HTC America, Inc. v. Koninklikje KPN N.V.

1. Case Identification

• Patent #: 9,014,667
• Filed: August 31, 2018
• Petitioner(s): HTC America, Inc. and HTC Corporation
• Patent Owner(s): Koninklijke KPN N.V.
• Challenged Claims: 31, 33, and 35

2. Patent Overview

• Title: Method and Network for Regulating Terminal Access
• Brief Description: The ’667 patent discloses a telecommunications network and method for regulating network access to address the "ever increasing demand for data capacity." The system denies or blocks access for a plurality of terminals during specified time intervals. It uses a "register" that stores a unique identifier for each terminal in combination with an associated "deny access time interval" to control access based on monitored network load. The patent particularly notes the utility of this system for managing low-priority machine-to-machine (M2M) applications, which can be denied access during peak load hours to preserve resources.

3. Grounds for Unpatentability

Ground 1: Claims 31 and 33 are obvious over Obhan in view of Shatzkamer and Budka.

• Prior Art Relied Upon: Obhan (Patent 6,275,695), Shatzkamer (Application # 2008/0220740), and Budka (E.P. Patent Publication # EP1009176).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Obhan, the primary reference, taught the core invention of dynamically managing network access based on load. Obhan’s system used a memory-resident "Admission Control Block" (ACB)—analogous to the claimed "register"—which stored a "minimum access class" required for access in combination with a "good till" time. Petitioner contended this implicitly disclosed the claimed "deny access time interval" by defining a period during which all terminals below the minimum class are denied access. Obhan also disclosed monitoring network load using watermarks to identify "peak load time intervals" and specifically taught denying access to low-priority M2M applications (e.g., vending machines) during these peaks. As Obhan taught control based on "access class" rather than unique identifiers, Shatzkamer was introduced to supply the teaching of using unique identifiers (e.g., IMSI) to blacklist specific terminals. Budka was introduced to supply the well-known details of a standard GSM/GPRS access request procedure, wherein a terminal initiates access by sending its unique identifier (IMSI) in an access request message to the network.
  • Motivation to Combine: A POSITA would combine Obhan with Shatzkamer to increase the granularity and flexibility of access control, moving from a class-based system to a more precise terminal-specific system, which was a known design choice. A POSITA implementing Obhan's system in a standard GSM network would have found it obvious and necessary to incorporate the standard access procedures detailed in Budka.
  • Expectation of Success: Petitioner asserted that combining these known techniques for their intended purposes—using unique identifiers for specific control and standard protocols for access requests—with Obhan's load-management system would have been a straightforward integration that yielded predictable results.

Ground 2: Claim 35 is obvious over Obhan in view of Taniguchi and Budka.

• Prior Art Relied Upon: Obhan (Patent 6,275,695), Taniguchi (Patent 7,505,755), and Budka (E.P. Patent Publication # EP1009176).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claim 35, a terminal claim requiring a "message receiver" to receive information about the deny access time interval. Petitioner argued that Obhan taught a terminal receiving "service option signals" that alter its network accessibility based on load. However, to explicitly teach that this message contains the deny access time interval itself, Petitioner introduced Taniguchi. Taniguchi disclosed a terminal that "receives a communication restriction signal including communication restriction period information," which causes the terminal to be "restricted or inhibited from getting access," thereby preventing it from generating unnecessary access requests. Budka served the same purpose as in Ground 1, supplying the standard access request details, including the transmission of a unique identifier.
  • Motivation to Combine: A POSITA would be motivated to modify Obhan's system to include the deny time interval information in its notification messages, as taught by Taniguchi, to improve overall system efficiency. Informing the terminal of the restriction period directly prevents it from wasting its own power and network resources by making access requests that would be denied. This aligns with the overall goal of both Obhan and the '667 patent to manage network resources efficiently.
  • Expectation of Success: Petitioner argued this combination was a straightforward application of a known efficiency-improving technique to Obhan's system and would have had a high expectation of success in producing a more efficient network.

4. Key Claim Construction Positions

• Petitioner proposed constructions for several key terms under the Broadest Reasonable Interpretation (BRI) standard, arguing they are critical to mapping the prior art.
• "deny access time interval": Construed as "a time slot during which access to the telecommunications network is denied." Petitioner argued this construction was essential because the primary reference, Obhan, disclosed a "grant access time interval." Petitioner asserted that granting access to one group implicitly denies access to all others, a concept the '667 patent specification itself acknowledged as an "equivalent."
• "machine-to-machine applications": Construed as "applications that allow for data communication between devices and that normally operate without human intervention." This broad construction, which Petitioner noted was adopted in related district court litigation, was used to map Obhan's disclosure of managing access for "low priority data users" like vending machines and electronic billboards to the claim language.
• "register": Construed as "a device with storage." Petitioner argued this broad, functional definition was supported by the specification's examples (e.g., a home location register or HLR) and was necessary to allow Obhan's functionally equivalent "Admission Control Block (ACB)," a memory-resident data structure, to satisfy the claim limitation.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review (IPR) and cancel claims 31, 33, and 35 of the ’667 patent as unpatentable under 35 U.S.C. §103.