Samsung Electronics America Inc v. Koninklijke KPN NV

1. Case Identification

• Case #: IPR2025-00503
• Patent #: 8660560
• Filed: January 17, 2025
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Koninklijke KPN N.V.
• Challenged Claims: 1-17

2. Patent Overview

• Title: System and Method for Updating a Neighbour Cell List
• Brief Description: The 8660560 patent discloses systems and methods for automatically updating a base station's Neighbor Cell List (NCL). The system detects user terminals preparing for a handover, selects a subset of those terminals to gather information about unknown neighboring cells, and uses that information to update the NCL.

3. Grounds for Unpatentability

Ground 1: Obviousness over Amirijoo and TR-32.816 - Claims 1-6 and 9-17 are obvious over Amirijoo in view of TR-32.816.

• Prior Art Relied Upon: Amirijoo (Application # 2009/0191862) and TR-32.816 (3GPP Technical Report 32.816).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Amirijoo teaches a system for automatically updating "neighbor relation lists" (NRLs) in a telecommunications architecture with multiple wireless access networks. Amirijoo’s system detects user terminals for handover, selects terminals that have identified an unknown neighbor cell (based on its local ID), requests the Cell Global Identity (CGI) from those selected terminals, receives the CGI, and updates the NRL. To the extent the patent owner contends Amirijoo’s NRL is not a “neighbour cell list” (NCL), Petitioner asserted that TR-32.816 explicitly discloses using NCLs for handover management, making the combination obvious.
  • Motivation to Combine: A POSITA would combine the references because Amirijoo expressly cites TR-32.816 as part of a vision for self-optimizing and self-configuring networks. A POSITA would also be motivated to substitute the conventional NCLs of TR-32.816 for Amirijoo’s NRLs to ensure backward compatibility with existing 2G and 3G networks, a crucial feature for the commercial success of a new 4G system like that in Amirijoo. This combination represented a simple substitution of one known element for another to obtain predictable results.
  • Expectation of Success: A POSITA would have a high expectation of success because Amirijoo’s explicit citation of TR-32.816 indicates the teachings are combinable. Furthermore, the NCLs described in TR-32.816 were already successfully implemented in existing 2G/3G networks, making their integration into Amirijoo’s system well within the skill of an ordinary artisan.

Ground 2: Obviousness over Amirijoo, TR-32.816, and Kazmi - Claims 1-17 are obvious over Amirijoo and TR-32.816 in further view of Kazmi.

• Prior Art Relied Upon: Amirijoo (Application # 2009/0191862), TR-32.816 (3GPP Technical Report 32.816), and Kazmi (Application # 2009/0176490).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reinforces Ground 1 and provides an alternative basis for the "selecting a part of the user terminals" limitation, which was the purported improvement of the ’560 patent. Petitioner argued that Kazmi explicitly teaches selecting a user terminal from a set of terminals based on various criteria to optimize the process of obtaining an unknown cell's global identifier. These criteria include reported cell quality, handover failure statistics, user terminal speed, and propagation delay. Kazmi also teaches using location information and handover thresholds as selection parameters, which Petitioner argued renders claims 7 and 8 obvious.
  • Motivation to Combine: A POSITA would combine Kazmi’s teachings with the primary combination to improve the efficiency of the NCL optimization process taught by Amirijoo. Kazmi’s selection criteria are designed to identify user terminals with the highest probability of quickly and successfully obtaining the unknown cell's identifier. This would minimize data interruption during measurement gaps and reduce unnecessary network traffic, directly addressing known problems in the field.
  • Expectation of Success: A POSITA would reasonably expect success in this combination. Both Amirijoo and Kazmi are Ericsson patents directed to similar cellular technologies and have overlapping disclosures. Kazmi provides sufficient implementation detail for its selection criteria, making it straightforward to integrate into Amirijoo’s framework.
• Additional Grounds: Petitioner asserted that claims 2-5, 10, 11, and 15 are obvious over the combination of Amirijoo, TR-32.816, and Kazmi in further view of Han (Application # 2009/0270079), which provides additional support for transferring cell information via a new serving base station. Petitioner also asserted that claim 7 is alternatively obvious over the primary combination in view of Mach (Application # 2010/0124934), which teaches using GPS location information for handover processes.

4. Key Claim Construction Positions

• Petitioner argued that the term "updating means configured for updating at least one of the first neighbour cell list and the second neighbour cell list using the received cell information" from claim 1 is a means-plus-function term under 35 U.S.C. §112(f).
  • Proposed Function: "updating at least one of the first neighbour cell list and the second neighbour cell list using the received cell information."
  • Corresponding Structure: "updater 14" as disclosed in Figure 2 and columns 9:26-28 and 9:58-59 of the ’560 patent, and its equivalents. This construction is central to mapping the updating functionality taught in the prior art to the claimed "means."

5. Arguments Regarding Discretionary Denial

• Fintiv: Petitioner argued that discretionary denial under Fintiv is unwarranted because there is no parallel district court litigation concerning the validity of the ’560 patent between Petitioner and the Patent Owner.
• §314(a) (Follow-on Petitions): Petitioner contended that this is its first IPR against the ’560 patent and that it has no "significant relationship" with Ericsson, the petitioner in a prior, settled IPR. Because the prior proceeding was terminated after institution but before a final written decision (FWD), Petitioner argued that instituting this IPR would not be an inefficient use of Board resources.
• §325(d) (Same Art or Arguments): Petitioner asserted that none of the prior art references relied upon in this petition were considered by the examiner during prosecution. Further, it argued that art from a prior IPR that is terminated pre-FWD is not considered "presented to the Office" for the purposes of a §325(d) analysis.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-17 of Patent 8,660,560 as unpatentable.