Huawei Device Co., Ltd. v. Maxell, Ltd.

1. Case Identification

• Case #: To Be Assigned
• Patent #: 7,203,517
• Filed: November 28, 2017
• Petitioner(s): Huawei Device Co., Ltd.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1-5 and 9-10

2. Patent Overview

• Title: Mobile Communication Terminal Device
• Brief Description: The ’517 patent discloses a mobile communication terminal with multiple, different communication interfaces (e.g., wireless LAN, portable telephone). The system aims to improve interface selection by automatically choosing the most suitable interface based on the terminal's position and movement condition to prevent instability and frequent, undesirable switching.

3. Grounds for Unpatentability

Ground I: Claims 1-5 are obvious over Mukai in view of Takano

• Prior Art Relied Upon: Mukai (Japanese Patent Application 2001-309445) and Takano (PCT Publication WO01/99462).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mukai discloses every limitation of independent claim 1 except for the final element, which requires that the device "waits a longer time until switching" when its "moving speed [is] being faster." Mukai was asserted to teach a mobile device with multiple interfaces (WLAN, PHS, cellular) that selects an interface based on communication availability, position, and movement speed. Takano was argued to supply the missing limitation by teaching a method for switching between cellular base stations where the "pilot measurement time length" is increased when the "movement speed is fast" to account for greater signal fluctuation, thereby causing the device to wait longer before switching. For dependent claims 2-5, Petitioner argued Mukai discloses or renders obvious the additional limitations, such as using a GPS for position detection (claim 2), using a monitor as an output unit (claims 3-4), and storing position/interface data in a database/memory (claim 5).
  • Motivation to Combine: A POSITA would combine Takano with Mukai to improve the performance of Mukai's interface selection algorithm. Petitioner asserted that both references seek to improve automatic network switching in mobile devices. A POSITA would have recognized that the signal instability problem caused by high speed in Takano's cellular context is analogous to the instability Mukai seeks to address when switching between different network types. Applying Takano's known solution—waiting longer to measure fluctuating signals—to Mukai's system was presented as a predictable way to improve its reliability.
  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success because incorporating Takano's timing logic into Mukai's system would primarily involve a software modification. Since Mukai’s algorithm already used movement speed as an input, adding a speed-based threshold for switching time would have been a straightforward implementation with predictable results.

Ground II: Claims 9-10 are obvious over Mukai

• Prior Art Relied Upon: Mukai (Japanese Patent Application 2001-309445).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mukai anticipates or, at a minimum, renders obvious every limitation of independent claim 9. Claim 9 is nearly identical to claim 1 but recites a "priority setting unit for setting a priority" of the interfaces instead of the "waits a longer time" limitation. Petitioner contended Mukai discloses this element through its teaching of using "priority rankings" for its different network interfaces, which are set in advance based on "position information and movement speed information." Because Mukai was asserted to disclose every element, claim 9 was argued to be obvious. Dependent claim 10 adds an "output unit" for notifying the user of availability, which Petitioner argued is taught or suggested by Mukai's "monitor" for displaying information.

Ground III: Claims 3 and 4 are obvious over the combination of Mukai, Takano, and Seppanen

• Prior Art Relied Upon: Mukai (Japanese Patent Application 2001-309445), Takano (PCT Publication WO01/99462), and Seppanen (Patent 5,903,832).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative argument for dependent claims 3 and 4. Petitioner argued that if the Board did not find the "output unit" limitations obvious over Mukai alone, Seppanen explicitly discloses them. Seppanen was asserted to teach an output unit (a mobile phone display with icons) that notifies a user which interface is currently in use and presents a list of all available public and non-public systems to the user.
  • Motivation to Combine: A POSITA would combine Seppanen's user interface features with the Mukai/Takano system to improve usability, a stated goal of Mukai. Petitioner argued that all three references are in the same field of managing multiple wireless networks. A POSITA would view Seppanen as providing a known technique to convey network status and availability information to a user, which would be a logical and obvious improvement to the underlying automatic switching system of Mukai and Takano.

Ground IV: Claim 10 is obvious over the combination of Mukai and Seppanen

• Prior Art Relied Upon: Mukai (Japanese Patent Application 2001-309445) and Seppanen (Patent 5,903,832).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative for claim 10. Claim 10 adds to claim 9 an "output unit for notifying a user of the communication availability." Petitioner argued that this limitation is identical to the one added by claim 4. Therefore, for the same reasons articulated in Ground III, the combination with Seppanen, which explicitly discloses displaying a list of available systems to the user, renders claim 10 obvious.
  • Motivation to Combine: The motivation was the same as in Ground III: to improve the user convenience of the Mukai system by incorporating the known user interface techniques taught by Seppanen.

4. Key Claim Construction Positions

• "selection switching determination unit" (claims 1, 5, 9): Petitioner argued this term should be construed as a means-plus-function term under 35 U.S.C. §112, ¶ 6, because "unit" is a nonce word that does not connote sufficient structure. For the purposes of the IPR, Petitioner adopted the Patent Owner's proposed construction from parallel litigation to avoid a dispute. The agreed-upon function for claim 1 includes selecting an interface based on availability, speed, and position, and waiting a longer time to switch when moving faster. The corresponding structure was identified as the "Physical interface selection unit 104, switching determination unit 108," and/or a processor programmed to execute the algorithms disclosed in the '517 patent.
• "waits a longer time until switching" (claim 1): Petitioner noted that while the parties disputed the precise construction in litigation, it adopted the Patent Owner's position of "plain and ordinary meaning" for the IPR. Petitioner asserted this dispute was not material to the petition because the prior art teaches the limitation under either proposed construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. It contended that although the primary references, Mukai and the U.S. counterpart to Takano, were disclosed in an Information Disclosure Statement during prosecution, they were not "substantially considered by the Examiner." Petitioner asserted that the Examiner never cited or relied upon these references in any office action to analyze or reject the pending claims, and thus the arguments presented in the petition were not previously considered by the Office.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-5 and 9-10 of the ’517 patent as unpatentable.