US 12133078

Here's a concise summary of US Patent 12133078:

Patent Number: US12133078B2

Title: System and apparatus for selectively limiting user control of an electronic device

Assignee: Yondr Inc

Inventors: Graham Dugoni

Filing Date: March 14, 2024

Issue Date: October 29, 2024

Abstract: A system and apparatus for selectively limiting user control of a mobile electronic device are provided. In an embodiment, the apparatus may be a case sized to receive a mobile electronic device, the case having a locking means to at least partially secure an opening thereof. When engaged, the locking means may be physically impenetrable by the user of the mobile electronic device and may further be configured to engage and disengage in the presence of one or more pre-determined conditions. For example, the lock may engage when the case is detected within a certain geographical region or even during a specified time. It is contemplated that providing disclosed systems and apparatuses may reduce undesirable behavior at communal events by eliminating distractions posed by mobile electronic devices and preventing unauthorized recordings, which together may enhance overall engagement at and enjoyment of such events.

Plain-Language Overview of Independent Claims:

• Claim 1 (Case for limiting control based on geographic region): This claim describes a case designed to hold a mobile device. It has a shell with an opening and a lock near that opening. When locked, the mobile device inside becomes at least partially inaccessible. The key feature is that this lock is configured to unlock only when a specific, pre-determined condition related to a geographic region is met.
• Claim 9 (Case for securing opening based on geographic region): Similar to Claim 1, this claim also describes a case for a mobile device with a shell and a lock. The lock is positioned to at least partially secure the opening, making the device at least partially inaccessible when locked. This lock is also configured to unlock based on a pre-determined condition associated with a geographical region.
• Claim 15 (System with case and geographically-triggered lock): This claim describes a system that includes a case for a mobile electronic device. The case has a front and rear panel secured together to form an opening. A lock is near this opening and, when engaged, prevents the user from accessing the mobile electronic device. This lock is designed to remain locked until a pre-determined condition is met, specifically when the case is physically outside of a defined geographical region.

Litigation:
As of April 26, 2026, direct CAFC 2026 dockets for patent US12133078B2 were not found in the search results. However, the Google Patents information for US12133078B2 indicates active litigation. This includes:

• A PTAB case, PGR2025-00070, which has been filed and marked as a settlement.
• A US case filed in the Texas Western District Court (case number 1:24-cv-01326).
• A US case filed in the California Central District Court (case number 2:24-cv-09311).
  The legal status of the patent is "Active".

As of April 26, 2026, there are known litigation cases involving US patent 12133078:

1. Post-Grant Review (PGR) at the Patent Trial and Appeal Board (PTAB)

• Case Number: PGR2025-00070
• Plaintiff(s) (Petitioners): BE Smarter LLC and James Guerra
• Defendant(s) (Patent Owner): Yondr Inc.
• Jurisdiction: Patent Trial and Appeal Board (PTAB)
• Filing Date: August 13, 2025 (date of Yondr Inc.'s Mandatory Notices in connection with the PGR)
• Outcome/Current Status: Settlement.

2. District Court Litigation in Texas Western District Court

• Case Number: 1:24-cv-01326-ADA
• Plaintiff(s): Yondr, Inc.
• Defendant(s): Be Smarter, LLC and James Guerra
• Jurisdiction: U.S. District Court for the Western District of Texas
• Filing Date: October 31, 2024
• Outcome/Current Status: This is an action for patent infringement, trademark infringement, and unfair competition. The case was reassigned to Judge Alan D. Albright for all proceedings on March 27, 2025.

3. District Court Litigation in California Central District Court

• Case Number: 2:24-cv-09311-JLS-E
• Plaintiff(s): Win Elements LLC
• Defendant(s): Yondr, Inc.
• Jurisdiction: U.S. District Court for the Central District of California
• Filing Date: October 29, 2024
• Outcome/Current Status: The '078 patent was at issue in this case. A complaint was filed, and a motion to dismiss has been noted.

Proceedings overview

A single AIA trial proceeding, PGR2025-00070, has been filed against US patent 12133078. This proceeding was instituted and subsequently terminated due to settlement. As no claims were invalidated by a Final Written Decision, the patent remains unhardened but also without any claims canceled through this PTAB process.

PGR2025-00070 — Be Smarter, LLC et al. v. Yondr, Inc.

• Type: Post-Grant Review (PGR)
• Filed: 2025-07-29
• Status: Terminated-Settled. This means the parties reached an agreement and the proceeding was concluded without a final decision on the merits.
• Judge panel: Frederick C. Laney is listed as a panel judge for this case.
• Petition grounds: The exact claims challenged, specific prior art, and statutory bases (e.g., § 101, § 102, § 103, § 112) for the petition are not publicly available in the provided search snippets. However, the petition was filed by Be Smarter, LLC and James Guerra against Yondr, Inc., the patent owner. Patent Owner Yondr, Inc. had asserted patent US12133078 against the petitioner in a district court case (U.S. District Court for the Western District of Texas, Case No. 1:24-cv-01326-ADA), where the petitioner also filed counterclaims for invalidity of the patent.
• Institution decision: The petition was instituted on 2026-01-27. The specific reasoning for institution is not available in the provided snippets, but institution indicates the Board found a reasonable likelihood that at least one challenged claim is unpatentable.
• Final Written Decision: No Final Written Decision was issued for this proceeding due to its settlement status.
• Settlement / termination: The proceeding terminated due to settlement on 2026-04-14. The specific terms of the settlement are confidential and are not disclosed in the public records.
• Appeal: No appeal to the Federal Circuit occurred, as the case was terminated by settlement before a Final Written Decision.
• Defensive value: This proceeding shows that a third party (Be Smarter, LLC) considered the patent vulnerable enough to file a PGR petition, and the PTAB found sufficient merit to institute the review. The subsequent settlement means the patent's claims were not adjudicated as unpatentable by the PTAB. For a defendant, this means the patent owner chose to settle rather than risk a final decision on patentability before the Board, but also that no claims were canceled.

Strategic summary

Currently, no claims of US patent 12133078 have been formally canceled or sustained by a Final Written Decision from the PTAB. All claims of the patent remain legally "untested" by a final PTAB adjudication on the merits. The sole PGR proceeding, PGR2025-00070, was instituted but settled, leaving the patent's validity in PTAB unadjudicated.

Regarding the estoppel landscape, since PGR2025-00070 terminated via settlement and no Final Written Decision was issued, the statutory estoppel provisions of 35 U.S.C. § 315(e)(2) do not formally apply to the public at large. However, the petitioner (Be Smarter, LLC et al.) would likely be subject to contractual estoppel based on the terms of their private settlement agreement with Yondr, Inc., which are not public. Other potential challengers are not directly estopped by this settlement and could theoretically bring similar or different prior-art grounds against the patent.

The patent owner, Yondr, Inc., appears to be actively asserting this patent in district court litigation, as evidenced by the related case mentioned in the PGR filings where the patent was asserted against Be Smarter, LLC. The settlement of the PGR proceeding suggests a strategic decision by both parties, possibly to resolve ongoing litigation, rather than allow the PTAB to rule on the patent's validity. There is no public indication of a defensive aggregator like Unified Patents being the petitioner in this specific case, though Unified Patents' portal did provide some case details. JPMorgan Chase Bank, N.A. holds a security interest in the patent.

Recommended next steps

Given that PGR2025-00070 was instituted, the Board believed there was a reasonable likelihood that at least one claim was unpatentable. However, the subsequent settlement means no claims were ultimately invalidated. For a defendant facing assertion of this patent, it is important to:

1. Investigate the Petition for PGR2025-00070: While the full document is not publicly available in the provided snippets, access to the petition (if permissible and obtainable) could reveal the specific arguments and prior art that the PTAB found sufficient to institute a review. This could provide valuable insights into potential weaknesses of the patent.
2. Evaluate claims: As no claims were canceled, all claims of US12133078 remain active. A thorough analysis of the claims and any new prior art should be conducted to determine if there are other viable challenges, especially considering the institution of the prior PGR.
3. Monitor related litigation: Yondr, Inc. has asserted this patent in district court. Monitoring the progress and outcome of any ongoing litigation involving US12133078 will be crucial to understand the patent's strength and the patent owner's enforcement strategy.

Inventors

• Graham Dugoni. At the time of the priority filing (April 21, 2015), Graham Dugoni was the inventor and Yondr Inc. was the original assignee. There is no information to suggest he departed the original assignee within 12 months of filing. [cite: US12133078B2]

Original assignee

The original assignee is Yondr Inc. [cite: US12133078B2].
Yondr Inc. is known for its product, a locking pouch for mobile electronic devices, which embodies the claims of US12133078B2. Their primary line of business is providing mobile device-free environments through these proprietary locking pouches and associated technology for events, schools, and other venues. [cite: US12133078B2]
According to Google Patents, Yondr Inc. is currently "Active". [cite: US12133078B2]

Assignment timeline

Based on the provided Google Patents legal events for US12133078B2:

• 2022-08-23 (executed) / recorded 2024-04-05 — Reel 067016/0928

  • Conveyance: Assignment (ASSIGNMENT OF ASSIGNORS INTEREST) [cite: US12133078B2]
  • Assignor: Graham Dugoni [cite: US12133078B2]
  • Assignee: YONDR, INC. [cite: US12133078B2]
  • Correspondent: Not specified in the provided text.
  • Context: Formal transfer of the inventor's rights to the original operating company assignee.

• 2025-06-17 (executed) / recorded 2025-06-17 — Reel N/A (not provided in text)

  • Conveyance: Security Interest [cite: US12133078B2]
  • Assignor: YONDR, INC. [cite: US12133078B2]
  • Assignee: JPMORGAN CHASE BANK, N.A. [cite: US12133078B2]
  • Correspondent: Not specified in the provided text.
  • Context: Securitization; the patent is used as collateral for financing.

Timeline diagram

timeline
    title Ownership of US 12133078
    2015 : Priority date
    2022 : Inventor assigns to Yondr Inc
    2024 : Application filed
         : Assignment recorded
         : Patent granted
    2025 : Security interest to JPMorgan

NPE / troll-pattern signals

1. Shell-entity transfer — Not present. Yondr Inc. is an operating company known for its product related to the patent. The assignment from the inventor to Yondr Inc. is a standard transfer of rights, and the subsequent security interest involves a financial institution. [cite: US12133078B2]
2. Known asserter in the chain — Not present. The assignees are Yondr Inc. (an operating company) and JPMorgan Chase Bank, N.A. (a financial institution with a security interest), neither of which are identified as known patent assertion entities. [cite: US12133078B2]
3. Repeat correspondent across the chain — Unclear. Correspondent information for the assignments is not provided in the source text.
4. Cascading transfers — Not present. Only two transfers are noted: one from the inventor to the operating company and one security interest, which do not constitute multiple consecutive assignments through chained LLCs. [cite: US12133078B2]
5. Pre-litigation transfer — Not present. The assignment from the inventor Graham Dugoni to Yondr Inc. was executed on 2022-08-23 and recorded on 2024-04-05. While litigation related to the patent family was filed in 2024, the transfer to the operating company occurred prior to or around the time of this litigation, representing a standard transfer of inventor rights to the company that develops and asserts its own IP. [cite: US12133078B2]
6. Bankruptcy fire-sale — Not present. Yondr Inc. is listed as "Active" by Google Patents, indicating it has not undergone bankruptcy. [cite: US12133078B2]
7. Privateering — Not present. There is no evidence in the provided data to suggest Yondr Inc. has transferred the patent to an NPE to assert on its behalf.
8. Defensive aggregator (anti-NPE) — Not present. The current owners are Yondr Inc. and JPMorgan Chase Bank, N.A. (via a security interest), none of which are defensive aggregators. [cite: US12133078B2]

Verdict

Operating-company assertion
The patent is owned by Yondr Inc., an operating company that sells products embodying the claims of the patent. The assignments reflect a standard transfer from the inventor to the company and a security interest to a bank, not a transfer to a shell entity for assertion purposes. While litigation is ongoing, it appears to be initiated by the operating company itself.
Verify on USPTO Assignment Center

To identify the most relevant prior art for US Patent 12133078, I will examine the "Patent Citations" section of the patent itself. Prior art is crucial for determining the novelty and non-obviousness of an invention.

Here's an analysis of the patent citations listed for US12133078:

Patent Citations for US12133078B2:

• US7181229B2 to Singh et al.:

  • Full Citation: US7181229B2, "System which automatically disables or switches off a cellphone"
  • Publication/Filing Date: Prior art date: 2001-09-25. Publication date: 2007-02-20.
  • Brief Description: This patent discloses a system that automatically disables or switches off a cellphone, primarily within a restricted area such as a car. It aims to prevent cell phone use in moving vehicles to avoid traffic accidents. The system can transmit vehicle conditions to the mobile phone via radio waves or infrared signals to control its operating mode. It allows for calling designated numbers during emergencies.
  • Potential Anticipation (35 U.S.C. § 102): US7181229B2 potentially anticipates claims in US12133078B2 that relate to limiting mobile device functionality based on geographic location. Specifically, the concept of automatically disabling a device within a "restricted area" or "defined geographical region" is present. However, US12133078B2 explicitly states that the '229 patent is deficient because it "completely prevents users from being notified of any incoming calls or messages that may require the user's attention" and "fails to blocks the screen to diminish possible temptation to use the device."
    • Claims 1, 9, 15: The core concept of a lock unlocking based on a predetermined condition associated with a geographic region could be seen as broadly anticipated by Singh et al.'s system disabling a phone in a restricted area. However, the specific mechanism of a physical case lock and the selective limiting of user control (rather than complete shutdown) as described in US12133078B2 would distinguish it. Claims 1, 9, and 15 all specify a "lock configured to unlock...based on a predetermined condition associated with a geographic region" or "physical presence of the case being outside of a defined geographical region." The Singh patent focuses on disabling the phone, not necessarily a physical lock on a case that renders the device inaccessible.

• US5426419A to Sensormatic Electronics Corporation:

  • Full Citation: US5426419A, "Security tag having arcuate channel and detacher apparatus for same"
  • Publication/Filing Date: Prior art date: 1993-01-14. Publication date: 1995-06-20.
  • Brief Description: This patent describes a security tag and an associated detacher for use in an electronic article surveillance (EAS) system. The tag includes a body and an attachment element (tack assembly) to secure it to an article. The tack is releasably secured in the tag body via a locking means accessible through an arcuate channel. An authorized detacher mechanism is used to deform the clutch lock, releasing the tack and separating the tag from the article.
  • Potential Anticipation (35 U.S.C. § 102): US5426419A potentially anticipates elements related to a physical lock and an external detacher mechanism for unlocking.
    • Claim 5: This claim specifically mentions "wherein the lock is configured to unlock the case based on interaction with a detacher." This directly aligns with the detacher apparatus described in US5426419A.
    • Claim 6 (RFID tag enabling unlocking): While US5426419A discusses an EAS system, which often uses RFID-like technology, it doesn't explicitly describe an RFID tag enabling the unlocking of a shell in the same manner as US12133078B2. However, the general concept of an electronic mechanism facilitating unlocking in conjunction with an external device is present.

• US5977876A to Coleman; Joseph Anthony:

  • Full Citation: US5977876A, "Briefcase with remotely controlled locking mechanism"
  • Publication/Filing Date: Prior art date: 1998-08-13. Publication date: 1999-11-02.
  • Brief Description: This patent describes a briefcase with a remotely controlled locking mechanism. The details of the remote control and locking mechanism would need further examination to determine precise overlap.
  • Potential Anticipation (35 U.S.C. § 102): US5977876A could potentially anticipate claims related to a remotely engageable/disengageable lock.
    • Claims 7 and 13 (Microprocessor for wireless data signals to unlock): The concept of a remotely controlled locking mechanism could broadly relate to receiving wireless data signals to unlock.
    • Claim 17 (RFID tag receiving instructions from a remote transmitter to disengage): The idea of a remote transmitter disengaging a lock is present in Coleman's patent.
    • Claim 18 (Microprocessor receiving wireless data signal from a beacon or transmitter to disengage the lock): This claim also relates to a remotely controlled unlocking mechanism, which Coleman's patent addresses.

It is important to note that anticipation under 35 U.S.C. § 102 requires that every element of a claimed invention existed in the prior art, without distortion or selective modification. While these prior art references present similar concepts, a thorough legal analysis would compare each claim element of US12133078B2 against the disclosures of these prior arts to determine if all limitations are met.

The analysis below identifies combinations of prior art references that would render the independent claims of US patent 12133078 obvious to a person having ordinary skill in the art (PHOSITA), along with the motivation for such combinations. The independent claims are Claims 1, 9, and 15.

Obviousness Analysis of Claims 1 and 9

Claims 1 and 9 describe a case for a mobile device comprising a shell, an opening, and a lock positioned near the opening. The lock is configured to render the mobile device at least partially inaccessible when locked and to unlock based on a predetermined condition associated with a geographic region.

Combination of References:

1. A protective case for a mobile electronic device with an opening:

   • US5816459A to Armistead discloses a "Protective carrying case and method for making same".
   • US6456487B1 to Nokia discloses an "Enclosure for wireless communication device".
   • DE20209610U1 to Goros discloses a "Protective cover for small mobile electronic devices".
   • US20060274493A1 to Richardson discloses a "Protective enclosure for electronic device".
     These references collectively teach the basic concept of a case or enclosure designed to accommodate and protect a mobile electronic device, typically featuring an opening for insertion and removal.

2. A locking mechanism for a container or device:

   • US2685002A to Reilly discloses a "Lock for telephone instruments," demonstrating the concept of physically securing a telephone.
   • US5977876A to Coleman discloses a "Briefcase with remotely controlled locking mechanism," teaching the use of a lock on a case that can be controlled remotely.
     The integration of a lock into a carrying case or enclosure to secure its contents and prevent unauthorized access is a well-established and conventional practice across various fields.

3. A system for controlling mobile device functionality based on geographic location:

   • U.S. Pat. No. 7,181,229 to Singh et al. (referred to as "the '229 patent" in US12133078B2) discloses a system that "shuts off a cell phone and prevents a user from turning the cell phone on while it is within a restricted area, such as a car". This patent explicitly teaches limiting or disabling mobile device functions based on its geographic location. Other references such as US8145199B2 (BT Patent LLC), US9332126B2 (Hyundai Motor Company), and US9124703B2 (Hyundai Motor Company) also generally describe controlling mobile device functions.

Motivation for Combination:

The patent US12133078B2 itself provides a clear motivation for combining these elements. It identifies deficiencies in existing solutions like Singh et al., noting that Singh's system "completely prevents users from being notified of any incoming calls or messages" and "fails to blocks the screen to diminish possible temptation to use the device".

A PHOSITA, seeking to overcome these recognized shortcomings, would be motivated to provide a more robust and physically enforced limitation on mobile device use in restricted areas. While Singh et al. offers location-based software control, it lacks a physical barrier. A lockable case (taught by Armistead or Nokia, with a lock similar to Reilly's or Coleman's) provides this physical barrier. It would be an obvious design choice for a PHOSITA to adapt the known location-sensing technology (e.g., GPS, RFID, Bluetooth beacons, as discussed in the specification of US12133078B2) from Singh et al.'s software-based control system to control the physical lock of the case. This combination directly addresses the motivation to "reduce undesirable behavior at communal events by eliminating distractions posed by mobile electronic devices and preventing unauthorized recordings," and to "blocks the screen to diminish possible temptation", by rendering the device physically inaccessible when inside a defined geographic region, and unlocking it when the condition (e.g., exiting the region) is met.

Obviousness Analysis of Claim 15

Claim 15 describes a system comprising a case with specific panel construction and a lock. The lock secures the opening and renders the mobile electronic device inaccessible until a predetermined condition is met, specifically when the case's physical presence is outside of a defined geographical region.

Combination of References:

1. A case for a mobile electronic device with specific panel construction:

   • US5816459A to Armistead describes a "Protective carrying case".
   • US6456487B1 to Nokia describes an "Enclosure for wireless communication device".
     The detailed description of the front and rear panels secured along longitudinal and lateral edges to define an opening is a conventional construction for cases designed to hold electronic devices. These prior arts teach the basic structures of such cases, and the specific method of securing panels is a matter of routine design and manufacturing choice for a PHOSITA.

2. A locking mechanism for the case: As discussed for Claims 1 and 9, the concept of a lock on a case to secure its contents is well-known from references like US2685002A (Reilly) or US5977876A (Coleman).

3. Location-based control for restricting device access/functionality, including the concept of enablement outside a restricted area:

   • US7181229B2 to Singh et al. teaches a system that "shuts off a cell phone and prevents a user from turning the cell phone on while it is within a restricted area". This inherently implies that the device regains full functionality or accessibility when outside the restricted area.
   • The specification of US12133078B2 itself explicitly states, "the locking means 114 may receive instructions to unlock the device when it is located outside 100b of the geographical region 704 within reach of the transmitter 702". This demonstrates that the idea of unlocking or enabling access when outside a restricted zone is an alternative or complementary mode of operation for location-based control systems.

Motivation for Combination:

The motivation here is similar to that for Claims 1 and 9: to enhance the effectiveness of location-based restrictions by employing a physical lock on a case, thereby overcoming the limitations of purely software-based disabling (as highlighted by the patent's critique of Singh et al.).

A PHOSITA would find it obvious to combine a conventional protective case for a mobile device (as taught by Armistead or Nokia) with a lock (e.g., as found in Coleman), and to integrate this physical lock with the location-sensing technology described by Singh et al.. The specific condition of unlocking when the case is outside a defined geographical region is a straightforward implementation detail or a logical inverse of restricting function within a region, a concept already present in the prior art. The PHOSITA would be motivated to choose this specific unlocking condition to ensure that users regain access to their devices once they have left the area where restrictions are deemed necessary. This provides a user-friendly and practical application of location-based security, directly addressing the goals outlined in US12133078B2.