PTAB

IPR2025-01408

Google LLC v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Adaptive Enablement of Communication Modes
  • Brief Description: The ’708 patent relates to systems and methods for adaptively enabling different communication modes on a mobile device based on satisfying a proximity criterion. The technology describes a smartphone that can enable a short-range communication link upon coming near an "entity" (e.g., a product or point-of-sale terminal) while also maintaining a connection to a wider-area network like a cellular system.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-9, 11-13, 15, 17, and 19 are obvious over Barnett in view of Byrne.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483) and Byrne (Application # 2008/0207269).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Barnett disclosed the core limitations of the independent claims by teaching a method of operating a smartphone with two distinct air interfaces. Specifically, Barnett described a smartphone using a Near Field Communication (NFC) link (the "first air interface") to communicate with an NFC-enabled checkout display (the "entity") for making payments. This communication is responsive to a proximity criterion, as it only occurs when the phone is placed near the display. Petitioner argued the claimed limitation of "refraining from communicating" absent proximity is an inherent property of NFC's short effective range. Barnett also disclosed that its smartphone uses a cellular or Wi-Fi system (the "second air interface") for general network communication, such as accessing the internet.
    • Motivation to Combine: Petitioner contended that while Barnett disclosed a cellular system, the combination with Byrne was necessary to explicitly teach communication with a "base station." Byrne disclosed using femtocell base stations to improve the capacity and service quality of cellular systems, particularly indoors. Petitioner argued a person of ordinary skill in the art (POSITA) would combine Byrne’s teachings with Barnett’s retail payment system to enhance cellular service and reliability within the store environment. Improving indoor cellular coverage was a well-known objective, and applying Byrne's solution to the specific context of Barnett’s in-store system was a predictable design choice.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involved integrating a known method for improving cellular networks (Byrne) into a known mobile payment system (Barnett) to achieve the predictable result of better in-store connectivity.

Ground 2: Claims 16 and 18 are obvious over Barnett.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Barnett, standing alone, rendered obvious independent claims 16 and 18. These claims recite a method and a smartphone, respectively, with limitations substantially similar to those in claims 1 and 11 but without the explicit "base station" element that prompted the inclusion of Byrne in Ground 1. Petitioner asserted Barnett's disclosure of a smartphone that "combines the functions of a... contact-less credit card, and a cell phone" into a "unified package" taught the concurrent operation of the NFC payment function (using the "first air interface") and the cellular phone function (using the "second air interface"). A POSITA would have understood that for the device to function as described, both communication capabilities would need to be available concurrently, satisfying the claim limitations.

Ground 3: Claims 4, 10, and 14 are obvious over Barnett, Byrne, and White.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483), Byrne (Application # 2008/0207269), and White (Patent 7,434,723).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Barnett and Byrne combination to address dependent claims requiring the smartphone to "selectively" send information to a "second device" for transaction authorization and receive a response. Petitioner argued that White disclosed a system for remote payment approval where a first device at a point-of-sale (e.g., a child's phone) sends a subscriber approval request containing purchase information to a second, remote device (e.g., a parent's phone). The second device then approves or denies the transaction, and the first device receives this response to complete or cancel the purchase at the point-of-sale terminal.
    • Motivation to Combine: Petitioner contended a POSITA would be motivated to incorporate White's remote authorization feature into the Barnett/Byrne mobile payment system. This combination would enhance the system with greater security and flexible spending controls, such as for parental or employer oversight, which were well-known goals in the field of mobile payments. Adding a remote authorization layer to a point-of-sale transaction system was a logical and commonsense improvement.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. Barnett and White both addressed mobile payment systems at point-of-sale terminals using similar underlying technologies (e.g., wireless networks), making their integration straightforward and predictable.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’708 patent as unpatentable.