Samsung Electronics Co Ltd v. Headwater Research LLC

1. Case Identification

• Case #: IPR2025-00481
• Patent #: 11,096,055
• Filed: February 26, 2025
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Headwater Research LLC
• Challenged Claims: 1-13

2. Patent Overview

• Title: AUTOMATED DEVICE PROVISIONING AND ACTIVATION
• Brief Description: The ’055 patent is directed to a services policy communication system for wireless end-user devices. The system comprises a modem, secure memory for storing at least two service profiles with associated network service policies, a connection manager to select a network connection, and an adaptive service policy control agent to enforce policies from the selected profile.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jheng, Chiu, and Rao - Claims 1-2, 6-7, 9-10, and 12 are obvious over Jheng in view of Chiu, further in view of Rao.

• Prior Art Relied Upon: Jheng (Application # 2009/0239584), Chiu (WO 2004/031488), and Rao (Application # 2006/0039354).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jheng discloses a dual-SIM wireless device capable of accessing two different core networks to reduce roaming charges, providing the foundational multi-profile environment. Chiu was argued to add a “smart connection management” system that uses stored connection profiles (a "first service profile" with a "first set of network service policies") and a "connection manager" to automatically select the best network connection based on criteria within the profiles. Rao was asserted to supplement this combination by teaching an "adaptive service policy control agent" (its remote access client) that enforces policies on specific application data traffic, and by explicitly disclosing a WWAN modem for connecting to wireless networks. Together, these references were alleged to teach every limitation of the challenged claims.
  • Motivation to Combine: A POSITA would combine Jheng and Chiu to improve the user experience by automating network selection when traveling, replacing Jheng's manual process with Chiu's profile-based system. A POSITA would further incorporate Rao’s teachings to gain granular control over application-specific data usage (e.g., blocking data-intensive applications while roaming to avoid high costs), a known objective for mobile device users and providers.
  • Expectation of Success: The combination was asserted to be predictable because it involved integrating known technologies for their intended purposes. Implementing Chiu's profiles on Jheng's USIMs was straightforward, as USIMs were known to store user preferences. Adding Rao's software-based policy agent to this system was likewise a routine implementation.

Ground 2: Obviousness over Jheng, Chiu, Rao, and Collins - Claims 3-4 are obvious over the combination of Jheng, Chiu, and Rao, further in view of Collins.

• Prior Art Relied Upon: Jheng (Application # 2009/0239584), Chiu (WO 2004/031488), Rao (Application # 2006/0039354), and Collins (Application # 2006/0206941).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the base combination of Jheng, Chiu, and Rao provides a multi-profile device with policy enforcement. Collins was asserted to add the limitations of claims 3 and 4 by teaching a "service monitor agent"—its Terminal Information Collector (TIC)—that collects detailed network service usage for different networks and service plans. Collins further disclosed synchronizing this local service usage count with a network-based service count at a Central Information Server (CIS) for billing and fraud detection.
  • Motivation to Combine: A POSITA would integrate Collins's monitoring and synchronization techniques into the primary system to enhance security and billing accuracy. Specifically, the combination would allow a service provider to detect fraudulent use (e.g., SIM cloning) and ensure accurate billing, addressing known problems in wireless network management.
  • Expectation of Success: Success would be expected because Collins explicitly taught that its TIC application could reside on a secure storage device like a SIM/USIM and could be used in dual-SIM terminals, making its integration into the Jheng-Chiu-Rao device architecture predictable and foreseeable.

Ground 3: Obviousness over Jheng, Chiu, Rao, and Camilleri - Claim 5 is obvious over the combination of Jheng, Chiu, and Rao, further in view of Camilleri.

• Prior Art Relied Upon: Jheng (Application # 2009/0239584), Chiu (WO 2004/031488), Rao (Application # 2006/0039354), and Camilleri (Application # 2009/0149220).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted the base Jheng-Chiu-Rao combination discloses a device with two service plans associated with central providers operating a WWAN access network. Camilleri was argued to teach associating one of these service plans with a "virtual network operator" by disclosing a system for using Mobile Virtual Network Operators (MVNOs). Camilleri’s system uses different SIM sub-modules (e.g., 'Local SIM' and 'Roaming SIM') provided by an MVNO.
  • Motivation to Combine: A POSITA would have been motivated to make the base device compatible with MVNOs, as taught by Camilleri, to ensure the device remained competitive. MVNOs offered lower pricing and greater flexibility, and supporting them would benefit end-users while also creating revenue opportunities for the core network operators hosting the MVNOs.
  • Expectation of Success: This modification would have been predictable, as MVNOs were well-established in the industry before the patent's priority date. Camilleri’s technology was designed to be implemented within a SIM, aligning perfectly with the USIM-based architecture of the primary combination.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combining the Jheng-Chiu-Rao system with Bajko (for claim 8), Liu (for claim 11), and Brown (for claim 13), relying on similar design choice and problem-solving motivation theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is unwarranted because the asserted prior art and arguments were not previously before the USPTO, noting that the examiner issued no prior art rejections during prosecution.
• Petitioner further argued that discretionary denial under Fintiv is inappropriate because the petition was filed diligently, the co-pending litigation is in its early stages, the district court's trial date is speculative, and Petitioner has stipulated not to pursue the same IPR grounds in the litigation.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-13 of the ’055 patent as unpatentable.