PTAB

IPR2025-01421

Google LLC v. Telcom Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method For Enabling a Function of a Mobile Device In Proximity of an Entity
  • Brief Description: The ’432 patent describes a system where a mobile device, such as a smartphone, enables a function when it comes within proximity of a specific entity. The claims focus on enabling financial transactions by establishing a short-range communication link with a point-of-sale (POS) terminal and communicating with a separate authorization device over a different wireless network.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-16 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 of Barnett, Waters, and White disclosed all limitations of the challenged claims. Barnett taught the foundational system: using an NFC-enabled smartphone to perform financial transactions at a retail POS terminal by bringing the phone into proximity with the terminal. However, Barnett’s system lacked robust security and remote authorization features. Waters addressed security by teaching the selective enablement of a phone's NFC tag only when a physiological parameter (e.g., heat, pressure, fingerprint) is sensed, confirming the user is holding the device. White supplied the remote authorization feature, disclosing a system where a consumer's phone, upon initiating a transaction at a POS, sends an authorization request over a network (e.g., cellular, Wi-Fi) to a separate, remote device (e.g., a parent's or card owner's phone). Only after receiving an approval response from this remote device does the consumer's phone complete the payment with the POS terminal.
    • Motivation to Combine: A POSITA would combine Barnett with Waters to improve the security of mobile payments in Barnett’s retail environment, which features many unmonitored NFC readers. Adding a physiological sensor to enable the NFC tag, as taught by Waters, would prevent unauthorized or accidental transactions. A POSITA would further incorporate White’s remote authorization system to add a layer of real-time, flexible transaction approval, a known commercial need for scenarios like parental control or corporate expense management. This combination would enhance the security and utility of Barnett's basic payment system.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these references. All three relate to mobile financial transactions and employ compatible, well-known technologies (NFC, Wi-Fi, cellular networks, biometric sensors). Integrating a sensor-based NFC lock (Waters) and a network-based remote authorization loop (White) into a standard NFC payment framework (Barnett) involved the application of known techniques to achieve predictable results.

Ground 2: Claims 8 and 17 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 to address the limitations of claims 8 and 17, which required causing data to be transmitted to, and received from, a plurality of predetermined devices after a transaction. The base combination of Barnett, Waters, and White already taught transmitting payment data to a financial institution (a first predetermined device). Petitioner argued it would be obvious to add the teachings of Smith, which disclosed generating an electronic receipt at the POS terminal after a transaction is authorized and transmitting it to the purchaser’s phone. Smith further taught that this receipt data could be forwarded from the user's phone to a secondary computing device, such as a web server (a second predetermined device), for storage, archiving, and financial management.
    • Motivation to Combine: A POSITA would be motivated to add Smith's receipt-handling functionality to the Barnett-Waters-White system to provide valuable post-transaction features. Providing an electronic receipt is a logical and commercially desirable extension of a payment system, offering users proof of purchase and a record for expense tracking. Smith's system of forwarding receipts to a central server for management would further enhance the user experience by enabling automated financial planning and budgeting, a clear benefit.
    • Expectation of Success: The combination would have been straightforward with a high expectation of success. Integrating an electronic receipt feature into a mobile payment system was a known and predictable modification. The technologies required—transmitting data from a POS to a phone and from a phone to a network server—were conventional at the time. Modifying the base system to generate and transmit a receipt after payment authorization would yield the predictable result of a more complete and useful payment solution.

4. Arguments Regarding Discretionary Denial

  • Petitioner noted it would substantively address any issues related to discretionary denial during the corresponding briefing phase, in accordance with the Patent Office's interim process.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-17 of the ’432 patent as unpatentable.