Dell Inc v. 3G Licensing SA

1. Case Identification

• Case #: IPR2020-01162
• Patent #: 8,948,756
• Filed: July 1, 2020
• Petitioner(s): Dell Inc., ZTE (USA) Inc., and ZTE Corporation
• Patent Owner(s): 3G Licensing S.A.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method and Apparatus for Selecting a Network in a Wireless Communication System
• Brief Description: The ’756 patent describes a method for a mobile station to manage network connections to reduce user confusion over roaming charges. The system uses a list of multiple "home" networks (an HPLMN list) and attempts to connect to one of them before connecting to a "preferred" roaming network (a PPLMN list), displaying a roaming indicator only when connected to a network not on the home list.

3. Grounds for Unpatentability

Ground 1: Claims 1-6, 8-17, and 19-20 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 invention. McElwain’s mobile station (MS) uses a “Cousin SID list” containing multiple network identifiers considered "home," which functions as the claimed Home Public Land Mobile Network (HPLMN) list. McElwain’s MS preferentially selects a network from this list over other roaming networks stored in an intelligent roaming database (IRDB), which functions as the claimed Preferred PLMN (PPLMN) list. If a selected network is not on the "home" list, McElwain displays a different network name or visual identification, which serves as a roaming indicator. To the extent McElwain’s disclosure of a roaming indicator was considered insufficient, Petitioner asserted Uchida explicitly taught displaying specific system tags or roaming indicators based on whether a selected network was on a home list or a preferred roaming list (PRL).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Uchida's detailed method for displaying roaming indicators with McElwain's system to better inform a subscriber when they are incurring roaming charges, a problem McElwain expressly sought to solve.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying Uchida's known display techniques to McElwain's compatible network selection system to achieve the predictable result of improved user notification.

Ground 2: Claims 1-20 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 this combination also rendered all claims obvious. As in the first ground, McElwain provided the foundational system of using a list of "home" networks (Cousin SID list) and a list of preferred networks (IRDB) with preferential selection. Hicks was presented as an alternative to Uchida for teaching the display elements. Hicks disclosed an algorithm using an Operator PLMN List (OPL) file where multiple PLMNs (identified by MCC/MNC pairs) point to a name in a PLMN Network Name (PNN) file. All networks pointing to the first record (e.g., "HOME") are treated as home networks, while others are treated as roaming networks, for which a roaming indicator (e.g., an alternate name like "ROAM" or a display icon) is shown. Dependent claims 7 and 18, which add the use of a Location Area Code (LAC), were also allegedly taught by Hicks, which explicitly disclosed using a LAC in addition to the PLMN for network identification.
  • Motivation to Combine: A POSITA would be motivated to use Hicks's well-defined OPL/PNN file structure with McElwain's system as a known, straightforward method to implement the display of a single "home" name for multiple affiliated networks and a distinct roaming indicator for all others.
  • Expectation of Success: The combination was a predictable application of Hicks's known file-based display logic to McElwain's network selection framework to achieve the desired outcome of clear roaming status indication.

Ground 3: Claims 1-20 are obvious over 3GPP Standards in view of McElwain.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued the public 3GPP Standards themselves disclosed the claimed invention. The standards described an "HPLMN Selector with Access Technology" data field stored on a SIM, which allows for storing multiple PLMN codes corresponding to a user's home network, thus teaching the claimed HPLMN list. The standards also described User and Operator Controlled PLMN Selector lists, which function as the claimed PPLMN list. While the then-current version of the standards described a process that prioritized a single HPLMN, it explicitly stated that the HPLMN Selector existed to "allow provision for multiple HPLMN codes" in future implementations. The standards also taught displaying the selected PLMN name and that an indicator is necessary to show when roaming is occurring. McElwain was used as a representative example of a known MS to supply conventional components (e.g., controller, memory) not detailed in the standards.
  • Motivation to Combine: A POSITA would be motivated to implement the future-facing capabilities described in the 3GPP Standards (i.e., using the HPLMN selector as a list) in a conventional MS like that of McElwain. The standards themselves are intended to be read together and implemented in cellular systems.
  • Expectation of Success: A POSITA would expect success in modifying the network selection algorithm as contemplated by the standards themselves—using the already-defined HPLMN Selector list instead of a single HPLMN—as it was a planned evolution of the technology.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 7 and 18 are obvious over McElwain, Uchida, and Hicks, and that claims 1-20 are obvious over the 3GPP Standards, McElwain, and Uchida, relying on similar arguments for combining the references.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv factors) and §325(d).
• Regarding Fintiv, Petitioner asserted that the co-pending district court litigations were in their earliest stages, with only complaints answered and no discovery or trial dates set, making an IPR efficient.
• Regarding §325(d), Petitioner argued that the Examiner did not have access to the critical 3GPP Standards during prosecution. Furthermore, while McElwain was before the Examiner, its disclosure of HPLMN and PPLMN lists was not highlighted by the applicant, and the Examiner’s rejection (based on Uchida) did not focus on these features. Therefore, the petition presented new arguments and prior art combinations that were not previously considered.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-20 of the ’756 patent as unpatentable.