Apple Inc v. Telcom Ventures LLC

1. Case Identification

• Case #: IPR2025-01237
• Patent #: 11,924,743
• Filed: August 5, 2025
• Petitioner(s): Apple Inc.
• Patent Owner(s): Telcom Ventures LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Adaptive Enablement of Communication Modes
• Brief Description: The ’743 patent relates to adaptively enabling communication modes on a device based on satisfying a proximity criterion. The challenged claims concern methods and systems for enabling a financial transaction capability on a smartphone responsive to sensing a physiological parameter and then conducting the transaction upon satisfying a proximity condition.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, 8, and 14 are obvious over Carlson in view of Jazayeri and Sherman

• Prior Art Relied Upon: Carlson (Patent 8,229,852), Jazayeri (Application # 2008/0155268), and Sherman (Application # 2007/0232358).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carlson taught a method for conducting secure financial transactions with a portable wireless device using a pseudo primary account identifier (PPAI) requested from a remote server after unlocking the device. While Carlson mentioned using biometric information (e.g., a fingerprint) to unlock the device, it lacked implementation details. Jazayeri allegedly supplied these details, teaching a specific process for capturing fingerprint data on a mobile device and comparing it against a stored template to authenticate a user and authorize access to secure assets. To meet the wireless protocol limitations of claim 1(c), Petitioner asserted that Sherman taught a mobile phone utilizing a WiMAX transceiver for long-range cellular communication, which implements an Orthogonal Frequency Division Multiplexing (OFDM) protocol.
  • Motivation to Combine: A POSITA would combine Carlson with Jazayeri because Carlson created a design need by contemplating but not detailing biometric unlocking. Jazayeri provided a well-known, predictable solution for fingerprint authentication to improve security. A POSITA would incorporate Sherman's teachings because Carlson required long-range cellular communication to request the PPAI but did not specify the protocol, and WiMAX was a known, deployed cellular technology suitable for this purpose.
  • Expectation of Success: Petitioner contended that success was expected because the combination involved integrating known security features (Jazayeri) and standard communication protocols (Sherman) into a base mobile payment system (Carlson) to achieve improved, predictable results.

Ground 2: Claims 3-6 and 10-13 are obvious over Carlson in view of Jazayeri, Sherman, and ISO-14443

• Prior Art Relied Upon: Carlson (Patent 8,229,852), Jazayeri (’268 application), Sherman (’358 application), and ISO-14443 (an international standard).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Carlson, Jazayeri, and Sherman, adding the ISO-14443 standard to teach the limitations related to proximity detection for conducting the financial transaction. Petitioner argued that Carlson taught using Near Field Communications (NFC) to transmit the PPAI to a point-of-sale terminal when the device is in its vicinity. The ISO-14443 standard provided the specific low-level details, teaching that a proximity card (PICC) is activated and powered only when it enters the RF operating field of a proximity coupling device (PCD), which inherently satisfies a proximity condition based on a calculable distance and field strength.
  • Motivation to Combine: The primary motivation was Carlson's express statement that its NFC capability could be implemented "in accordance with a standardized protocol or data transfer mechanism (e.g., ISO 14443/NFC)." This express reference would have directed a POSITA to the ISO-14443 standard to implement the details of the short-range communication link.
  • Expectation of Success: Success was expected because it involved applying a specific industry standard that was expressly identified by the primary reference for its intended purpose.

Ground 5: Claims 1, 7, 8, and 14 are obvious over Carlson in view of Murakami and Sherman

• Prior Art Relied Upon: Carlson (Patent 8,229,852), Murakami (WO 01/95246), and Sherman (’358 application).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, based on a narrower interpretation of the claim term "physiological state" as a dynamic, variable parameter. It replaced Jazayeri (static fingerprint) with Murakami. Petitioner asserted that Murakami taught using dynamic physiological biometric parameters—such as a composite waveform reflecting blood flow, heart rate, and blood pressure—to authenticate a user on a mobile device and authorize a transaction. This method aligned with the patent’s specification, which lists heart rate and blood pressure as exemplary parameters.
  • Motivation to Combine: A POSITA would combine Carlson with Murakami to create a biometric authentication system with enhanced user privacy (compared to fingerprints), lower equipment costs, and greater functional reliability by accounting for natural physiological variances. Murakami explicitly disclosed these benefits.
  • Expectation of Success: Petitioner argued success was highly likely, as Murakami's system used components commonly found in mobile devices of the time, and its biometric authentication process was readily integrable into Carlson's existing transaction framework.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Doyle (Application # 2002/0095586) to teach repeatedly sensing a parameter for continuous authentication, and Birch (Patent 7,213,742) to teach a second, distinct short-range wireless link for obtaining coupons during a transaction.

4. Key Claim Construction Positions

• "Physiological State": Petitioner argued this term was central to the invalidity analysis and presented arguments under two alternative interpretations.
  • For Grounds 1-4, Petitioner adopted the Patent Owner's alleged broad litigation position that the term encompasses static biometrics like fingerprints.
  • For Grounds 5-8, Petitioner argued for a narrower construction, consistent with the patent's specification, limiting the term to dynamic parameters that fluctuate over time, such as heart rate or blood pressure.

5. Key Technical Contentions (Beyond Claim Construction)

• Static vs. Dynamic Biometrics: The petition's central technical contention was that the ’743 patent's intrinsic evidence only supported dynamic, variable physiological parameters for authentication. It contrasted this with static biometrics like fingerprints, which are fundamentally different because they are unique and unchanging. The petition's dual-track approach with alternative grounds (using Jazayeri for static vs. Murakami for dynamic biometrics) was designed to show the claims were obvious regardless of which interpretation was adopted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 11,924,743 as unpatentable.