Samsung Electronics Co Ltd v. Headwater Research LLC

1. Case Identification

• Case #: IPR2025-00482
• Patent #: 11,405,429
• Filed: January 28, 2025
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Headwater Research LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Security Techniques for Device Assisted Services
• Brief Description: The ’429 patent relates to security methods for wireless end-user devices. The technology involves using a secure execution environment on the device to receive, store, and enforce service policy settings from a remote network service controller, thereby managing the device's use of services on a wireless cellular network.

3. Grounds for Unpatentability

Ground 1A: Claims 1-3 and 8-12 are obvious over Schmidt in view of De Beer

• Prior Art Relied Upon: Schmidt (Application # 2009/0077643) and De Beer (Application # 2005/0101323).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schmidt taught a mobile device with a virtual SIM (vSIM) architecture operating within a secure Mobile Trusted Platform (MTP). This MTP contains multiple separate Trusted Subsystems (TSSs), including a TSS for the device manufacturer (TSS-DM) that controls communications and a TSS for the mobile network operator (TSS-MNO) that manages subscriber authentication. De Beer taught a conventional mobile phone that uses lookup tables stored on a SIM card (e.g., routing tables, preferred/forbidden network lists) to manage network selection and least-cost call routing. De Beer’s device retrieves updated tables from a remote "control centre" via SMS when roaming or when existing tables expire. Petitioner contended that the combination of Schmidt and De Beer (the "SDD" device) rendered the claims obvious. Specifically, Schmidt’s TSS-DM combined with a modem forms the claimed "secure modem subsystem," and Schmidt’s TSS-MNO forms the "secure execution environment." De Beer’s lookup tables constitute the "service policy settings," and its "control centre" is the claimed "network service controller."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine De Beer’s teachings on conventional SIM functions (like network selection and routing) with Schmidt’s vSIM architecture. Petitioner asserted this was a simple, logical step to create a complete and functional vSIM system that fully replaces a physical SIM, which was Schmidt’s stated goal.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying known network management techniques from De Beer to the predictable software architecture of Schmidt to achieve the known result of a fully functional mobile communication device.

Ground 1B: Claims 4-7 are obvious over Schmidt, De Beer, and Bittmann

• Prior Art Relied Upon: Schmidt (Application # 2009/0077643), De Beer (Application # 2005/0101323), and Bittmann (Application # 2004/0148237).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Schmidt/De Beer combination by adding the teachings of Bittmann. Bittmann disclosed a monitoring unit coupled to a device’s modem that monitors all data activity (e.g., web surfing, calls, SMS), enforces service plan limits, and reports usage data to a server. Petitioner argued that Bittmann’s monitoring unit supplied the claimed "modem agent" and "service measurement point" for use of the service. In the combined system, this modem agent would be part of the secure modem subsystem, where it could efficiently monitor all traffic and communicate a "first report" of service use to the network controller via the first secure control channel. A subsequent report would be sent via a second, temporally distinct control channel.
  • Motivation to Combine: While De Beer mentioned logging call data for billing verification, it did not specify the mechanism for doing so. A POSITA would be motivated to incorporate Bittmann's well-understood monitoring technology into the SDD device to implement a robust system for tracking service usage and ensuring compliance with a service plan.
  • Expectation of Success: Success was expected because it involved integrating a known monitoring component (from Bittmann) into the base combination to perform its conventional function—monitoring and reporting data usage.

Ground 1C: Claims 10-12 are obvious over Schmidt, De Beer, and Smith

• Prior Art Relied Upon: Schmidt (Application # 2009/0077643), De Beer (Application # 2005/0101323), and Smith (a 2005 publication titled "Virtual Machines: Versatile Platforms for Systems and Processes").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground modified the base Schmidt/De Beer combination by incorporating Smith’s teachings on virtual machines (VMs). Smith taught that VMs provide a secure way to partition software systems, allowing different operating systems to run concurrently and in isolation on the same hardware. Petitioner argued that a POSITA would implement Schmidt's trusted subsystems (the secure execution environment) in one VM and run conventional user applications in a separate VM. This directly mapped to claim limitations requiring the secure execution environment to be implemented as a "software partition," a "hardware partition" (by virtualizing storage), or in a "virtual machine."
  • Motivation to Combine: Schmidt’s architecture described both trusted and non-trusted environments but did not detail how to securely isolate them while they operate simultaneously. A POSITA would combine Smith’s teachings to enhance the security and robustness of the SDD device, preventing malfunctions in user applications from compromising the secure vSIM functionality.
  • Expectation of Success: A POSITA would expect success because using VMs to isolate critical system functions from user-level applications was a well-established and predictable method for improving system stability and security.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Under 35 U.S.C. §325(d), Petitioner contended that the asserted prior art and arguments were never before the examiner, as prosecution concluded without any art-based rejections, constituting a material error by the Office.
• Under 35 U.S.C. §314(a), Petitioner argued the Fintiv factors weighed against denial, highlighting that the co-pending district court litigation was in its very early stages and that Petitioner had stipulated not to pursue the same IPR grounds in that litigation, promoting efficiency and avoiding duplicative efforts.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of Patent 11,405,429 as unpatentable.