Dell Inc v. 3G Licensing SA

1. Case Identification

• Case #: IPR2020-01160
• Patent #: 8,275,374
• Filed: June 30, 2020
• Petitioner(s): Dell Inc., ZTE (USA) Inc., and ZTE Corporation
• Patent Owner(s): 3G Licensing S.A.
• Challenged Claims: 1-34

2. Patent Overview

• Title: Displaying Network Names on Mobile Phones
• Brief Description: The ’374 patent discloses a method for a mobile terminal to reduce user confusion over roaming charges by maintaining a list of multiple "home" networks (HPLMNs). When the terminal connects to any network on this list, it displays a single, consistent home network name, rather than the specific name of the connected network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Uchida and McElwain - Claims 1-7, 9-16, 18-23, 25-32 & 34 are obvious over Uchida, alone or in view of McElwain.

• Prior Art Relied Upon: Uchida (Application # 2004/0204136), McElwain (Application # 2003/0022689).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Uchida discloses the core invention: a mobile terminal that maintains a list of "home" networks (a "Home SID/NID List") and displays a single, consistent "home system tag" whenever it connects to any network on that list. Uchida's system compares the connected network's identifier (SID/NID pair) to its home list to determine which name to display. Petitioner contended Uchida teaches every limitation, including storing lists in a subscriber identity module (SIM). To the extent Uchida's disclosure of a Home Public Land Mobile Network (HPLMN) list was considered insufficient, Petitioner asserted McElwain explicitly teaches a "Cousin SID list" which contains a plurality of SIDs for networks belonging to a single service provider, all of which are treated as "home" networks.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine McElwain's explicit HPLMN list ("Cousin SID list") with Uchida's network name display method. The combination would use a known type of list (McElwain's) in a known system (Uchida's) to achieve the predictable result of avoiding roaming confusion, which was a shared goal of both references.
  • Expectation of Success: A POSITA would have an expectation of success because it involved the simple substitution of one known type of home network list for another to improve the efficiency of network selection and provide clear roaming status to the user.

Ground 2: Obviousness over Uchida/McElwain and Hicks - Claims 8, 17, 24 & 33 are obvious over the combination of Uchida and McElwain in view of Hicks.

• Prior Art Relied Upon: Uchida (Application # 2004/0204136), McElwain (Application # 2003/0022689), and Hicks (Patent 7,027,813).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Uchida and McElwain to address the dependent claims requiring the use of a Location Area Code (LAC) in addition to the network identifier (MCC/MNC pair). Petitioner argued that Hicks explicitly teaches using a combination of PLMN data (MCC/MNC) and a LAC identifier, together referred to as Location Area Information (LAI), to determine if a mobile station is in a home or roaming network.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hicks's teaching with the Uchida/McElwain system because all three references address the same problem of determining and displaying home/roaming status. Hicks taught that using a LAC allows a network to be subdivided into smaller location areas, providing more granular control. A POSITA would be motivated to add this known technique to the base system to gain this known benefit.
  • Expectation of Success: Success was expected as it was a simple application of an additional, known network identifier (LAC) to an existing method for determining network status, yielding the predictable result of more precise location-based roaming determination.

Ground 3: Obviousness over 3GPP Standards and McElwain - Claims 1-34 are obvious over the 3GPP Standards in view of McElwain.

• Prior Art Relied Upon: 3GPP TS-23.122, 3GPP TS-22.101, 3GPP TS-31.102 (collectively "the 3GPP Standards"), and McElwain (Application # 2003/0022689).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the 3GPP Standards, which were publicly available before the patent's priority date, disclosed the key features of the challenged claims. Specifically, the standards described data structures like the "HPLMN Selector with Access Technology," which allows for a list of multiple HPLMN codes to be stored on a SIM. The standards also taught storing a list of PLMN identifications on a USIM for which the same "Service Provider Name" shall be displayed. Petitioner asserted these teachings rendered the claims obvious. McElwain was included as a representative example of a mobile station of the era, supplying any details on hardware (controller, transceiver) potentially not explicit in the standards themselves.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings of the various 3GPP standards as they were part of the same standards release (Release 5) and were explicitly intended to be read together to implement a functioning GSM system. A POSITA would look to a reference like McElwain to understand how the system-level requirements of the standards would be implemented in a physical mobile station, especially to solve the known problem of managing home and roaming network lists to avoid roaming fees.
  • Expectation of Success: The combination would predictably yield a standards-compliant mobile device that could manage multiple home networks and display a consistent name, as the standards provided the blueprint and McElwain provided a known implementation approach.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d).
• Regarding Fintiv factors, Petitioner asserted that the co-pending district court litigations were in their very early stages, with no trial dates set or substantive discovery conducted.
• Regarding §325(d), Petitioner argued that the core prior art combinations, particularly those including Uchida and the 3GPP Standards, were never before the Examiner during the original prosecution. While McElwain and Hicks were cited in an IDS, there was no evidence the Examiner substantively considered them. Therefore, the petition raised new arguments and art not previously evaluated by the USPTO.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-34 of Patent 8,275,374 as unpatentable under 35 U.S.C. §103.