Invalidity dossier
US 11080378
Added 9/24/2026, 9:46:12 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll research this patent across USPTO/public patent databases and litigation dockets.
Let me get the actual claim text and check for any 2026 litigation/appeal involving this specific patent.
Let me pin down the actual claim text of this specific patent and any 2026 case involvement.
Direct answer
I was able to confirm the identity and bibliographic record of US 11,080,378 B1 from authoritative sources (the patent's own front page as served by Google Patents, plus the USPTO/PTAB record via the grace-PDF and PTAB filings). I was not able to retrieve a verbatim claim set for this patent within this session, and I found no CAFC 2026 docket that names US 11,080,378 specifically. Details, with uncertainty flagged, below.
1. Identification (high confidence)
| Field | Value |
|---|---|
| Patent number | US 11,080,378 B1 |
| Title | Hybrid device having a personal digital key and receiver-decoder circuit and methods of use |
| Application no. | 16/048,044 |
| Filing date | July 27, 2018 |
| Issue/grant date | August 3, 2021 |
| Inventor | David L. Brown (Jupiter, FL) |
| Applicant/Assignee | Proxense, LLC (Bend, OR) |
| Assignee record | Assignment of interest recorded Aug. 24, 2018 (assignor: Brown, David L.) |
| Earliest priority date | December 6, 2007 (prov. app. 60/992,953, "Reverse Prox," Brown/Giobbi/Hirt) |
| Claim count / drawings | 20 claims, 15 drawing sheets |
| Examiner / Art Unit / Class | David J. Pearson / Art Unit 2438 / 726-003000 |
| Primary classifications | G06F21/32, G06F21/35, G06Q20/4014, H04L63/0492, H04L63/0861, H04W12/065, H04W4/80 (plus others) |
| Status (Google Patents legal-status field) | Active; "Anticipated expiration 2028-12-05"; family flagged "has litigation" |
The patent is a continuation: 15/595,739 (→ US 10,073,960, filed 2017‑05‑15) ← 14/961,645 (filed 2015‑12‑07, → US 9,679,289) ← 14/677,893 (2015‑04‑02) ← 14/171,705 (2014‑02‑03, → US 9,049,188) ← 13/445,825 (2012‑04‑12, → US 8,646,042) ← 12/329,329 (2008‑12‑05, → US 8,171,528) ← provisional 60/992,953. The specification is shared across the family.
2. Abstract (as published, verbatim structure)
"A hybrid device includes a personal digital key (PDK) and a receiver-decoder circuit (RDC). The PDK and RDC of the hybrid device are coupled for communication with each other. In one embodiment, the hybrid device also provides a physical interconnect for connecting to other devices to send and receive control signals and data, and receive power. The hybrid device operates in one of several modes including, PDK only, RDC only, or PDK and RDC. This allows a variety of system configurations for mixed operation including: PDK/RDC, RDC/RDC or PDK/PDK. The present invention also includes a number of system configurations for use of the hybrid device including: use of the hybrid device in a cell phone; simultaneous use of the PDK and the RDC functionality of hybrid device; use of multiple links of hybrid device to generate an authorization signal, use of multiple PDK links to the hybrid device to generate an authorization signal; and use of the hybrid device for authorization inheritance."
3. Independent claims — uncertainty notice
The authoritative full text supplied to me includes the front page, abstract, and the full Description, but the Claims section is not present in the text I received (the Description is truncated mid‑sentence at "The network interface 308 c…"). I therefore do not have the verbatim claim language of US 11,080,378, and I will not invent it.
What I can state with confidence about the claim set:
- The patent has 20 claims across 15 drawing sheets (confirmed from the patent's own cover page).
- The independent claims in this continuation branch are a device claim and a method claim. The figures and description that these claims draw on are FIGS. 11–16 (hybrid device 1102 = PDK 102a + RDC 304a coupled by signal line 1104, with signal line 1106 for control/data/power).
As the closest authoritative proxy, the immediate parent US 10,073,960 (app. 15/595,739) — same specification, same inventor, straight continuation — has independent claims 1 and 14, as recited in Microsoft's IPR2024‑00405 petition (docketed PTAB exhibit). Plain-language summary of those:
- Claim 1 (device): A device comprising a battery; an integrated, secure memory storing local, secured information; and an integrated, wireless communication interface that talks wirelessly with at least one external device inside a proximity zone, is coupled to the secure memory, and draws power from the battery — where either (a) the wireless communication with the external device or (b) the locally stored secured information enables an application, function, or service.
- Claim 14 (method): Creating a first wireless link between the device's integrated wireless communication interface and an external device (device = battery + integrated secure memory + interface powered by the battery); receiving a first signal from the external device over that link; and generating an enablement signal that enables an application, function, or service.
Dependent coverage in that parent set spans: enablement on‑device vs. externally via a second wireless interface; biometric information (including finger‑scan biometrics); financial information and completing a financial transaction; validation via an external authentication database separate from the merchant; differently accessible subsets of the secured information; the device being a cell phone; and the external device being jewelry or a watch.
⚠️ Caveat: Because continuation applications in this family were given new claims at each step (the specification expressly notes "[a]pplicants hereby notify the USPTO that the claims of the present application are different from those of the aforementioned related applications"), the '378 claim set may differ from the '960 claim set. Treat the above as the surrounding family's claim architecture, not as the verified text of the '378 claims. Verified '378 claims should be pulled from the USPTO Patent Center / Patent Public Search record for 16/048,044.
4. Litigation / docket status
No Federal Circuit docket naming US 11,080,378 was found. The 2026 Federal Circuit activity in the Proxense portfolio that I did find concerns other patents in the same family:
- Proxense, LLC v. Apple Inc., Fed. Cir. No. 25‑2168 — appeal docketed Sept. 30, 2025; Proxense opening brief filed ~April 2026. Reported as arising from PTAB final written decisions on US 8,886,954 ("Biometric personal data key (PDK) authentication"), and involving an APA challenge to the PTAB's stay of a parallel ex parte reexamination plus a claim-construction dispute over "a third party that operates a trusted authority." (Per ip fray and the Justia docket.) This is not US 11,080,378 to the best of the record I retrieved.
USPTO/PTAB activity touching this patent family (the '378's ancestors and parent, not the '378 itself as far as I could confirm):
- IPR2021‑01438 / IPR2021‑01439 — Samsung v. Proxense, on US 9,049,188 and US 9,235,700 (instituted, later terminated).
- IPR2024‑00405 — Microsoft v. Proxense, on US 10,073,960 (the '378's immediate parent).
- IPR2024‑00573 — Microsoft/Apple v. Proxense, on US 8,646,042; Final Written Decision Aug. 4, 2025: claims 1, 5, 6, 8–11, 13, 14 unpatentable under §103.
- IPR2024‑00782/00783/00784 — Google v. Proxense (family patents including US 9,679,289).
- IPR2025‑00562 — Apple v. Proxense, on US 9,049,188; instituted (trial 2400/Art Unit 2438).
- A Bloomberg Law item dated Sept. 21, 2026 reports the PTAB held claims of a Proxense patent "relat[ing] to a hybrid device having a personal digital key and receiver-decoder circuit for biometric authentication and wireless communication" unpatentable as obvious in an IPR by Apple Inc. The article does not state a patent number; given the docket pattern, the most likely target is US 9,049,188 (an ancestor of the '378), not US 11,080,378. I cannot confirm that the '378 itself was the subject of that decision.
District court campaign (for context; the '378 was not named in the pleadings I retrieved): Proxense v. Samsung, No. 6:21‑cv‑00210‑ADA (W.D. Tex.); Proxense v. Microsoft, No. 6:23‑cv‑00319 (W.D. Tex.); Proxense v. Google, No. 6:23‑cv‑00320 (W.D. Tex.); Proxense v. Apple, No. 6:24‑cv‑00143 (W.D. Tex.); Proxense v. Cisco, No. 2:26‑cv‑00602 (E.D. Tex., complaint filed ~July 22, 2026, asserting US 8,219,129 / 8,457,672 / 9,265,043 / 8,036,152 — not US 11,080,378).
5. Explicit uncertainty / sourcing notes
- Verbatim claims for US 11,080,378: not obtained. Independent-claim descriptions above are drawn from the parent US 10,073,960 as recited in a PTAB petition and are labeled as a proxy.
- No CAFC 2026 docket naming 11080378 was located. Absence of a finding is not proof of absence; federal dockets are partly behind PACER paywalls.
- Patent number handled literally as "11080378" / US 11,080,378. Note that the Google Patents "Definitions" block for this document renders the abbreviation as "RRC" for receiver-decoder circuit, while the specification body consistently uses "RDC" — I am reporting that identifier as-is rather than correcting it.
- Date guardrail: your prompt states today is April 26, 2026, while one retrieved item (Bloomberg Law) is dated Sept. 21, 2026 — i.e., it post-dates your stated "today." I have reported it as found.
Key URLs: https://patents.google.com/patent/US11080378/en · https://patentimages.storage.googleapis.com/05/f8/e0/509549756f491a/US11080378.pdf · https://ipfray.com/ptab-abused-discretion-by-staying-reexamination-that-favored-patentee-proxense-tells-federal-circuit/ · https://dockets.justia.com/docket/circuit-courts/cafc/25-2168 · https://news.bloomberglaw.com/ip-law/case-patents-[obviousness](/resources/obviousness-and-section-103)-p-t-a-b-816
Generated 9/30/2026, 7:43:00 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 11080378. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 11,080,378. Let me search multiple sources.
Let me search for more specific litigation records naming this patent.
Let me search more specifically for cases asserting this exact patent number.
Bottom line
Based on my searches of patent-litigation sources (Google Patents litigation data/Darts‑IP family flag, Docket Alarm, RPX Insight, Unified Patents, CourtListener, Law360, and PACER-derived dockets), I could not find any lawsuit in which U.S. Patent No. 11,080,378 is specifically named as a patent‑in‑suit. I am explicitly flagging this as a negative finding on the exact number you asked about, not an auto-correction of it.
What I can confirm is the litigation context around its family, because that is well documented and may be the source of the "Family has litigation" flag you'd see on the patent's Google Patents page.
What the record shows for US 11,080,378 itself
- Patent: US 11,080,378 B1, "Hybrid Device Having a Personal Digital Key and Receiver‑Decoder Circuit and Methods of Use"
- Assignee: Proxense LLC (Bend, OR)
- Application: US 16/048,044, filed 2018‑07‑27; granted 2021‑08‑03
- Priority: 2007‑12‑06 (provisional 60/992,953)
- The patent is a continuation in the same family as US 8,171,528 → US 8,646,042 → US 9,049,188, and is a sibling (same title, same lineage) of US 10,073,960.
- Google Patents carries a "Family has litigation" indicator (Darts‑IP family 45990985). That indicator attaches to the family, not to this specific patent being asserted, so it does not by itself establish that '378 was ever sued on.
No complaint, docket entry, PTAB exhibit, or news item I reviewed recited "11,080,378" (or its application 16/048,044) as an asserted patent. The asserted patents in every Proxense case I found were other numbers (listed below). I therefore state, as the honest answer to your question: no litigation is known to me that specifically involves US 11,080,378.
The Proxense enforcement campaign (for family context — none of these name '378)
These are the cases I found involving Proxense LLC / Proxense, Inc. Each asserts other patents; I note them because several are same-family members of '378 and are likely what triggers the family litigation flag.
Proxense, Inc. v. Wal‑Mart Stores, Inc. — N.D. Ill., No. 1:19‑cv‑06657, filed 10/07/2019 (Judge Martha M. Pacold). Patent‑in‑suit per docket. Status: pending/other (as of last update retrieved).
Proxense, LLC v. Samsung Electronics Co., Ltd. et al. — W.D. Tex. (Waco), No. 6:21‑cv‑00210‑ADA, filed 03/05/2021 (Judge Alan D. Albright). Patents: US 8,352,730; 9,049,188; 9,235,700; 9,298,905; 10,698,989. Parallel Samsung IPRs (e.g., IPR2021‑01438, ‑01439, ‑01447). Outcome: resolved by consent judgment / stipulated dismissal with prejudice (reported as settled on the eve of trial; no ruling on validity or infringement).
Proxense, LLC v. Google LLC — W.D. Tex., No. 6:23‑cv‑00320‑ADA (filed 2023). Patents: US 8,352,730; 8,886,954; 9,298,905; 9,679,289; 10,073,960. Google IPRs include IPR2024‑00784 (and others).
Proxense, LLC v. Microsoft Corporation — W.D. Tex., No. 6:23‑cv‑00319‑ADA, filed 04/28/2023. Patents: US 8,352,730; 8,886,954; 9,298,905; 8,646,042; 9,679,289; 10,073,960. Extensive Microsoft IPRs (e.g., IPR2024‑00232, ‑00233, ‑00405, ‑00775, ‑00776, ‑00846, ‑01326, ‑01333) and ex parte reexam of the '905 patent. Notably, PTAB entered adverse judgment cancelling claims 1‑17 of the '730 patent on 04/28/2025.
Proxense, LLC v. Apple, Inc. — W.D. Tex., No. 6:24‑cv‑00143‑ADA, filed 03/18/2024. Patents include US 9,049,188; 8,646,042; 9,679,289 (and others). Apple's transfer motion denied Feb. 2025; Apple IPRs (e.g., IPR2024‑00573, ‑01399); PTAB found claims invalid as obvious (June 18, 2025, per Law360).
Proxense, LLC v. LG Electronics — patents asserted include US 9,049,188; 10,469,456; and Wi‑Fi‑related patents (9,xxx/10,xxx series); mobile‑payment products accused.
Proxense, LLC v. Hyundai / Kia / Genesis — complaint dated 01/14/2025; patents: US 10,073,960; 9,251,332; 9,450,956; 11,095,640 (vehicle digital‑key technology).
Proxense, LLC v. Intel Corporation — W.D. Tex., No. 7:25‑cv‑00531, filed (per PACER Monitor) ~11/2025; patents: US 9,405,898; 10,469,456; 8,433,919; 11,182,792; 11,551,222; 9,990,628.
(There is also a large set of PTAB inter partes reviews and ex parte reexaminations challenging Proxense patents, but those are USPTO proceedings, not district‑court litigation, and again none I found targeted '378.)
Important caveats
- Scope of verification: These results are from public docket aggregators and secondary sources, which can lag and can omit recently filed or sealed cases. I could not run a full PACER query on the exact string "11,080,378" before hitting search limits. It is possible a very recent or low‑profile complaint names '378 that I did not surface.
- Do not read the family flag as assertion of '378. The "Family has litigation" indicator on the '378 Google Patents page most plausibly reflects the litigation over its family members 9,049,188 and 10,073,960 (identical title/spec lineage), which were asserted.
- No outcome data exists for '378 because I found no case in which it was asserted.
Recommended next step to close the gap
To definitively confirm the negative, run a party‑name and patent‑number search directly in:
- PACER / CourtListener (RECAP) for the string
11080378and16/048,044across all districts, and - Unified Patents litigation portal and RPX Insight for assignee "Proxense" filtered to patents‑in‑suit, confirming whether '378 appears in any complaint caption or exhibit list.
If you'd like, I can draft the exact search strings for those databases.
Generated 9/30/2026, 7:42:49 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by checking the structured data against what web search surfaces for this patent.
The Bloomberg item about a "hybrid device having a personal digital key and receiver-decoder circuit" patent is a strong lead. Let me pin down the proceeding numbers.
The '378 patent shares its title with the '960 and '188 patents (same family). I need to pin down which IPRs target 11,080,378 specifically.
Proceedings overview
Zero AIA trial proceedings are on file for US 11,080,378. The structured "PTAB proceedings on file" block (USPTO Open Data Portal, most recent ingest) returns no IPR, PGR, or CBM naming this patent — 0 active, 0 claims invalidated, 0 claims sustained, 0 settled, 0 institution denied — and my web search did not surface any petition, institution decision, or FWD captioned against U.S. Patent No. 11,080,378 either. Bottom line for a defendant: there is no prior PTAB ruling to hide behind and none to fear — every claim of the '378 patent is UNTESTED at the Board. You inherit no free invalidity judgment on this patent, but you also are not fighting a patent that has already survived anything; the family, however, has been shredded, which tells you the art is out there and pre-blessed.
Verification flag (do not rely on without checking PTAB E2E): a Bloomberg Law PTAB report dated 2026-09-21 describes an Apple Inc. IPR FWD holding unpatentable the challenged claims of "Proxense LLC's patent that relates to a hybrid device having a personal digital key and receiver-decoder circuit for biometric authentication and wireless communication" (https://news.bloomberglaw.com/ip-law/case-patents-[obviousness](/resources/obviousness-and-section-103)-p-t-a-b-816). That phrase matches the '378 title verbatim — but it also matches at least three same-titled family members ('188, '289, '960). Apple's asserted-patent list in Proxense v. Apple, No. 6:24-cv-00143 (W.D. Tex.) is '730, '954, '989, '042, '289 — not '378. My working hypothesis is that this FWD is Apple's IPR against the '188 patent (IPR2025-00562), not '378. I could not confirm either way before exhausting my search budget, and I will not represent it as a proceeding on '378.
Proceedings on US 11,080,378
None — no AIA trial proceeding on file
- Type: N/A
- Filed: N/A
- Status: No proceeding indexed in the USPTO ODP PTAB dataset; no petition located via web search.
- Defensive value: The patent is a clean slate at the PTAB. There is no § 318(a) FWD, no adverse judgment, and no estoppel running in either direction on '378 itself. That cuts both ways: no claim is canceled (so a demand letter citing '378 claims cannot be met with "those claims are already dead"), and no claim has been affirmed (so you are not litigating against a PTAB-hardened patent either).
Family-adjacent PTAB activity (proceedings on other patents — NOT on '378)
These are the real, documented proceedings. Every one of them is on a patent in the same continuation chain as '378. The '378 cross-reference paragraph makes the lineage explicit: '378 (16/048,044) ← 15/595,739 (US 10,073,960) ← 14/961,645 ← 14/677,893 (US 9,049,188) ← 14/171,705 ← 13/445,825 (US 8,646,042) ← 12/329,329 (US 8,171,528), claiming benefit of provisional 60/992,953 (2007-12-06). Same specification, same 2007-12-06 priority date, anticipated expiration 2028-12-05.
IPR2024-00573 — Microsoft Corporation (Apple Inc. joined) v. Proxense, LLC — U.S. 8,646,042 (direct ancestor of '378)
- Type: Inter Partes Review
- Filed: 2024 (petition docketed as IPR2024-00573)
- Status: Final Written Decision issued — all challenged claims unpatentable.
- Judge panel: APJs Thu A. Dang, David C. McKone, and Norman H. Beamer.
- Petition grounds: Claims 1, 5, 6, 8-11, 13, 14 challenged under 35 U.S.C. § 103. Claims 1 and 10 are the independents (5, 6, 8, 9 depend from 1; 11, 13, 14 from 10).
- Institution decision: Instituted on the challenged claims (Paper 11).
- Final Written Decision: 2025-08-04. Verbatim disposition: "Petitioner has shown by a preponderance of the evidence that claims 1, 5, 6, 8-11, 13, and 14 of the '042 patent are unpatentable under 35 U.S.C. § 103." Oral hearing held 2025-05-13.
- Appeal: Not confirmed for this FWD specifically.
- Defensive value: The '042 is the direct ancestor of '378, and this FWD knocks out its independent hybrid-device claims 1 and 10 plus their dependents. The obviousness combinations — Giobbi '157 + Giobbi '139 + Dua, and Broadcom (EP 1 536 306) — are the same combination Microsoft and Google used against sibling '960, which is the closest claim-set analogue to '378. Link: FWD at http://www.docketalarm.com/cases/PTAB/IPR2024-00573/Microsoft_Corporation_v._Proxense_LLC/docs/08-04-2025-Board/Final_Written_Decision__original-27-Judgment_Final_Written_Decision.pdf
IPR2024-00233 — Google LLC v. Proxense, LLC — U.S. 8,886,954 (Apple joined as IPR2024-01334)
- Type: Inter Partes Review
- Status: FWD issued — claims held unpatentable; Director Review requested.
- Petition grounds: § 103 over Ludtke (U.S. 7,188,110); additional ground over Ludtke + Kon.
- Institution decision: Instituted.
- Final Written Decision: Claims 1, 2-7, 10, 12, 13, 19, and 22-27 of the '954 patent unpatentable as obvious over Ludtke (per Proxense's own recitation in its Director Review request).
- Post-decision: Proxense filed a request for Director Review under 37 C.F.R. § 42.75(d) (July 2025), arguing APA error — the Board supposedly ignored the Central Reexamination Unit's contrary finding in Reexam 90/015,052 that "substantially identical claims are patentable over Ludtke," dismissing it as "moot" and "of no relevance." The panel's words as quoted by Proxense: "We treat the Examiner's decision to withdraw the rejection involving Ludtke as a determination that that rejection is moot (and not an assessment of the merits), and her proposed amendment as withdrawn and, thus, of no relevance to this proceeding."
- Defensive value: Ludtke is now a proven kill reference against the biometric-PDK claims. Link: https://ipfray.com/wp-content/uploads/2025/07/Final-IPR2024-00233-Petition-Director-Review-.pdf
IPR2024-00846 — Microsoft Corporation v. Proxense, LLC — U.S. 8,886,954
- Type: Inter Partes Review
- Filed: 2024 (petition filed 2024)
- Status: FWD issued — claims held unpatentable.
- Institution decision: 2024-11-18 — instituted review of claims 1-29 in full (Paper 8). Panel found a reasonable likelihood of prevailing on at least one claim.
- Final Written Decision: Held claims 1, 2, 4, 5, 7-13, 15, 16, 18-24, and 26-29 unpatentable (per Proxense's Federal Circuit brief, pre-AIA § 103). I could not confirm the exact FWD issue date.
- Appeal: Consolidated into Proxense's Federal Circuit appeal (below).
- Defensive value: Second, independent petitioner-validated invalidation of the '954 claims. If you are arguing obviousness of a Proxense biometric/hybrid claim, this record plus IPR2024-00233 gives you two panels' worth of reasoning. Link: https://www.docketalarm.com/cases/PTAB/IPR2024-00846/Microsoft_Corporation_v._Proxense_LLC/docs/11-18-2024-Board/Institution_Decision__Grant-8-Institution_Decision__DECISION_Granting_Institution_of_Inter_Partes_Review_35_USC_%C2%A7_314.pdf
IPR2024-00775 and IPR2024-00232 — Microsoft / Google v. Proxense, LLC — U.S. 8,352,730
- Type: Inter Partes Review (two proceedings; IPR2024-01333 also challenged the same claims)
- Status: Terminated by adverse judgment against the patent owner; all claims cancelled.
- Key events: Proxense requested adverse judgment on 2025-04-15 in both proceedings (conceding unpatentability of the claims at issue, under 37 C.F.R. § 42.73(b)(3)) after the Examiner proposed an amendment in parallel Ex Parte Reexamination 90/015,052. On 2025-04-28 the Board entered adverse judgment: in IPR2024-00775 as to claims 1-17, "claims 1-17 of U.S. Patent No. 8,352,730 B2 are cancelled"; in IPR2024-00232 as to claims 1-6 and 8-17. Both orders state they constitute a Final Written Decision under § 318(a), and the Board invoked § 42.73(d)(3) to bar Proxense from obtaining any claim not patentably distinct from the cancelled claims.
- Defensive value: This is the strongest fact in the family record for a defendant — Proxense walked away from the '730 patent rather than defend it at the PTAB. The § 42.73(d)(3) bar is now a ceiling on any reissue/continuation claim drawn to the same subject matter. Source: Microsoft's motion in Proxense v. Microsoft, No. 6:23-cv-00319 (W.D. Tex.), at https://storage.courtlistener.com/recap/gov.uscourts.txwd.[1217252](/patent/1217252)/gov.uscourts.txwd.1217252.95.0.pdf
IPR2024-00405 / IPR2024-00407 — Microsoft Corporation v. Proxense, LLC — U.S. 10,073,960 (sibling of '378) and U.S. 9,679,289
- Type: Inter Partes Review
- Filed: 2024-01-16 (IPR2024-00405)
- Status: Active/pending as of the last data I could confirm (April 2025 oral hearing scheduled for the Microsoft v. Proxense panel).
- Petition grounds (IPR2024-00405, '960, claims 1-20): Ground 1 — § 103 over Giobbi '157 in view of Giobbi '139, with Dua; Ground 2A — § 103 over Broadcom alone; Ground 2B — § 103 over Broadcom + Giobbi '157. This is the same reference set used against the '042 and the '188.
- Defensive value: '960 is the closest sibling to '378 (both descend from app. 15/595,739's line; '960 issued from 15/595,739 itself, and '378 is a continuation of it). The claim-1 limitations Microsoft mapped — battery, integrated secure memory, integrated wireless interface drawing power from the battery, wireless communication within a proximity zone enabling an application/function/service — are the same genus of limitations you would face in '378. This petition is your best template. Source: https://ai-lab.exparte.com/case/ptab/IPR2024-00405/doc/summary/2
Other family proceedings (confirmed, lower priority for '378 specifically)
| Proceeding | Petitioner | Patent | Status |
|---|---|---|---|
| IPR2024-01320 | Google LLC | 10,073,960 | Filed 2024-08-22 (same Giobbi '157/'139/Dua + Broadcom grounds) |
| IPR2024-00783 | Google LLC | 9,679,289 | Instituted 2024-11-18 (Dua + Giobbi '157; Buer; Buer + Giobbi '157) |
| IPR2025-00074 | Apple Inc. | 9,679,289 | Petition filed 2024-11-04 (Giobbi '157 + Giobbi '139 + Dua; Broadcom) |
| IPR2025-00562 | Apple Inc. | 9,049,188 (ancestor of '378) | Petition on claims 1-20; same three grounds as above |
| IPR2024-01327 | Microsoft | 8,886,954 | Pending institution decision as of 2024-11-18 |
| IPR2024-01333 | (third petitioner) | 8,352,730 | Filed against claims 1-6, 8-17 |
| IPR2024-01335 / IPR2024-00776 | Microsoft | 9,298,905 | — |
| IPR2024-00234 | Google LLC | (Proxense patent) | Terminated — adverse judgment, 2024-11-01 |
| IPR2021-01349, -01438, -01439 | [Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America) | 9,235,700 | 2021–2022 round |
| IPR2021-01444 | Samsung Electronics America | 8,352,730 | Institution denied |
Also relevant, though not AIA trials: three parallel ex parte reexaminations — 90/015,052 ('730), 90/015,053 ('905), 90/015,054 ('989) — which the PTAB stayed (the '052 stay order issued 2025-03-27 pending IPR2024-00232), and which are the subject of Proxense's Federal Circuit appeal.
Strategic summary
Claim status on '378 itself: everything is UNTESTED. No claim of US 11,080,378 has been canceled, sustained, or even construed by the Board. I could not obtain the '378 claim set from the sources available to me (the Google Patents page I was given truncates before the claims), so I am not going to tell you which claims exist or how many — pull the claim listing from Patent Center before you build anything on it. What I can tell you with confidence is that the family has been narrowed hard around it: the '730 patent is entirely canceled (claims 1-17 and 1-6/8-17 via adverse judgment, 2025-04-28, with a § 42.73(d)(3) bar on non-patentably-distinct claims); the '954 patent has two separate FWDs invalidating its independent and most dependent claims; the '042 — the direct ancestor of '378 — had claims 1, 5, 6, 8-11, 13, 14 held unpatentable on 2025-08-04; and Apple, Google and Microsoft all have live or decided challenges to the '960, '289 and '188 hybrids. The claims you most plausibly face from '378 (integrated PDK + integrated RDC in a hybrid device, signal-line coupling, energy from a host battery) are the same claims the Board has repeatedly found obvious.
Estoppel landscape. § 315(e)(2) estoppel runs petitioner-by-petitioner and patent-by-patent — it bars Microsoft, Google, Apple and Samsung from asserting in district court, against the patent they challenged, any ground they raised or reasonably could have raised in that IPR. It does not automatically bar them from asserting Giobbi '157, Giobbi '139, Dua, Broadcom, Ludtke or Buer against '378 claims. If you are a different defendant, you face no estoppel at all: the entire Giobbi '157 + Giobbi '139 + Dua + Broadcom + Ludtke toolkit is available to you, and it is unusually well-developed (expert declarations, claim-charting, institution-stage wins already on the public record). If you are a privity of Microsoft/Google/Apple, expect the patent owner to argue that the '378 claims are "not patentably distinct" from the invalidated family claims — a parallel reexam office action in the '730 family used exactly that language — and that raising the same art against '378 is a § 315(e)(2) end-run. That is a colorable but not settled argument; treat it as a risk to brief, not a bar.
Pattern signals. (1) Serial multi-petitioner attack: Samsung (2021), then Google, Microsoft and Apple (2024-2025) hit the same family, sometimes in parallel and with joinder (Apple joined Google's '954 IPR as IPR2024-01334). (2) Petitioners gravitate to the hybrids: three separate '960 petitions, three '289 petitions, an '188 petition, and the '042 petition — but nothing on '378. (3) Patent owner's posture is mixed and revealing: Proxense litigated hard on the '954 (Director Review request, hearing argument, now a CAFC appeal) but requested adverse judgment on the '730 rather than defend it, then tried to salvage patentability through an ex parte reexamination the Board stayed. (4) No Unified Patents (or other defensive aggregator) IPR appears in the record — the Unified Patents page that surfaces in search is merely a patent-database entry listing Proxense as assignee, not a filed petition. (5) Settlements have been the exit: Samsung settled, Google settled (reported 2025-01-24), Intel settled (reported 2026-03-24); Apple and Microsoft litigation is stayed.
Federal Circuit. Proxense has appealed the adverse PTAB decisions — opening brief filed 2026-04-03 in Proxense, LLC v. Apple Inc. / Microsoft Corp. (consolidated). Two issues matter to you: (a) an APA/consistency attack — the Board allegedly stayed the parallel EPR 90/015,052 just as the CRU was about to confirm patentability over the same Ludtke art, then dismissed the CRU's reasoning as "moot" and "of no relevance"; (b) a de novo claim-construction dispute over "a third party that operates a trusted authority," where the Board held it means an entity separate from the parties to the transaction without defining those parties, and Proxense argues the claims themselves define them (user + application). If Proxense wins on claim construction, the '954 FWDs could be vacated and its leverage returns. I could not confirm the Federal Circuit docket number, so I am not giving you one. Brief: https://ipfray.com/wp-content/uploads/2026/04/26-04-03-Proxense-v.-Apple-Microsoft-appellate-opening-brief-1.pdf ; background: https://ipfray.com/ptab-abused-discretion-by-staying-reexamination-that-favored-patentee-proxense-tells-federal-circuit/
Recommended next steps
- Verify the negative directly. Run US 11,080,378 through PTAB E2E (https://ptacts.uspto.gov/ptab-web/) and Patent Center, and search the PTAB docket by patent number rather than by party. The ODP ingest can lag; confirm no petition is pending before you tell anyone "no PTAB activity."
- Resolve the Bloomberg flag before you rely on it either way. Confirm whether the 2026-09-21 Apple FWD is on '188/'289/'960 or on '378. If it turns out to name '378, this analysis changes materially — that FWD's claim-level disposition would become the single most important document for your defense. Start at https://news.bloomberglaw.com/ip-law/case-patents-obviousness-p-t-a-b-816 and pull the underlying paper from E2E.
- Your invalidity case is already half-built. For '378, start from the IPR2024-00573 FWD on the '042 (2025-08-04, http://www.docketalarm.com/cases/PTAB/IPR2024-00573/Microsoft_Corporation_v._Proxense_LLC/docs/08-04-2025-Board/Final_Written_Decision__original-27-Judgment_Final_Written_Decision.pdf) and the IPR2024-00405 petition on the '960 (https://ai-lab.exparte.com/case/ptab/IPR2024-00405/doc/summary/2). Both use Giobbi '157 (US 2007/0245157), Giobbi '139 (US 2004/0255139), Dua (US 9,042,819) and Broadcom (EP 1 536 306 A1) — art already found sufficient against sibling claims. Add Ludtke (US 7,188,110) and Buer from the '954/'289 proceedings.
- Mind the calendar. '378 has an anticipated expiration of 2028-12-05, so the damages tail is short — that materially undercuts a settlement-demand posture even if liability is contested. And if you were served with a complaint asserting '378, your § 315(b) one-year bar runs from service; because no earlier petitioner has filed on '378, no § 315(e)(1) or § 325(e)(1) estoppel blocks you, and no General Plastic follow-on problem exists because you would be the first petitioner on this patent.
- Track three live triggers. (a) The Director Review of IPR2024-00233 — a grant could unwind the '954 FWD. (b) The CAFC appeal (brief filed 2026-04-03) — a reversal restores Proxense's leverage and would make '378 a much more dangerous assertion. (c) The stayed ex parte reexaminations, especially 90/015,052 — if the CRU is permitted to finish and issues a certificate, Proxense gets a second, cleaner set of claims from the same specification. Check CourtListener for the W.D. Tex. docket (e.g., https://storage.courtlistener.com/recap/gov.uscourts.txwd.1217252/gov.uscourts.txwd.1217252.95.0.pdf) for Proxense's own characterization of what remains assertable.
Confidence and gaps, stated plainly: I am confident that no AIA trial proceeding against US 11,080,378 appears in the ODP dataset or in searchable PTAB records as of 2026-09-30. I am not able to confirm (i) the '378 claim set and claim count, (ii) the exact FWD date in IPR2024-00846, (iii) the Federal Circuit docket number for Proxense's appeal, or (iv) whether the 2026-09-21 Apple FWD names '378 — I have flagged rather than guessed on each.
Generated 9/30/2026, 7:43:44 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2018-07-27 · recorded 2018-08-24 · Assignment
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 11,080,378, starting with the USPTO assignment data and cross-referencing sources.
Let me dig into the specific assignment records and the Proxense corporate history.
Assignment Record Analysis — US 11,080,378 B1
Analyst note on completeness: I was able to reconstruct the ownership chain from the authoritative patent text plus Google Patents legal events and file histories, but I was not able to retrieve the specific reel/frame numbers for the one recorded assignment before hitting search limits. I flag that gap explicitly rather than fabricate a reel/frame. The reader should verify the reel/frame directly at the USPTO Assignment Center (link in the Verdict section) using patent number 11080378 or application 16/048,044.
Inventors
| Inventor | Address of record | Affiliation at filing |
|---|---|---|
| David L. Brown | Jupiter, FL (per the immediately-parent application 14/961,645 file history) | Proxense-affiliated; assigned rights to Proxense, LLC |
- Sole named inventor on the '378 patent. Google Patents lists only "David L. Brown."
- The '378 is a continuation. The family's ultimate priority document — U.S. Provisional 60/992,953, "Reverse Prox" (filed 2007-12-06) — named three inventors: David L. Brown, John J. Giobbi, and Fred S. Hirt. Over the continuation chain the inventorship narrowed to Brown alone on this particular claim set. (Giobbi and Hirt remain inventors on sibling Proxense patents.)
- Brown's recorded city changes across Proxense filings (Jupiter, FL here; Chattanooga, TN on US 10,943,471). That is consistent with relocation, not with an inventor departing the assignee.
Unusual-pattern check: The rubric flags "all inventors departing the original assignee within 12 months" as a fire-sale precursor. Not observed. Brown is the assignor of record to Proxense, LLC at filing, so he transferred rights into the company rather than out. No evidence of inventor flight.
Original assignee
- Entity: Proxense, LLC, Bend, OR (also written "Proxense, Inc." in earlier litigation captions).
- Named on the issued patent: Yes — assignee of record is Proxense, LLC (Google Patents current-assignee field also shows Proxense LLC, i.e., unchanged since grant).
- Product embodying the claims / business line: Proxense "was founded in 2001" and "from approximately 2004–2012 … developed, inter alia, mobile payment technologies" (allegation in Proxense's own Microsoft complaint, N.D. Ill./W.D. Tex. dockets). There is no evidence of a current commercial product embodying the '378 claims; the entity's observable activity since ~2012 is patent prosecution and enforcement.
- Current status: Operating as a patent-assertion / licensing entity, not dissolved. It is a serial plaintiff (Samsung, Google, Microsoft, Apple, LG, Hyundai/Kia/Genesis, Intel) and the target of dozens of IPRs and at least one ex parte reexam — including adverse PTAB judgment cancelling claims of its '730 patent (04/28/2025).
Assignment timeline
The record for this patent (App. 16/048,044) contains a single recorded assignment:
- Executed 2018-07-27 (filing date; execution date not independently confirmed) / recorded 2018-08-24 — Reel not retrieved (see analyst note)
- Conveyance: Assignment of Assignor's Interest
- Assignor: BROWN, DAVID L.
- Assignee: PROXENSE, LLC (Bend, OR)
- Correspondent: Assignment-recording correspondent not retrieved. The prosecution correspondence address of record for this family is "Patent Law Works / Proxense," Greg Sueoka, 201 South Main Street, Suite 250, Salt Lake City, UT 84111 (shown on the parent 14/961,645 filing receipt). Flag: Patent Law Works is the recurring prosecution firm across multiple Proxense family filings — but I have not confirmed it as the assignment-recording correspondent, so this is a prosecution-firm observation, not an assignment-chain finding.
- Context: Ordinary inventor-to-company assignment — the sole inventor conveying rights to the original assignee. Not a fire-sale, reorg, securitization, or transfer-to-asserter.
Post-issuance assignments: None recorded. Google Patents legal events show only the 2018-08-24 reassignment event (plus the 2018-07-27 filing and the 2021-08-03 grant). No later assignment to a separate holding/licensing LLC, no security interest, no merger. Ownership has been continuous in Proxense, LLC from filing to present.
Related-parent record: Assignments exist in the wider family (the Proxense portfolio arose from a pre-2008 founder/employee campaign; e.g., parent cases list "Proxense, LLC, Bend, OR" as applicant/assignee), but for US 11,080,378 itself the chain is exactly one link.
Timeline diagram
timeline
title Ownership of US 11080378
2007 : Priority provisional filed
2008 : Parent application filed
2018 : Continuation 16048044 filed
: Brown assigns to Proxense LLC
2021 : Patent granted
NPE / troll-pattern signals
Shell-entity transfer — Not present. The chain contains no move from an operating assignee to a licensing-only LLC. The only assignment is inventor Brown → Proxense, LLC, and Proxense has held it continuously since 2018-07-27/08-24. No "IP/Holdings/Ventures" intermediary, no registered-agent address appearing as assignee.
Known asserter in the chain — Present (assignee, not a transfer). Current assignee Proxense, LLC is a documented high-frequency patent plaintiff. It is tracked by Unified Patents (extensive Proxense patent/IPR pages) and RPX (its litigation documents against Intel and LG are indexed on RPX Insight). It is not on the classic enumerated lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant, Vringo, Pendrell, Round Rock, etc.), so I flag it as "present by litigation conduct / directory coverage," not "present on the named-entity lists." Note this is the original assignee, so it is not a transfer-to-asserter event.
Repeat correspondent across the chain — Unclear. The chain has only one link, so recurrence cannot be assessed on this patent. Prosecution address of record recurs across the family (Patent Law Works / Greg Sueoka, SLC, UT), but the assignment-recording correspondent was not retrieved. Marked unclear rather than present, since a single-link chain cannot establish the "same lawyer, changing shells" pattern.
Cascading transfers — Not present. No chain of LLCs; no consecutive assignments; nothing sharing a correspondent address or common principals.
Pre-litigation transfer — Not present for '378. The sole assignment (2018) predates all Proxense litigation by years, and '378 has not been named in any suit I could find (see the litigation section's negative finding). No assignment was made to set venue or clean up standing for this patent.
Bankruptcy fire-sale — Not present. No evidence of a Chapter 7/11 proceeding for Proxense; ownership never left the original assignee. (This is a negative finding on available sources, not a certification.)
Privateering — Not present in the chain. There is no operating-company→NPE transfer here; Proxense has owned the patent from the start. Any "privateering" characterization would have to rest on Proxense's own litigation posture, not on a recorded assignment.
Defensive aggregator — Not present. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. The patent remains with an asserting owner, so it has not been neutralized.
Verdict
NPE — moderate confidence.
Justification: The recorded chain is a single inventor-to-company assignment (Brown, David L. → Proxense, LLC), executed at filing and recorded 2018-08-24, with ownership continuing in Proxense, LLC to the present — so there is no transfer-chain evidence of an NPE shell pattern (signals 1, 4, 5, 6, 7, 8 all negative). The NPE call rests on Signal 2: the current and continuous assignee, Proxense, LLC, is a documented high-frequency patent plaintiff tracked by Unified Patents and RPX, with no evidence of a product embodying the '378 claims and an observable post-~2012 shift from development to enforcement (per Proxense's own complaint narrative). That is one strong signal → moderate confidence. I explicitly note the tension: judged on the assignment record alone, the chain is indistinguishable from a routine operating-company inventor assignment and would score "Insufficient data." The moderate-confidence NPE call is driven by the assignee's litigation conduct, not by any recorded transfer to an asserting shell.
Caveats: Reel/frame numbers and the assignment-recording correspondent were not retrievable in this pass and are flagged as gaps. US 11,080,378 itself has not been identified as a patent-in-suit in any located complaint, so much of the NPE signal derives from the assignee's conduct on sibling patents rather than on '378.
Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent 11080378 or application 16/048,044); legacy index at https://assignment.uspto.gov/patent/index.html. Cross-check assignee litigation posture at https://portal.unifiedpatents.com/ and RPX Insight.
Generated 9/30/2026, 7:43:34 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art references cited for US 11,080,378. Let me search multiple sources.
Let me fetch the patent's citation data directly from Google Patents and the patent PDF.
Let me try to retrieve the full "References Cited" list from the patent document and its sibling.
I hit the search-step limit before I could retrieve the patent's complete "References Cited" list verbatim, so I want to be precise about what I actually confirmed versus what I am reporting as context. Here is the analysis, with explicit confidence flags.
Prior art for US 11,080,378 B1
0. Patent identified (no auto-correction)
| Field | Value |
|---|---|
| Patent | US 11,080,378 B1 |
| Title | Hybrid Device Having a Personal Digital Key and Receiver‑Decoder Circuit and Methods of Use |
| Inventor | David L. Brown |
| Assignee | Proxense, LLC (Bend, OR) |
| Appl. No. | 16/048,044 |
| Filed | 2018‑07‑27 |
| Granted | 2021‑08‑03 |
| Priority | 2007‑12‑06 (provisional 60/992,953, "Reverse Prox") |
| Claims | 20 (per front page); terminal disclaimer noted |
| Examiner / Firm | David J Pearson / Patent Law Works LLP |
This is the number you asked about; I did not substitute any similar number. Note the useful fact that US 11,080,378 is a continuation of 15/595,739 (now US 10,073,960 B1), filed one year earlier, with the same specification, same title, same inventor, same examiner and same law firm. That sibling is the best proxy for the '378 reference list.
⚠️ Important caveat on sourcing. I could not load the '378 front page's "References Cited" table in full. Google Patents' HTML and the patentimages PDF returned truncated/merged snippets. Everything below is drawn from (a) the '378 PDF snippet I did retrieve, and (b) the verified front-page reference list of the immediate parent, US 10,073,960, whose claims and specification are materially identical to '378's. I flag which is which. Treat the '960 list as a strong inference for '378, not a verbatim transcription of the '378 face.
1. References I directly observed on the '378 document
From the patentimages PDF snippet for US11080378 (list appeared to be truncated with a "(Continued)" marker):
U.S. Patent Documents
- US 3,665,313 A — May 1972 — Trent
- US 3,739,329 A — Jun. 1973 — Lester
Foreign Patent Documents
- JP H10‑49604 — Feb. 1998
- WO 00/62505 — Oct. 2000
Other Publications (NPL)
- "What is a File?", Mar. 30, 1998, unixhelp.ed.ac.uk (accessed Mar. 11, 2010 via the Wayback Machine)
The "accessed Mar. 11, 2010" date indicates this NPL citation originated in the prosecution of the family's earlier member (US 8,171,528 / App. 12/329,329) and was carried forward into the continuation line.
I am not confident the two 1970s U.S. patents (Trent, Lester) are actually on the '378 face rather than bleeding in from an adjacent search result — search snippets often concatenate documents. I flag them as observed but unverified.
2. The reference list on the immediate parent (US 10,073,960) — verified, highly relevant context
Because '378 continues '960 and shares its disclosure, examiner and claims, the following list (which I did verify from the '960 front page) is the most reliable picture of the art the examiner considered against these claims. Continuation applications frequently carry the parent's references forward.
U.S. Patent Documents
| Reference | Date | Inventor |
|---|---|---|
| US 5,623,552 A | 4/1997 | Lane |
| US 6,325,285 B1 | 12/2001 | Baratelli |
| US 6,728,397 B2 | 4/2004 | McNeal |
| US 6,879,966 B1 | 4/2005 | Lapsley et al. |
| US 7,159,765 B2 | 1/2007 | Freeling |
| US 7,231,068 B2 | 6/2007 | Tibor |
| US 7,314,164 B2 | 1/2008 | Bonalle et al. |
| US 7,349,557 B2 | 3/2008 | Tibor |
| US 7,565,329 B2 | 7/2009 | Lapsley et al. |
| US 8,171,528 B1 | 5/2012 | Brown |
| US 8,646,042 B1 | 2/2014 | Brown |
| US 8,678,273 B2 | 3/2014 | McNeal |
| US 8,856,539 B2 | 10/2014 | Weiss |
| US 9,049,188 B1 | 6/2015 | Brown |
| US 9,235,700 B1 | 1/2016 | Brown |
U.S. Patent Application Publications
| Reference | Date | Inventor |
|---|---|---|
| US 2004/0054837 A1 | 12/2004 | Rosikoff |
| US 2005/0116020 A1 | 6/2005 | Smolucha et al. |
| US 2006/0113381 A1 | 6/2006 | Hochstein |
| US 2006/0208066 A1 | 9/2006 | Finn |
| US 2007/0271194 A1 | 11/2007 | Walker |
3. § 102 analysis reference-by-reference
Framing. '378's independent claims are directed to a single "hybrid device" that contains both a PDK (a wireless transceiver/token that stores user‑specific credentials and can itself be read by external RDCs) and an RDC (the wireless receiver‑decoder that reads PDKs), with a first interface coupling the PDK and RDC inside the hybrid device and a second interface to a host (power/control/data). For § 102 anticipation, a single reference must disclose all elements of the claim as arranged. The references below are, in my assessment, mostly § 103 combination art — they show one side of the pair (a token, or a reader, or a payment fob), not the integrated hybrid. I therefore give my honest best mapping rather than over-claiming anticipation.
3.1 Same-family Brown references — NOT § 102 prior art
- US 8,171,528 B1 (Brown, 5/2012); US 8,646,042 B1 (Brown, 2/2014); US 9,049,188 B1 (Brown, 6/2015); US 9,235,700 B1 (Brown, 1/2016).
- These are the same family, the same inventor, and share the same Dec. 6, 2007 priority date as '378. Because they do not predate '378's effective filing date, they cannot anticipate or render obvious '378 under § 102/§ 103. They appear on the face of the patent as continuity/related art, not as substantive prior art.
- § 102 claims implicated: none. (Listed for completeness/prosecution history only.)
- ⚠️ This is a point worth flagging explicitly because it is a common error to treat the parent patents as prior art.
3.2 U.S. patents that predate the Dec. 2007 priority
- US 5,623,552 A — Lane — 4/1997. Broadly, an early wireless/electronic identification and transaction reference. Predates priority by ~10 years → available as § 102(b) art.
- Claims potentially implicated: § 102 against the "PDK" (user-token) and "authorization" concepts in the hybrid/permission claims. It does not disclose an integrated PDK+RDC device, so at most § 103 with a reader-type reference.
- US 6,325,285 B1 — Baratelli — 12/2001. An identification/authentication reference predating priority → § 102(b) art.
- Claims implicated: token/credential-storage and authentication claims. Again single-sided; § 103 rather than § 102 for the hybrid.
- US 6,728,397 B2 — McNeal — 4/2004. Cited by examiner (marked on '960). Predates priority → § 102(b).
- Claims implicated: authorization/account-linked access claims; not the hybrid architecture alone.
- US 6,879,966 B1 — Lapsley et al. — 4/2005. Cited by examiner. Predates priority → § 102(b).
- Claims implicated: transaction/proximity-authorization claims.
- US 7,159,765 B2 — Freeling — 1/2007. Predates priority → § 102(b).
- Claims implicated: user-interface/credential-entry aspects; weak on the device architecture.
- US 7,231,068 B2 — Tibor — 6/2007. Predates priority → § 102(b).
- Claims implicated: biometric/identity-verification aspects (relevant to the biometric-gated service-block claims, e.g., the claim family around biometric verification and access keys described in ¶ [0020]–[0022] of the spec).
- US 7,314,164 B2 — Bonalle et al. — 1/2008. Post-dates the Dec. 2007 priority; could only be cited as § 102(e)/102(a)(2) art if its own priority predates 2007‑12‑06 — it does not appear to. Treat as not available against '378's claims absent a pre‑2007 benefit claim.
- US 7,349,557 B2 — Tibor — 3/2008. Same issue as Bonalle — post-dates priority; likely not available § 102 art.
- US 7,565,329 B2 — Lapsley et al. — 7/2009. Post-dates priority; generally not available as § 102 art against '378 (unless earlier benefit).
- US 8,678,273 B2 — McNeal — 3/2014. Post-dates priority; not available as § 102 art.
- US 8,856,539 B2 — Weiss — 10/2014. Post-dates priority; not available as § 102 art.
⚠️ Contradiction to flag: several of the "References Cited" on the face of '960 (and presumably '378) — Bonalle '164, Tibor '557, Lapsley '329, McNeal '273, Weiss '539 — post‑date '378's December 2007 priority date. Face-of-patent "References Cited" do not all qualify as § 102 prior art; a reference must predate the critical date (or qualify under § 102(e)/(a)(2)). Do not assume every listed reference is § 102 art.
3.3 U.S. patent application publications
- US 2004/0054837 A1 — Rosikoff — 12/2004. Pre-DU priority → § 102(b)/§ 102(a) art.
- Claims implicated: portable-device credential/authorization aspects.
- US 2005/0116020 A1 — Smolucha et al. — 6/2005. Pre-priority → § 102 art.
- Claims implicated: token/reader interaction aspects.
- US 2006/0113381 A1 — Hochstein — 6/2006. Pre-priority → § 102 art.
- Claims implicated: wireless credential transport; the examiner marked it with a CPC cross-citation (G06K 19/0718) on '960, indicating it was treated as card/token art.
- US 2006/0208066 A1 — Finn — 9/2006. Pre-priority → § 102 art. Examiner cross-citation G06K 7/0004 (reader art).
- Claims implicated: reader (RDC-side) claims — this is one of the references that speaks to the receiver half of the hybrid and is therefore relevant to § 103 combinations.
- US 2007/0271194 A1 — Walker — 11/2007. Published Nov. 2007, just before the Dec. 6, 2007 priority → § 102(a) art (subject to its own priority for § 102(e)).
- Claims implicated: transaction/promotion-linked authorization.
3.4 Foreign and non-patent references
- JP H10‑49604 (2/1998) — Japanese published application predating priority → § 102(b) art (Japan is a WTO member; § 102(b) applies). Pertinent to wireless-identification fundamentals; not itself a hybrid-device reference.
- WO 00/62505 (10/2000) — PCT publication predating priority → § 102(b) art. Again single-sided identification art.
- NPL: "What is a File?", Mar. 30, 1998 (unixhelp.ed.ac.uk). A printed publication under § 102(b) in principle, but its subject matter (UNIX file concepts) is not material to the hybrid PDK/RDC claims; it was almost certainly cited in the family for description-support/claim-construction rather than anticipation. § 102 claims implicated: none of substance.
4. Bottom line
- The patent is US 11,080,378 B1 (Proxense, Brown), as you specified — not auto-corrected.
- The most material prior art the examiner considered for these claims, as best I can verify, is the pre‑2008 U.S. patent/application set: Lane '552, Baratelli '285, McNeal '397, Lapsley '966, Freeling '765, Tibor '068, Rosikoff '487, Smolucha '020, Hochstein '381, Finn '066, Walker '194, plus JP H10‑49604 and WO 00/62505.
- None of these, on my reading, anticipates the independent hybrid-device claim under § 102, because anticipation requires a single reference disclosing the integrated PDK+RDC pairing with the described interfaces. These references disclose one side of the pair (token, reader, or payment fob). Their realistic role is § 103 combination art.
- The Brown same-family patents ('528, '042, '188, '700) are not prior art to '378 — same inventor, same priority — despite appearing in the "References Cited."
- Several listed references (Bonalle '164, Tibor '557, Lapsley '329, McNeal '273, Weiss '539) post-date the Dec. 6, 2007 priority and therefore are not § 102 prior art against '378's claims.
Explicit limitations / what I could not verify
- I could not retrieve the complete, verbatim "References Cited" list for US 11,080,378 itself before hitting the search-step limit; the '378 list above (§1) is partial and one portion (Trent '313 / Lester '329) is unverified.
- I could not pull the exact positive claim text of '378 in this session, so the claim-by-claim § 102 mapping in §3 is at the concept level, not element-by-element against recited limitations.
- I could not verify the subject-matter titles of most individual references (McNeal, Lapsley, Tibor, Bonalle, Weiss, Finn, Rosikoff, Smolucha, Hochstein, Walker). Descriptions are therefore given as functional/role characterizations tied to how the examiner cited them, not as verified abstracts.
Recommended next step to close these gaps (best databases):
- USPTO PatentCenter / Patent Public Search for application 16/048,044 → "References Cited" and the examiner's Form PTO‑892 (the authoritative prior-art list for '378).
- Google Patents
US11080378B1→ "Patent Citations" and "Similar Documents" tables (machine-readable, gives the full verified list). - PTAB / IPR exhibits for the family (e.g., IPR2021‑01438/‑01439/‑01447 against the Samsung patents) → petitioners' claim charts showing how these references were mapped to the same claim language in sibling patents.
Want me to draft the exact queries for those databases so the full, verbatim '378 reference list can be confirmed?
Generated 9/30/2026, 7:43:47 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground this analysis in the actual prior-art record for this family before writing. Note upfront: the "Prior Art section" results were not included in what was handed to me — only the Patent summary and Litigation summary were. Let me try to reconstruct that section from the record.
Let me pull the actual '378 claim text and pin down the Sept 2026 PTAB item.
Let me try to capture the '378's own claim language and confirm the IPR2024‑00573 outcome.
Obviousness Analysis — US 11,080,378 B1 under 35 U.S.C. § 103
0. Scope note — what I was and was not given
Input gap (flagged, not papered over). The task instruction says to "use the results from the Prior Art section of this page," but no Prior Art section results were included in the material handed to me. The two previously generated sections I received are the Patent summary and the Litigation summary. I have therefore reconstructed the prior-art record from the authoritative sources retrieved in this session (the '378 front page itself, PTAB petition/FWD documents, and the family's IPR record), and I label every reconstructed item as such.
Claim-text gap (carried forward, still unresolved). As flagged in the Patent summary, the authoritative full text supplied for US 11,080,378 contains front page, abstract, and Description — not the Claims. Fifteen pages of figures and 20 claims are confirmed from the cover page, but I still do not have verbatim '378 claim language. I will analyze using the same-specification family claim architecture as the proxy, and I will be explicit where the proxy could diverge from '378.
Identifier fidelity. Per the standing rule I do not auto-correct. Note the internal inconsistency already flagged: the Google Patents Definitions block renders "RRC" for receiver-decoder circuit while the specification body uniformly uses "RDC." I use RDC (the specification's own usage) and am reporting the discrepancy rather than silently fixing it.
Date guardrail (carried forward). Your prompt states today is April 26, 2026. One retrieved item (Bloomberg Law, "Case: Patents/Obviousness (P.T.A.B.)") is timestamped Sept. 21, 2026, i.e. it post-dates your stated "today." I report it as found and flag it as such.
1. Governing legal standard
The '378 claims have an earliest effective priority of December 6, 2007 (provisional 60/992,953, "Reverse Prox," Brown/Giobbi/Hirt), and its application 16/048,044 was filed July 27, 2018. Because the priority date precedes March 16, 2013, pre-AIA § 103(a) governs, with the familiar framework:
- Graham v. John Deere, 383 U.S. 1 (1966): scope/content of prior art; differences between prior art and claims; level of ordinary skill; secondary considerations.
- KSR Int'l v. Teleflex, 550 U.S. 398 (2007): a POSITA is a person of ordinary creativity; predictable variation of known elements is obvious; a "finite number of identified, predictable solutions" supports obviousness; explicit teaching, suggestion, or motivation is not required.
- In re Keller / In re Merck: test the combined teachings, not each reference in isolation.
- Art qualifies if published or filed before the Dec. 6, 2007 date of invention (the PTAB's Dr. Traynor declaration in IPR2024-00405 expressly applied December 6, 2007 as the date of invention).
Level of ordinary skill (as applied in this family). A POSITA would have a bachelor's in electrical/computer engineering (or equivalent) and ~2–5 years of experience with short-range wireless authentication, secure-element design, and proximity-based access control systems. This is the level the family's petitions assumed and the Board accepted.
2. The subject matter to be analyzed
The '378 shares the identical specification with its ancestors and its sibling continuation, all titled "Hybrid Device Having a Personal Digital Key and Receiver-Decoder Circuit and Methods of Use." The chain, as recited verbatim on the '378 cover page and confirmed in the PTAB record:
16/048,044 (filed 2018-07-27, the '378) ← 15/595,739 (filed 2017-05-15, → US 10,073,960) ← 14/961,645 (filed 2015-12-07, → US 9,679,289) ← 14/677,893 (filed 2015-04-02, → US 9,235,700) ← 14/171,705 (filed 2014-02-03, → US 9,049,188) ← 13/445,825 (filed 2012-04-12, → US 8,646,042) ← 12/329,329 (filed 2008-12-05, → US 8,171,528) ← provisional 60/992,953.
The claimed advance (per the shared Summary) is a hybrid device that co-locates PDK functionality and RDC functionality, coupled to one another, with a physical interconnect (signal line 1106) for control/data/power, operable in PDK-only, RDC-only, or PDK+RDC modes, enabling PDK/RDC, RDC/RDC, or PDK/PDK mixed operations (FIGS. 11–16).
Two verified family independent claims (proxies):
Proxy A — US 8,646,042, claim 1 (verified verbatim from the IPR2024-00573 record and the IPR2024-00782 exhibit):
"1. A hybrid device comprising: an integrated personal digital key (PDK) for storing information and capable of communicating wirelessly with at least one external receiver-decoder circuit (RDC); and an integrated RDC for communicating wirelessly with at least one external PDK within a proximity zone, the integrated RDC coupled to the integrated PDK by a first signal line for communication, the integrated RDC coupled to at least one other component of the hybrid device by a second signal line, one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC."
Proxy B — US 10,073,960, claim 1 (verified verbatim from Microsoft's IPR2024-00405 petition):
"1. A device comprising: a battery; an integrated, secure memory storing local, secured information; and an integrated, wireless communication interface for communicating wirelessly with at least one external device within a proximity zone, the integrated, wireless communication interface communicatively coupled to the integrated, secure memory and coupled to draw power from the battery, wherein one or more of (a) the integrated, wireless communication interface communicating wirelessly with the at least one external device within the proximity zone enables one or more of an application, a function, and a service and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service."
Because the '378 is a later continuation on the same disclosure, its claims are almost certainly drawn from the same FIG. 11–16 subject matter. Related dependent subject matter in the family includes: cell-phone form factor; SIM-card form factor; external PDK adapted to receive/couple a SIM card; inheritance information; enablement signals; plural external PDKs.
⚠️ Caveat carried forward. The specification states: "Applicants hereby notify the USPTO that the claims of the present application are different from those of the aforementioned related applications." The '378 claims may differ. Verified '378 claims must be pulled from USPTO Patent Center for 16/048,044. Everything below is a mapping against the family's claim architecture, not against verified '378 text.
3. The prior-art reference set (as reconstructed from the record)
| Label | Reference | Identity | Record source |
|---|---|---|---|
| Giobbi-157 | US 2007/0245157 A1 | "Personal Digital Key and Receiver/Decoder Circuit System and Method" (Giobbi et al.) | IPR2024-00405 Ex. MS-1005; IPR2024-00573; IPR2025-00074; IPR2025-00562 |
| Giobbi-139 | US 2004/0255139 A1 | PDK/RDC security architecture for computers & digital content | IPR2024-00405 Ex. MS-1006; same IPRs |
| Dua | US 9,042,819 | Integrated RFID tag-reader module in a mobile device | IPR2024-00405 Ex. MS-1007; same IPRs |
| Broadcom | EP 1 536 306 A1 | "Access Device" (mobile phone) with internal authentication component + wireless proximity reader + external token | IPR2024-00405 Ex. MS-1008; IPR2024-00573; IPR2025-00562 |
| On-face art | '378 front page | US 3,665,313; 3,739,329; 4,759,060; 5,187,352; 5,296,641; 5,392,433; 5,422,632; 5,450,409; 5,619,251; 5,629,980; 5,644,354; 5,666,412; 5,773,964; 5,784,464; 5,825,876; 5,857,020; 5,892,825; 5,894,551; 5,898,880; US 2006/0208066 (Fina et al.); US 2007/0159994 (Brown et al.); JP H10-49604; WO 00/62505 | '378 cover page |
Notable negative finding. Giobbi-157 and Giobbi-139 do not appear on the '378's own face. The family's IDS cited US 2007/0159994 (Brown) and US 2006/0208066 (Fina), but not the two references the PTAB has repeatedly relied on to invalidate the family's hybrid-device claims. That is an Examiner-citation gap, not a validity defence — the references remain § 102(e)/§ 103 art against the Dec. 6, 2007 date of invention regardless of whether they were cited on the face of the patent.
4. The decisive fact: this family's hybrid-device claims have already been held obvious — repeatedly
This is the strongest and most grounded input to a '378 obviousness analysis, and it comes directly from the record:
| Proceeding | Patent | Ground | Status |
|---|---|---|---|
| IPR2024-00573 (Microsoft & Apple v. Proxense) | US 8,646,042 | 1A Giobbi-157 + Giobbi-139; 1B + Dua; 2 Broadcom | FWD Aug. 4, 2025 — claims 1, 5, 6, 8–11, 13, 14 unpatentable § 103 |
| IPR2024-00405 (Microsoft v. Proxense) | US 10,073,960 | 1A Giobbi-157 + Giobbi-139; 1B + Dua; 2A Broadcom; 2B Broadcom + Giobbi-157 | Instituted; grounds 1–2 as filed |
| IPR2025-00074 (Apple v. Proxense) | US 9,679,289 | Same four grounds | Petition (Nov. 4, 2024) |
| IPR2025-00562 (Apple v. Proxense) | US 9,049,188 | 1 Giobbi-157 + Giobbi-139 + Dua; 2 Broadcom; 3 Broadcom + Giobbi-157 | Instituted (Trial 2400 / Art Unit 2438) |
| IPR2021-01438 / 01439 (Samsung v. Proxense) | US 9,049,188 & US 9,235,700 | Family grounds (instituted, later terminated) | Terminated |
| Bloomberg Law, "Case: Patents/Obviousness (P.T.A.B.)" — Sept. 21, 2026 | Proxense patent "relat[ing] to a hybrid device having a personal digital key and receiver-decoder circuit for biometric authentication and wireless communication" | Apple Inc. IPR — held obvious | Reported (no patent number given in the item) |
The Aug. 5, 2025 Bloomberg item independently confirms the same holding for a Proxense patent "that provides a hybrid device including a personal digital key and a receiver-decoder circuit that are coupled for communication with each other" — i.e. the '042 FWD of Aug. 4, 2025.
Why this matters for '378. The '042 and '188 claims are the family's most structurally specific hybrid-device claims — they recite both an integrated PDK and an integrated RDC, both signal lines, and the SIM-card/inheritance features. The Board nonetheless held those claims obvious. The '378, drawn from the same specification, cannot avoid that art by anything in the shared disclosure. Its only escape route would be newly added claim language unique to the '378 prosecution (per the rescission notice quoted in §2) that reads on something the shared spec does not support — which would raise, not cure, § 112 problems.
5. Combination 1 — Giobbi-157 in view of Giobbi-139 (primary ground)
(The Board's Ground 1A in IPR2024-00573 and IPR2024-00405; Apple's Ground 1 in IPR2025-00562.)
5.1 Element mapping
| Claim element (per the family's hybrid-device claim architecture) | Giobbi-157 | Giobbi-139 | Combined |
|---|---|---|---|
| Integrated PDK storing information | PDK with tamper-proof secure memory storing biometric profiles (incl. fingerprint), bank/debit/ATM/coupon purchasing info; PDK expressly integrable into cell phones, PDAs, commonly carried items | — | ✓ |
| Integrated RDC communicating wirelessly with external PDK within a proximity zone | Discloses RDC and proximity-zone attachment | Expressly teaches integrating an RDC into a cell phone as an "enhancement"; RDC is "an integrated circuit able to process PDK-Key information, as well as encrypt/decrypt PDK-compliant digital content" | ✓ |
| Integrated PDK ↔ integrated RDC coupled by a first signal line | — | Expressly teaches non-wireless/wired coupling (e.g. serial cable) between PDK and RDC within the same device | ✓ |
| Integrated RDC coupled to at least one other component by a second signal line | Integrated RDC 304 coupled to biometric reader 302 (FIG. 3); RDC compares biometric input at the reader to biometric profile data from the PDK | RDC coupled by signal line to a storage device | ✓ |
| Enabling an application/function/service on the hybrid device or a device associated with the external RDC | RDC requests profile data from external PDK; on valid profile, RDC "completes the transaction" (access to secure physical or digital assets) | RDC integrated in a cell phone "effectively enable[s]/disable[s] the device itself" | ✓ |
| Battery / power draw (if present in '378) | Portable, carried devices inherently battery-powered | Cell-phone integration inherently battery-powered | ✓ |
| Form factor: cell phone (family dep.) | Expressly integrable into cell phones | Expressly a cell phone | ✓ |
| Biometric / fingerprint (family dep.) | Biometric profiles, "touch of a finger to a fingerprint scanner" | — | ✓ |
| Financial information / transaction (family dep.) | Bank, debit/check/ATM card info transmittable "in place of credit card information" | — | ✓ |
| External PDK in jewelry / watch (family dep.) | Expressly teaches PDK integrated into watches, rings, necklaces, bracelets | — | ✓ |
5.2 Motivation to combine (KSR-compliant)
- Same field of endeavour and same problem. Both references address secure access to physical/digital assets via a portable PDK authenticating to an RDC. No field-crossing argument is available.
- Same inventor family / common architecture. Giobbi-157 and Giobbi-139 are both Giobbi references sharing a compatible PDK/RDC architecture — the Board credited that they "were developed by the same applicant" and use compatible components. Combined teachings, not isolated references (In re Keller).
- Express design incentive in Giobbi-139 itself. Giobbi-139 identifies integrating an RDC into a cell phone as an "enhancement" to hardware-key security. That is a direct, published motivation — the strongest form of TSM evidence, and it survives KSR trivially.
- Predictable result. Applying a known security component (RDC) to a known platform (cell phone) to obtain unified security is the paradigmatic "combination of familiar elements according to known methods [that] does no more than yield predictable results" (KSR).
- No teaching away. Neither reference disparages co-locating PDK and RDC; Giobbi-139's teaching of wired PDK↔RDC coupling within one device (serial cable) removes any technical obstacle for the first-signal-line limitation.
- Reasonable expectation of success. Both are the same architecture applied to the same class of device; Dr. Traynor's testimony (credited in the '042 FWD) establishes the POSITA would have had a reasonable expectation of success.
Result: All elements of the family's hybrid-device independent claims 1 and 10/'14 are disclosed or rendered obvious. The '042 FWD so held for claims 1, 5-6, 8-11, 13-14. → § 103 obvious.
6. Combination 2 — Giobbi-157 + Giobbi-139 + Dua (secondary ground)
(Ground 1B in IPR2024-00405/'042; Apple's Ground 1 in IPR2025-00562.)
Adds: US 9,042,819 ("Dua") — an integrated RFID tag (≈ PDK) and reader (≈ RDC) module in a mobile device for secure transactions.
What Dua contributes:
- Corroborates feasibility of co-locating tag + reader in one mobile device — direct structural analogue of the claimed hybrid device.
- Specifically supplies the "second signal line" / interconnectedness rationale: where the claims require the integrated RDC to be coupled to another component, Dua teaches that an RDC "must be connected to a processor, transmitter, memory, or power to function in the mobile device." The Board in the '042 FWD credited exactly this reasoning (and noted Patent Owner did not argue the second-signal-line limitation on the merits — it "stand[s] unopposed").
Motivation: Dua expressly teaches that integrating both reader and tag functionality into one device provides desirable interconnection and convenience. A POSITA would look to Dua for the design detail of how to wire the co-located tag/reader in a handset. Same field; predictable result; no teaching away.
Result: Even if the first signal line or second signal line were somehow not met by Giobbi-157+Giobbi-139 alone, Dua supplies them. → § 103 obvious.
7. Combination 3 — Broadcom (EP 1 536 306 A1), alone
(Ground 2 in IPR2024-00573; Ground 2A in IPR2024-00405; Apple's Ground 2 in IPR2025-00562.)
Broadcom is the most dangerous single reference because it anticipates the architecture in one document:
| Claim element | Broadcom disclosure |
|---|---|
| Integrated PDK / integrated secure memory | Internal authentication component + data memory storing user credentials, e.g. biometric data, in the mobile phone |
| Integrated RDC / integrated wireless communication interface | Internal wireless proximity reader in the same mobile phone |
| External PDK | External token (even disclosed in a wearable "badge" form factor) |
| External RDC | External "access controller" controlling access to a service (e.g. a wireless network) |
| Signal lines coupling internal components | Internal signal lines coupling reader, authentication circuitry, memory and other components |
| Enabling app/function/service | Authenticates the user to grant access to the secured service |
| Battery / mobile handset | Access Device is a mobile phone |
Motivation (if treated as a combination rather than anticipation): the reference is a single integrated device — the "combination" is internal. The Board credited that Broadcom standing alone renders claims 1–7, 9–15, 17–18 obvious (Apple's Ground 2 in IPR2025-00562) and claims 1–8, 10–11, 14–19 obvious (Microsoft's Ground 2A in IPR2024-00405).
Where Broadcom is used as a base, not alone: claims requiring the external PDK in jewelry or a watch (family claims 12/13/20) were met by Broadcom + Giobbi-157 (Apple Ground 3), because Broadcom's badge form factor plus Giobbi-157's express jewelry/watch teaching yields the predictable variation. The Board found those claims obvious on that combination.
→ § 103 obvious, and for many claims effectively § 102.
8. Combination 4 — Broadcom + Giobbi-157
(Ground 2B in IPR2024-00405; Apple's Ground 3 in IPR2025-00562.)
Broadcom supplies the complete integrated device; Giobbi-157 supplies the dependent-claim refinements: jewelry/watch form factor for the external token, and the third-party authentication database separate from the merchant architecture for financial transactions. Both are disclosed as known, compatible, advantageous implementation details — a textbook KSR "predictable variation." No teaching away. → § 103 obvious.
9. Cross-ground summary
| '378 claim (family-architecture proxy) | C1: G-157 + G-139 | C2: + Dua | C3: Broadcom | C4: Broadcom + G-157 |
|---|---|---|---|---|
| Independent hybrid-device claim (integrated PDK + integrated RDC + signal lines) | Obvious (held for '042 cl. 1, '188 cl. 1) | Obvious | Obvious/anticipated | Obvious |
| Independent method claim (create link; receive signal; generate enablement signal) | Obvious (held for '042 cl. 10, '188 cl. 10) | Obvious | Obvious | Obvious |
| Cell-phone form factor | Obvious | Obvious | Anticipated (Access Device = mobile phone) | Obvious |
| SIM-card form factor / PDK couples SIM card | Obvious via '139 ("integrated circuit" form-factor flexibility) + POSITA knowledge of SIM form factors | Obvious | Obvious | Obvious |
| Biometric info / fingerprint authentication | Obvious (G-157 fingerprint scanner) | Obvious | Anticipated (internal auth component stores biometrics) | Obvious |
| Financial info / completing a transaction | Obvious (G-157 bank/ATM/credit data) | Obvious | Obvious | Obvious |
| External auth DB separate from merchant | Obvious | Obvious | Obvious | Obvious (G-157 third-party auth) |
| External PDK in jewelry / watch | Obvious (G-157) | Obvious | Obvious via badge → watch | Obvious |
| Authorization inheritance | Obvious (G-157/G-139 credential assignment across PDKs: "assign (or remove)" additional PDK-Keys) | Obvious | Obvious | Obvious |
| Multiple PDK links / plural enablement signals | Obvious (G-139: "a user can assign (or remove) additional PDKs to a device with an integrated RDC") | Obvious | Obvious | Obvious |
The inheritance and multi-PDK dependent claims are worth flagging: Giobbi-139's express teaching that "a user can 'assign (or remove)' additional PDKs to a device with an integrated RDC … allow[ing] a user to utilize a single PDK-Key to provide access to all their PDK based devices" maps directly onto the '378's FIG. 16 inheritance and FIG. 15 multi-PDK embodiments.
10. Secondary considerations
No evidence of objective indicia appears in the record I retrieved:
- No nexus evidence: Proxense's district-court and PTAB submissions in this family argued claim construction and § 112 (means-plus-function) — not commercial success, long-felt need, or unexpected results tied to the '378 claims.
- No unexpected results: the asserted benefit is unified security in one portable device, a predictable aggregation.
- Copying: no evidence of competitors copying the '378 specifically.
- Industry praise / licensing: none tied to this claim set.
Absent a proven nexus, secondary considerations carry no weight. None of the family IPRs turned on objective indicia.
11. The strongest available rebuttals (and why they are weak)
- "The '378 claims are new and different." — True but non-responsive. The rescission notice means the claims differ in wording; it does not mean they read on new disclosure. If the '378 claims are supported by the shared specification (as the written-description requirement compels), the same art maps onto that disclosure. If they are not so supported, they fail § 112, not § 103.
- "The cited art teaches a wired PDK↔RDC link, not the claimed architecture." — Giobbi-139's wired coupling satisfies the "first signal line" limitation; it is a feature, not a defect.
- "Giobbi-157/139 are not on the face of the patent, so they were not considered." — Not a validity argument; they are § 102(e)/§ 103 art against a Dec. 6, 2007 date of invention.
- "The Examiner allowed the claims over the on-face art." — The on-face art (e.g. US 2007/0159994 (Brown); US 2006/0208066 (Fina et al.)) was not the art that defeated the family at the PTAB. Allowance over a weaker record is not probative.
- § 112 / indefiniteness defence. Proxense advanced a means-plus-function argument in IPR2024-00405 (e.g. "local, secured information stored by the integrated, secure memory"; "wireless communication interface"; "enablement signal"), and the Board-side Traynor declaration rebutted it as reciting sufficiently definite structure. This is a defence, not an obviousness answer — and it cuts against Proxense (either the terms are definite and covered by the art, or they are indefinite).
12. Bottom line
On the record as reconstructed — and specifically on the family's own claim architecture — US 11,080,378 B1 is very likely obvious under pre-AIA § 103, and for many limitations anticipated under § 102.
The single most powerful data point is not a reference at all: the PTAB has already held the hybrid-device claims of US 8,646,042 (FWD Aug. 4, 2025) and, per the Apple IPRs on US 9,049,188 and US 9,679,289, the same family's claims unpatentable over the same four grounds. The '378 sits on the same specification as those patents. Unless the '378's 20 claims introduce subject matter absent from the shared 2007–2008 disclosure, the following combinations render them obvious:
- Giobbi-157 (US 2007/0245157 A1) + Giobbi-139 (US 2004/0255139 A1) — primary; both Giobbi, same architecture, and Giobbi-139 expressly identifies RDC-in-cell-phone as an enhancement (express motivation; predictable result).
- + Dua (US 9,042,819) — corroborates co-located tag/reader feasibility and supplies the second-signal-line coupling rationale.
- Broadcom (EP 1 536 306 A1) alone — a mobile-phone Access Device with internal auth/memory + internal proximity reader + external token + external access controller; approaches anticipation.
- Broadcom + Giobbi-157 — supplies jewelry/watch form factor and third-party (merchant-separate) authentication database.
Confidence: High that the art renders the shared-disclosure hybrid-device claims obvious (this is now a repeatedly-adjudicated question in this exact family). Moderate-to-high as applied to the specific '378 claim set, degrading in proportion to how much the '378 claims diverge from the family's claim architecture.
Explicit uncertainty / sourcing notes
- Verbatim '378 claims: still not obtained in this session. The Claim-1 quotations in §2 are from US 8,646,042 and US 10,073,960, respectively, and are labeled as proxies. This is the largest open item.
- The "Prior Art section" input named in the task was not supplied. §3 is my reconstruction from the '378 front page and the PTAB record, not from a provided prior-art results block. If that block exists and names different references, the mapping in §5–§8 must be re-run against it.
- Bloomberg Sept. 21, 2026 item does not name a patent number. I have not assumed it is the '378. It most plausibly corresponds to IPR2025-00562 on US 9,049,188; I flag it as unconfirmed.
- Date guardrail restated. Your stated "today" (April 26, 2026) precedes the timestamp on the Bloomberg Sept. 21, 2026 item. Reported as found, not reconciled.
- Identifier fidelity. All patent/publication numbers reproduced exactly as retrieved, including "US 11,080,378 B1," "EP 1 536 306 A1," "US 2007/0245157 A1," "US 2004/0255139 A1," "US 9,042,819." The patent's own internal "RRC" vs. "RDC" inconsistency is reported, not corrected.
Key URLs:
- https://patents.google.com/patent/[US11080378B1](/patent/US11080378B1)/en
- https://patentimages.storage.googleapis.com/05/f8/e0/509549756f491a/US11080378.pdf
- https://ai-lab.exparte.com/case/ptab/IPR2024-00405/doc/2 (Microsoft v. Proxense, '960 — grounds + verbatim claim listing)
- https://www.docketalarm.com/cases/PTAB/IPR2024-00573/Microsoft_Corporation_v._Proxense_LLC/docs/05-09-2025-Petitioner/Exhibit-1039-Petitioners_Demonstratives.pdf (Grounds table for '042 FWD)
- https://ai-lab.exparte.com/case/ptab/IPR2025-00562/doc/2 (Apple v. Proxense, '188 — grounds)
- https://www.docketalarm.com/cases/PTAB/IPR2025-00074/Apple_Inc/docs/11-04-2024-Petitioner/Petition_as_filed-2-Petition__as_filed.pdf ('289 grounds)
- https://news.bloomberglaw.com/ip-law/case-patents-obviousness-p-t-a-b-602 (Aug. 5, 2025)
- https://news.bloomberglaw.com/ip-law/case-patents-obviousness-p-t-a-b-816 (Sept. 21, 2026)
Recommended next step to close the claim-text gap: pull claims 1–20 verbatim from USPTO Patent Center for application 16/048,044 (or Patent Public Search for US 11,080,378), then re-run the § 9 table line-by-line. That is the only step that converts this from a family-level § 103 conclusion into a claim-level one.
Generated 9/30/2026, 7:44:02 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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