Cellco Partnership v. Huawei Technologies Co Ltd

1. Case Identification

• Case #: IPR2020-01129
• Patent #: 7,715,832
• Filed: June 17, 2020
• Petitioner(s): Cellco Partnership d/b/a Verizon Wireless
• Patent Owner(s): Huawei Technologies Co., Ltd.
• Challenged Claims: 1-9

2. Patent Overview

• Title: Mobile Terminal and a Method for Implementing the Guardianship Function
• Brief Description: The ’832 patent discloses a "guardianship function" for a mobile terminal that enables a guardian to monitor and control a child's device usage. The system involves collecting and analyzing usage data, sending short messages to the guardian, and stopping program execution on the child's terminal.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ackley, Slemmer, and Poor - Claims 7 and 9 are obvious over Ackley in view of Slemmer and Poor.

• Prior Art Relied Upon: Ackley (Patent 7,302,272), Slemmer (Patent 6,889,207), and Poor (Application # 2002/0183051).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ackley taught the core method of a parental control system, including collecting data related to a mobile terminal's use (e.g., application launches), analyzing that data to determine if usage is restricted, and sending a short message (SMS) to a parent device to notify of the use. However, Ackley did not explicitly teach remotely stopping a running program. Petitioner asserted that Slemmer remedied this deficiency by disclosing a system that sends a "stop instruction" to remotely halt media playback, and Poor further taught remotely managing applications by issuing a command to "stop a running program (entering a stop state 136)."
  • Motivation to Combine: A POSITA would combine Slemmer’s and Poor’s remote-stopping functionalities with Ackley’s parental control framework. The motivation was to provide more comprehensive and effective control, allowing a parent not just to monitor usage but to actively terminate a program (e.g., a game) that had exceeded a time limit or was otherwise unpermitted. This combination would be a predictable solution to achieve the stated goals of all three references.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success, as all references operate in the same field of remote device control, address similar problems, and integrating a remote "stop" command into a monitoring system was a well-understood and straightforward task.

Ground 2: Obviousness over Ackley, Slemmer, Poor, and Wesby - Claim 8 is obvious over Ackley in view of Slemmer, Poor, and Wesby.

• Prior Art Relied Upon: Ackley (Patent 7,302,272), Slemmer (Patent 6,889,207), Poor (Application # 2002/0183051), and Wesby (WO 2003/098908A1).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1 to specifically address the limitation of claim 8, which requires identifying a "predefined password" in the received short message to determine it is a remote control message. Petitioner argued the base combination taught receiving a remote control message (a short message with a stop command). Wesby was introduced for its teaching of an "improved remote asset management system" where SMS messages containing "access codes" are used to authenticate commands and control device functionality.
  • Motivation to Combine: A POSITA would combine Wesby's teaching with the base combination from Ground 1 to enhance security. Authenticating remote commands with a password ensures that only an authorized individual (the guardian) can control the child's device, preventing unauthorized or malicious commands. This was a known and desirable feature for any remote management system.

Ground 3: Obviousness over Erskine, Kushwaha, and Poor - Claims 1-9 are obvious over Erskine in view of Kushwaha and Poor.

• Prior Art Relied Upon: Erskine (Application # 2004/0166878), Kushwaha (Application # 2002/0069259), and Poor (Application # 2002/0183051).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground serves as an alternative to the Ackley-based grounds. Petitioner argued that Erskine taught a primary "Supervisory Control System" for parents to monitor and control a child's wireless phone, including setting call time limits and receiving alerts. Kushwaha taught using a "management agent" running directly on the mobile device to monitor parameters and transmit information to a server based on predefined thresholds. The combination of Erskine and Kushwaha provided the claimed collecting, analyzing, and notifying steps. Poor was again added for its explicit disclosure of a remote command to "stop a running program."
  • Motivation to Combine: A POSITA would incorporate Kushwaha's on-device management agent into Erskine's server-based system to improve efficiency and reliability. Performing monitoring on the device itself reduces network traffic and allows the system to function even with a poor or unavailable connection. Poor was added to provide the supervisor with more direct control to "kill" any running application, an improvement over Erskine’s method of having the network release a call.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Erskine, Kushwaha, and Poor for the remaining claims.

4. Key Claim Construction Positions

• Petitioner argued that the term "stopping the running of the at least one program according to the remote control message" (claim 7) should be construed as "stopping a program's ongoing execution based on the remote control message." This construction was asserted to be consistent with the specification’s disclosure of an "inhibition instruction" and the plain meaning of the language. Petitioner noted that the claims would be obvious even under the Patent Owner's apparently broader construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because the primary prior art references (e.g., Ackley, Erskine) were not before the examiner during prosecution and were not cumulative of the art of record.
• Petitioner further contended that denial under the Fintiv factors was inappropriate. It argued the co-pending litigation was in a very early stage with minimal investment from the court or parties. Furthermore, the scheduled trial date was likely to be delayed, and the IPR addresses claims 1-6, which were not asserted in the parallel litigation, meaning the IPR would simplify issues and not be duplicative.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-9 of the ’832 patent as unpatentable.