PTAB

IPR2025-00973

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 Smartphone for Enabling Communication
  • Brief Description: The ’411 patent describes a method and smartphone that selectively enable communication with an external device over a first air interface. Communication is conditioned on two criteria being met: the smartphone must be within a certain proximity of an external entity and must have sensed physiological data from a living organism (e.g., the user).

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Jain

  • Prior Art Relied Upon: Jain (Application # 2009/0069049).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jain, which was not considered during prosecution, discloses all limitations of the challenged claims. Jain describes a system for a smartphone to execute financial transactions with a retail POS terminal. For claim 1, Petitioner mapped Jain's disclosure of user authentication via fingerprint biometrics or PIN entry on a touchscreen to the limitation of "sensing... physiological data associated with a living organism." Jain's use of short-range Near Field Communication (NFC) signals to initiate a transaction was mapped to "detecting that a proximity criterion is satisfied." Petitioner asserted that Jain's system only communicates transaction data over this first air interface (NFC) after both proximity is detected and the user is authenticated, thus meeting the "selectively communicating" and "refraining from communicating" limitations. Finally, Jain’s disclosure of using a separate cellular network to communicate with financial institutions was mapped to the limitation of "communicating by the smartphone using a second air interface." For dependent claims 2 and 4, Jain's disclosure of an NFC range of "10 cm or less" was argued to meet the proximity criterion of less than 10 meters.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner presented this under 35 U.S.C. §103 to preempt any argument from the Patent Owner that minor differences exist. The core assertion is that Jain itself teaches the entire claimed invention, making it obvious to a person of ordinary skill in the art (POSITA).
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as Jain describes a complete, functional system for biometrically secured, proximity-based mobile payments.

Ground 2: Claims 1-4 are obvious over Dua

  • Prior Art Relied Upon: Dua (Application # 2006/0165060).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Dua, which was cited but allegedly not fully appreciated during prosecution of related patents, discloses all claimed elements. Dua describes a mobile phone with a "wallet application" for conducting wireless transactions with a POS terminal. Petitioner mapped Dua’s disclosure of using embedded "biometric technologies," including scanning for "fingerprint[s] in lieu of a PIN code to authenticate a user," to the limitation of sensing physiological data. Dua’s requirement that the device be waved "in close proximity to a reader device" using RFID or NFC technology was mapped to the proximity detection limitation. Communication is selective because Dua requires PIN or biometric authentication before credentials can be transmitted, and it disables RF communication if the device is not in proximity to a reader for a set time. This was argued to meet the "selectively communicating" and "refraining" limitations. Dua also explicitly discloses both short-range interfaces (RFID/NFC) for transactions and long-range cellular network connections for other functions, thereby teaching a plurality of air interfaces.
    • Motivation to Combine (for §103 grounds): This is a single-reference ground. Petitioner argued a POSITA would find it obvious to implement the system described in Dua, which provides a comprehensive framework for secure mobile transactions.
    • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success because Dua describes leveraging well-understood technologies like NFC, biometrics, and cellular communication in a straightforward and predictable manner to achieve the claimed functionality.

4. Arguments Regarding Discretionary Denial

  • Petitioner addressed potential discretionary denial under Fintiv by stipulating that if the Board institutes this inter partes review (IPR), Petitioner will not pursue certain invalidity arguments in the co-pending district court litigation. Specifically, Petitioner stipulated it would not pursue any ground raised or that could have been reasonably raised in the petition, any ground that relies on a patent or printed publication as its primary reference, or any obviousness combination that includes Jain or Dua. This stipulation was presented to weigh against discretionary denial by streamlining the parallel district court case and avoiding duplicative efforts.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-4 of the ’411 patent as unpatentable.