PTAB

IPR2025-00978

Samsung Electronics America Inc v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Device for Secure Financial Transactions
  • Brief Description: The ’793 patent describes methods and wireless devices for conducting secure financial transactions. The technology involves sensing a physiological parameter of a user to satisfy a criterion, which enables a function that is then used to request, authorize, and establish a function to conduct a financial transaction with a point-of-sale terminal.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 are obvious over Jain (Application # 2009/0069049).

  • Prior Art Relied Upon: Jain (Application # 2009/0069049).
  • Core Argument for this Ground: Petitioner argued that Jain, which was not considered during prosecution, discloses all limitations of the challenged claims. The asserted method is broken into two phases: establishing a financial transaction function and then conducting the transaction, both of which Petitioner contended are taught by Jain.
    • Prior Art Mapping: Petitioner asserted that independent claims 1 and 5 are disclosed by Jain’s two-phase process. First, to establish the transaction function, Jain taught user authentication via PIN or biometrics (e.g., fingerprint), which met the limitations of “sensing a physiological parameter” and “determining whether... the parameter... satisfies a criterion.” Upon successful authentication, Jain disclosed enabling cellular communication with a financial institution to request and receive an activation code, which corresponded to the claimed steps of “enabling at least one first function” and then “requesting” and “receiving” authorization to “establish[] the function to conduct the financial transaction.” Second, to conduct the transaction, Jain taught using a mobile device with a nearby point-of-sale (POS) terminal via a short-range NFC signal, which met the limitations for satisfying a proximity condition and paying for a product. Jain also explicitly taught that its mobile device could be a smartphone and that user authentication could use biometric information, mapping to the “smartphone and a sensor” limitations of claim 5.
    • Motivation to Combine: Although a single-reference ground, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSITA) to implement Jain’s disclosed options. A POSITA would have been motivated to use Jain’s explicit teaching of biometric authentication (e.g., fingerprint) as an alternative to a PIN to enhance security and user convenience. Further, a POSITA would implement Jain’s NFC communications according to the well-known ECMA 340 standard cited by Jain to ensure interoperability and simplify design, which inherently involves detecting proximity before establishing a link.
    • Expectation of Success: A POSITA would have had a high expectation of success in implementing biometric authentication and standard NFC protocols, as these were well-known, predictable technologies at the time.

Ground 2: Claims 1-11 are obvious over Dua (Application # 2006/0165060).

  • Prior Art Relied Upon: Dua (Application # 2006/0165060).
  • Core Argument for this Ground: Petitioner argued that Dua discloses all claim limitations, and any minor differences would have been obvious modifications. Petitioner noted that while Dua was cited during prosecution, its key disclosures regarding biometric technologies were overlooked by the examiner. Like the argument against Jain, Petitioner mapped Dua’s teachings to the claimed two-phase process.
    • Prior Art Mapping: Petitioner contended that Dua taught the claimed method for establishing and conducting a financial transaction. To establish the function, Dua disclosed authenticating a user via PIN or fingerprint to open a mobile wallet application, which met the “sensing a physiological parameter” and “determining” limitations. This action enabled a Session Initiation Protocol (SIP) communication session with a credential manager, meeting the “enabling at least one first function” limitation. The device then used this session to request and receive credentials from the issuer, mapping to the “requesting” and “receiving” authorization steps. To conduct the transaction, Dua taught using the received credentials to pay at a POS terminal via NFC, which requires the device to be in close proximity to the terminal (“satisfying a proximity condition”) and may require transaction-specific re-authentication. Dua’s disclosure of a wireless device with a wallet application and embedded biometric technologies mapped to the limitations of claim 5.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to implement Dua’s explicit teaching of using a fingerprint “in lieu of a PIN code to authenticate a user to the wallet application” for enhanced security. For the same security reasons, particularly the risk of a lost or stolen device, a POSITA would find it obvious to require user re-authentication for individual transactions, not just for opening the wallet application. This would ensure the authorized user is present for each payment.
    • Expectation of Success: The technologies disclosed in Dua, including mobile wallet applications, biometric authentication on mobile devices, and NFC-based payments, were well-known and their integration would have been predictable and successful for a POSITA.

4. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-11 of Patent 12,028,793 as unpatentable.