PTAB

IPR2025-01389

Google LLC v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods of a Two-Step Process in Establishing and Using a Smartphone Capability to Conduct Financial Transactions
  • Brief Description: The ’172 patent describes systems and methods for a smartphone to perform a financial transaction using a two-step process. The first step establishes the capability to transact based on sensor input, and the second step uses that capability to complete the transaction, for example, by paying for a product at a point-of-sale.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barnett, Waters, and White - Claims 1-4, 6-12, and 14-16 are obvious over Barnett in view of Waters and White.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483), Waters (WO 2006/087503), and White (Patent 7,434,723).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches all limitations of the challenged claims. Barnett disclosed the foundational system: a smartphone using Near Field Communication (NFC) to conduct financial transactions at a retail point-of-sale (POS) terminal. However, Petitioner contended Barnett did not expressly teach a two-step authorization process triggered by a sensor. To supply this, Petitioner asserted that Waters taught improving the security of such NFC transactions by selectively enabling the NFC functionality only when specific sensor conditions are met (e.g., a light sensor detecting exposure, a pressure sensor detecting a user's touch, or a heat sensor detecting a user's hand). This corresponds to the claimed first step of establishing a capability based on sensing a parameter. Petitioner then argued that White taught the second part of the process: using the established capability to request and receive authorization. White disclosed a system where a first mobile device, upon being presented at a POS terminal, sends an authorization request to a second, remote device (e.g., a parent's or card owner's phone) and waits for an approval response before completing the payment, mapping to the claimed steps of transmitting data to a first device and receiving authorization.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Waters with Barnett to enhance the security of the in-store mobile payment system, preventing unauthorized or accidental transactions, a stated goal in both references. A POSITA would then be motivated to incorporate White's remote, per-transaction authorization method into the Barnett/Waters system to add a layer of flexible control and security, allowing a card owner to approve purchases made by an authorized user in real-time. This combination would yield the predictable result of a secure, sensor-activated mobile payment system with remote authorization.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as all relate to mobile payment systems and employ compatible, well-understood technologies like NFC, smartphone sensors, and wireless network communication (e.g., Wi-Fi) for authorization requests.

Ground 2: Obviousness over Barnett, Waters, White, and Smith - Claims 5, 8, 13, and 16 are obvious over Barnett, Waters, White, and Smith.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483), Waters (WO 2006/087503), White (Patent 7,434,723), and Smith (WO 02/09005).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the Barnett, Waters, and White combination from Ground 1 and adds the teachings of Smith to address limitations related to post-transaction data handling, particularly in claim 5. While the primary combination taught performing a financial transaction, Petitioner argued it did not explicitly disclose causing data to be received after the transaction is complete. Smith remedied this by disclosing a system where, following a successful transaction authorization, a POS terminal generates and transmits an electronic receipt to the purchaser's mobile device. This receipt could include transaction details and authorization information.
    • Motivation to Combine: A POSITA would have been motivated to add Smith's electronic receipt functionality to the combined Barnett/Waters/White system for the significant and well-known benefits it provides. Sending a digital receipt offers proof of purchase, facilitates returns, and allows users to better track expenses and manage finances. This would have been a logical and desirable feature to add to the mobile payment system to improve its utility for the consumer.
    • Expectation of Success: A POSITA would have reasonably expected success in integrating this feature. The underlying technologies are compatible, and adding a post-transaction receipt-delivery step would be a straightforward modification to the payment workflow established by the other references.

4. Arguments Regarding Discretionary Denial

  • Petitioner noted the Patent Office's interim process regarding discretionary denial and stated its intent to substantively address the issue during a potential discretionary denial briefing period.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’172 patent as unpatentable under 35 U.S.C. §103.