Dell Inc v. 3G Licensing SA

1. Case Identification

• Case #: IPR2020-01157
• Patent #: 7,274,933
• Filed: June 25, 2020
• Petitioner(s): Dell Inc., ZTE (USA) Inc., and ZTE Corporation
• Patent Owner(s): 3G Licensing S.A.
• Challenged Claims: 1-4, 6-9, 11-14, and 19

2. Patent Overview

• Title: Network Name Displaying Method and Mobile Station
• Brief Description: The ’933 patent relates to displaying network names on mobile devices to solve customer confusion regarding roaming charges. The technology involves storing a list of multiple "home" network identifiers (MCC/MNC pairs) and displaying the same home network name whenever the device is connected to any network on that list.

3. Grounds for Unpatentability

Ground 1: Obviousness over McElwain and Uchida - Claims 1-3, 6-8, 11-13, and 19 are obvious over McElwain in view of Uchida.

• Prior Art Relied Upon: McElwain (Application # 2003/0022689) and Uchida (Application # 2004/0204136).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McElwain taught nearly every element of the challenged claims. McElwain disclosed a mobile station that scans for network identifiers (SIDs, equivalent to MCC/MNC pairs) and checks them against a "Cousin SID list" of multiple "home" networks. This "Cousin SID list" functioned as the claimed Home Public Land Mobile Network (HPLMN) list, and networks on it were given preference over non-home networks stored in an intelligent roaming database (IRDB), which functioned as the claimed Preferred PLMN (PPLMN) list. To the extent McElwain was not explicit about the display method, Uchida supplied the missing teachings. Uchida disclosed maintaining a "Home SID/NID List" and explicitly taught displaying a single "Home System Tag" when the device connects to any network on that list, and displaying a different tag or roaming indicator if there is no match.
  • Motivation to Combine: A POSITA would combine the references to solve the known problem of user confusion over roaming charges, which McElwain itself identified. Both references disclosed systems for determining home versus roaming status. Petitioner contended a POSITA would find it obvious to apply Uchida’s clear and effective method for displaying a consistent home network name to McElwain’s system for selecting a network from a list of preferred home networks.
  • Expectation of Success: The combination involved applying a known display technique from Uchida to a known network selection system from McElwain to achieve the predictable result of informing a user of their roaming status, a well-understood goal in the art.

Ground 2: Obviousness over McElwain, Uchida, and Hicks - Claims 4, 9, and 14 are obvious over the combination of McElwain, Uchida, and Hicks.

• Prior Art Relied Upon: McElwain (Application # 2003/0022689), Uchida (Application # 2004/0204136), and Hicks (Patent 7,027,813).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the McElwain/Uchida combination to address dependent claims 4, 9, and 14, which added the limitation of using a Location Area Code (LAC) in addition to the MCC/MNC pair for comparing and identifying networks. Petitioner argued that Hicks explicitly taught using a LAC identifier in combination with PLMN data (MCC/MNC pair) to determine if a mobile station is on a home or roaming network.
  • Motivation to Combine: A POSITA would combine Hicks with the primary combination of McElwain and Uchida as a simple substitution of a known element. Hicks explained that using a LAC allows a network to be subdivided into smaller location areas. A POSITA would have been motivated to incorporate this known technique to add greater granularity and precision to the network identification process of the McElwain/Uchida system.
  • Expectation of Success: Incorporating LAC data as taught by Hicks was a straightforward and predictable way to enhance the underlying system's location-awareness, a common design goal.

Ground 3: Obviousness over 3GPP Standards and McElwain - Claims 1-4, 6-9, 11-14, and 19 are obvious over the 3GPP Standards in view of McElwain.

• Prior Art Relied Upon: 3GPP Standards (TS-23.122, TS-22.101, and TS-31.102) and McElwain (Application # 2003/0022689).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the public 3GPP standards, which pre-dated the patent, disclosed the allegedly novel features. The standards described an "HPLMN Selector" data structure stored on a SIM that allows for provisioning multiple HPLMN codes, corresponding to the claimed HPLMN list. The standards also explicitly disclosed data structures and procedures for associating multiple PLMN identifications with the same service provider name, such that the same name is displayed for any of them. While the version of the standard at the time did not use the HPLMN Selector for network selection, it expressly contemplated doing so in the future. McElwain was used to exemplify a known mobile station and to provide teachings on network selection preference logic not fully detailed in the standards.
  • Motivation to Combine: A POSITA developing a mobile communication device would be inherently motivated to implement the governing 3GPP standards. The standards were intended to be read together and provided the blueprint for the technology. A POSITA would look to a reference like McElwain to see how concepts like prioritized network selection lists (McElwain's "Cousin SID list") were implemented, and would apply that logic to the framework provided by the standards, such as using the HPLMN Selector for selection.
  • Expectation of Success: Implementing industry standards on a known device architecture was a predictable process with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-4, 6-9, 11-14, and 19 based on the combination of McElwain and Hicks.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d). It was contended that denial under the Fintiv factors was inappropriate because the parallel district court litigations were in the very early stages, with no discovery requests served or trial dates set.
• Petitioner further argued that denial under §325(d) would be improper because none of the prior art references asserted in the petition were before the Examiner during the original prosecution, and the invalidity arguments presented were not the same or substantially similar to arguments previously presented to the USPTO.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6-9, 11-14, and 19 of the ’933 patent as unpatentable under 35 U.S.C. §103.