PTAB

IPR2025-00977

Samsung Electronics America Inc v. Telcom Ventures LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Enabling functions on a wireless device based on sensed parameters.
  • Brief Description: The ’756 patent describes methods and devices for conditionally enabling and disabling functions on a smartphone. This is done in response to a device-based sensor sensing a parameter (e.g., a physiological state) and determining its value satisfies a threshold criterion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jain - Claims 1-18 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 that performed user authentication via biometrics (e.g., a fingerprint scan) before activating a transaction card function. This process met the limitations of claim 1 by: (a) sensing a physiological parameter (the fingerprint) with a device-based sensor; (b) determining a value from the sensed parameter; and (c) responsive to the value satisfying a threshold (a successful biometric match), enabling certain functions while disabling others. Specifically, upon successful authentication, Jain’s device enabled cellular radio communication to contact a financial institution for activation. Concurrently, the function of conducting a payment was disabled until the card was activated, and fraud monitoring functions related to authentication attempts were also disabled post-authentication.
    • Motivation to Combine (for §103 grounds): This ground relied on a single reference. However, Petitioner contended that to the extent Jain’s transaction card was considered separate from the mobile device, a person of ordinary skill in the art (POSITA) would have been motivated to integrate it into a smartphone for commercial advantage, cost savings, and to prevent loss. Furthermore, a POSITA would have found it obvious to use well-known biometric authentication methods, as suggested by Jain, to satisfy the sensing and determining steps.
    • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success in implementing Jain's teachings, as biometric authentication and mobile payment systems were well-established technologies at the time.

Ground 2: Obviousness over Dua - Claims 1-18 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 cited but allegedly not fully considered during prosecution, disclosed the claimed invention under two alternative theories. In both, Dua taught authenticating a user to a mobile wallet application using a fingerprint scan, which satisfied the "sensing," "determining," and "threshold criterion" limitations.
      • Card-Issuing Theory: After a successful fingerprint scan, Dua's device unlocked the wallet application. This enabled communication with an issuer's server to request a new credit card credential, constituting an "enabled function." Simultaneously, the locked state of the application was disabled, as were security subroutines that track failed login attempts.
      • External-Storage Theory: In an alternative embodiment, Dua described storing credentials on a remote server. After fingerprint authentication, the device enabled a connection to the external storage to retrieve credentials. This disabled the wallet's function for permanent, local credential storage, as it would only hold them temporarily.
    • Motivation to Combine (for §103 grounds): This ground relied on a single reference. Petitioner argued that Dua explicitly taught using fingerprints "in lieu of a PIN code" for authentication. A POSITA would have been motivated to implement this known biometric security to protect the sensitive financial data within Dua’s wallet application, a common and predictable design choice for improving security.
    • Expectation of Success (for §103 grounds): Petitioner contended that combining Dua's disclosed biometric capabilities with its wallet application functions was straightforward, using conventional techniques that a POSITA would have readily understood and implemented with a high expectation of success.

4. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-18 of the ’756 patent as unpatentable.