PTAB

IPR2025-01239

Apple Inc v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Adaptive Enablement of Communications Modes
  • Brief Description: The ’793 patent relates to adaptively enabling communication modes on a device after satisfying a proximity criterion. The challenged claims specifically describe methods for conducting a financial transaction when a user's device is proximate to a vendor's access point and a sensed physiological parameter satisfies a set criterion.

3. Grounds for Unpatentability

Ground 1: Broad Biometrics - Claims 1, 3-5, 7, and 9-11 are obvious over Carlson in view of Jazayeri and ISO-14443

  • Prior Art Relied Upon: Carlson (Patent 8,229,852), Jazayeri (Application # 2008/0155268), and ISO-14443 (an international standard).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Carlson taught the foundational method for a secure mobile financial transaction. This involved a user first unlocking a wireless device, then requesting a secure, temporary pseudo primary account identifier (PPAI) from a remote server, and finally transmitting that PPAI to a vendor's contactless reader using short-range communication. Petitioner contended that while Carlson mentioned unlocking via fingerprint, it failed to detail the mechanism. Jazayeri allegedly supplied this missing detail by teaching a complete process for fingerprint biometric authentication on a mobile device to access secure data for a transaction. Finally, while Carlson suggested its NFC communication should be consistent with the ISO-14443 standard, the standard itself provided the necessary low-level technical details for establishing a short-range link based on a proximity condition, such as detecting a magnetic field of a specified strength from the reader.
    • Motivation to Combine: A POSITA would combine Carlson with Jazayeri because Carlson created a clear design need for a biometric authentication method, and Jazayeri provided a well-known, predictable, and detailed solution. The motivation to incorporate ISO-14443 was explicit, as Carlson itself recommended implementing its NFC functionality "in accordance with" the standard to ensure interoperability.
    • Expectation of Success: Petitioner asserted success was expected because the proposed combination involved integrating known technologies (NFC, biometric sensors) and components that were already common in mobile devices at the time.

Ground 2: Repeated Sensing - Claims 2 and 6 are obvious over Carlson in view of Jazayeri, ISO-14443, and Doyle

  • Prior Art Relied Upon: Carlson (Patent 8,229,852), Jazayeri (Application # 2008/0155268), ISO-14443, and Doyle (Application # 2002/0095586).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 and added Doyle to address the "repeatedly sensing" and "maintain[ing] enabled/disabled" functions of claims 2 and 6. Petitioner asserted that Doyle taught a system for continuously authenticating a user of a portable device by "repeatedly checking the user's identity during the entire period the device is in use" with a biometric sensor. In Doyle, if the valid biometric input was lost or changed, the device or its functions could be deactivated. This directly maps to the claims' requirements of repeatedly sensing a parameter to decide whether to maintain an enabled function (e.g., device unlocked) or disable it (e.g., re-lock the device).
    • Motivation to Combine: A POSITA would have been motivated to incorporate Doyle's continuous authentication into the Carlson/Jazayeri system to increase security for monetary transactions, a known benefit explicitly described by Doyle. Since Carlson's system handled sensitive financial data, adding this persistent security layer would have been an obvious improvement to prevent unauthorized use if the device were handed off after the initial unlock.
    • Expectation of Success: Petitioner argued success was highly likely, as Doyle's teachings were designed for "pervasive computing devices," including cell phones, and the underlying Carlson/Jazayeri device already included the necessary components (processor, sensor) to implement this functionality with simple software modifications.

Ground 5: Narrow/Dynamic Biometrics - Claims 1, 3-5, 7, and 9-11 are obvious over Carlson in view of Jazayeri, ISO-14443, and Murakami

  • Prior Art Relied Upon: Carlson (Patent 8,229,852), Jazayeri (Application # 2008/0155268), ISO-14443, and Murakami (WO 01/95246).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative invalidity theory based on the narrow construction of "physiological parameter." Instead of using Jazayeri's static fingerprint authentication, Petitioner argued a POSITA would use Murakami. Murakami taught authenticating a user by measuring dynamic physiological parameters via a "composite waveform reflecting anatomical structure and physiological processes, such as blood flow, heart rate, blood pressure." This method, using a sensor on a mobile phone, was alleged to directly align with the specific examples (heart rate, blood pressure, etc.) provided in the ’793 patent's own specification. Jazayeri was retained in these grounds primarily as an alternative for mapping a second authentication step if required by claim interpretation.
    • Motivation to Combine: A POSITA seeking to implement the biometric authentication suggested in Carlson would be motivated to use Murakami's method to be consistent with the types of dynamic parameters disclosed in the ’793 patent. Furthermore, Petitioner argued that Murakami offered distinct benefits over fingerprinting, such as increased user privacy and greater safety by avoiding physical contact with sensitive tissues.
    • Expectation of Success: Success was expected because Murakami's authentication technique used simple components (e.g., an infrared sensor, processor) that were commonly integrated into mobile devices like the one described in Carlson.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on similar theories, including: combining the primary references with Birch (Patent 7,213,742) to teach communication with a second, separate back-end system over a distinct short-range link (for claims 4, 9, 11); combining with Sherman (Application # 2007/0232358) to teach communication over licensed cellular frequencies using WiMAX technology (for claim 8); and applying the Murakami-based narrow construction across all claim sets.

4. Key Claim Construction Positions

  • "Physiological Parameter": Petitioner argued this term is central to the unpatentability grounds and presented two alternative interpretations that dictated its primary and alternative obviousness theories.
    • Broad Interpretation (for Grounds 1-4): Consistent with Patent Owner's asserted litigation position, this construction includes static biometric data such as fingerprints or facial geometry.
    • Narrow Interpretation (for Grounds 5-8): Consistent with the patent's intrinsic record and specification, this construction is limited to dynamic, variable parameters that fluctuate over time, such as heart rate, blood pressure, or blood content.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of the ’793 patent as unpatentable.