Samsung Electronics Co Ltd v. Headwater Research LLC

1. Case Identification

• Case #: IPR2024-00010
• Patent #: 9,615,192
• Filed: November 17, 2023
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Headwater Research LLC
• Challenged Claims: 1-9, 11-13, and 15

2. Patent Overview

• Title: Message Link Server with Plural Message Delivery Triggers
• Brief Description: The ’192 patent discloses a message link server that maintains secure communication links with agents on wireless end-user devices. The server receives and buffers messages from network elements, delivering them to device software components only upon the occurrence of specific message delivery triggers, such as an asynchronous, time-critical event.

3. Grounds for Unpatentability

Ground 1: Obviousness over TS-23.140 - Claims 1, 5-7, 9, 11-13, and 15 are obvious over TS-23.140.

• Prior Art Relied Upon: TS-23.140 (3GPP Technical Specification for Multimedia Messaging Service (MMS)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the TS-23.140 standard, which defines the architecture for MMS, discloses all limitations of the independent claims. The MMS Relay/Server in TS-23.140 functions as the claimed "message link server," and the MMS User Agent on a device is the "device link agent." Petitioner asserted that TS-23.140’s system uses a transport services stack (e.g., HTTP/TCP/IP) over an Internet network to link the server and agent, and that a POSITA would have found it obvious to secure this link with a well-known protocol like Transport Layer Security (TLS). The MMS Relay/Server inherently includes a message store that buffers messages, and the standard describes various delivery triggers, such as a user agent requesting retrieval after notification or becoming reachable on the network, which obviates the claimed trigger logic.
  • Key Aspects: The core of this ground is that the entire claimed system is a conventional MMS architecture as described in a well-known industry standard from before the patent's critical date.

Ground 2: Obviousness over Houghton and Munson - Claims 1, 5-7, 9, 11-13, and 15 are obvious over Houghton in view of Munson.

• Prior Art Relied Upon: Houghton (WO 2006/077283) and Munson (Application # 2009/0240807).
• Core Argument for this Ground:
  • Prior Art Mapping: Houghton taught a push messaging system where a push server (the "message link server") establishes a secure, persistent data connection using protocols like HTTPS or IP-Sec with a push client (the "device link agent") on a mobile terminal. Munson disclosed a method for buffering content and performing "group pushes," specifically teaching a store-and-forward solution where messages are buffered until a mobile terminal, which may be offline, reconnects to the network. The combination, Petitioner argued, teaches all limitations, with Houghton providing the secure server-client link and Munson providing the explicit buffering and delayed delivery logic.
  • Motivation to Combine: A POSITA would combine Munson’s buffering and store-and-forward techniques into Houghton’s push system to improve reliability. This would address the common problem of a mobile terminal temporarily losing network connectivity, thereby preventing message loss and ensuring eventual delivery, a well-known and desirable goal in mobile messaging.
  • Expectation of Success: Combining these two references would have yielded predictable results, as both relate to push messaging systems, and implementing buffering to handle intermittent connectivity was a known technique to improve such systems.

Ground 3: Obviousness over TS-23.140 and Shen - Claims 2-3 are obvious over TS-23.140 in view of Shen.

• Prior Art Relied Upon: TS-23.140 (3GPP Technical Specification) and Shen (Application # 2005/0207379).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the TS-23.140 system from Ground 1 to address dependent claims 2 and 3, which require an "encrypt function." Shen was cited for its teaching of an "end-to-end security solution for MMS applications" that addresses the inherent security problem of store-and-forward systems. Shen explicitly taught adding an "authentication and key management module" to an MMS gateway to generate and distribute symmetric keys for encrypting MMS messages between the gateway and the user device, directly meeting the limitation of claim 2.
  • Motivation to Combine: A POSITA would combine Shen's security solution into the standard MMS architecture of TS-23.140 to solve the known security vulnerability of messages being stored unencrypted on the MMS Relay/Server. This combination achieves an MMS system with improved, end-to-end security.
  • Expectation of Success: Because Shen was designed to improve security in MMS architectures like that of TS-23.140, a POSITA would have had a high expectation of success in integrating its teachings.

• Additional Grounds: Petitioner asserted additional obviousness challenges for other dependent claims based on combinations of the primary references with secondary art. These included adding Ellison (Patent 7,082,615) for its teachings on secure execution environments to challenge claim 4, and adding Rakic (Application # 2009/0282256) for its teachings on secure authorization signatures to challenge claim 8.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Under 35 U.S.C. §325(d): Petitioner contended that the grounds presented rely on new prior art and arguments not previously before the Patent Office. It was argued that the Examiner made a material error during prosecution by failing to consider analogous art in the push and MMS messaging fields, which Petitioner asserts render all claim features obvious.
• Under 35 U.S.C. §314(a) (Fintiv): Petitioner argued that the factors weigh against denial because the co-pending district court litigation is in its early stages, with a speculative trial date months after the statutory deadline for a Final Written Decision. Furthermore, Petitioner stipulated that it would not pursue the same IPR grounds in the district court litigation, which promotes judicial efficiency and avoids duplicative efforts.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9, 11-13, and 15 of Patent 9,615,192 as unpatentable.