Samsung Electronics Co Ltd v. Headwater Research LLC

1. Case Identification

• Case #: IPR2023-01250
• Patent #: 9,277,433
• Filed: August 14, 2023
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Headwater Research LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Wireless End-User Device with Policy-Based Aggregation of Network Activity Requested by Applications
• Brief Description: The ’433 patent discloses a wireless end-user device, such as a smartphone, equipped with multiple network interfaces (e.g., WWAN and WLAN). The device uses a stored "network service activity control policy set" to manage how applications access the internet, applying different controls based on factors like the active network type or application status to manage network resources.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rao and Cole - Claims 1-3, 6, 10-11, 13-14, and 17 are obvious over Rao in view of Cole.

• Prior Art Relied Upon: Rao (Application # 2006/0039354) and Cole (Application # 2008/0080458).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rao discloses a mobile client using policies for "application-aware, client-specific prioritization of packet traffic," such as prioritizing foreground applications over background ones. This system includes a processor and memory storing policies that associate access controls with specific applications. Cole discloses a mobile device with multiple network interfaces (WWAN, WLAN) and a connection manager that selects the best available connection based on heuristics like power state, network load, and cost to improve performance and battery life. Petitioner asserted that combining these teachings renders the core limitations of independent claim 1 obvious, including a wireless device with a WWAN modem, a memory storing a policy set, and a processor configured to apply access controls based on network type.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve the functionality of Rao's system. While Rao taught prioritizing traffic, it did not address the critical issues of power management and efficient network selection in a multi-interface mobile device. Cole directly addressed these shortcomings. A POSITA would have found it obvious to integrate Cole's power- and network-aware connection management into Rao's application-aware prioritization framework to create a more robust and efficient device.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success. The combination involved integrating known software modules (Rao's remote access client and Cole's connection manager) on a standard mobile device processor, which would have required only routine programming and yielded predictable results.

Ground 2: Obviousness over Rao, Cole, and Freund - Claims 2-3, 5, 7-9, and 16 are obvious over Rao and Cole in view of Freund.

• Prior Art Relied Upon: Rao (Application # 2006/0039354), Cole (Application # 2008/0080458), and Freund (Patent 5,987,611).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Rao-Cole combination and adds Freund to address limitations related to user interactivity and user-configurable rules. Freund discloses a system for controlling network access using "access rules" based on criteria like time limits, applications, and whether a user is "actively" interacting with an application (e.g., receiving mouse clicks or keystrokes) versus passive "background use." Freund also teaches a graphical user interface (UI) that allows a user to create, edit, and delete these access rules.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Freund's teachings to enhance the policy system of the base Rao-Cole combination. Freund provided more detailed examples of client-side policies and a UI for their management, which would be a logical and desirable improvement for a device that uses policies to control application behavior, as taught by Rao.
  • Expectation of Success: Integrating Freund's specific rule types and UI for policy management into the Rao-Cole framework would be a straightforward implementation, as Freund's policies are examples of the "multitude of ways" to define client-side priorities that Rao contemplated.

Ground 3: Obviousness over Rao, Cole, and Gandhi - Claims 15 and 18-19 are obvious over Rao and Cole in view of Gandhi.

• Prior Art Relied Upon: Rao (Application # 2006/0039354), Cole (Application # 2008/0080458), and Gandhi (Application # 2008/0146268).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground adds Gandhi to the Rao-Cole combination to address limitations concerning modem power states. Gandhi describes a multi-modem mobile device and teaches a modem controller and data session manager to ensure only one modem transmits at a time. This system manages modem states (e.g., active, dormant) to prevent a modem from changing its power state (e.g., from idle to active) if another modem is already in use, unless a higher-priority request is received.
  • Motivation to Combine: The Rao-Cole device, having both WWAN and WLAN modems, would face the same operational challenges Gandhi addresses. A POSITA would be motivated to apply Gandhi's modem management techniques to prevent conflicts, manage power consumption, and ensure stable connectivity. Gandhi provides a direct solution to a known problem in multi-modem devices.
  • Expectation of Success: Adding Gandhi's modem control logic to the Rao-Cole device would be a predictable improvement using a known technique to solve a known problem, with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Rao-Cole in view of Singh (for claims 2 and 4, related to UI priority) and Rao-Cole in view of Montemurro (for claims 12 and 20, related to home vs. roaming networks).

4. Arguments Regarding Discretionary Denial

• §325(d) - Same Art or Arguments: Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because the primary prior art references (Rao, Cole, Freund, etc.) were never substantively considered by the USPTO during prosecution. Petitioner asserted that because the Examiner issued no prior art rejections, there was no indication the Examiner appreciated the teachings of these references or their combination, constituting a material error.
• §314(a) - Parallel Litigation (Fintiv): Petitioner argued against discretionary denial under 35 U.S.C. §314(a) by highlighting its filing of a Sotera stipulation. This stipulation agrees not to pursue in the parallel district court litigation the same grounds raised in the inter partes review (IPR), which Petitioner contended eliminates concerns of duplicative efforts and weighs strongly against denial.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’433 patent as unpatentable under 35 U.S.C. §103.