Trials@uspto.gov Paper 7
`571-272-7822 Date: January 16, 2025
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2025-00075
`Patent 9,679,289 B1
`____________
`
`
`Before THU A. DANG, DAVID C. McKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`571-272-7822 Date: January 16, 2025
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2025-00075
`Patent 9,679,289 B1
`____________
`
`
`Before THU A. DANG, DAVID C. McKONE, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`IPR2025-00075
`Patent 9,679,289 B1
`
`I. INTRODUCTION
`On November 4, 2024, Apple Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Petition” or “Pet.”) to institute inter partes review of claims 1–20
`of U.S. Patent No. 9,679,289 B1 (Ex. 1001, “the ’289 patent”) and a Motion
`for Joinder (Paper 2, “Motion” or “Mot.”) with Google LLC v. Proxense,
`LLC, IPR2024-00783 (“the Google IPR”). Proxense, LLC (“Patent Owner”)
`did not file an opposition to Petitioner’s Motion and has informed the Board
`“Patent Owner does not oppose Petitioner’s Motion for Joinder.
`Accordingly, should the Board grant Petitioner’s Motion, Patent Owner does
`not believe filing a Patent Owner Preliminary Response would benefit the
`Board.” See 37 C.F.R. § 42.25(a)(1); Ex. 3001 (“Patent Owner’s December
`31, 2024 email from James A. Zak, Esq.”). Petitioner states that Petitioner
`understands Google LLC, the petitioner in the Google IPR, does not oppose
`the Motion. Mot. 1.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314;
`see 37 C.F.R. § 42.4. Upon consideration of the Petition and the evidence of
`record, we determine that Petitioner has established a reasonable likelihood
`of prevailing with respect to the unpatentability of at least 1 claim of the
`’289 patent. Accordingly, we institute inter partes review of claims 1–20 of
`the ’289 patent. We also grant Petitioner’s Motion for Joinder.
`
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`2
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`IPR2025-00075
`Patent 9,679,289 B1
`
`A.
`
`Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 84.
`Patent Owner has not submitted mandatory notices.
`
`B.
`
`Related Proceedings
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner identifies various
`related matters, including the Google IPR. Pet. 85–86.
`
`C.
`
`The ’289 Patent
`The ’289 patent, titled “Hybrid Device Having a Personal Digital Key
`and Receiver-Decoder Circuit and Methods of Use,” issued on June 13,
`2017, from Application No. 14/961,645, with a filing date of December 7,
`2015. Ex. 1001, codes (54), (45), (21), (22). The ’289 patent provides a
`hybrid device including a personal digital key (PDK) and a receiver-decoder
`circuit (RDC) that are coupled for communication with each other. Id.
`at code (57).
`An illustration of the embodiment of the ’289 patent’s hybrid device
`being a part of a cell phone is depicted in Figure 12, reproduced below:
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`IPR2025-00075
`Patent 9,679,289 B1
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`Figure 12 shows system 1200 comprising PDK 102b and cell phone 1202.
`Id. at 14:47–48. As shown in Figure 12, cell phone 1202 further comprises
`cell phone components and battery 1204, and hybrid device 1102, wherein
`hybrid device 1102 includes PDK 102a and RDC 304a coupled for
`communication with each other via signal line 1104. Id. at 14:48–53. Cell
`phone components and battery 1204 are coupled to RDC 304a by signal line
`1106, allowing RDC 304a to use the communication capabilities of cell
`phone 1202 to communicate with other networks and devices. Id. at 14:53–
`59.
`
`In one embodiment, cell phone 1202 including hybrid device 1102
`collectively forms a secure cell phone or generic access point. Id. at 14:65–
`67. The conventional SIM card is replaced with hybrid device 1102, which
`provides authorization control as well as a storage area for storing
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`IPR2025-00075
`Patent 9,679,289 B1
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`information specific to the user. Id. at 15:6–11. Thus, SIM content (cell
`phone account, contact information, and credit card) that is normally stored
`in cell phone 1202 is instead stored in PDK 102b in its local memory carried
`by the user. Id. at 15:11–15.
`
`D.
`
`Illustrative Claim
`Of the challenged claims, claims 1 and 14 are independent.
`Independent claim 1 is illustrative of the challenged claims, and is
`reproduced below:
`1. A hybrid device comprising:
`
`an integrated, secure memory storing local, secured
`information; and
`
`for
`(RDC)
`circuit
`reader-decoder
`integrated
`an
`communicating wirelessly with at least one external device
`within a proximity zone, the integrated RDC communicatively
`coupled to the integrated, secure memory for communication
`with the integrated, secure memory,
`
`wherein one or more of (a) the integrated RDC
`communicating wirelessly with the at least one external device
`within the proximity zone and (b) the local, secured information
`stored by the integrated, secure memory enables one or more of
`an application, a function, and a service.
`
`Ex. 1001, 22:36–49.
`
`E.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–20 of the ’289
`patent on the following grounds (Pet. 1):
`
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`5
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`IPR2025-00075
`Patent 9,679,289 B1
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`Claim(s) Challenged 35 U.S.C. §1
`1–6, 8–11, 14–19
`103
`1–6, 8–11, 14–19
`103
`1–7, 10, 11, 14–19
`103
`4, 8–10, 12, 13, 17,
`20
`4
`
`103
`
`103
`
`Reference(s)/Basis
`Dua2, Giobbi ’1573
`Dua, Giobbi ’157, Kotola4
`Buer5
`
`Buer, Giobbi ’157
`
`Buer, Nishikawa6
`
`
`Petitioner relies on the Declaration of Andrew Wolfe, Ph.D.
`(Ex. 1003) in support of its unpatentability contentions.
`II. ANALYSIS
`Institution of Inter Partes Review
`We instituted an inter parties review in the Google IPR on all
`challenged claims and all asserted grounds of unpatentability. Google IPR,
`Paper 12. Petitioner here challenges the same claims and asserts the same
`
`A.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March
`16, 2013. Because the application from which the ’289 patent issued was a
`continuation of applications filed before this date, the pre-AIA versions of
`§§ 102, 103 apply.
`2 U.S. Patent Publication No. 2006/0258289 A1, published November 16,
`2006, filed May 12, 2005 (Ex. 1004, “Dua”).
`3 U.S. Patent Publication No. 2007/0245157 A1, published October 18,
`2007, filed May 5, 2007 (Ex. 1006, “Giobbi ’157”).
`4 U.S. Patent Publication No. 2004/0176032 A1, published September 9,
`2004, filed March 19, 2004 (Ex. 1017, “Kotola”).
`5 European Patent Application No. EP 1,536,306 A1, published June 1,
`2005, filed September 30, 2004 (Ex. 1005, “Buer”).
`6 European Patent Application No. EP 1,600,885 A1, published
`November 30, 2005, filed February 25, 2004 (Ex. 1014, “Nishikawa”).
`
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`IPR2025-00075
`Patent 9,679,289 B1
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`grounds of unpatentability as those on which we instituted the Google IPR.
`See Pet. 82 (“this Petition is substantively identical to the Google IPR
`Petition”); Mot. 1 (“[t]he 0075 Petition is also narrowly tailored to the same
`claims, prior art, and grounds for unpatentability that are the subject of the
`Google IPR”); Mot. 2 (this Petition “is substantively identical to the Google
`IPR”); Mot. 2–3 (“the 0075 Petition does not present any new grounds of
`unpatentability; rather it is substantively identical to the Google IPR
`Petition”). Petitioner represents that the only differences in Petitioner’s
`Petition from the instituted Google IPR are “minor differences related to
`only other issues associated with a different party filing the petition.”
`Mot. 3.
`Petitioner also relies on the same declarant and identical declaration as
`did the petitioner in the Google IPR. Mot. 3 (“the 0075 Petition . . . relies on
`the same expert declaration”); Mot. 4–5 (“the 0075 Petition relies on the
`same expert and an identical declaration”); see also Ex. 1003. Petitioner
`additionally contends General Plastic Indus. Co., Ltd. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential), is
`inapplicable. Mot. 7–10.
`Because the issues in the instant Petition are identical to those in the
`Google IPR, and for the same reasons stated in our Decision on Institution in
`the Google IPR, we institute inter partes review in this proceeding on the
`grounds presented in the Petition. See Google IPR, Paper 12.
`B. Motion for Joinder
`Joinder in an inter partes review is subject to the provisions of
`35 U.S.C. § 315(c):
`
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`IPR2025-00075
`Patent 9,679,289 B1
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`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what impact
`(if any) joinder would have on the trial schedule for the existing review; and
`(4) address how briefing and/or discovery may be simplified to minimize
`schedule impact. Kyocera Corp. v. SoftView, LLC, IPR2013-00004,
`Paper 15 at 4 (PTAB Apr. 24, 2013).
`We determine that Petitioner has met its burden of showing that
`joinder is appropriate because, as set forth above, the Petition is
`substantively identical to the petition in the Google IPR, contains the same
`grounds based on the same evidence, and relies on the same declaration of
`Dr. Andrew Wolfe. Mot., passim; Ex. 1003.
`Petitioner represents joinder will not unduly burden or negatively
`impact the Google IPR trial schedule because “Patent Owner will not be
`required to provide any additional analysis or arguments beyond what it will
`already provide in responding to the Google IPR Petition.” Mot. 4.
`Petitioner also represents that “[b]y Petitioner accepting an
`‘understudy’ role, Patent Owner and Petitioner can comply with any
`forthcoming trial schedule and avoid any duplicative efforts by the Board or
`the Patent Owner.” Mot. 6; see also Mot. 5–6 (describing understudy role).
`
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`IPR2025-00075
`Patent 9,679,289 B1
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`“Also, because the 0075 Petition relies on the same expert and an identical
`declaration, only a single deposition is needed for the proposed joined
`proceeding.” Mot. 4–5.
`We determined above that the Petition warrants the institution of an
`inter partes review. Under these circumstances, we agree with Petitioner
`that joinder is appropriate and will not unduly impact the ongoing trial in the
`Google IPR. We limit Petitioner’s participation in the Google IPR, as
`follows: (1) Google alone is responsible for all petitioner filings in the
`Google IPR until such time that it is no longer an entity in the Google IPR,
`and (2) Petitioner is bound by all filings by Google in the Google IPR,
`except for (a) filings regarding termination or settlement, and (b) filings
`where Petitioner receives permission to file an independent paper. Petitioner
`must obtain prior Board authorization to file any paper or take any action on
`its own in the Google IPR, so long as Google remains as a non-terminated
`petitioner in the Google IPR. This arrangement promotes the just and
`efficient administration of the ongoing trial in the Google IPR, and protects
`the interests of Google as original petitioner in IPR2024-00783, and of
`Patent Owner.
`
`III. CONCLUSION
`For the foregoing reasons, we institute inter partes review of claims
`1–20 of the ’289 patent based on the grounds of unpatentability set forth in
`the Petition. We also grant Petitioner’s Motion for Joinder and join
`Petitioner to the Google IPR (i.e., IPR2024-00783), with the limitations set
`forth herein.
`
`
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`IPR2025-00075
`Patent 9,679,289 B1
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is
`hereby instituted as to claims 1–20 of the ’289 patent with respect to all
`grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122, Petitioner’s Motion for Joinder (Paper 2) is granted, and
`Petitioner is joined as a petitioner in IPR2024-00783;
`FURTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2024-00783 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the Scheduling Order in IPR2024-00783,
`and any modifications thereto, shall govern the schedule of the joined
`proceeding;
`FURTHER ORDERED that all further filings in the joined proceeding
`are to be made only in IPR2024-00783;
`FURTHER ORDERED that Petitioner’s participation in
`IPR2024-00783 shall be limited as stated above in § II.B unless and until
`Google LLC is terminated from that proceeding;
`FURTHER ORDERED that the case caption in IPR2024-00783 for all
`further submissions shall be modified to add Apple Inc. as named petitioner,
`and to indicate by footnote the joinder of Apple Inc. to that proceeding, as
`indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2024-00783.
`
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`IPR2025-00075
`Patent 9,679,289 B1
`
`PETITIONER:
`Philip Woo
`Monte Squire
`Daryl Bartow
`Paul Belnap
`DUANE MORRIS LLP
`pwwoo@duanemorris.com
`mtsquire@duanemorris.com
`dsbartow@duanemorris.com
`phbelnap@duanemorris.com
`
`PATENT OWNER:
`Patent Law Works/Proxense
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT 84107
`
`Brian D. Melton
`SUSMAN GODFREY, LLP
`1000 Louisiana St. Suite 5100
`Houston, TX 77002
`
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`11
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`Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC and APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-007831
`Patent 9,679,289 B1
`____________
`
`
`
`1 Apple Inc., which filed a petition in IPR2025-00075, has been joined as a
`petitioner in this proceeding.
`
`
`
`
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