Samsung Electronics America Inc v. Koninklijke KPN NV

1. Case Identification

• Case #: IPR2025-00534
• Patent #: 9,462,544
• Filed: January 25, 2025
• Petitioner(s): Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.
• Patent Owner(s): Koninklijke KPN N.V.
• Challenged Claims: 1

2. Patent Overview

• Title: Controlling Energy Consumption in Telecommunications Networks
• Brief Description: The ’544 patent discloses methods for improving energy conservation in telecommunications networks by allowing the network to selectively deactivate base stations and reactivate them based on measurements performed by mobile terminals. The terminals measure "presence signals" from inactive base stations and report the results to the network, which then determines if reactivation is necessary.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Frenger in view of Fischer and further in view of Hurst.

• Prior Art Relied Upon: Frenger (Application # 2012/0094661), Fischer (Application # 2009/0247150), and Hurst (Application # 2006/0116120).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Frenger disclosed the foundational system of a wireless network with active and inactive base stations, where a terminal measures presence signals from an inactive station and reports the measurements. To the extent Frenger lacked detail on measurement control, Petitioner asserted Fischer supplied it by teaching a terminal that receives specific measurement and reporting parameters from an active base station, which trigger the terminal to obtain information. Finally, Petitioner argued that Hurst disclosed the "reporting identifier" limitations added during prosecution. Hurst taught including a Discontinuous Transmission (DTX) flag in a measurement report to indicate whether the base station was in a power-saving, intermittent transmission mode, which is an indication that the measurement was not part of a normal handover.
  • Motivation to Combine: A POSITA would combine Fischer with Frenger to improve the accuracy and efficiency of Frenger's measurement system by providing explicit configuration parameters to the terminal. A POSITA would further incorporate Hurst's DTX flag because Frenger and Fischer's systems both use DTX/DRX modes; the flag would ensure the network correctly interprets signal strength measurements that are affected by whether the inactive station is transmitting intermittently or continuously. This improves the reliability of the decision to activate the inactive base station.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because combining the references involved predictable software and firmware modifications well within the skill of a person of ordinary skill in the art (POSITA).

Ground 2: Claim 1 is obvious over Nylander in view of Kim and further in view of Lin.

• Prior Art Relied Upon: Nylander (Application # 2012/0106423), Kim (WO 2008/084938), and Lin (Patent 6,782,059).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Nylander disclosed a network with active macro base stations and inactive "sleep mode" base stations that transmit reference signals less frequently to save energy. To enhance this system, Petitioner argued Kim taught a method where a terminal receives measurement and reporting parameters and is triggered to measure and report on neighboring cells, including those in DRX/DTX mode. Petitioner contended that Lin supplied the "reporting identifier" by teaching a method to detect DTX using signal metrics (e.g., energy per bit to noise power ratio) generated from a received signal. These metrics serve as identifiers indicating the inactive station was transmitting during a probing period, and their use for DTX detection implies the measurement was not part of a handover, which requires a switch to continuous transmission mode.
  • Motivation to Combine: A POSITA would combine Kim's detailed measurement and reporting process with Nylander's energy-saving network to facilitate more efficient and accurate decisions about when to wake a sleeping base station. A POSITA would further incorporate Lin’s DTX detection method to ensure the terminal can accurately synchronize its measurements with the intermittent transmissions from Nylander’s sleeping base stations. This combination would improve overall system reliability and energy efficiency.
  • Expectation of Success: Petitioner argued that success was reasonably expected, as the proposed modifications involved implementing known measurement, reporting, and signal processing techniques via software, which would yield predictable results in the combined system.

4. Arguments Regarding Discretionary Denial

• Fintiv: Petitioner argued against discretionary denial under Fintiv, stating that while a related declaratory judgment action for non-infringement exists, there is no parallel litigation challenging the validity of the ’544 patent.
• §314(a): Petitioner asserted that denial under §314(a) is inappropriate because there are no previous or current inter partes review (IPR) proceedings involving the ’544 patent. An IPR against a parent patent was noted but distinguished as involving different claims and limitations.
• §325(d): Petitioner contended that the same or substantially the same arguments were not previously presented to the Office. Although Frenger was considered during prosecution, it was only in the context of anticipation under §102. The Examiner did not have the benefit of considering Frenger in an obviousness combination with Fischer and Hurst. The remaining references (Nylander, Kim, and Lin) were not before the Examiner and address the specific "reporting identifier" limitations that were key to allowance.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claim 1 of the ’544 patent as unpatentable.