PTAB

IPR2025-00975

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 Operating a Smartphone
  • Brief Description: The ’708 patent discloses a method for operating a smartphone that uses two different air interfaces. A first, short-range interface (e.g., NFC) is used to communicate with a nearby entity when a proximity criterion is met, while a second, long-range interface (e.g., cellular) is used concurrently to receive a communications service from a base station.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 are obvious over Jain

  • Prior Art Relied Upon: Jain (Application # 2009/0069049).
  • Core Argument:
    • Prior Art Mapping: Petitioner argued that Jain, which was not considered during prosecution, discloses all limitations of the challenged claims. Jain described a mobile device ("smartphone") that uses short-range protocols like NFC or Bluetooth (a "first air interface") to wirelessly execute transactions with a point-of-sale (POS) terminal (an "entity"). This communication is inherently responsive to a proximity criterion, as NFC only functions over very short distances. The mobile device also uses a cellular network (a "second air interface") to communicate with a base station for voice and data services. Petitioner contended that Jain’s disclosure of the device being "cellular capable" while also performing NFC transactions teaches the concurrent operation of both interfaces, a key limitation argued for patentability during prosecution. The limitation of refraining from communication when not proximate is inherent to the short-range nature of NFC.
    • Motivation to Combine: As a single-reference ground, the argument focused on obvious implementations. A person of ordinary skill in the art (POSITA) would have found it obvious to maintain cellular communication during an NFC transaction.
    • Expectation of Success: A POSITA would have had a high expectation of success in enabling concurrent operation. Cellular and NFC technologies use different hardware and operate on different frequencies, making simultaneous use straightforward. The common use of Bluetooth headsets (short-range) for calls over a cellular network (long-range) demonstrated the well-understood feasibility of such concurrent operations.

Ground 2: Claims 1-19 are obvious over Dua

  • Prior Art Relied Upon: Dua (Application # 2006/0165060).
  • Core Argument:
    • Prior Art Mapping: Petitioner asserted that Dua discloses a "handheld device" or "mobile telephone" (a "smartphone") capable of connecting to the internet and running a "wallet application." The device uses short-range protocols like NFC (a "first air interface") to communicate with a reader/POS (an "entity") in a "proximity environment." Dua explicitly teaches that the device must be in "close proximity" (e.g., "two to three inches") for communication, satisfying the proximity criterion. Dua also discloses an embodiment where the device's application will "disable RF communication" if it is not placed in proximity of the reader within a set time, expressly teaching the "refraining" limitation. Concurrently, the device uses a cellular network (a "second air interface") to connect to a "mobile operator network" via a cell tower (a "base station") to receive cellular services.
    • Motivation to Combine: The motivation arguments were similar to those for Jain. A POSITA would find it advantageous to maintain an active cellular connection (e.g., for a phone call or data-dependent application) while conducting a short-range transaction, and disadvantageous to interrupt it.
    • Expectation of Success: The expectation of success was high for the same reasons articulated for the Jain ground. The use of distinct hardware for cellular and NFC communications would make concurrent operation a predictable and well-understood implementation for a POSITA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial by making a Fintiv stipulation. If the Board institutes the inter partes review (IPR), Petitioner stipulated that it will not pursue the following grounds in the related district court litigation:
    • 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.
    • Any obviousness ground that includes Jain or Dua in the combination.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-19 of the ’708 patent as unpatentable.