Dell Inc v. 3G Licensing SA

1. Case Identification

• Case #: IPR2020-01161
• Patent #: 8,472,955
• Filed: July 1, 2020
• Petitioner(s): Dell Inc., ZTE (USA) Inc., and ZTE Corporation
• Patent Owner(s): 3G Licensing S.A.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Mobile Network Selection
• Brief Description: The ’955 patent relates to a method for a mobile device to select a wireless network. The technology aims to reduce roaming charges by maintaining a list of multiple "home" networks (an HPLMN list) and attempting to register with one of them before selecting from a separate list of preferred, non-home networks (a PPLMN list).

3. Grounds for Unpatentability

Ground 1: Obviousness over McElwain and Uchida - Claims 1-21 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 the core inventive concept: a mobile station that maintains a list of multiple "home" networks (a "Cousin SID list") and prioritizes selecting a network from this list before attempting to register with a network from a separate preferred list (an "intelligent roaming database" or IRDB). To the extent any claim limitations were not fully disclosed by McElwain, Petitioner asserted that Uchida taught them. Specifically, Uchida disclosed maintaining a formal Home PLMN (HPLMN) list and a Preferred PLMN (PPLMN) list in memory, and displaying a specific "home system tag" when connected to a network on the HPLMN list. The combination of McElwain's priority-based selection logic with Uchida's formalized list structures and display methods allegedly rendered all challenged claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references by substituting the known elements in McElwain (the Cousin SID and IRDB lists) with the analogous, more formalized HPLMN and PPLMN lists from Uchida. This combination was argued to be a simple substitution of known elements to achieve the predictable result of more efficient network selection and clearer user feedback, which was a known goal in the art.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved a straightforward application of known network selection techniques to better manage home and roaming network preferences.

Ground 2: Obviousness over 3GPP Standards and McElwain - Claims 1-21 are obvious over the 3GPP Standards in view of McElwain.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the 3GPP Standards—which define the operation of cellular systems—disclosed the necessary data structures for the claimed invention. This included an "HPLMN Selector" data field specifically designed to store a list of multiple home network codes (MCC/MNC pairs) and a "User Controlled PLMN Selector" to store a prioritized list of preferred networks. Petitioner argued that while the specific version of the standard did not mandate using the HPLMN list for selection, it explicitly described the data structure and stated its intended future use for that purpose. McElwain was presented as a reference teaching a concrete mobile station architecture and a similar priority-based selection logic, filling in any implementation details for a POSITA seeking to enable the functionality contemplated by the standards.
  • Motivation to Combine: A POSITA would be motivated to combine the foundational 3GPP Standards with a practical implementation example like McElwain. The motivation was to implement the forward-looking feature described in the standards (using a list of multiple home networks for selection) to solve the well-known problem of managing network partnerships and avoiding unnecessary roaming charges. The combination involved applying McElwain's known selection process to the HPLMN Selector list already defined in the standards.
  • Expectation of Success: A POSITA would have expected success because the combination involved using a data structure (HPLMN Selector) for its stated, intended purpose within a well-understood network selection framework.

• Additional Grounds: Petitioner asserted that claims 1-21 are obvious over McElwain alone. Petitioner also asserted an additional ground that claims 7 and 18 are obvious over the 3GPP Standards, McElwain, and Uchida, arguing that Uchida explicitly teaches the display of a roaming indicator if that element is found to be missing from the primary 3GPP/McElwain combination.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Fintiv Factors: It was argued that the co-pending district court litigations were in the very early stages, with no discovery requests served and no trial dates set, making an IPR an efficient use of resources.
• §325(d) Factors: Petitioner contended that denial under 35 U.S.C. §325(d) was unwarranted because the primary prior art combination relied upon (the 3GPP Standards) was never before the Examiner during prosecution. Furthermore, while McElwain was of record, its most relevant teachings regarding a list of multiple home networks were not substantively analyzed by the Examiner or highlighted by the applicant.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’955 patent as unpatentable under 35 U.S.C. §103.