SAMSUNG ELECTRONICS AMERICA, INC. v. Uniloc 2017 LLC

1. Case Identification

• Patent #: 6,954,634
• Filed: January 2, 2020
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 6, 8-10

2. Patent Overview

• Title: Reconfigurable communication network
• Brief Description: The ’634 patent relates to a communication network with terminals that can be reconfigured over-the-air. This reconfiguration is accomplished by a terminal negotiating with another terminal (e.g., a server or base station) to download software or parameters that modify the terminal's operational functions and capabilities.

3. Grounds for Unpatentability

Ground 1: Claim 6 is obvious over Noblet in view of Van den Heuvel.

• Prior Art Relied Upon: Noblet ("Assessing the Over-The-Air Software Download for Reconfigurable Terminal," Feb. 1998) and Van den Heuvel (International Publication No. WO1996/014719).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that independent claim 6, a communication terminal with various means-plus-function elements, is disclosed by the combination. Noblet was asserted to teach the overall method of over-the-air (OTA) reconfiguration: a mobile terminal transmits its "capabilities" to a base station, receives a list of compatible software services ("parameters") in return, selects a service, receives the software ("required information"), and then configures its profile by compiling and installing the new code. Petitioner contended that while Noblet describes the functional system, Van den Heuvel explicitly discloses the underlying hardware components a person of ordinary skill in the art (POSITA) would use to build it, including a processor, memory, and a full transceiver (transmitter and receiver).
  • Motivation to Combine: A POSITA would combine Noblet and Van den Heuvel because both address the same technical problem of OTA programming for mobile terminals. Petitioner argued a POSITA would look to Van den Heuvel's explicit disclosure of a subscriber unit's hardware (processor, memory, transceiver) to implement the functional reconfiguration process described in Noblet. This combination was presented as a predictable integration of known elements to achieve a known result.
  • Expectation of Success: Given the complementary nature of the references—one describing a process and the other the hardware to perform it—a POSITA would have had a reasonable expectation of success in creating a functional OTA-reconfigurable terminal.

Ground 2: Claims 8-10 are obvious over Noblet in view of Van den Heuvel and Hansson.

• Prior Art Relied Upon: Noblet, Van den Heuvel, and Hansson (International Publication No. WO1998/038820).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Noblet and Van den Heuvel combination to further add teachings from Hansson for the dependent claims. Petitioner asserted that Hansson teaches the specific error-handling and acknowledgment functions required by claims 8-10. Claim 8 requires "means for testing delivery integrity" of the downloaded software. Claim 9 requires "means for requesting retransmission" if the test indicates an error. Claim 10 requires "means for acknowledging proper reception." Hansson was argued to explicitly disclose a system for remotely upgrading a cellular telephone that performs these exact functions: it calculates a checksum to test integrity, requests retransmission if the checksum fails, and sends an acknowledgment of a successful update.
  • Motivation to Combine: Petitioner argued that while Noblet mentions the importance of "data integrity" and an "error free transmission," it does not specify the mechanism. A POSITA implementing the OTA download system of Noblet/Van den Heuvel would recognize the need for a robust error-checking mechanism. Hansson provided a well-known, conventional solution (checksums, retransmission requests) to ensure reliable software downloads. Therefore, a POSITA would combine Hansson’s teachings to improve the reliability of the base system.
  • Expectation of Success: Adding a standard error-checking and acknowledgment protocol to a data transmission system was argued to be a routine and predictable modification. A POSITA would have a high expectation of success that incorporating Hansson's methods would work as intended without disrupting the underlying functionality of the Noblet/Van den Heuvel system.

4. Key Claim Construction Positions

• Petitioner argued that most claim terms could be given their plain and ordinary meaning. However, it highlighted several means-plus-function limitations and other terms for which it had proposed constructions in related district court litigation.
• Means-Plus-Function Terms: Petitioner contended that for several means-plus-function terms (e.g., "means for selecting," "means for testing," "means for requesting," "means for acknowledging"), the ’634 patent specification fails to disclose the corresponding structure (i.e., a specific algorithm) required by 35 U.S.C. §112. However, since indefiniteness cannot be a ground for IPR, Petitioner proceeded by assuming the structure is a "processor executing software" that performs the claimed function. It then argued that the prior art discloses such a processor-based structure for each limitation.
• Other Key Terms: For the purposes of its analysis, Petitioner adopted its proposed district court constructions for terms in claim 6:
  • "capabilities": Functions that are supported
  • "parameters": Settings
  • "profile": Set of parameters (e.g., set of settings)

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). The primary reason asserted was that the core prior art references, Noblet and Van den Heuvel, were never before the Examiner during the original prosecution of the ’634 patent.
• While Hansson was listed on an Information Disclosure Statement (IDS), Petitioner argued it was never substantively considered by the Examiner or used as the basis for a rejection, particularly not in the specific combination with Noblet and Van den Heuvel as presented in the petition.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 6 and 8-10 of Patent 6,954,634 as unpatentable.