Samsung Electronics Co Ltd v. Maxell Ltd

1. Case Identification

• Case #: IPR2024-00907
• Patent #: 10,129,590
• Filed: May 31, 2024
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Maxell Ltd.
• Challenged Claims: 1, 4-5, 8-12, 14-25

2. Patent Overview

• Title: Video Processing Apparatus with Multiple Radio Circuits
• Brief Description: The ’590 patent relates to a video processing apparatus, such as a multimedia cellular phone, equipped with multiple distinct radio communication circuits. The technology enables simultaneous operations, such as transmitting video information using a first radio while connecting to the internet with a second radio.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-5, 8-12, and 14-25 are obvious over N93, Dua, and Herle

• Prior Art Relied Upon: N93 (Nokia N93 User Guide), Dua (Application # 2006/0258289), and Herle (Patent 7,149,508).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that N93, a user guide for a commercially available smartphone, disclosed the foundational multi-radio (Bluetooth, Wi-Fi, UMTS, GSM) cellular phone with the core hardware claimed in the ’590 patent. Dua was argued to teach specific hardware implementation details for such a phone, explicitly taught simultaneous video transmission over one radio while connecting to a network with another, and disclosed an additional NFC radio. Herle was cited for its teaching of over-the-air (OTA) software and operating system update functionality for cellular phones, which addresses limitations related to receiving and executing updates from the internet.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the teachings of the N93 phone with Dua to find known hardware implementation details and to add desirable features like improved simultaneous connections and NFC functionality. A POSITA would further combine these teachings with Herle to incorporate the well-known and commercially important feature of OTA updates to provide bug fixes and new versions, a known technique to improve a known device.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success because the combination involved applying known techniques (simultaneous data transfer, NFC, OTA updates) to a known device (a multi-radio smartphone) to achieve predictable results using only routine skill.

Ground 2: Claims 1, 4-5, 8-12, and 14-25 are obvious over the combination of Ground 1 with Rooyen, Desai, BT-Spec, 3GPP-Spec, and Kao

• Prior Art Relied Upon: N93, Dua, Herle, plus Rooyen (Application # 2006/0128332), Desai (Application # 2006/0274704), BT-Spec (Bluetooth Specification), 3GPP-Spec (3GPP Specification), and Kao (Application # 2004/0264600).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground augmented the primary combination in Ground 1 with additional references teaching specific implementation details. Rooyen was cited for teaching how UMTS and GSM radio frequency integrated circuits (RFICs) could be implemented as separate or combined circuits. Desai was cited for teaching the implementation of Bluetooth and Wi-Fi radios in a single combined circuit with improved co-existence techniques to reduce interference, power consumption, and die size. The technical specifications (BT-Spec, 3GPP-Spec) and Kao were presented to explicitly disclose the modulation schemes and frequency bands that Petitioner argued were inherently taught or made obvious by N93's and Dua's reliance on these industry standards.
  • Motivation to Combine: Petitioner argued a POSITA, seeking to build the device of N93 and Dua, would have been motivated to consult references like Rooyen and Desai for known and advantageous ways to implement the radio circuits. The motivation included reducing chip count, simplifying system design, and improving performance through co-existence techniques. The standards documents would have been consulted as a matter of course to ensure compliance and interoperability.
  • Expectation of Success: Success was argued to be reasonably expected, as this ground involved implementing standards-compliant radios using well-known circuit design techniques detailed in the additional references.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Dua and Herle (Ground 3); Dua, Herle, and N93 (Ground 4); and the full combination of all eight references from Ground 2 (Ground 5), relying on similar theories of combining base device features with known implementation details and software functions.

4. Key Claim Construction Positions

• "circuit": Petitioner proposed this term be interpreted broadly as "any circuitry," consistent with prosecution history where "device" and "unit" were replaced with "circuit." It was argued that a circuit need not be physically separate from another, pointing to claim 22 which recites a "combined circuit."
• "when an indication from the user indicates...": Petitioner contended this phrase requires no formal construction as the prior art discloses the limitation under any reasonable interpretation. Petitioner highlighted that the Patent Owner argued during reexamination that this limitation excluded "automatic" radio selection. However, in co-pending litigation, the Patent Owner allegedly accuses products that use automatic selection, creating a conflict that Petitioner argued supports finding the claims obvious under either interpretation.

5. Arguments Regarding Discretionary Denial

• §314(a) Analysis: Petitioner argued against discretionary denial, asserting the petition demonstrates "compelling merits" of unpatentability. The argument was based on the strength of the prior art, particularly the N93 user manual which allegedly disclosed a feature-complete version of the claimed device.
• §325(d) Analysis: Petitioner contended that denial under §325(d) would be improper because the core combination of N93, Dua, and Herle was not previously considered by the USPTO. Furthermore, Petitioner argued that the examiner erred during a prior reexamination by allowing the claims without conducting a proper prior art search for the newly added "software update" limitation, which Herle is cited to address.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-5, 8-12, and 14-25 of Patent 10,129,590 as unpatentable.