PTAB

IPR2025-01409

Google LLC v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Enabling Device Functions Based on Sensing Physiological Parameters
  • Brief Description: The ’756 patent describes methods and systems for enabling or disabling functions on a wireless device based on sensing a parameter associated with the device, its environment, or its user. The disclosed embodiments focus on enabling financial transactions when a proximity criterion is met and a sensed parameter satisfies a threshold.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 6, and 7 are obvious over Barnett in view of Waters.

  • Prior Art Relied Upon: Barnett (Application # 2009/0170483) and Waters (WO 2006/087503).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Barnett disclosed a method of operating a mobile device (a smartphone) to perform financial transactions using Near Field Communication (NFC) in a retail environment. Barnett taught a consumer using an NFC-enabled phone to interact with product identifiers and NFC-enabled displays to complete a purchase. Petitioner contended that while Barnett taught the core transaction method, it did not explicitly teach using a device-based sensor to enable the NFC function. To meet this limitation, Petitioner turned to Waters, which disclosed selectively enabling a mobile device’s NFC tag using various sensors—such as light, pressure, fingerprint, skin resistance, or heat sensors—to enhance security. For example, the NFC tag would only be enabled when a user is physically holding the device (detected by heat or pressure) or when it is exposed to a specific light source at a point-of-sale terminal.
    • Motivation to Combine: A POSITA would combine Waters’ security features with Barnett’s retail transaction system to address a known problem. Barnett’s system, which aims to reduce retail staff, involved numerous unmonitored NFC readers, creating a risk of unauthorized access (e.g., skimming). Petitioner asserted a POSITA would be motivated to incorporate Waters’ sensor-based activation to ensure the device’s NFC function is enabled only when the user intends to make a purchase, thereby improving security and preventing unintended transactions.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination as both references operate in the same field of mobile NFC payments. Integrating a known sensor-based security switch (from Waters) into a known NFC payment application (from Barnett) was a predictable combination of known technologies.

Ground 2: Claims 3-5, 8-16, and 18 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: This ground builds on the Barnett/Waters combination by adding the teachings of White to address limitations requiring a request for authorization from a second device. Petitioner argued the Barnett/Waters combination taught enabling an NFC transaction function based on a sensed parameter. White disclosed a mobile payment approval system where a first device (e.g., a child's phone) at a point-of-sale (POS) terminal requested transaction approval from a second, remote device (e.g., a parent's phone) over a network. The transaction was completed only after the second device sent back an authorization. Petitioner mapped this to the claims by asserting that after the NFC function is enabled per Barnett/Waters, the user's device would then request authorization from a second device per White before conducting the financial transaction.
    • Motivation to Combine: A POSITA would be motivated to add White’s authorization system to the Barnett/Waters combination to further enhance security and provide flexible control over expenditures. This was a well-known commercial need, particularly for scenarios involving parental control over a child's spending or corporate control over an employee's purchases. White's system provided a beneficial purchase-by-purchase approval mechanism that was an improvement over simple pre-set limits.
    • Expectation of Success: The combination would have been straightforward. Both Barnett and White taught using wireless networks (e.g., Wi-Fi) for communication, so a POSITA could readily implement White's authorization request over a store's Wi-Fi network once a transaction was initiated at an NFC terminal.

Ground 3: Claim 17 is 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 adds Smith to the previous combination to address claim limitations related to wirelessly receiving information back from the POS entity. The combination of Barnett, Waters, and White taught a sensor-enabled, remotely-authorized mobile transaction. Petitioner argued Smith taught a system where, after a transaction is completed, the vendor's POS device wirelessly transmitted an electronic receipt to the purchaser's mobile device via a short-range connection (e.g., Bluetooth or NFC).
    • Motivation to Combine: A POSITA would add Smith’s electronic receipt functionality to provide the well-known benefits of transaction records for proof of purchase, returns, and expense tracking. This was a logical and desirable feature to add to the transaction flow, improving the user experience and providing organizational benefits. Petitioner also noted that modifying the system to use Bluetooth instead of NFC for the POS communication was an obvious design choice taught by both Barnett and Smith, which would satisfy limitations requiring a time-division duplex protocol.
    • Expectation of Success: A POSITA would have a high expectation of success, as transmitting an electronic receipt was a known feature of digital payment systems. Integrating Smith's e-receipt transmission at the conclusion of the transaction taught by the other references was a predictable extension of the system's functionality.

4. Arguments Regarding Discretionary Denial

  • Petitioner stated its intent to substantively address discretionary denial issues during subsequent briefing, in accordance with the Patent Office's interim guidance.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’756 patent as unpatentable.