Samsung Electronics America Inc v. Uniloc 2017 LLC

1. Case Identification

• Patent #: 6,836,654
• Filed: June 19, 2019
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-9

2. Patent Overview

• Title: Mobile Radiotelephony Device with Blocking Means
• Brief Description: The ’654 patent discloses a system for preventing the unauthorized use of a mobile radiotelephony device. The invention uses various software-based "means" (e.g., blocking, timing, deblocking) to render the device unusable under certain conditions, such as after a period of inactivity or upon insertion of an "unlinked" user identification module (e.g., a SIM card).

3. Grounds for Unpatentability

Ground 1: Obviousness over Nokia and Alos - Claims 1-3 and 7-9 are obvious over Nokia in view of Alos.

• Prior Art Relied Upon: Nokia (Owner's Manual for the Nokia 9000i Communicator, Issue 1.1) and Alos (Application # US2002/0147028).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nokia, a user manual for a 1997-era smartphone, disclosed the core features of claim 1. Nokia taught a mobile device with an "Autolock" feature that automatically locked the device after a user-defined period of inactivity ("timing means"), preventing outgoing calls ("blocking means"). To unlock the device, a user entered a correct lock code ("deblocking means"). Petitioner asserted that Alos supplied the missing "linked user identification module" limitation. Alos described a security method where a mobile terminal is "linked" to a specific SIM card by storing matching identification data (such as an IMSI number) on both the card and the device, preventing the use of unauthorized SIMs.
  • Motivation to Combine: A POSITA would combine the teachings of Nokia and Alos to enhance mobile device security, a goal common to both references. Specifically, a POSITA would integrate Alos's method of linking a device to a specific SIM card into a device like Nokia's to prevent fraudulent use with stolen or unauthorized SIM cards, while retaining Nokia's useful time-based auto-locking feature for when the authorized user is inactive.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Alos taught its linking method was versatile and applicable to various terminals, and the combination involved implementing known security concepts using rudimentary components like memory and processors.

Ground 2: Obviousness over Nokia, Alos, and Kemppi - Claims 4-6 are obvious over Nokia and Alos in view of Kemppi.

• Prior Art Relied Upon: Nokia (Owner's Manual for the Nokia 9000i Communicator, Issue 1.1), Alos (Application # US2002/0147028), and Kemppi (Patent 4,868,846).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the "locking means" and "connecting means" of claims 4-6. Petitioner asserted these means relate to establishing the link between the device and the SIM card. While the combination of Nokia and Alos taught the concept of a linked SIM card, Kemppi was introduced to explicitly disclose the underlying mechanism: reading identification data from a card and storing it in the telephone's memory to create the lock. Kemppi taught reading data from a user card and storing it on a processor, after which the phone enters a mode locked to that specific card.
  • Motivation to Combine: A POSITA would be motivated to incorporate Kemppi's explicit teaching of reading and storing card data as a straightforward and logical way to implement the SIM-linking security feature taught conceptually by Alos within the Nokia device. This combination would achieve the shared goal of enhanced security against unauthorized use.
  • Expectation of Success: The combination was a predictable implementation of established security principles. Kemppi made explicit an obvious design choice for implementing the linking taught by Alos, ensuring the mobile device could only be used with a SIM card that had been previously linked by reading its IMSI number onto the terminal.

Ground 3: Obviousness over Matsukida, Alos, and Miller - Claim 3 is obvious over Matsukida and Alos in view of Miller.

• Prior Art Relied Upon: Matsukida (Japanese Patent Application Publication No. JP H6-216841), Alos (Application # US2002/0147028), and Miller (Patent 6,141,563).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the specific limitation of claim 3, which permits emergency calls while otherwise blocking non-emergency outgoing calls. Petitioner argued that the combination of Matsukida (an alternative base reference to Nokia teaching an automatic dial lock) and Alos established a locked mobile device. Miller was added because it explicitly taught a "SIM card secured subscriber unit" where security features could be bypassed for dialing emergency telephone numbers, even if the user inserted a valid SIM without knowing the password or inserted no SIM card at all.
  • Motivation to Combine: A POSA would combine Miller's teachings with the locked device of Matsukida and Alos to add a crucial, commonsense safety feature. Incorporating the ability to make emergency calls regardless of lock status was a well-known and desirable modification to improve user safety in life-threatening situations, a predictable improvement to the base system.
  • Expectation of Success: Miller was in the same field of mobile device security, and adding an emergency call bypass was a simple, known modification that would have predictably worked.
• Additional Grounds: Petitioner asserted alternative obviousness grounds that largely mirrored the logic of Grounds 1 and 2 but substituted Matsukida for Nokia as the primary reference for a time-based locking feature. Specifically, Ground 3 challenged claims 1-2 and 7-9 over Matsukida and Alos, and Ground 4 challenged claims 4-6 over Matsukida, Alos, and Kemppi.

4. Key Claim Construction Positions

• Petitioner argued that several key limitations in the challenged claims (e.g., "blocking means," "timing means," "deblocking means") were means-plus-function limitations under 35 U.S.C. §112(6) that lacked sufficient corresponding structure in the ’654 patent's specification.
• While asserting this lack of structure rendered the claims indefinite, Petitioner noted that indefiniteness cannot be a basis for IPR. Therefore, for the purposes of the petition, Petitioner proceeded by assuming the patent owner would argue the structure was a general-purpose processor executing software that performed the claimed functions. Petitioner's unpatentability arguments were based on this assumed construction, mapping the prior art to the functions recited in the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution. It contended that the petition was filed promptly, within eight months of Uniloc re-filing a parallel district court litigation against Samsung.
• Furthermore, Petitioner asserted that the parallel litigation was in its very early stages, with a claim construction hearing and trial dates still far in the future, weighing against discretionary denial under the Fintiv factors.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9 of Patent 6,836,654 as unpatentable under 35 U.S.C. §103.