PTAB

IPR2022-00025

Xiaomi Communications Co Ltd v. Koninklijke KPN NV

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Remote Device Management
  • Brief Description: The ’772 patent discloses a system for managing remote electronic devices, such as customer premises equipment (CPE), without requiring pre-configuration. The system uses an intermediary auto-configuration server managing device (ACSMD) to receive a configuration request from a device, identify the appropriate auto-configuration server (ACS) for that device from a plurality of available servers using at least one database, and relay communications between the device and the identified ACS.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 8-16 are obvious over Chatrath.

  • Prior Art Relied Upon: Chatrath (Application # 2005/0060361).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chatrath discloses every limitation of the challenged claims. Chatrath teaches a device management system with a terminal (TE), an intermediary node (IN), and multiple management servers (S). Petitioner contended that Chatrath’s IN performs the role of the claimed ACSMD by receiving an "initiation message" (a request for configuration) from the TE (the manageable device). The IN then uses information in the message (e.g., a subscriber number) to identify and select an appropriate management server (an ACS) from a plurality of servers. The IN then relays the request to the selected server and can relay the server's reply back to the TE. Petitioner asserted that the databases used by the IN to store device and server information meet the "at least one database" limitation.
    • Key Aspects: This ground asserted that Chatrath alone teaches the core claimed invention of using a central intermediary to dynamically route an unconfigured device to the correct management server based on stored information, rendering the claims obvious.

Ground 2: Claim 7 is obvious over Chatrath in view of Oh.

  • Prior Art Relied Upon: Chatrath (Application # 2005/0060361) and Oh (Application # 2006/0172769).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claim 7, which requires the manageable electronic device to be an "interfacing device for coupling a local area network (LAN) into communication with the network (WAN)." Petitioner argued that while Chatrath discloses a mobile device (TE) connected to a WAN, it does not explicitly teach the device also serving as an interface for a LAN. Oh was cited to supply this limitation, as it discloses a mobile communication terminal with a wireless LAN interface that has an "access point function," enabling it to connect other local devices to a wider network.
    • Motivation to Combine: A POSITA would have been motivated to modify Chatrath’s mobile device with the LAN access point functionality taught by Oh. Chatrath expressly allows for its terminal to be any type of mobile device operating on "any known or future mobile network," which would have prompted a POSITA to look to known mobile device technologies, like the hotspot capability in Oh, to add a common and desirable feature.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the references. The W-CDMA technology in Oh is compatible with the 3G networks disclosed in Chatrath, making the integration of a known feature into Chatrath's system straightforward and predictable.

Ground 3: Claims 1-6 and 8-16 are obvious over Schliserman in view of Tullberg.

  • Prior Art Relied Upon: Schliserman (WO 2007/066318) and Tullberg (Application # 2007/0192464).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Schliserman discloses a system with a home network device (HND) that sends a "GET CONFIG DATA" request to a residential gateway (RG), which relays the request to an auto-configuration server (ACS). This maps to the claimed manageable device, ACSMD, and ACS, respectively. However, Schliserman failed to teach how the RG would identify the correct ACS from a plurality of potential servers. Tullberg was introduced to cure this deficiency. Tullberg teaches a control server that receives a connection message from a device, extracts a device identifier, and uses a database to match that identifier to a specific service provider and service server. The combined system would use Tullberg's database-driven matching logic within Schliserman's RG to identify the correct ACS.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Tullberg’s teachings into Schliserman’s system to supply the missing functionality of ACS selection. Schliserman presented an incomplete system, and Tullberg provided a known and logical solution for automating the server discovery process. The combination would have been an obvious improvement to make Schliserman's auto-configuration system fully functional.
    • Expectation of Success: Both references are in the same field of device management, and their systems are compatible. A POSITA would have found it a routine and predictable design choice to integrate Tullberg's server-matching database into Schliserman's gateway to achieve the claimed system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a) (Fintiv).
  • §325(d): The asserted prior art references were not before the examiner during prosecution and are not cumulative. Petitioner contended these references specifically teach the "relaying" feature that the patent owner relied upon to overcome prior art rejections, making them materially different from the art of record.
  • Fintiv Factors: Regarding a parallel district court case, Petitioner argued the litigation was in its earliest stages with no substantive orders on validity and a trial date set for 22 months after the petition filing, ensuring the inter partes review (IPR) would conclude long before trial. Petitioner also stated its intent to seek a stay of the litigation if the IPR is instituted.

5. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1-16 of the ’772 patent as unpatentable under 35 U.S.C. §103.