PTAB

IPR2025-00972

Samsung Electronics America Inc v. Telcom Ventures LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Providing Information
  • Brief Description: The ’199 patent describes methods for operating a smartphone to perform transactions with a separate entity. The system uses two distinct wireless interfaces: a first, short-range interface (e.g., NFC) for communicating with the entity, and a second interface (e.g., cellular) for receiving a communications service from a wireless network, independent of the entity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jain - Claims 1-19 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 all limitations of the challenged claims. Jain described a mobile device (smartphone) that uses a short-range first air interface (NFC or Bluetooth) to execute payment transactions with a point-of-sale (POS) terminal (an entity). Jain also disclosed that the same mobile device uses a second, different air interface (cellular radio) to communicate with financial institutions, such as receiving transaction receipts, independently of the POS entity. Petitioner contended that key limitations added during prosecution to overcome prior art were taught or rendered obvious by Jain. For the "proximity condition," Petitioner asserted that Jain's use of NFC, which requires devices to be within approximately 10 cm to communicate, inherently taught this limitation. For the "physiological parameter," Petitioner argued that while Jain disclosed PIN entry for transaction authorization, it also taught using biometrics like a fingerprint for user authentication. A person of ordinary skill in the art (POSITA) would have found it obvious to substitute the PIN with the more secure and convenient biometric authentication for the transaction itself.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation focused on modification. A POSITA would be motivated to replace Jain's PIN-based transaction authorization with biometric authentication to improve security, as biometrics cannot be easily forgotten or phished. Jain already contemplated using biometrics for other authentication steps, making its application to the transaction a predictable and simple design choice with known benefits.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in integrating biometric authorization, as the necessary hardware (fingerprint sensors on mobile devices) and software were well-known and increasingly common at the time of the invention.

Ground 2: Obviousness over Dua - Claims 1-19 are obvious over Dua

  • Prior Art Relied Upon: Dua (Application # 2006/0165060).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dua, which was not considered by the examiner for the ’199 patent, disclosed every element of the challenged claims. Dua described a wireless device (smartphone) with a "wallet application" that performs contactless payments with a POS terminal (entity) using a first air interface (NFC or Bluetooth). The wallet application also used a second air interface (cellular radio) to separately receive digital receipts from a credential manager over a mobile network, independent of the POS terminal. Crucially, Petitioner asserted that Dua expressly taught authenticating the user to the wallet application by using a fingerprint (a physiological parameter) scanned by the device's embedded biometric technologies in lieu of a PIN code before a transaction could occur. This directly addresses the key limitation upon which the patent was granted.
    • Motivation to Combine (for §103 grounds): This is a single-reference ground. Petitioner argued Dua directly taught the claimed combination of features. The motivation to use biometric authentication (the "physiological parameter") was explicitly for enhancing security for the wallet application, which is precisely the context of the ’199 patent. No modification was needed, as Dua's disclosure allegedly met the claim limitations as written.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing Dua's system, as it described using existing and well-understood technologies like NFC, cellular networks, and biometric sensors for their intended purposes.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’199 patent as unpatentable under 35 U.S.C. §103.