Samsung Electronics Co Ltd v. Koninklijke KPN NV

1. Case Identification

• Case #: IPR2025-00512
• Patent #: 8,881,235
• Filed: January 18, 2025
• Petitioner(s): Samsung Electronics America, Inc.; Samsung Electronics Co., Ltd.
• Patent Owner(s): Koninklijke KPN N.V.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Service-Based Authentication
• Brief Description: The ’235 patent discloses a method for service-based authentication of a terminal on a network. The core concept involves the terminal identifying the specific communication channel (e.g., WLAN, Bluetooth) on which it receives an authentication request and using an associated "service code" to calculate and modify the authentication response sent back to the network.

3. Grounds for Unpatentability

Ground 1: Obviousness over TS-33.402, optionally in view of Arkko - Claims 1, 3-7, and 11-13 are obvious over TS-33.402 alone or in view of Arkko.

• Prior Art Relied Upon: TS-33.402 (3GPP Technical Specification 33.402 v. 8.1.1) and Arkko (RFC 5448 Draft v. 9).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that TS-33.402, a 3GPP standard for authenticating mobile devices on non-3GPP networks, disclosed all limitations of the challenged claims. Specifically, Petitioner asserted that the "access network identity" described in TS-33.402 is the same as the claimed "service code," as it is an identifier corresponding to the communication channel used for authentication. TS-33.402 was alleged to teach a terminal identifying this "access network identity" and using it to derive new encryption keys (CK', IK') to generate a new Message Authentication Code (MAC) for the authentication response. This process, Petitioner contended, met the claim limitations of determining a service code and calculating the response based on it. Arkko was presented as providing further detail on the "access network identity," confirming it is a "network name" constructed based on local observations of the access technology being used.
  • Motivation to Combine: A POSITA would combine TS-33.402 with Arkko to enhance security. Arkko explained that using the network name to derive encryption keys limits the effects of compromised network nodes. Petitioner noted that the 3GPP working group itself considered it obvious to combine the references, as it incorporated Arkko's teachings into the next version of the TS-33.402 standard just one day after the ’235 patent’s earliest filing date.
  • Expectation of Success: A POSITA would have had a high expectation of success because Arkko provided sufficient implementation detail, and the format for the "network name" had already been standardized in a separate 3GPP specification referenced by Arkko.

Ground 2: Obviousness over TS-33.402 (with or without Arkko) in view of Aldera - Claims 2, 8-10, and 13 are obvious over the combination.

• Prior Art Relied Upon: TS-33.402, Arkko, and Aldera (Patent 8,413,209).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while TS-33.402 and Arkko taught the authentication method, they did not expressly disclose the specific hardware components recited in claims 2, 8, 9, and 10, such as the "service interface module" and "identity module." Aldera was alleged to supply these missing elements. Aldera described a "platform client" resident on a mobile device that functions as a "service interface module" by receiving signals from various communication interfaces. Aldera also disclosed this module communicating securely with a SIM card, which functions as the claimed "identity module," via a "policy enforcement module" that could perform encryption.
  • Motivation to Combine: A POSITA would be motivated to implement the well-known authentication method of TS-33.402 using the hardware architecture of Aldera. Aldera itself stated its system was desirable for "implementing and ensuring the enforcement of desired security policies on mobile communications devices." Combining the standard authentication protocol with Aldera's security-focused hardware was presented as a straightforward way to achieve a more secure and robust system.
  • Expectation of Success: Success would be expected because both Aldera and TS-33.402 operated in the same field of mobile device security. Aldera provided significant detail on its hardware implementation, making it a predictable and straightforward task for a POSITA to integrate the software-based methods of TS-33.402.

Ground 3: Obviousness over Naslund - Claims 1-7 and 13 are obvious over Naslund.

• Prior Art Relied Upon: Naslund (WO 2004/032557).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Naslund taught all elements of claims 1-7. Naslund disclosed a terminal that determines which communication interface (e.g., normal network, Bluetooth) an authentication request was received on. Based on this determination, the terminal selected a specific "security-enhancing sub application" to process the request. Petitioner contended that the identifier or label for each sub-application (e.g., code "01" for Normal, "02" for Bluetooth, as shown in Naslund's Table 1) constituted the claimed "service code." The authentication response was therefore dependent on this service code because the choice of the processing sub-application dictated how the final response was generated. Petitioner emphasized that the examiner materially erred during prosecution by overlooking Naslund’s disclosure of these sub-application codes.

4. Key Claim Construction Positions

• Petitioner argued that the key claim terms, including "service code," "service interface module," and "identity module," should be given their plain and ordinary meaning.
• For "service code," Petitioner noted that a district court had previously construed the term as a "code that identifies a communication channel." Petitioner submitted that the prior art rendered the claims obvious under any reasonable interpretation, including the court's construction.
• For "service interface module," Petitioner argued it was not a means-plus-function term because claim 8 provides sufficient structure (a receiver, channel identifier, etc.), and this structure should inform the interpretation of the term in other claims.

5. Arguments Regarding Discretionary Denial

• Fintiv: Petitioner argued discretionary denial under Fintiv was inappropriate because there was no parallel litigation concerning the validity of the ’235 patent between the parties.
• §314(a): Denial was argued to be improper as there were no previous or current IPRs involving the ’235 patent.
• §325(d): Petitioner contended that denial under §325(d) was unwarranted because the petition raised new arguments and prior art. Neither TS-33.402 nor Aldera were cited by the examiner. While Naslund was considered, Petitioner argued the examiner materially erred by failing to appreciate its disclosure of service codes associated with different communication channels, making Petitioner's arguments substantively different from those considered during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 of the ’235 patent as unpatentable.