PTAB

PGR2025-00070

Be Smarter LLC v. Yondr Inc

Key Events

Petition

petition

Title: System and Apparatus for Selectively Limiting User Control of an Electronic Device
Brief Description: The ’078 patent relates to systems and apparatuses, such as locking cases or pouches, that selectively limit a user's access to a mobile electronic device until a predetermined condition, like a specific geographic location or the passage of time, is met.

Prior Art Relied Upon: Samuel (Application # 2003/0011466).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Samuel discloses every element of independent claims 1 and 9. Samuel teaches a secure transport case for objects that is unlocked based on a predetermined condition, such as its arrival at a specific address, which is monitored by a remote system using GPS and RF signals. Petitioner asserted Samuel’s case comprises a shell with a cavity and an opening, a lock proximate to the opening, and a lock configured to unlock based on a predetermined condition associated with a geographic region (i.e., the destination address). Dependent claim 3, requiring the geographic region to correspond to a venue, was allegedly met by Samuel’s teaching that the destination could be a specific terminal or address.

Prior Art Relied Upon: Samuel (Application # 2003/0011466) and Shin (Korean Patent Laid-open No. 10-2007-0041248).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Samuel taught the core system of a case with a geographically-conditioned lock. Shin, which discloses a flexible “radio wave blocking envelope” specifically for storing a mobile phone in venues where silence is required (e.g., concert halls), provided the specific form factor of a flexible pouch sized for a mobile device. The combination of Samuel's locking and control system with Shin's flexible phone pouch allegedly rendered the claims obvious.
- Motivation to Combine: A POSITA would combine Samuel and Shin because Samuel explicitly suggests that its security container could be made from flexible materials or have an “envelope” format. To implement this flexible design for securing a mobile phone, a POSITA would naturally look to references like Shin that teach precisely such a structure for the same purpose.
- Expectation of Success: A POSITA would have a reasonable expectation of success in applying Samuel’s established electronic locking and remote-control mechanisms to the simple, flexible pouch structure taught by Shin.

Prior Art Relied Upon: Samuel (Application # 2003/0011466), Shin (Korean Patent Laid-open No. 10-2007-0041248), and Simpson (Application # 2014/0298492).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination of Samuel and Shin by adding Simpson to teach the limitation of unlocking based on a time period. Petitioner argued that Simpson discloses a security case with a lock that can be programmed to open based on various conditions, explicitly including location and time. This teaching directly addresses the "time period" and "passage of time" limitations recited in dependent claims 2, 10, and 19, which are not explicitly taught by the Samuel/Shin combination alone.
- Motivation to Combine: A POSITA seeking to enhance the functionality of the secure pouch from Samuel and Shin would be motivated to incorporate additional known unlocking conditions. Simpson, which describes a highly similar security case, provided an obvious path to include time-based unlocking, a well-understood feature in the art of secure containers.
Additional Grounds: Petitioner asserted an additional obviousness challenge based on the combination of Samuel, Shin, and Theobald (WO 2014/122001) to teach unlocking with a magnetic detacher (claim 5). Petitioner also challenged all claims under §112 for indefiniteness and §101 for lack of patent-eligible subject matter.

"configured to unlock... based on a predetermined condition": Petitioner proposed this term be construed as "programmed to unlock the case upon satisfying a predetermined condition." This construction was argued as necessary to align with the patent’s disclosure of automated unlocking based on external triggers (like location or time) and to exclude embodiments involving purely manual, user-initiated unlocking, which would be contrary to the claims’ language.
"predetermined condition": Petitioner proposed this term mean "a specific pre-established requirement that must be satisfied before a user can regain access." This was intended to reinforce that the unlocking trigger is a pre-set, objective condition rather than a spontaneous decision by a user or third party, which Petitioner argued was a key aspect of the invention that led to its allowance.

Petitioner provided a Sotera stipulation, agreeing that if the PGR is instituted, it will not pursue in a parallel district court proceeding the same grounds raised in the petition or any other grounds that it could have reasonably raised. This stipulation was presented to weigh against discretionary denial under the Fintiv factors by mitigating concerns about parallel proceedings.

Petitioner requests institution of post-grant review and cancellation of claims 1-5, 9-11, 15-16, and 19 as unpatentable.