PTAB

IPR2024-01042

Cellco Partnership v. Headwater Research LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: SERVICE DESIGN CENTER FOR DEVICE ASSISTED SERVICE
  • Brief Description: The ’543 patent relates to a network service plan provisioning system that generates and provides instructions to enforce service plan policies in a wireless access network. The system processes service plan components, each comprising a traffic classification filter and an enforcement action, and prioritizes them to create provisioning instructions for network elements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Poh and Maes - Claims 1, 8-10, 15, 21, 28, 42-47, 87-89, 96, 98-99, and 120-121 are obvious over Poh in view of Maes.

  • Prior Art Relied Upon: Poh (Patent 9,712,331) and Maes (Application # 2008/0181208).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Poh disclosed a network policy provisioning architecture that is a parallel disclosure to the ’543 patent. Poh’s system included a “Master Policy Repository” (MPR) that obtains and stores operator and subscriber policies, which correspond to the claimed first and second service plan components. Poh’s “Policy Intelligence Rules System” (PIRS) processes these policies to create rules, which involves identifying and resolving policy conflicts by giving one policy “precedence” over another—a form of the claimed prioritization. The PIRS then passes the resulting rules to a “Policy Configuration and Provisioning Server” (PCPS), which generates and provides executable instructions to network enforcement points like a Policy and Charging Rules Function (PCRF) and a Policy and Charging Enforcement Point (PCEF). Petitioner contended that while Poh describes the high-level system, the Maes reference supplied the well-known details of policy rules. Maes explicitly taught that a policy rule is a “combination of a condition and actions to be performed if the condition is true,” directly corresponding to the claimed “traffic classification filter” and “enforcement action.”
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Poh with Maes to implement Poh’s policy objectives. Poh provided the overall system architecture for managing network policies, while Maes provided the conventional, known details for structuring the underlying rules that effectuate those policies. A POSITA would have recognized that Maes’s disclosure of rules comprising conditions (filters) and actions was a standard way to implement the policy enforcement described conceptually in Poh. Combining the references was merely the application of known rule implementation techniques to a known type of system to achieve a predictable result.
    • Expectation of Success: A POSITA would have been confident in the success of the combination because it involved implementing a software-based policy system using known techniques (rules with logical arrangements) for their intended purpose.

  • Additional Grounds: Petitioner asserted additional obviousness challenges in a companion petition (IPR2024-01041) against other claims of the ’543 patent. These grounds were based on the combination of Poh and Maes in further view of Burnett (Patent 9,691,082). Burnett was argued to teach a system for dynamically updating a subscriber's service plan via actionable notifications, addressing claims related to user interaction and service plan modification.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
  • Under §325(d): The primary references of Poh, Maes, and Burnett were not applied or cited by the examiner during the prosecution of the ’543 patent. Therefore, the petition raised new arguments not previously considered by the USPTO.
  • Under §314(a) (Fintiv Factors): Petitioner argued that a holistic view of the Fintiv factors weighed strongly in favor of institution. The co-pending district court litigation was in its early stages, with minimal investment from the parties, as key milestones like claim construction briefing and expert discovery were not scheduled to be completed until late 2024 and early 2025. The trial date (May 19, 2025) was set to occur after the statutory deadline for a Final Written Decision (FWD) in this IPR (approximately November 2025). Furthermore, Petitioner contended there would be minimal overlap in issues because the district court would likely permit only a small fraction of the asserted patent claims to proceed to trial, whereas the IPR would efficiently resolve the patentability of a much larger set of claims. Finally, Petitioner asserted the merits of the petition were particularly strong, which, under Board guidance, weighs against discretionary denial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 8-10, 15, 21, 28, 42-47, 87-89, 96, 98-99, and 120-121 of the ’543 patent as unpatentable.