PTAB

IPR2020-01159

Dell Inc v. 3G Licensing SA

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1. Case Identification

2. Patent Overview

  • Title: Network Name Display Method for Mobile Wireless Terminal
  • Brief Description: The ’375 patent relates to a method and system for displaying cellular network names on a mobile terminal. The invention purports to solve user confusion regarding roaming charges by maintaining a list of multiple "home" network identifiers (MCC/MNC pairs) and displaying a single, consistent home network name whenever the terminal connects to any of the networks on that list.

3. Grounds for Unpatentability

Ground 1: Obviousness over Uchida and McElwain - Claims 1-2, 4-10, and 12-15 are obvious over Uchida in view of McElwain

  • Prior Art Relied Upon: Uchida (Application # 2004/0204136) and McElwain (Application # 2003/0022689).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Uchida taught the core concept of the ’375 patent. Uchida disclosed a mobile terminal that maintains a "Home SID/NID List" containing multiple network identifiers. When the terminal registers with any network on this list, it displays a single, predefined "Home System Tag" to indicate a home network connection. Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would understand Uchida’s SID/NID pairs to be equivalent to the MCC/MNC pairs recited in the claims. To the extent Uchida was considered not to explicitly teach a Home Public Land Mobile Network (HPLMN) list, Petitioner asserted that McElwain remedied this by disclosing a mobile station that stores a "Cousin SID list," which functions as an HPLMN list containing multiple network identifiers belonging to a single service provider, all treated as "home" networks.
    • Motivation to Combine: A POSITA would combine the references to improve the network selection and display system disclosed in Uchida. The combination involved substituting Uchida’s network list with McElwain’s more clearly defined HPLMN (“Cousin SID list”) and Preferred PLMN (PPLMN) lists. This would be a simple and logical modification to achieve the predictable result of efficiently managing network selection and displaying a consistent name for all designated home networks, thereby clarifying roaming status for the user.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining these references, as it involved integrating known types of network lists from McElwain into the known system framework of Uchida to achieve the well-understood goal of improved network status display.

Ground 2: Obviousness over 3GPP Standards and McElwain - Claims 1-15 are obvious over the 3GPP Standards in view of McElwain

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that the public 3GPP Standards, which predate the ’375 patent, disclosed all the allegedly novel features of the challenged claims. The standards explicitly described an "HPLMN Selector" data field stored on a Subscriber Identity Module (SIM) that allows for storing a list of multiple HPLMN codes. Further, the standards taught that it was possible to associate multiple PLMN Identifications (at least 10) with the same "Service Provider Name," which would be displayed when the mobile station was registered on any of those networks. Petitioner cited McElwain as a representative example of a conventional mobile station containing the necessary hardware (transceiver, controller, memory, display) to implement the functions described in the standards.
    • Motivation to Combine: A POSITA would have been inherently motivated to read and combine the teachings of the three 3GPP standards, as they are all part of the same standards release (Release 5), are directed to the same GSM cellular system, and explicitly cross-reference one another. A POSITA designing a mobile station to comply with these standards would naturally consult a reference like McElwain to understand the conventional hardware components and architecture required, as the standards themselves are often silent on specific hardware implementations.
    • Expectation of Success: A POSITA would have had a very high expectation of success, as the combination merely involved implementing established industry standards on a well-known, conventional mobile device architecture to achieve predictable results.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 3 and 11 based on combinations including Hicks (Patent 7,027,813). Hicks was cited for its teaching of using a Location Area Code (LAC) in addition to MCC and MNC pairs for comparing and identifying networks.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate. Regarding the Fintiv factors, Petitioner asserted that the parallel district court litigations were in very early stages, with no trial dates set and no significant discovery having occurred. Petitioner also argued that denial under 35 U.S.C. §325(d) was unwarranted because the primary prior art references relied upon in the petition—namely Uchida and the 3GPP Standards—were not before the Examiner during the original prosecution of the ’375 patent. These references allegedly disclose the very limitations that the applicant had argued were missing from the prior art of record.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-15 of the ’375 patent as unpatentable under 35 U.S.C. §103.