June 2, 2024
With its latest lawsuit, filed against LG Electronics (LGE) ( 6:24-cv-00302) in the Western District of Texas, Proxense, LLC debuts in its campaign three patents generally related to securing computing systems with a "personal digital key". Infringement allegations for these patents focus on the provision of its Ultra-Small "Digital Key Module", allegedly developed through subsidiary LG Innotek's participation as a "'core' member of the Car Connectivity Consortium". Proxense accuses LGE of infringing four other patents, already familiar in this campaign, through the provision of LG Pay on certain mobile devices and of televisions and laptops utilizing the Wi-Fi 6, Wi-Fi 6E, and/or Wi-Fi 7 wireless standards.
Most familiar to this campaign are three patents (8,352,730; 9,298,905; 10,698,989) asserted against LGE. They generally relate to biometric authentication on an "integrated device". Proxense has accused prior defendants Alphabet (Google), Apple, Intel, Microsoft, and Samsung of infringing one or more of these patents, among others. In this latest complaint, the plaintiff targets LG Pay as "operable on a range of LG devices, including at least all variants of the following LG devices: G7, G8, G8X, V35, V40, V50, V60, Velvet and all LG devices released since July, 2017".
The cases against Google and Microsoft were filed in the Western District of Texas in the first half of 2023. District Judge Alan D. Albright has just handed down two claim construction orders, one in the case against Google and the other in the case against Microsoft. Proxense sued Apple in March of this year, hitting Intel roughly a week before suing LGE. The Samsung case, also before Judge Albright, also produced a claim construction order (dated in January 2022), ending in January 2023, on the eve of trial.
Judge Albright used experience with Proxense's asserted portfolio as part of his rationale for denying a motion to transfer the case against Google, for convenience, to the Northern District of California. Google sought mandamus review of that denial, but in early April 2024 the Federal Circuit refused to reverse Judge Albright, commenting that he "reasonably found that judicial economy considerations disfavor transfer in light of the trial court's familiarity with the patents and technology from its substantial involvement with prior litigation".
Also familiar to the campaign is a patent (8,036,152) generally related to using a timer to switch a wireless transceiver between an "active" and "sleep" mode. Proxense first asserted the '152 patent in its complaint against Intel, alleging infringement of it, and three other patents, through the provision of adapters, gateways, and integrated processors that support Wi-Fi 6 and later. As noted, against LGE Proxense targets the provision of televisions and laptops utilizing the Wi-Fi 6, Wi-Fi 6E, and/or Wi-Fi 7 wireless standards.
New to the campaign are the three "personal digital key" patents (9,251,332; 10,469,456; 11,086,979) aimed at LGE's Ultra-Small "Digital Key Module", with allows a smartphone to connect and control a vehicle. Proxense pleads that LGE developed this functionality through subsidiary LG Innotek's participation as a "'core' member of the Car Connectivity Consortium" (CCC). Per Proxense, "The CCC consists of over 150 technology companies and automobile manufacturers worldwide", having the aim "to establish global standards and solutions for smartphone and in-vehicle connectivity". A key initiative of the CCC, according to the new complaint, is "the development of the 'Digital Key' standard, which facilitates the use of smartphones as digital keys to access and operate vehicles securely".
Proxense began this campaign in June 2019, suing CVS, J.C. Penney, Macy's, Nordstrom, Target, Walmart, and Urban Outfitters over beacon systems and related apps. The last active retailer case, against Target, closed in May 2022. With the addition of these latest three patents, Proxense has now brought 17 into the litigation. Samsung filed three petitions of inter partes review (IPR); none of them resulted in the institution of a trial. More recently, Google and Microsoft have targeted the same three patents (the '730, '905, and '989 patents), those targeted at digital pay platforms, with separate sets of petitions, Google's filed in January 2024, Microsoft's this past April.
Proxense's various complaints emphasize the biography of named inventor John J. Giobbi, the company's founder and CEO. Per Proxense, Giobbi is "an experienced product designer and prolific inventor . . . with over 35 years of experience as an entrepreneur and product development executive". Giobbi identifies past positions with WMS Gaming (vice president for product development from May 1995 to January 2002) and with companies that he formed before then, Prelude Technology and InPen. Current USPTO assignment records identify roughly 75 patent assets in Proxense's possession, with Giobbi as a named inventor for most of the patents.
The plaintiff pleads that it was founded in 2001 as a "limited venture" later "formally incorporated in 2005 as an LLC", which Delaware state records confirm (in September of that year). It also emphasizes the company's technology development, the "foundational capabilities" of which are described as including "a secure element, biometrics captured and stored thereon, retrieval of biometrics and token passing to a trusted third party, and completion of a mobile payment transaction". Proxense pleads that it "developed sophisticated, proprietary, proximity-based detection, authentication, and automation technology", termed "'ProxPay' technology", that "also included biometrically based user and device authentication options, the ability to conduct biometric-verified transactions without sending or exposing the underlying biometric data or storing it anywhere except the [personal data key (PDK)], and the incorporation of a registration for maintaining or verifying the PDK". The company also reportedly once developed ProxNET, a "wireless [healthcare] system that runs hands-free, instant sign-on/sign-off and real-time location system (RTLS) applications simultaneously on a single, multi-purpose network".
Additional background concerning this campaign, including a summary of events that brought the Samsung case to a close, can be read at "Biometric Authentication Campaign Turns to Apple" (March 2024), with details on the Intel suit covered here. A patent assertion grid is available on RPX Empower. 5/31, Western District of Texas.
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