms (latches 8, 10, 12, 14 controlled by electronics 18) meet the "locking means" limitation. The condition of arriving at a destination was argued to be the claimed "physical presence of the case outside of a defined geographical region." Samuel also explicitly teaches that its case could be a flexible "envelope" or "pouch" suitable for items similar in size to a mobile device.

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 (Application # 2003/0011455) and Shin (Korean Patent Laid-open No. 10-2007-0041248).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Samuel provides the foundational teaching of a case that unlocks based on a predetermined condition (e.g., location), and Shin supplies the specific teachings of a flexible pouch designed to store a mobile phone. For claim 3, Shin was argued to teach the specific pouch structure of front and rear panels secured along their edges to form an opening. Samuel taught the system elements, including a remote monitoring system that acts as the unlocking means. Dependent claim 4 (male/female plates) was allegedly taught by the locking latches in Samuel, and claim 6 (microprocessor receiving a wireless signal) was taught by Samuel’s electronic means 18, which includes a microprocessor that receives an unlock signal.
  • Motivation to Combine: A POSITA would combine these references because Samuel explicitly suggests that its security device could be made of flexible materials in an "envelope" format, directly motivating a skilled artisan to look to references like Shin, which perfects such a flexible envelope for the same purpose of securing a mobile phone. Both references address the same problem of temporarily restricting access to an object.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success in applying Samuel's established conditional locking technology to Shin's simple flexible pouch structure, as it would be a straightforward integration of known elements.

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 (Application # 2003/0011455), Shin (Korean Patent Laid-open No. 10-2007-0041248), and Simpson (Application # 2014/0298492).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims 2 and 8, which require the predetermined condition to be the "passage of time." Petitioner argued that the combination of Samuel and Shin teaches all elements of these claims except for the time-based condition. Simpson was introduced to supply this missing element, as it explicitly discloses a security case with an electronic key that can be programmed to unlock the case "at a certain time or within a certain time frame."
  • Motivation to Combine: A POSITA, having combined Samuel and Shin to create a conditionally-locking pouch, would be motivated to incorporate other known unlocking conditions to enhance the product's versatility. Simpson, which addresses the same field of secure containers, provides a clear teaching of using time-based unlocking. Modifying the Samuel/Shin combination to use a time-based trigger from Simpson would have been an obvious design choice.
  • Expectation of Success: Integrating a time-based lock controller, as taught by Simpson, into the electronic system of Samuel was presented as a predictable modification with a high expectation of success.

4. Key Claim Construction Positions

Petitioner argued that several claim terms require specific construction, central to its unpatentability arguments.

• "locking means" (claims 1-3): Proposed as a means-plus-function term under §112(f).
  • Function: "at least partially securing the opening... so that the electronic device is rendered inaccessible to the user and non-disengageable by the user... until a predetermined condition is met."
  • Structure: The corresponding structures disclosed in the ’788 patent specification are opposing plates with securably mateable members, magnetic plates, selectively releasable mesh, or lockable zippers. Petitioner argued a manual, key-operated latch should be excluded from the construction as it cannot meet the functional requirement of unlocking based on a predetermined condition.
• "means for unlocking the case" (claim 3): Also proposed as a means-plus-function term.
  • Function: "unlocking the case."
  • Structure: An "electronic signal transmitter," based on the specification's disclosure of an RFID transmitter. Petitioner contended that other disclosed structures, like a manual key or an EAS detacher, were inconsistent with the claim's functional requirements and should be excluded.
• "the predetermined condition" (claims 1-2): Petitioner noted the term lacks an antecedent basis but, for the purposes of the petition, interpreted the claims to require that the locking means is non-disengageable "until a predetermined condition is met" to provide the necessary basis.

5. Arguments Regarding Discretionary Denial

• Petitioner stipulated, pursuant to the principles of Sotera Wireless, Inc. v. Masimo Corp., that if the Board institutes this IPR, Petitioners will not pursue in the parallel district court proceeding (Yondr, Inc. v. Be Smarter, LLC et al., Case No. 2024-CV-1326 (WDTX)) the same grounds presented in the petition or any other grounds that could have reasonably been raised. This stipulation was offered to weigh against discretionary denial under the Fintiv factors.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 6-8 of the ’788 patent as unpatentable.