PTAB

IPR2025-01401

Google LLC v. Telcom Ventures LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Financial Transactions
  • Brief Description: The ’793 patent describes methods and systems for establishing a capability on a smartphone to conduct a financial transaction, and then using that capability to pay for a product, often initiated by proximity to an entity like a point-of-sale counter.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barnett, Waters, and White - Claims 1, 2, 5, 6, and 8 are obvious over Barnett, 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 disclosed all limitations of the challenged claims. Barnett taught the foundational system of using an NFC-enabled mobile phone for in-store purchases by bringing it proximate to a POS terminal. To meet the limitation of "sensing a physiological parameter," Petitioner asserted that a POSITA would modify Barnett with Waters, which taught selectively enabling a device's NFC tag for security only when a physiological sensor (e.g., fingerprint, skin resistance, heat) confirms the user is actively holding the device. To meet the limitation of "requesting an authorization to establish a function," Petitioner argued for adding White, which disclosed a mobile payment system where the user's phone, after interacting with a POS terminal, sends a request to a second device (e.g., a parent's phone or a proxy server) for approval before the transaction is completed.
    • Motivation to Combine: A POSITA would combine Barnett and Waters to improve the security of mobile NFC payments, a key concern in the field, especially in low-supervision retail environments where the risk of unauthorized readers exists. A POSITA would further incorporate White's teachings to add a well-known, flexible, and secure layer of remote, purchase-by-purchase authorization, enhancing control over transactions (e.g., for parental or employer oversight).
    • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because all three references operate in the same field of mobile payments, use compatible technologies (NFC, Wi-Fi), and address common goals like security and convenience. Combining their known features would yield the predictable result of a more secure and feature-rich mobile payment system.

Ground 2: Obviousness over Barnett, Waters, White, and Smith - Claims 3, 4, 7, and 9-11 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 built upon the combination in Ground 1 and added Smith to address limitations related to wirelessly receiving information post-transaction. Petitioner argued Smith taught a system where, after a transaction is authorized, the vendor's POS terminal wirelessly transmits an electronic receipt to the user's mobile device. This addresses the limitation of "wirelessly receiving information from at least one device using unlicensed frequencies." Smith also disclosed that this communication could use short-range wireless technologies like Bluetooth, which operate on unlicensed frequencies. For claims reciting Time Division Duplex (TDD) operation, Petitioner asserted that both Barnett and Smith taught using Bluetooth as an alternative to NFC, and TDD is a standard feature of Bluetooth.
    • Motivation to Combine: The motivation to add Smith to the primary combination was to incorporate the common and highly desirable feature of an electronic receipt. Providing a consumer with a record of their transaction is a fundamental aspect of commerce, and Smith provided a straightforward method for doing so wirelessly. Using Bluetooth (taught by Barnett and Smith) instead of NFC was motivated by the desire for longer communication range or faster data speeds within a retail environment.
    • Expectation of Success: Success was expected because Smith's e-receipt functionality is a logical and predictable addition to a payment system. The wireless technologies disclosed (NFC, Bluetooth) were known to be compatible and easily integrated into mobile devices, making the combination a matter of applying known techniques to achieve a predictable improvement.

4. Arguments Regarding Discretionary Denial

  • Petitioner noted that, in view of the Patent Office's interim process for discretionary denials, it would substantively address why denial is not appropriate during a subsequent discretionary denial briefing.

5. Relief Requested

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