US 12039396

I'll search for authoritative information on this specific patent number.

Let me get the abstract and independent claim text for this specific patent.

US Patent No. 12,039,396 B2 — Analyst Summary

Identification note: All identifiers below are transcribed exactly as they appear in the sources. Where I could not verify a datum directly against USPTO PatentCenter or the Federal Circuit docket (I have no authenticated access to those systems), I say so.

1. Bibliographic Data

Family position (per Google Patents): The application sits in a very large continuation/CIP web tracing to Feb. 7, 2006/May 6, 2005. Nearby members include:

• US 11,599,734 — "Methods of inductive communication in a cellular telephone" (from 17/697,923, filed 2022-03-18)
• US 11,989,612 B1 — "Cellular telephone including biometric sensor" (from 17/728,412, filed 2022-04-25)
• US 11,687,741 — "Methods of using a cellular telephone" (from 17/952,176, filed 2022-09-23)
• US 7,719,425; US 7,924,156; US 8,816,826; US 9,569,777; US 11,170,185 (earlier chain)

I could not independently confirm from the authoritative USPTO continuity data which single application 18/422,929 claims as its immediate parent; the Google Patents family table groups it with 17/728,412 (the '612 patent). Treat the immediate-parent identification as moderate confidence only.

2. Abstract (as listed in the IEEE/1790 Analytics citing-patent record)

"Various switchable devices, e.g., cellular telephones, including inductive antennas are disclosed. These switchable devices may include one or more switches and a biometric sensor. Some of these one or more switches are optionally wireless and/or manual. In various embodiments, the switchable devices include are included within cellular phones, security devices, identity devices, financial devices, remote controls, and the like. The switchable devices are optionally configured to perform financial transactions."

Two observations worth flagging:

1. This abstract text is verbatim identical to the abstract reported for the sibling patent US 11,989,612 B1 ("Cellular telephone including biometric sensor") in the same citing-patent record.
2. The specification's stated field is not cellular telephones: "The invention is in the fields of electronic passports, and more specifically in the field of electronic passports including shielding and/or switchable RFID tags." The specification is overwhelmingly directed to RFID shielding, clamshell passports, membrane switches and inductive/RF power harvesting. The title and abstract capture only a small slice of the disclosed subject matter.

3. Independent Claims — Plain-Language Overview

Uncertainty disclosure (important): The authoritative full text I obtained for US 12,039,396 cuts off inside the detailed description (at FIG. 30) and does not include the claims. My searches returned the specification and the litigation characterization, but not verbatim claim language. What follows is therefore an inference, labeled as such, and should not be quoted as claim text.

What can be grounded from the record:

• The E.D. Tex. complaint analysis describes the patent as "directed to a cellular telephone that uses two or more different wireless communication modes (e.g., cellular and short-range) and a biometric sensor to approve financial transactions. The short-range communication mode uses an inductive antenna."
• The same source reports Plaintiff asserting "at least claims 1–17 and 19–20" of the '396 patent.
• The related-family claim set in US 2022/0067312 ("Cellular Device Including Inductive Antenna") illustrates the claim architecture used across this family — e.g., an independent claim to "an electronic communication system comprising: a cellular telephone configured to communicate wirelessly using an inductive coupling, wherein the inductive coupling is part of a circuit including an electronic switch configured to change between states of the circuit and configured to communicate via the inductive coupling responsive to the states of the circuit," with dependents reciting a biometric sensor, PIN entry, account selection, WiFi at a different frequency, and point-of-sale reading.

Likely independent-claim gist (inference, not verified quote):

1. Method claim — performing a financial transaction with a cellular telephone placed near a point-of-sale device, including biometric authentication of the user to enable/approve communication of financial account information via an inductive (NFC/RFID) coupling.
2. Apparatus/system claim — a cellular telephone having both a cellular (and/or WiFi/802.11) communication mode and an inductive-coupling mode, a biometric sensor, and an electronic switch/circuit whose state controls whether financial account data is transmitted via the inductive coupling.
3. Possibly a third independent claim (the asserted set reaching claim 20 with claim 18 omitted suggests at least two, and likely three, independent claims, e.g., method, apparatus, and computer-readable medium or system).

Caveat: I cannot confirm the number, statutory category, or exact scope of the independent claims, nor whether any claim is a means-plus-function claim. Claim 18 is notably absent from the asserted set.

4. Litigation (2026)

District court (the only 2026 patent litigation I found involving this patent):

• SureCell Transactions LLC v. SAMSUNG ELECTRONICS AMERICA, INC. et al, No. 2:26-cv-00106 (E.D. Tex., Marshall Division), filed February 12, 2026.
• District Judge Rodney Gilstrap; Magistrate Judge Roy S. Payne; Nature of Suit 830 (Patent); Cause 15:1126; jury demand; damages demand $500,000,000.
• Patents asserted in the case: US 11,599,734 ('949; at least independent claims 20 and 29, and method claim 60), US 11,687,741 ('741; at least independent claims 1, 15, 23), US 11,989,612 ('612; at least claims 1–5), and US 12,039,396 ('396; at least claims 1–17 and 19–20).
• Accused products: a broad list of Samsung smartphones (Galaxy S, Note, Z Fold/Flip, A series) and Galaxy Watch wearables, accused via NFC short-range communication authenticated by biometric sensors/PINs (Samsung Pay, Samsung Blockchain Wallet, digital keys).

Federal Circuit: My searches did not surface any CAFC 2026 docket or appeal involving US 12,039,396 (or the co-asserted patents). Given the case was filed in February 2026 and remains at the pleading/venue stage, an appeal would be premature. I cannot rule out a docket I did not retrieve; treat this as "none found," not "none exists."

Also note: Google Patents displays a "Family has litigation" flag and a Unified Patents link pointing to the same 2:26-cv-00106 case.

5. Points a Reviewer Should Not Miss

1. Term is nearly over. Google Patents lists the anticipated expiration as May 7, 2026 — i.e., within days of today (April 26, 2026). Status is already flagged "Expired – Lifetime." This is a terminal-disclaimer-shaped term: the patent issued in 2024 but its 20-year clock runs from the 2006 parent filing, leaving an effective life measured in months. This materially affects any damages window.
2. "Biometric control of transactions" is a title/abstract overlay on a passport-shielding specification. A §112 written-description or claim-construction challenge premised on the mismatch between the claimed cellular-telephone subject matter and the disclosure's focus is a foreseeable line of attack.
3. Claim 18 is unasserted. Its content may be informative if the patent is construed.
4. Assignee chain matters for standing. Issued unassigned/individual; assigned to Surecell Transactions LLC by recorded assignment dated Dec. 22, 2025 — about seven weeks before the complaint was filed. The sibling '612 is reported with a different assignee (MYNETTE TECHNOLOGIES INC) in one citation database; confirm current record ownership of each asserted patent before relying on standing.

Key sources

• Google Patents, US12039396B2 (full text, family, reassignment, expiration): https://patents.google.com/patent/US12039396/en
• Justia, US 12,039,396: https://patents.justia.com/patent/12039396
• IEEE Xplore citing-patent record (abstract, "UNASSIGNED," filing/grant dates): https://ieeexplore.ieee.org/document/[1607561](/patent/1607561)/citations?tabFilter=patents
• E.D. Tex. docket 2:26-cv-00106 (filing date, judge, demand): https://gaeflexstaging-dot-docketupdate.appspot.com/cases/Texas_Eastern_District_Court/2--26-cv-00106/
• Complaint analysis, 2:26-cv-00106 (asserted claims per patent): https://ai-lab.exparte.com/case/dct/txed/2:26-cv-00106/doc/analysis/9
• Related-family claim architecture, US 2022/0067312: https://www.patentsencyclopedia.com/app/20220067312

I'll search for litigation specifically involving US 12,039,396 B2, prioritizing litigation databases and court dockets.

The initial searches returned mostly false positives (other patents with similar numbers). Let me target the litigation databases and the known plaintiff.

I've confirmed the primary case and found the asserted-patent list has grown to six. Let me verify the docket status, check for any PTAB/ITC proceedings, and look for other suits involving this patent.

Litigation involving US 12,039,396 B2

Bottom line: Exactly one litigation matter is known to have asserted US 12,039,396. I found no other district court case, no ITC investigation, no PTAB post-grant proceeding, and no Federal Circuit appeal involving this patent. A litigation-analytics party page for the plaintiff lists "Total Cases 1 / Active Cases 1" for Surecell Transactions LLC, corroborating that only a single matter exists (https://ai-lab.exparte.com/party/surecell-transactions-llc).

The one known case

Asserted claims of the '396 patent. Per complaint-analysis reporting, SureCell asserts at least claims 1–17 and 19–20 (claim 18 omitted). See https://ai-lab.exparte.com/case/dct/txed/2:26-cv-00106/doc/analysis/9.

Accused products/functionality. Broad range of Samsung mobile devices — Galaxy S, Note, Z Fold/Flip, and A-series smartphones, plus Galaxy Watch wearables and Galaxy Tab tablets — accused via NFC short-range communication authenticated by biometric sensors or PINs (Samsung Pay / Samsung Wallet, Samsung Blockchain Wallet, digital keys). Analysis source: same link above.

Sources: Unified Patents litigation portal — https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2:26-cv-00106; docket summary — https://gaeflexstaging-dot-docketupdate.appspot.com/cases/Texas_Eastern_District_Court/2--26-cv-00106/; Patexia case list — https://services.patexia.com/search/page/240/tab/cases.

Co-asserted patents (context for the same case)

This is a multi-patent assertion. Two sources disagree on the size of the asserted set — see the contradiction flag below.

• Per the complaint-analysis source (four patents described in detail): US 11,599,734; US 11,687,741; US 11,989,612; US 12,039,396.
• Per a Korean-language press report of the same complaint (six patents): US 7,924,156; US 11,347,949; US 11,599,734; US 11,687,741; US 11,989,612; US 12,039,396. Source: http://www.the-biz.co.kr/news/articleView.html?idxno=[707046](/patent/707046) (published Sept. 5, 2026).

Corroborating business-press mention: https://en.sedaily.com/finance/2026/03/15/patent-trolls-threaten-korean-tech-giants-under-trumps-pro ("SureCell Transaction has filed suit claiming Samsung Pay's payment technology misappropriated its patents").

Contradictions to flag explicitly

1. Number of asserted patents in the same case. The previously generated section of this analysis listed four asserted patents in SureCell v. Samsung; the Korean report of the same complaint lists six, adding US 7,924,156 and US 11,347,949. I could not retrieve the complaint text itself to resolve which is complete. The four-patent set should be treated as a subset (the analysis source may have described only the patents relevant to its synopsis).
2. Patent-number confusion in the earlier section. The earlier section rendered the '734 patent as "US 11,599,734 ('949...)". The Korean report lists 11,347,949 as a separate seventh-numbered patent (the '949 patent) distinct from 11,599,734 (the '734 patent). The '949 short-name appears to have been incorrectly appended to the '734 entry. Treat "11,347,949" and "11,599,734" as two distinct patents.
3. Date basis. The task frame states the current date as April 26, 2026, but the search environment returned content dated September 2026 (e.g., the Korean article of Sept. 5, 2026 and an updated party page). Docket-status statements above are "as of the most recent retrieval," and I flag that a later-filed docket entry could exist that I did not retrieve.

Negative findings (searched, not found)

• No PTAB proceeding. No IPR, PGR, or CBM petition challenging US 12,039,396 was found. (The IPR hits returned in searching — e.g., Samsung v. Staton Techiya, IPR2022-01106 / IPR2023-01106, on US 11,039,259 — are different patents and must not be conflated with the '396 patent.)
• No Federal Circuit appeal. None found. Given the case was filed Feb. 12, 2026 and (per retrieved records) remains at the early stage, an appeal would be premature.
• No other district court suit. No second plaintiff, defendant, or venue asserting the '396 patent was found.
• No ITC Section 337 investigation involving the '396 patent was found.

Confidence note: The existence, parties, court, case number, filing date, judge, and demand figure of SureCell v. Samsung are well-corroborated across multiple independent sources and I state them with high confidence. The current procedural posture and the complete asserted-patent list are lower confidence — I could not access PACER, CourtListener's RECAP docket for this case number, or the complaint itself, so status is "no disposition found" rather than "confirmed still open." I also could not verify whether any tag-along or related case was filed after my last retrieval.

I'll verify the one proceeding on file and check for any claim-level outcomes, panel assignments, or related activity before writing.

Let me dig into the specific proceeding, the patent's PTAB history, and any sibling-patent IPRs by the same petitioner.

Let me check docket aggregators and whether companion IPRs on the sibling patents exist.

Verification note (read first)

I sourced the proceeding list from the canonical "PTAB proceedings on file" block (USPTO Open Data Portal ingest). I then ran targeted searches for the proceeding number, the patent number, the petitioner, and the aggregate case docket. No public claim-level record exists yet — the petition was filed 2026-09-22, one day before today's date (2026-09-23). There is no institution decision, no FWD, no panel assignment I could retrieve, no settlement, and no appeal. Everything below that is not in the structured block is labeled as unverified or as prediction.

Two contradictions/reconciliations with the previously generated sections, flagged as required:

1. Date conflict. The prior summary repeatedly framed "today" as 2026-04-26 ("within days of today (April 26, 2026)"). The authoritative date for this task is 2026-09-23. I use 2026-09-23 throughout and treat the prior framing as stale.
2. Material consequence of that conflict. The specification record states "2026-05-07 Anticipated expiration" and status "Expired – Lifetime." On the prior (April) date that was five days out; on today's date it is ~4.5 months in the past. That reframes the entire defensive analysis (§4 below). I flag it rather than silently carry the older framing forward.

Proceedings overview

One AIA trial proceeding is on file against US 12,039,396 — a single IPR filed by Samsung one day ago: 1 active/pending, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution denials. The bottom-line defensive posture is therefore neither "hardened" nor "dead": every claim of the patent is PTAB-untested, no estoppel has attached, and the only thing Samsung has done is buy a ticket. That is a better position for a defendant than "the patent survived two IPRs" (there is no FWD to point to as evidence of strength), but a worse position than "claims 1–5 are canceled" (there is no cancellation to lean on, and the EPROM is that the patent is being asserted against a broad Samsung product line and now has a well-resourced petitioner on the clock).

IPR2026-00511 — [[Samsung Electronics Co., Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) et al.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.%20et%20al.) v. Surecell Transactions LLC (patent owner name inferred)

There is no "claims-invalidated" proceeding to put at the top of this list, so the single proceeding is presented first by default.

• Type: Inter Partes Review (IPR), 35 U.S.C. §§ 311–319.
• Filed: 2026-09-22 (last modified 2026-09-22, i.e., unchanged since docketing).
• Status: "Pending" (verbatim from structured data). Plain English: petition filed and docketed; no POPR, no institution decision, no trial.
• Judge panel: Not retrieved. Panels are frequently not publicly confirmable until the institution decision. I will not name APJs I could not verify.
• Petition grounds: Unknown / not public in any source I could retrieve. I did not find the challenged claim set, the § 102/§ 103/§ 112 basis, or the asserted references. Do not assume the petition mirrors the district court's asserted set (claims 1–17 and 19–20 per the complaint analysis at https://ai-lab.exparte.com/case/dct/txed/2:26-cv-00106/doc/analysis/9).
• Institution decision: None. Statutory timing under § 314(b): the patent owner's preliminary response is due ~3 months after the notice of filing date accorded (37 C.F.R. § 42.107(b)), putting a POPR around late 2026 / early 2027, and an institution decision on the outside ~2027-Q1 to 2027-Q2 (3 months from the POPR or its last date, extendable by up to 3 months). Treat these as planning estimates, not docket entries.
• Final Written Decision: None. If instituted, § 316(a)(11) puts the FWD 12 months from institution (extendable up to 6 months for good cause) — i.e., roughly 2028.
• Settlement / termination: None. No termination on file.
• Appeal: None, and none is possible yet — there is no appealable decision.
• Defensive value: Low, today; potentially high later. Samsung's own petition has not narrowed a single claim, and because no FWD has issued, no § 315(e)(2) estoppel has attached — Samsung (and, on the current record, anyone else) remains free to run any § 102/§ 103 ground on patents and printed publications in the district court. The petition's practical significance now is (a) it starts the clock toward a possible cancel-and-purge of the asserted claims, and (b) it is a prerequisite to any stay argument under Acorn Semi, which requires that the last patent-in-suit be acted on by the PTAB.

Strategic summary

Claim status on US 12,039,396: 1–20 all UNTESTED at the PTAB. Nothing is canceled, nothing is sustained, nothing has been construed by the Board. That includes claim 18, which is the one claim the complaint analysis reports as not asserted in 2:26-cv-00106 (asserted set: claims 1–17 and 19–20). If a defendant is weighing a § 112 or eligibility challenge, claim 18 is worth pulling from the printed patent, because an unasserted claim is often where the specification's weak support is least defended — but that is a district-court argument, not a PTAB one, and I could not verify claim 18's text (the authoritative full text in my source truncates in the specification at FIG. 30 and does not include the claims).

Estoppel landscape: effectively empty, and that cuts both ways. Section § 315(e)(2) estoppel arises only once an IPR institutes and reaches a final written decision; § 315(e)(1) (Office-side estoppel) is the same trigger. Because there is no institution, no ground is off the table for Samsung or for any other defendant. Practical consequences:

• Every prior-art ground — patents, printed publications, and (crucially) system/product art, which cannot be raised in an IPR at all — remains fully available in E.D. Tex. This is the point Samsung litigated hard in the Wilus case, where it relied on Ingenio Inc. v. IOENGINE, LLC, 136 F.4th 1354 (Fed. Cir. 2025), for the proposition that IPR estoppel does not bar using the same patents and printed publications as evidence of a system-art ground (see Samsung's sur-reply, https://archive.org/download/gov.uscourts.txed.[232954](/patent/232954)/gov.uscourts.txed.232954.446.0.pdf). Expect the same architecture here if Samsung stipulates.
• Samsung's stipulation practice is the thing to watch. In the parallel Wilus litigation, Samsung filed IPR stipulations (in IPR2025-00933, -00934, -00988, -01069) and then argued at meet-and-confer that the stipulations required withdrawal of specific invalidity grounds from its expert reports — meaning Samsung's stipulations were read as broader than a bare Sotera stipulation (see the Rubin declaration, Exs. G–J and K–N, https://archive.org/download/gov.uscourts.txed.232954/gov.uscourts.txed.232954.274.1.pdf). If Samsung files a comparable stipulation in 2:26-cv-00106, that stipulation — not the IPR — is what will actually shrink the district court case.
• § 315(b) is satisfied for Samsung (the '106 complaint was filed 2026-02-12 and a year has not run), but other defendants get no free ride: this petition does not toll or satisfy anyone else's one-year bar, and non-petitioners are not bound by petitioner estoppel.

Pattern signals. (a) One petition, one petitioner, on this patent. The canonical list shows no second IPR, no PGR, no CBM. (b) Samsung is a demonstrably serial 2026 filer — the searches surfaced, among others, IPR2026-00017 (Samsung v. Netlist), the IPR2026-00025–00042 block, IPR2026-00129 (Samsung Display v. Pictiva), and the IPR2026-00140/00191–00195 institution list — so a follow-on or companion filing is a live possibility, not speculation. Critically, I could not verify whether Samsung filed companion IPRs against the sibling patents co-asserted in the same case (US 11,599,734; US 11,687,741; US 11,989,612), because my search budget was exhausted. That is the single most important open fact: three or four parallel Samsung IPRs covering the whole asserted family would materially improve stay prospects and settlement leverage, whereas one IPR on the weakest patent does not. (c) No defensive aggregator. Unified Patents appears only as a litigation-data link on the Google Patents family page (https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2%3A26-cv-00106), not as a petitioner. Do not assume Unified is running this. (d) No PTAB appeal history to read — this family has no FWD, so there is no signal about whether Surecell/Colby litigates PTAB decisions aggressively.

The expiration fact changes everything, and it needs independent verification first. Per the authoritative patent text in this record: "2026-05-07 Anticipated expiration" and status "Expired – Lifetime." If correct (the 20-year clock running from parent US 11/382,050, filed 2006-05-07), then:

• Injunctive relief is off the table in the district court action; Samsung's exposure is pre-expiration damages subject to the § 286 six-year lookback.
• The patent owner cannot realistically amend in the IPR. Board practice does not permit claim amendments after expiration because amended claims would not be enforceable. A pending IPR on an expired patent is therefore an all-or-nothing wipeout proceeding for the challenged claims, with no amendment safety valve for Surecell.
• The IPR's raison d'être narrows to past damages, which undercuts the Office's stated premise that AIA review is a genuine alternative to litigation. Expect the patent owner to press this in its POPR, together with any mootness/standing-adjacent argument.
• Caveat: Google Patents' "anticipated expiration" is an assumption and may or may not capture patent term adjustment; a PTA award could push the date later. Verify the expiration date on USPTO PatentCenter before building a damages or mootness argument on it.

Discretionary-denial risk is real and asymmetric. Under the current Director-led institution regime (see the "Memorandum re: Director Institution of AIA Trial Proceedings," Oct. 17, 2025, and the "Interim Processes for PTAB Workload Management," Mar. 26, 2025, as reported in a PTAB exhibit list at https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1558580](/patent/1558580)/download-documents), the precedential Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097 (PTAB May 14, 2026) decision denies institution where AIA review would expand rather than narrow a validity dispute already in court, and expressly weighs whether review "confers a tactical advantage on dominant or foreign-affiliated entities." A March 11, 2026 Office guidance as quoted in a patent owner's brief (Ex. 2105, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1558838](/patent/1558838)/download-documents) lists three discretionary factors: whether accused products are manufactured in the U.S., whether the patent owner's competing products are U.S.-made, and whether the petitioner is a small business sued for infringement. On the face of it, Samsung is a large foreign-affiliated petitioner, the accused Galaxy handsets/wearables are predominantly foreign-manufactured, and Surecell makes no competing product. That combination is a headwind for institution, which means a defendant should not plan around a canceled claim.

Recommended next steps

1. Do not cite any FWD for this patent; none exists. There is no disposition to quote, no canceled claim, and no Federal Circuit opinion. If a demand letter or mediation statement implies the patent has been "upheld" or "invalidated" at the PTAB, it is wrong in both directions as of 2026-09-23.
2. Calendar the IPR2026-00511 milestones now and monitor via USPTO PTACTS (https://ptacts.uspto.gov/) and the PTAB API (https://developer.uspto.gov/api-catalog/ptab-api): POPR due ~3 months from the notice of filing date (§ 42.107(b)); institution decision ~2027-Q1/Q2 (§ 314(b)); if instituted, FWD within 12 months of institution (§ 316(a)(11)), i.e., roughly 2028. Confirm each date from the PTAB docket rather than from these estimates.
3. Retrieve the petition itself the moment it is public. The three facts that decide everything are: (i) the challenged claim set — does it cover all of asserted claims 1–17 and 19–20, or only the independents?; (ii) which claims the patent owner did not petition on, since those become the residual infringement theory; and (iii) whether Samsung filed a Sotera-plus-style stipulation, which is the lever that actually narrows the district court case.
4. Confirm whether companion IPRs exist against the sibling patents. Check PTACTS for Samsung petitions against US 11,599,734, US 11,687,741, and US 11,989,612. All-asserted-patents coverage is the precondition for a credible stay motion under Acorn Semi, LLC v. Samsung Elecs. Co., No. 2:19-cv-00347-JRG, 2020 WL 10284981 (E.D. Tex. Sept. 14, 2020) ("last of the patents-in-suit to be acted upon by the PTAB"), which is the standard in the very court where this case sits.
5. Independently verify the expiration date on USPTO PatentCenter. If the patent expired 2026-05-07 (possibly plus PTA), then (a) a motion to stay defeats itself — there is nothing left to stay but damages; (b) the IPR becomes a pure damages-defense tool; and (c) the six-year § 286 damages window (back to ~2020-02-12 if measured from the complaint) is the real battleground. Note also that the assignment to Surecell Transactions LLC was recorded 2025-12-22, roughly seven weeks before the 2026-02-12 complaint and about four months before expiration — confirm the current chain of title for standing before relying on it.
6. Treat claim 18 as an unexplored flank. It is the only claim outside the asserted set. Pull its text from the printed patent and pressure-test it under § 101 and § 112, since (per the earlier summary) the specification is directed to electronic passports, shielding, and membrane switches while the claims are directed to cellular-telephone transactions — a mismatch the PTAB cannot address but a district court can.
7. If you are a co-defendant, not Samsung: your § 315(b) clock runs from your own service, and you are neither bound by nor protected by Samsung's petition. Separate petitions, filed early, remain available — but expect General Plastic follow-on-petition scrutiny and the Director's current discretionary framework to make a second petition against the same claims harder to get instituted.

I'll research the assignment record for US 12,039,396, focusing on USPTO Assignment Center records, reel/frame data, and correspondent information.

Initial searches returned noise. Let me target the patent-specific assignment data and the assignee entity.

Significant lead: the Mynette/Colby Federal Claims litigation and attorney Robert Yorio. Let me dig into the assignment specifics and the asserter's corporate footprint.

Analysis note up front

I could not open an authenticated session against USPTO Assignment Center (assignmentcenter.uspto.gov / assignment.uspto.gov) from this environment. The specific fields the task asks me to capture — reel/frame, conveyance code, and correspondent of record — are therefore not verifiable by me directly, and I will not invent them. Everything below is grounded in (a) the Google Patents legal-events record for US 12,039,396 B2, (b) the patent text itself, and (c) primary-court documents I retrieved for the inventor's other patents. Where a datum is unverified, I say so.

Date-basis contradiction to flag: This task frame states today is 2026-09-23. The previously generated sections of this analysis operated on a frame of April 26, 2026 and flagged the patent as "expiring within days." If the September date is correct, then US 12,039,396 B2 (anticipated expiration May 7, 2026) has already expired, not "about to." I carry the September date forward and flag the earlier section's date basis as stale.

Inventors

• Employer at time of filing (2024 continuation): Not determinable from the patent front page. The application was filed as an individual filing — Google Patents lists the "Original Assignee" as "Individual," and the grant record shows no corporate assignee at issue.
• Historical affiliation: Independent inventor databases tie Colby's earlier applications to Mynette Technologies, Inc. (Menlo Park, CA, US; also a Verdi, NV, US address), which is listed as a top assignee for his published applications (last publication 2021-04-15). Source: https://www.patents-review.com/inventor/[1284079](/patent/1284079)-steven-michael-colby-mountain-view-ca-us.html
• Pattern flag — "sole inventor / serial filer": The family is an unusual, decades-long one-man continuation chain. The specification's own priority-claim block on the Google Patents page lists eleven predecessor applications spanning 2006–2018, all flowing to Colby. This is not the "all inventors departed the original assignee within 12 months" red flag (there is only one inventor and no operating-company assignee); the analogous pattern here is a single inventor retaining personal ownership while layering continuations, which is the substrate for the pre-litigation transfer discussed below.

Original assignee

None. US 12,039,396 B2 issued unassigned to an individual inventor (Google Patents: "Original Assignee — Individual"; IEEE citing-record abstracts that patent as "UNASSIGNED").

• Did they ship a product embodying the claims? No evidence of any commercial product. The patent's stated field is "electronic passports, and more specifically… electronic passports including shielding and/or switchable RFID tags." The named inventor is an individual; no assigning company, product line, or manufacturing entity appears on the face of the patent. I found no product, no revenue, and no operating business associated with the '396 patent's owner.
• Primary line of business: Not applicable — the pre-assignment owner is a natural person, not a company.
• Current status: The inventor is an active, living party in litigation as recently as the Federal Claims docket (below). The patents he controls are, functionally, an enforcement portfolio, not a product portfolio.

Assignment timeline

Recorded assignments against US 12,039,396 B2 specifically: I identified one post-issuance assignment. Reel/frame numbers were not retrievable from this environment and are marked as unverified rather than guessed.

• 2025-12-22 (recording date; execution date not retrievable) / Recorded 2025-12-22 — Reel not retrieved / Frame not retrieved
  • Conveyance: Assignment of assignor's interest (per Google Patents legal-events entry, verbatim: "ASSIGNMENT OF ASSIGNOR'S INTEREST").
  • Assignor: COLBY, STEVEN MICHAEL (individual).
  • Assignee: SURECELL TRANSACTIONS, LLC.
  • Correspondent: Not retrievable. I have no verified correspondent-of-record name for this recording. I decline to name a correspondent on inference.
  • Context: Transfer-to-asserter. The patent moved from a non-practicing individual inventor to a single-purpose enforcement LLC approximately seven weeks before the LLC filed suit on it.
  • Source: https://patents.google.com/patent/US12039396/en (legal events / reassignment panel), corroborated by the E.D. Tex. complaint docket showing SureCell Transactions LLC as plaintiff and current owner.

Family-context chain (NOT recorded against the '396 patent — do not conflate): Earlier Colby applications were assigned to Mynette Technologies, Inc., and Mynette Technologies, Inc. plus Steven M. Colby were the co-plaintiffs in Mynette Technologies, Inc. v. United States, Fed. Cl. No. 1:16-cv-01647 (filed Dec. 14, 2016), asserting US 7,719,425; 7,924,156; 9,524,458; and 9,569,777 — patents that sit in this same priority web. Counsel of record for the Mynette/Colby plaintiffs was Robert Yorio (appears as filer on multiple docket entries). Sources: https://dockets.justia.com/docket/federal-claims/cofce/1:2016cv01647/33829 ; https://www.courtlistener.com/docket/[6294590](/patent/6294590)/mynette-technologies-inc-v-united-states/

Contradiction flag (carried from prior sections): the earlier "Patent summary" section reported the sibling US 11,989,612 as having assignee MYNETTE TECHNOLOGIES INC in one citation database, while the '396 chain now terminates at Surceell Transactions, LLC. These are different patents and may legitimately have different owners, but the discrepancy should be resolved against the Assignment Center record before relying on portfolio-wide ownership assumptions.

Timeline diagram

timeline
    title Ownership of US 12039396
    2005 : Priority date May 6 2005
    2006 : Parent application filed
    2024 : Continuation filed Jan 25
         : Patent issued Jul 16
    2025 : Assigned to Surecell Transactions LLC
         : Recording dated Dec 22
    2026 : Suit filed vs Samsung Feb 12
         : Patent term expires May 7

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
   The '396 patent was transferred from an individual inventor holding personal title to Surecell Transactions, LLC, an entity that (i) has no products in commerce in any source I could retrieve, and (ii) appears in litigation analytics with "Total Cases 1 / Active Cases 1" — i.e., a single-purpose assertion vehicle (https://ai-lab.exparte.com/party/surecell-transactions-llc). The transfer is documented in the Google Patents legal-events entry dated 2025-12-22. I could not verify the registered-agent address (a standard shell tell), so I do not claim it. Note the naming caveat: "Transactions LLC" is not the textbook "IP/Holdings/Ventures" suffix, but the functional evidence (no products + one-case plaintiff + immediate suit) is what drives this call, not the name.

2. Known asserter in the chain — NOT PRESENT (as to the named lists).
   Neither Surceell Transactions, LLC nor Colby/Mynette appears on the classic public NPE rosters enumerated in the task (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). However, the case is flagged in Unified Patents' litigation portal (https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2%3A26-cv-00106), which is the universe from which such rosters are drawn. Treat as "newly surfaced asserter," not "clean."

3. Repeat correspondent across the chain — UNCLEAR.
   This is the single most important gap in my analysis. The task correctly identifies the correspondent of record as the highest-value tell for anonymized assignee LLCs, and I could not retrieve it. I have no reel/frame, no correspondent name, and no firm for the 2025-12-22 recording. I note that Robert Yorio served as plaintiffs' counsel for Colby/Mynette in the Federal Claims action and appears repeatedly as the filer across that docket — which makes him a plausible candidate for a repeat-player role in the Colby enforcement ecosystem — but counsel of record in a lawsuit is not the same as correspondent of record on an assignment, and I am not asserting the two are the same. Do not treat Yorio as the correspondent until the Assignment Center reel/frame is pulled.

4. Cascading transfers — NOT PRESENT (for this patent).
   Only one recorded assignment exists in the '396 chain. There is no chained-LLC cascade on this patent. The cascade-like layering in this family is continuation-on-continuation prosecution, not serial assignments.

5. Pre-litigation transfer — PRESENT (strong).
   Assignment recorded 2025-12-22; complaint filed 2026-02-12 in SureCell Transactions LLC v. [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) et al, No. 2:26-cv-00106 (E.D. Tex., Judge Gilstrap; $500,000,000 damages demand; jury demand). That is roughly 52 days — well inside the 6-month window. This is the textbook sequencing: a clean-standing, single-asset LLC takes title, then asserts. Sources: https://gaeflexstaging-dot-docketupdate.appspot.com/cases/Texas_Eastern_District_Court/2--26-cv-00106/ and https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2%3A26-cv-00106

6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 proceeding, receivership, or judicial IP sale involving Colby or any Colby entity was found.

7. Privateering — NOT PRESENT. There is no operating company here to do the privateering; the inventor is the original titleholder, so there is no "operating company transfers to NPE" structure.

8. Defensive aggregator — NOT PRESENT. The chain terminates at an asserting plaintiff, not at RPX, AST, LOT, Unified Patents, or OIN. No neutralization.

Additional contextual signal (not on the numbered list, but directly on point): In Mynette Technologies, Inc. v. United States, the Court of Federal Claims granted in part a motion for terminating sanctions (reported opinion, Dec. 20, 2022), and later denied reconsideration (reported opinion and order, Mar. 13, 2024). In that litigation, the government/intervenor expressly pointed to "Mr. Colby and Mr. Yorio's 'history of using unconventional corporate structures to hold, assert, and monetize their IP'" and to their capacity to "form new companies structured so neither has the right or required voting power to bind the entity to the covenant." Source: https://www.courtlistener.com/docket/[6294590/187](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=6294590-0187)/mynette-technologies-inc-v-united-states/ — A court-recorded finding that the principals deliberately use unconventional entity structures to hold and assert IP is about as direct a documentary signal of NPE-style structuring as exists in the record.

Verdict

NPE — high confidence.

Two strong signals are documented, not inferred: (1) a pre-litigation transfer — the Colby→Surceell Transactions, LLC assignment was recorded 2025-12-22, just ~52 days before Surceell filed SureCell v. Samsung, 2:26-cv-00106, on 2026-02-12; and (2) a shell-entity / assertion-vehicle transfer — the patent passed from an individual titleholder to a single-purpose LLC with no products and a one-case litigation profile. Both are reinforced by a court-recorded finding in the same inventor's earlier litigation that he and attorney Robert Yorio have a "history of using unconventional corporate structures to hold, assert, and monetize their IP." The verdict would be even firmer if I could retrieve the reel/frame and correspondent of record for the 2025-12-22 recording — that is the one item a reviewer should pull directly.

Verification links:

• USPTO Assignment Center (search by patent number 12039396): https://assignmentcenter.uspto.gov/
• USPTO Patent Assignment Search (legacy interface): https://assignment.uspto.gov/patent/index.html
• Google Patents legal events for US 12,039,396 B2: https://patents.google.com/patent/US12039396/en

Explicit confidence bounds (do not overstate)

• High confidence: the existence and 2025-12-22 recording date of the Colby → Surceell Transactions, LLC assignment; Surceell's identity as plaintiff/current owner; the Feb. 12, 2026 suit; the "Individual / unassigned" status at grant; Colby as sole inventor.
• Not verified / could be wrong: reel/frame numbers; conveyance sub-code; correspondent of record; execution (as opposed to recording) date; Surceell's state of formation and registered-agent address; whether any second recorded assignment (e.g., a security interest or an intra-family transfer) exists. Any of these could change the shell-entity and repeat-correspondent calls.

I'll research the prior-art citations for US 12,039,396 B2 across USPTO and patent databases.

I found the claims for the '396 patent family member and the citation list header. Let me retrieve the full claim set and the complete cited-references list.

Prior Art Analysis — US 12,039,396 B2

"Cellular telephone including biometric control of transactions" (Colby; app. 18/422,929; filed 2024-01-25; granted 2024-07-16; priority 2005-05-06)

0. Scope, method, and an honesty statement

What I was asked to do: query the USPTO database for patent number 12039396 (literal, not a similar number) and, for each cited reference, give full citation, publication/filing date, description, and the claim(s) it potentially anticipates under 35 U.S.C. § 102.

What I could not obtain — and why it matters:

• I have no authenticated access to USPTO PatentCenter / the file wrapper for application 18/422,929. I therefore could not retrieve the two documents that actually answer the question:
  • the PTO/SB/08 (IDS) — the applicant's "References Cited" list, and
  • the PTO-892 / Office actions — which show which references the examiner applied to which claims.
• Google Patents' "Citations" table is a flat list. It does not tell you which reference was applied against which claim, nor whether the reference was examiner-cited or applicant-submitted. Any per-claim § 102 mapping for those 72 items would therefore be speculation, and I will not manufacture it. Where a source does supply a claim map, I say so explicitly (Part D).
• Several of my search returns were false positives from the same "citations/ISR" keyword space (e.g., a Puget Sound Energy outage report containing the line item "12039396"; a Chinese patent document numbered 12039396 in a domestic database; unrelated PTAB papers). None of these are the patent. I flag them only so a reviewer does not repeat my dead ends.

Identifiers transcribed literally, including apparent anomalies (e.g., a "1902-10-02" priority date in the Google table, which I do not auto-correct).

1. Corrections to the previously generated sections (per instructions)

Three items in the earlier "Patent summary" must now be updated. I flag them rather than silently overwrite:

Contradiction flagged, unresolved: Google's family table for US 2010/0026466A1 groups 18/422,929 with the passport-shielding chain; the claim set is cellular-telephone. Both are accurate; the disclosure is a 2005-vintage RFID/passport specification re-used to support 2022/2024 cellular-telephone claims. This is a § 112 written-description exposure, not a data error.

2. The claim set (as retrieved — verbatim for claims 1–9)

Claim 1 (above). Dependents, verbatim from Justia:

Claims 10–20: not retrieved. This matters because the complaint asserts "at least claims 1–17 and 19–20," so claims 10–17 and 19–20 (and the unasserted claim 18) are the bulk of the asserted case and I cannot map art to them. Treat every "claim" column below as covering only claims 1–9 unless stated otherwise.

Effective-date fork (this drives everything):

• If the claims get the 2005-05-06 / 2006-02-07 priority → § 102 art must predate that, and only the pre-2000 IDS references in Part B are in play.
• If priority fails (plausible, given the passport/§ 112 mismatch) → the effective date is 2024-01-25, and all NFC/biometric-payment art published before that date becomes § 102(a)(1)/(a)(2) art. The 2015–2021 references in Part D would then be squarely available. This fork is the single most consequential point in this analysis.

3. Part B — The patent's face: "Citations (72)" (U.S. patent documents)

Provenance and confidence caveat (important): These 72 entries were surfaced from the Google Patents family page for US 2010/0026466 A1 / US 2010/0026466 ("Passive Radio Frequency Data Logger"), which is the publication of 12/577,209 → US 8,816,826 B2 — a member of the same continuation web that lists 18/422,929 among its "Applications Claiming Priority." Because the family shares one specification and one long-running IDS, the '396 front page is expected to be substantially congruent, but the 72-item list I can see is not confirmed to be the '396's own (56) column. Confidence: moderate. Kinds and per-claim mapping are absent from the source.

Search index also returned the beginning of the list with the header "Citations (72)"; only the first 13 entries were exposed in the retrieved snippet. Entries 14–72 were not retrieved.

§ 102 assessment of Part B (honest version):

• None of the 13 retrieved references discloses, alone, all elements of claim 1 (a cellular telephone having two RF modes in different frequency ranges + a biometric sensor to which financial transactions respond + an inductive antenna for the second mode). The closest, US 5,847,662, is a "radio card communication apparatus" — a card, not a telephone, and with no biometric element. So: on the retrieved subset, no reference anticipates claims 1–9.
• The retrieved 13 read much better against the passport/shielding subject matter (US 4,744,497, US 5,700,037, US 5,380,046, US 4,575,601) — which is not what claims 1–9 recite.
• The list matters as a § 102(a)(2)/§ 102(e)-type and § 103 shield, not a sword: it shows the assignee was on notice of decades of electromagnetic-shielding and switchable-tag art. But without entries 14–72 and the examiner's PTO-892, I cannot state which claims (if any) were rejected over them.

4. Part B2 — References cited inside the '396 description (authoritative text supplied to me)

These are pulled directly from the specification text I was given (which is the authoritative version for this analysis). They are "patent citations for 12039396" in the narrow sense — documents the applicant identified in the body of the patent. Claims affected are the passport/shielding embodiments, which do not appear in retrieved claims 1–9:

Note: two of these (US 4,744,497; US 5,700,037) appear both in the body and in the Part B list — consistent with the Part B list being this patent's IDS.

5. Part D — The only source I found that maps references to specific claims

⚠ Verification flag — read before using

I retrieved an International Search Report dated 10 June 2022 for PCT/US2022/019102, appearing in the published document WO 2022/192120 A1. Its Box C lists references against claim numbers 1, 3–17, 19, 20 (category X) and 2, 18 (category Y). That claim-number pattern is identical in shape to the claim set actually asserted in the litigation (claims 1–17 and 19–20, with claim 18 omitted).

I could not verify that PCT/US2022/019102 belongs to the Colby family. Two facts cut against it: (i) the ISR cites 2015–2021 references as anticipatory (X), which is inconsistent with a genuine 2005-05-06 priority date; and (ii) the "X,P" tag on a reference granted 2021-04-27 indicates the ISA treated the priority date as falling before 2021-04-27, i.e., a 2020/early-2021 priority, not 2005. Other ISR PDFs surfaced by my searches were clearly unrelated decoys. Treat Part D as a lead to verify against the '396 file wrapper, not as established art for the '396. Confidence that it pertains to this family: low-to-moderate.

If it does pertain, it is the single most valuable document in this analysis, because ISR "X" means "the claimed invention cannot be considered novel … when the document is taken alone" — i.e., a § 102-type citation.

Reading of Part D: three independent references are each characterized as novelty-destroying on their own against claims 1 and 3–17 and 19–20, and the two biometric-focused claims (2 and 18) are addressed only in combination. That is a § 102 roadmap covering every claim the plaintiff actually asserts — but only for the claim set of that application. Whether it transfers to the '396's claims 10–20 cannot be checked, because I could not retrieve those claims.

6. Part E — Forward citations (NOT prior art; included only to complete the citation picture)

Google reports "Cited By (4)" and "Families Citing this family (7)." These are later documents citing the '396 family; they are not § 102 art against it. They are nonetheless useful as a state-of-the-art check (all the unexpired art post-dates the 2005 disclosure):

• US 2013/0191497 A1 — Int'l Business Machines Corp. — 2013-07-25 — "Storage and Transmission of Log Data In a Networked System."
• US 10,339,619 B2 — Muirhead, Scott Arthur William — granted 2019-07-02 — "Method and apparatus for presenting supply chain information to a consumer."
• JP 2019-030078 A — Daihen Corp. — pub. 2019-02-21 — "Power phase shifter."
• US 2024/0380481 A1 — Cisco Technology, Inc. — pub. 2024-11-14 — "Backscatter device onboarding."
• Family-citing (7), Sprint Communications L.P.: US 9,324,016 B1 (2016-04-26); US 9,454,723 B1 (2016-09-27); US 9,426,604 B1 (2016-08-23); US 9,087,318 B1 (2015-07-21); US 9,460,573 B1 (2016-10-04); US 9,396,424 B1 (2016-07-19); US 9,591,434 B1 (2017-03-07) — all RFID-chip-in-mobile-device art.

7. Bottom line on § 102

1. I cannot deliver a defensible reference-by-reference § 102 claim map from USPTO sources for US 12,039,396, because the controlling documents (PTO-892 and Office actions for 18/422,929) were not accessible to me. Anything beyond Part D would be invention, and I have not invented it.
2. On the 13 front-page references I could retrieve, none anticipates claims 1–9. They are shielding/membrane-switch/RF-tag art aimed at the passport disclosure, not at a cellular telephone with two RF modes and a biometric sensor.
3. The genuinely dangerous § 102 art is not on the patent's face at all — it is the 2015–2021 NFC/biometric-payment art (Part D). Its availability turns entirely on whether the claims keep the 2005-05-06 priority. If they do not, the effective date is 2024-01-25 and the art pool expands enormously. This is the highest-leverage validity question for the pending SureCell v. Samsung matter, and it is the same mismatch already flagged in the previous sections between the passport specification and the cellular-telephone claims.
4. Highest-value next retrieval (I could not perform it): the file wrapper for 18/422,929 — specifically the PTO/SB/08 IDS list, any PTO-892s, and the Office action of record — plus claim 18's text, which was omitted from the asserted set and may be the most informative claim in the patent.

Sources relied on: Google Patents, US 2010/0026466A1 family page (Citations (72) / Cited By (4) / Families Citing this family (7)); Google Patents, US 2020/0160867A1 (continuity); Justia, US 2024/0160867 (claims 1–9 verbatim, Patent History); Patents-Review.com, 2024/0160867 (description opening line); WO 2022/192120 A1 ISR for PCT/US2022/019102 (Part D — attribution unverified); the authoritative full patent text supplied in this task.

I'll ground this § 103 analysis in retrievable sources. Let me first try to pin down the actual claim language and the cited prior art for this patent.

Let me try to retrieve the actual claim language and the cited-art lists.

Obviousness Analysis — US 12,039,396 B2 under 35 U.S.C. § 103

Analyst note on sources and corrections. Two things changed since the previously generated sections, and they should be flagged rather than silently reconciled:

1. Correction to the earlier "inference." The prior section stated that verbatim claim language was not retrieved and inferred a method claim plus a "switch/circuit state" limitation. I have now retrieved verbatim claim text for claims 1–9 from the pre-grant publication US 2024/0160867 A1 (Justia, https://www.patents.justia.com/patent/20240160867). Claim 1 is an apparatus claim (a cellular telephone), and the switch appears only in dependent claims 3–4, as a "mechanical switch configured to approve the financial transactions" — not as a claim-1 "electronic switch configured to change between states of the circuit." Treat the earlier inference as superseded. Claims 10–20 were still not retrieved.
2. What "prior art section" means here. The page's prior-art section supplies (a) prior-art keywords: "rfid tag, switch, rfid, tag, cellular telephone"; (b) prior art date 2005-05-06; (c) the "Priority claimed from" table (US 11/382,050–054, 11/420,721, 11/458,620, 12/577,209, 14/660,825, 16/186,543); and (d) the family's 72-document citation list, which I retrieved. I build the analysis on those, plus the references the '396 specification itself cites. I did not retrieve a separate examiner-cited-art list for the 18/422,929 file itself, and I say so rather than reconstructing one.

1. The claim to be evaluated

Claim 1 (US 2024/0160867 A1, published claims):

"A cellular telephone configured to use two or more different wireless communication modes, the cellular telephone comprising: circuits configured to operate in a first mode for cellular operation and in a second mode for short range communication, wherein the first and second modes are characterized by different radio frequency ranges; a biometric sensor, financial transactions made using the circuits being responsive to the biometric sensor; and an inductive antenna configured for communication of signals in the second mode."

Element breakdown for § 103 purposes:

Dependents: 2 (approve transactions responsive to biometric), 3 (mechanical switch to approve), 4 (transactions responsive to both biometric sensor and mechanical switch), 5–6 (transaction in second / first mode), 7–8 (WiFi / cellular network), 9 (point-of-sale device in second mode).

2. The threshold issue that decides the whole § 103 analysis: the effective filing date

This is not a footnote — it is the case. The '396 issued in 2024 from an application filed January 25, 2024, as a continuation of 17/728,412 (2022) → 17/697,923 (2022) / 17/522,697 (2021) → 16/186,543 (2018) → … → 11/350,309 → US 7,719,425 → provisional 60/678,428 (May 6, 2005).

• If the claim-1 "biometric sensor" limitation is supported under § 112 by the May 2005 provisional chain, pre-AIA §§ 102/103 govern (the application contains no claim with an effective filing date on/after March 16, 2013), the critical date is ~May 6, 2005, and the Hilmer doctrine limits § 102(e) references. The prior-art universe is narrow.
• If it is not — and note that my retrieved '396 description text (which terminates inside FIG. 30) does not visibly contain the word "biometric"; biometrics appears in the title and abstract only, not in the passages I obtained — the effective date collapses to 2021–2024, AIA § 102(a)(1)/(a)(2) applies, and the claims read directly onto the commercial NFC smartphone payment stack.

I flag explicitly that my text fetch is incomplete (it cuts off at FIG. 30, before the cellular-telephone embodiment detail and the claims), so "the spec lacks biometric disclosure" is an unverified observation, not a conclusion. It is, however, the single most consequential verification task, because it converts the § 103 question from "was this obvious in 2005?" to "was this obvious in 2021?"

3. Grounds of rejection

Ground 1 — Priority holds (critical date ~May 6, 2005): likely non-obvious as to claim 1, and the family's own art is the risk

On a 2005 critical date the claim elements are individually old, but the combination is thin:

Why the combination would have been motivated (KSR): consumer demand for both convenience (tap-to-pay) and fraud reduction; the EMV/Mastercard PayPass contactless rollout beginning 2003; the 2004 formation of the NFC Forum normalizing the very "different radio frequency ranges" architecture recited; and the "known technique" rationale — adding a proximity radio and a biometric confirmation gate to an existing cellular platform is the predictable use of known components for their known purposes.

Why it nevertheless may survive: US 2006/0200427 A1 publishes September 7, 2006 — after the May 6, 2005 date — so it is usable only if its underlying filing date predates the critical date (pre-AIA § 102(e)). I could not verify that filing date from the retrieved record. If it does not qualify, the "biometric + financial transaction + cell phone" element rests on non-patent commercial art, and a 2005-critical-date obviousness case becomes materially harder and more fact-intensive. This is the key evidentiary gap in Ground 1.

Ground 2 — Dependents 3–4 (mechanical switch) and the switchable-tag claims: strong

Claims 3–4 add a mechanical switch for approving the transaction. The '396 specification (which I do have) expressly discloses, in the 2005-era text, a switchable RFID tag in a "portable communication device such as a cellular telephone" with a user interface configured to turn the RFID tag on/off, enter a security code/PIN, or enter financial information, and with the switch "repeatedly turn[ing] on and off detectability or readability." Those bullets are literally in the disclosure.

That creates the classic double-edged result: the specification's own admitted prior art and its own switch teachings supply the mechanical-switch element for dependents 3–4, while US 2004/0117514, US 2005/0011776, US 2004/0237360, US 2004/0169087, US 2004/0089724, US 5,700,037, US 2005/0205665, US 2002/0117243 and US 4,744,497 — all cited by name in the '396 specification itself as the shielded/foldable card-and-case art — supply moveable-cover and switch-actuator structure for the packaging-dependent claims (17–20). A specification that characterizes a field as crowded with prior attempts undercuts any non-obviousness argument resting on the switch.

Ground 3 — Priority fails (effective date 2021–2024): claim 1 is very likely obvious, and dependents 5–9 approach anticipation

If the claims get only their actual 2021–2024 filing dates, then:

• US 10,430,779 B2 (tiered biometric authentication for a financial transaction, expressly listing "fingerprint, retina or iris scan, … facial recognition") supplies element C;
• the settled commercial and published art on NFC smartphone payment (Samsung Pay, Apple Pay, Google Wallet, EMVCo contactless kernels) supplies A, B, D; and
• dependents 5–9 (transaction in the second mode; over WiFi; over a cellular network; with a point-of-sale device in the second mode) are each among the most conventional hardware descriptions in the field and would be obvious, if not anticipated.

This is, on the retrieved record, the more probable outcome, and it also explains the litigation posture noted in the prior sections: the accused Samsung functionality (NFC + biometric/PIN authentication for Samsung Wallet and digital keys) is the ordinary 2021-era implementation, not an exotic one.

4. Motivation-to-combine summary (KSR factors)

1. Known technique, known purpose — a proximity radio and a biometric gate are each used for what they are designed to do.
2. Market/regulatory pressure — contactless payment migration and card-fraud reduction.
3. Industry standardization — ISO/IEC 14443 and ISO/IEC 18092/NFCIP-1 normalize "different RF ranges"; the NFC Forum (2004) makes the combination the default design.
4. Design incentive / finite number of predictable solutions — a PHOSITA adding a second radio to a phone picks a loop antenna; adding authentication picks the sensor the device already has.
5. Teach-away absent — nothing in the cited art disparages biometric gating of short-range payments.

5. Statements a reviewer should not treat as settled

• I did not obtain a single claim-1-to-reference mapping from an examiner's citation list for 18/422,929. The reference list I retrieved (72 documents: US 4,575,601; US 4,744,497; US 5,206,495; US 5,327,115; US 5,380,046; US 5,506,395; US 5,538,291; US 5,640,151; US 5,700,037; US 5,847,662; US 5,966,082; US 6,130,602; US 6,144,299; …) is dominated by membrane-switch, wallet/shielding and RFID-tag circuitry art — i.e., it evidences the passport/shielding invention, not the biometric-NFC-phone invention. That mismatch is itself the strongest single indicator that the cellular-telephone claims are not the original inventive contribution.
• The '396 specification's stated field ("The invention is in the fields of electronic passports…") is inconsistent with the title and abstract, as previously flagged. Under § 103 this matters because a PHOSITA is defined by the field of the claimed subject matter, not the field the application says it is in.
• No PTAB, ITC or Federal Circuit invalidity determination on the '396 was found; the § 103 grounds above are analytical, not adjudicated.

Confidence: High that claim 1 (as published) would be obvious over post-2013 art and materially harder but not impossible to invalidate over 2005-era art. Moderate-to-high that claims 3–4 and the switch/cover dependents are obvious over the specification-cited card/case art. Low-to-moderate on the exact priority outcome, which I flag as the dispositive unknown.

Sources: https://patents.google.com/patent/US12039396/en · https://patents.justia.com/patent/20240160867 · https://www.patents-review.com/a/20240160867-cellular-telephone-including-biometric-control-transactions.html · https://patents.google.com/patent/US20100026466 (72-document citation list, same family) · https://ai-lab.exparte.com/case/dct/txed/2:26-cv-00106/doc/analysis/9 · US 10,430,779 B2 and US 6,993,658 excerpts as retrieved.