PTAB

IPR2020-01603

Samsung Electronics Co Ltd v. Nordic Interactive Technologies LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Auto-Lookup Telephone Number System
  • Brief Description: The ’095 patent relates to an automated system for processing telephone numbers to assist a user in selecting the proper area code for a call. The system monitors call initiation signals, receives called party information, and produces a list of potential telephone numbers for the user to select.

3. Grounds for Unpatentability

Ground 1: Obviousness over Upp - Claims 16 and 30 are obvious over Upp, either alone or in light of the general knowledge of a POSITA.

  • Prior Art Relied Upon: Upp (Automatic Telephone Number Retrieval, Motorola Technical Developments, Vol. 19, Pg. 71).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Upp, which teaches a technique for retrieving telephone numbers from memory as a user dials, discloses all limitations of claim 16. Upp’s system "automatically searches" as a number is "dialed," which Petitioner asserted meets the limitation of "monitoring call initiation signals." The dialed digits constitute the "called party information," which triggers the system to "display the list of matching numbers" ("producing a list"). The user can then "choose one to be dialed," meeting the "selecting" limitation. For claim 30, Upp's teaching that a user can choose a number "to be dialed" was argued to meet the added limitation of initiating a call through a telecommunications network.
    • Motivation to Combine: The argument relied on supplementing Upp with the general knowledge of a POSITA. Petitioner contended that for Upp’s system to function "as the user dials," it would have been obvious to a POSITA to include a monitoring function, a feature the ’095 patent itself admits was "known in the art."
    • Expectation of Success: A POSITA would have had a high expectation of success in implementing a monitoring step into Upp’s system, as it involved the application of a known, conventional technique to enable the system's core functionality.

Ground 2: Obviousness over Nakabayashi - Claims 16, 19-23, and 25-30 are obvious over Nakabayashi, either alone or in light of the general knowledge of a POSITA.

  • Prior Art Relied Upon: Nakabayashi (Japanese Patent Application Publication JP H9-270845).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Nakabayashi discloses a system for generating a list of telephone numbers by searching a database based on user input, which meets the limitations of claim 16. A user clicking an "Automatically Create Button" constitutes the "call initiation signal." The user's input of an area code and prefix constitutes the "called party information." In response, Nakabayashi’s system searches its database and creates a list of phone numbers ("producing a list"), from which a user can select a number to be dialed. Petitioner asserted that dependent claims 25-29 are met because Nakabayashi’s database explicitly contains information on area codes ("valid area codes"), prefixes ("valid exchanges"), associated geographic locations, and the relationships between adjacent service areas.
    • Motivation to Combine: The argument asserted that it would have been obvious to a POSITA that Nakabayashi's system, which responds to a mouse click, inherently monitors for such user input signals. This understanding is based on the general knowledge of how computer systems operate.
    • Expectation of Success: A POSITA would have expected the system described in Nakabayashi to function as intended, as it combined standard user interface elements with database search and retrieval functionalities.

Ground 3: Obviousness over Nakabayashi and Fuse - Claims 19-23 are obvious over Nakabayashi in view of Fuse.

  • Prior Art Relied Upon: Nakabayashi (JP H9-270845) and Fuse (Japanese Patent Application Publication H7-181054).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 2, addressing claims 19-23 which require associating "identification information," such as the calling party's location, with the search. While Nakabayashi teaches a user manually inputting their location (area code), Fuse teaches a navigation device that uses GPS to automatically determine a user's "current location information" to find nearby phone numbers. The combination of Nakabayashi's number list generation with Fuse's automated location detection was argued to render claims 19-23 (which specify using calling party location information to define a search scope) obvious.
    • Motivation to Combine: A POSITA would combine Fuse’s GPS technology with Nakabayashi's system to enhance its utility and efficiency. This combination would relieve the user of the need to know and manually enter their current area code, a clear advantage for mobile users—a trend Nakabayashi explicitly recognized. The improved user experience and simpler operation would provide a strong motivation for the combination.
    • Expectation of Success: A POSITA would have reasonably expected success in combining these references, as it involved integrating a known automated data input method (GPS location from Fuse) into a known data processing system (telephone number lookup from Nakabayashi) to achieve a predictable improvement.

4. Key Claim Construction Positions

  • "Call Initiation Signals" (Claim 16): Petitioner proposed this term be construed broadly as "any signal indicating that a calling party is going to place a telephone call." This construction is central to the obviousness arguments, as it allows common user actions—such as beginning to dial digits (in Upp) or clicking a button to start a search (in Nakabayashi)—to satisfy the claim limitation, rather than requiring a specific, dedicated activation sequence.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented substantial arguments that discretionary denial under Fintiv would be inappropriate. The core arguments were that:
    • The district court proceedings were in an early stage with minimal investment.
    • Petitioner intended to seek a stay of the litigation pending the outcome of the IPR.
    • There was minimal overlap of issues, as the IPR challenged twelve claims while only two were asserted in the district court.
    • The petition presented strong merits for unpatentability, favoring institution to promote system efficiency and integrity.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 16, 19-23, and 25-30 of Patent 6,345,095 as unpatentable under 35 U.S.C. §103.