PTAB

IPR2025-01408

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1. Case Identification

2. Patent Overview

  • Title: Adaptive Enablement of Communications Modes Based on Proximity
  • Brief Description: The ’708 patent describes systems and methods for a smartphone with at least two different air interfaces to adaptively enable a communication mode when a proximity criterion between the smartphone and an external "entity" is satisfied. The technology allows the phone to switch between or concurrently use communication modes like short-range NFC and long-range cellular service based on its location or proximity to specific objects or devices.

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 argued that Barnett taught the core method of independent claims 1 and 11. Barnett described a smartphone with multiple communication interfaces, including Near Field Communication (NFC) as a "first air interface" and a cellular system as a "second air interface." Barnett’s system used proximity to an NFC-enabled checkout display ("entity") to trigger a short-range data exchange for payment, satisfying the limitations of communicating over a first interface responsive to a proximity criterion. The system inherently refrains from this NFC communication when not in proximity. However, Petitioner contended that Barnett did not explicitly disclose that the cellular service was received from a "base station." Byrne was introduced to supply this teaching, as it described using femtocell base stations to provide cellular service within a defined local area, such as a store. The combination, therefore, taught a smartphone receiving cellular service from a base station (Byrne) while concurrently being ableto perform a proximity-based NFC transaction with an entity (Barnett) that does not provide the cellular service.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Barnett's NFC payment system with Byrne's femtocell technology for the predictable purpose of improving cellular service within the retail store environment described by Barnett. Enhancing in-store cellular capacity and reliability was a known goal, and Byrne's femtocell base station offered a direct and known solution to achieve this, improving the overall user experience of the multi-functional device in Barnett.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the combination involved integrating two known wireless technologies—a local area cellular network (Byrne) and a proximity-based payment system (Barnett)—that operate on different protocols and frequencies, making their concurrent operation in a single device technically feasible and predictable.

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 asserted that independent claims 16 and 18 were obvious over Barnett alone. These claims recite limitations substantially similar to those of claims 1 and 11 but do not include the "base station" element. Therefore, Petitioner argued that Barnett's disclosure of a smartphone using a short-range NFC interface based on proximity and a separate cellular interface was sufficient to render these claims obvious without modification or combination with another reference. Barnett’s NFC-enabled checkout display was an "entity" not involved in providing the cellular communications service, meeting a key limitation.
    • Motivation to Combine (for §103 grounds): Not applicable, as this is a single-reference ground. The motivation was simply to use the known elements within Barnett for their intended purposes.
    • Expectation of Success: Not applicable.

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 from Ground 1 to address dependent claims 4, 10, and 14, which add a remote authorization feature. These claims require the smartphone to "selectively send" information to a "second device" and receive information back to authorize a transaction. Petitioner argued that White taught this missing element by describing a mobile payment system where a first user's device sends a transaction approval request to a second, remote device (e.g., a parent's or employer's phone) and awaits an approval response before completing the purchase at a point-of-sale terminal.
    • Motivation to Combine: A POSITA would have been motivated to add the remote authorization feature from White to the payment system of Barnett and Byrne to improve security and flexibility. This addition addressed the known need for purchase-by-purchase approval in various contexts, such as parental control over a child's spending or corporate oversight of employee expenses. White's method provided enhanced, real-time control over transactions, a clear benefit that would have been desirable to implement in Barnett's system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of successfully integrating White's authorization logic into the Barnett/Byrne system. Both Barnett and White described mobile devices using wireless networks (Wi-Fi, cellular) to communicate, making the transmission of an authorization request from the point-of-sale to a remote device a straightforward and predictable implementation of known networking principles.

4. Arguments Regarding Discretionary Denial

  • Petitioner noted that the ’708 patent is the subject of co-pending district court litigation and other IPR proceedings involving different parties. Petitioner stated its intent to substantively address any potential arguments for discretionary denial, including those under Fintiv, during the discretionary denial briefing phase, should the Board require it.

5. Relief Requested

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