PTAB

IPR2020-01158

Dell Inc v. 3G Licensing SA

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1. Case Identification

2. Patent Overview

  • Title: Network Name Display Method and Mobile Wireless Terminal
  • Brief Description: The ’868 patent describes a method and mobile terminal for managing the display of network names to reduce user confusion about roaming charges. The invention involves storing a list of multiple "home" networks (identified by MCC/MNC pairs) and displaying the same home network name whenever the terminal connects to any network on that list.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-7, and 9-11 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 discloses a mobile station that maintains a "Cousin SID list" (equivalent to the claimed HPLMN list) containing multiple network identifiers considered to be "home" networks. When a mobile station connects to a network on this list, it is determined to be "home" and not roaming. Petitioner contended that to the extent McElwain does not explicitly teach comparing the selected network's ID against the list to display a single home network name, Uchida supplies this teaching. Uchida discloses maintaining a "Home SID/NID List" and displaying a single "home system tag" whenever the terminal connects to any system on that list, and a different tag or roaming indicator otherwise.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine McElwain and Uchida to improve network status display. McElwain identified the problem of informing a user about roaming status, and Uchida provided a clear and effective method for doing so by displaying a consistent home network name for a group of related networks. A POSITA would have been motivated to apply Uchida's specific display method to McElwain's system of managing a list of "home" networks to provide a predictable and user-friendly experience.
    • Expectation of Success: A POSITA would have a high expectation of success because combining the references involved applying Uchida’s known display logic to McElwain's known network list structure. The combination was a straightforward application of known techniques to achieve the predictable result of a consistent home network display across multiple affiliated networks, thereby solving the problem of user confusion over roaming charges.

Ground 2: Claims 1-11 are obvious over McElwain in view of Hicks

  • Prior Art Relied Upon: McElwain (Application # 2003/0022689) and Hicks (Patent 7,027,813).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that McElwain teaches the core concept of a list of "home" networks (the "Cousin SID list"). Hicks provided an alternative, but equally obvious, way to implement the name display logic. Hicks discloses an Operator PLMN List (OPL) file with multiple network identifiers (PLMNs), where each identifier points to a record in a PLMN Network Name (PNN) file. This allows multiple PLMNs (e.g., all home networks) to point to the same "HOME" name entry, while others point to a "ROAM" entry. Hicks also teaches using a Location Area Code (LAC) in addition to the MCC/MNC pair for more granular network identification, rendering claims 2 and 8 obvious.
    • Motivation to Combine: A POSITA would combine McElwain and Hicks to implement a robust and flexible network name display system. McElwain established the need to treat multiple networks as "home," and Hicks provided a known, structured file-based method (OPL and PNN files) for managing and displaying names for a large number of networks. This combination addressed the need to clearly inform a user of their roaming status, a concern central to both references.
    • Expectation of Success: The combination was a predictable integration of known elements. A POSITA would expect success in using Hicks's OPL/PNN file structure to implement the network display for the list of "home" networks taught by McElwain. Populating Hicks's OPL file with the network identifiers from McElwain's "Cousin SID list" to display a single home name was a straightforward design choice.

Ground 3: Claims 1-11 are obvious over 3GPP Standards in view of McElwain

  • Prior Art Relied Upon: 3GPP TS-23.122, 3GPP TS-22.101, 3GPP TS-31.102 (collectively "3GPP Standards"), and McElwain (Application # 2003/0022689).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the 3GPP Standards, which pre-date the patent, disclosed all key features of the invention. Specifically, the standards described an "HPLMN Selector" data field on the SIM card that allows for storing a list of multiple HPLMN codes. The standards also explicitly taught that it should be possible to associate at least 10 PLMN Identifications with the same Service Provider Name, which would be displayed when connected to any of them. Petitioner asserted that while the standards version at the time did not use the HPLMN Selector list for network selection, it explicitly contemplated doing so in future versions. McElwain was cited as a representative example of a mobile station of the era, supplying the obvious hardware elements (processor, display, etc.) if they were deemed not inherent in the standards.
    • Motivation to Combine: A POSITA would have been highly motivated to combine the teachings within the 3GPP Standards, as they are explicitly designed to be read and implemented together to build a functioning mobile communication system. The motivation to use the HPLMN Selector as a list for network selection was provided directly by the standards, which stated this was a feature for future implementation. A POSITA would have looked to McElwain for a standard implementation of a mobile station to embody the system described in the standards.
    • Expectation of Success: A POSITA would have a very high expectation of success in implementing the claimed invention based on the 3GPP standards. The standards provided the specific data structures (HPLMN Selector for the list, Service Provider Name for the display) and the logic for associating a single name with multiple network identifiers. Implementing this on a standard mobile station architecture, as shown in McElwain, was a predictable and straightforward engineering task.

  • Additional Grounds: Petitioner asserted that claims 1, 3-7, and 9-11 are obvious over McElwain alone. Petitioner also asserted that claims 2 and 8 are obvious over the combination of McElwain, Uchida, and Hicks, with Hicks providing the teaching of using a Location Area Code (LAC) for additional granularity.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. The petition asserted that any co-pending litigation was in its early stages, with no trial dates set, weighing against denial under the Fintiv factors. Furthermore, Petitioner contended that denial under §325(d) was unwarranted because the key prior art and combinations presented in the petition—particularly the 3GPP Standards and the combination with Uchida—were never before the Examiner. Even for the art that was cited in an IDS (McElwain, Hicks), Petitioner argued it was not substantively considered during prosecution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’868 patent as unpatentable under 35 U.S.C. §103.