EXHIBIT 2 

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Trials@uspto.gov Paper 9 

571-272-7822 Date: February 8, 2024 

UNITED STATES PATENT AND TRADEMARK OFFICE 

BEFORE THE PATENT TRIAL AND APPEAL BOARD 

SAMSUNG ELECTRONICS CO. LTD., 

Petitioner, 

v. 

HEADWATER RESEARCH LLC, 

Patent Owner. 

IPR2023-01226 

Patent 10,237,773 B2 

Before ROBERT J. WEINSCHENK, GARTH D. BAER, and 

STEPHEN E. BELISLE, Administrative Patent Judges. 

BAER, Administrative Patent Judge. 

DECISION 

Granting Institution of Inter Partes Review 

35 U.S.C. § 314

 

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I. INTRODUCTION 

A. Background 

Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition 

requesting an inter partes review of claims 1–20 (the “challenged claims”) 

of U.S. Patent No. 10,237,773 B2 (Ex. 1001, “the ’773 patent”). Paper 1, 1 

(“Pet.”). Headwater Research LLC (“Patent Owner”) filed a Preliminary 

Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner 

filed a Reply to Patent Owner’s Preliminary Response (Paper 7, “Pet. 

Reply”) and Patent Owner filed a Sur-Reply (Paper 8, “PO Sur-Reply”). 

Under 35 U.S.C. § 314, an inter partes review may not be instituted 

“unless . . . there is a reasonable likelihood that the petitioner would prevail 

with respect to at least 1 of the claims challenged in the petition.” Upon 

consideration of the Petition in view of the present record and for the reasons 

explained below, we determine that Petitioner has shown a reasonable 

likelihood of prevailing with respect to at least one of the challenged claims. 

Accordingly, we institute an inter partes review on all grounds set forth in 

the Petition. See 37 C.F.R. § 42.108(a). 

B. Related Proceedings 

The parties identify the following related matter: Headwater Research 

LLC v. Samsung Electronics Co., Ltd., 2:22-cv-00422 (E.D. Tex.). Pet. 88; 

Paper 4, 1–2. 

C. The ’773 Patent (Ex. 1001) 

The ’773 patent is directed to services for protecting network 

capacity. Ex. 1001, code (54). Figure 19 is reproduced below. 

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Figure 19 illustrates a “flow diagram for device assisted services (DAS) for 

protecting network capacity.” Id. at 2:34–35. The ’773 patent describes 

“monitoring a network service usage activity,” “classifying the network 

service usage activity,” and “associating the network service usage activity 

with a network service usage control policy . . . to facilitate differential 

network access control.” Id. at code (57). 

D. Illustrative Claim 

Claim 1 is the sole challenged independent claim. Claim 1 is 

reproduced below, with numbering added. 

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[1pre] A wireless end-user device, comprising: 

[1.1] a processor: 

[1.2] a Wireless Wide-Area Network (WWAN) modem, 

to communicate data for network service usage activities 

between the wireless end-user device and a WWAN; and 

[1.3] a non-transitory computer-readable storage medium 

storing instructions that, when provided to the processor, cause 

the processor to 

[1.4] receive respective requests from a plurality of 

applications on the device to access the WWAN for background 

network service usage activities associated with the respective 

applications, 

[1.5] based at least in part on a current WWAN network 

busy state, select a corresponding current service usage control 

policy for the background network service usage activities, 

[1.6] determine respective deferred time slots for each of 

the background network service usage activities based on the 

current service usage control policy, wherein at least one such 

service usage control policy specifies that during a time when the 

current WWAN network busy state indicates network 

congestion, a selected subset of the background network service 

usage activities are deferred until network congestion is no 

longer indicated, and 

[1.7] allow each of the background network service usage 

activities to access the WWAN during the respective deferred 

time slot for that background network service usage activity. 

Ex. 1001, 107:33–62. 

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E. Asserted Grounds of Unpatentability 

Petitioner asserts the following grounds of unpatentability. Pet. 1–2. 

Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 

1, 5–8, 10, 13, 14, 20 1031 Cole2

1–8, 10, 13–15, 20 103 Cole, D’Amore3

9, 11, 12, 16, 18, 19 103 Cole, Rao4

9, 11, 12, 16, 18, 19 103 Cole, D’Amore, Rao 

17 103 Cole, Aleksic5

17 103 Cole, D’Amore, Aleksic 

Petitioner submits a declaration from Patrick Traynor. Ex. 1003. 

II. DISCUSSION 

A. Discretion under 35 U.S.C. § 325(d) 

Patent Owner contends we should deny institution under 35 U.S.C. 

§ 325(d) because the same or substantially the same prior art or arguments 

previously were presented to the Office. Prelim. Resp. 15–28. Specifically, 

Patent Owner explains that of the two references asserted against claim 1, 

one—Cole—is nearly identical to a close relative that was cited in the 

patent’s prosecution history, and the other—D’Amore—is cumulative of that 

1

 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 

(2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became 

effective after the filing of the application that led to the challenged patent. 

Therefore, we apply the pre-AIA version of 35 U.S.C. § 103. 

2

 US 2008/0080458 A1, Pub. Apr. 3, 2008 (Ex. 1005, “Cole).

3

 US 2009/0119773 A1, Pub. May 7, 2009 (Ex. 1006, “D’Amore).

4

 US 2006/0039354 A1, Pub. Feb. 23, 2006 (Ex. 1007, “Rao”). 

5

 US 2008/0057894 Al, Pub. Mar. 6, 2008 (Ex. 1011, “Aleksic”). 

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same cited reference. See Prelim. Resp. 17–23. For the reasons given 

below, we are not persuaded to exercise our discretion to deny the Petition 

based on § 325(d). 

In evaluating arguments under § 325(d), we use a two-part 

framework: (1) whether the same or substantially the same art previously 

was presented to the Office or whether the same or substantially the same 

arguments previously were presented to the Office; and (2) if either 

condition of the first part of the framework is satisfied, whether the 

petitioner has demonstrated that the Office erred in a manner material to the 

patentability of challenged claims. Advanced Bionics, LLC v. MED-EL 

Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB 

Feb. 13, 2020) (precedential). 

Here, Petitioner relies on D’Amore, a reference that was not before 

the examiner, for teaching claim limitation [1.6], which requires “a selected 

subset of the background network service usage activities are deferred until 

network congestion is no longer indicated.” Pet. 7, 36–37. We agree with 

Petitioner that D’Amore is not cumulative of Cole. Pet. Reply 3–4. 

Specifically, D’Amore teaches that “different priority levels (e.g., high or 

low) are assigned to applications” and “access by the lower priority 

applications is restricted or deferred when the network is congested.” 

Pet. 40 (citing Ex. 1006 ¶ 60–61, 70–72); see Prelim. Resp. 22. Cole’s 

relevant disclosure, in contrast, is more generic. It teaches aborting “certain 

bandwidth activities” and “reschedul[ing] the aborted activity at a later time, 

presumably when the bandwidth load will be decreased or a better 

connection will be available.” Pet. 34 (citing Ex. 1005 ¶¶ 75, 80); see

Prelim. Resp. 22. As compared to Cole, D’Amore’s disclosure more clearly 

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teaches what is deferred in limitation [1.6] (“a selected subset of the 

background network service usage activities”) and the deferment’s extent 

(“until network congestion is no longer indicated”). Thus, Patent Owner has 

not shown that part one of the Advanced Bionics framework is met. 

In addition, Petitioner has sufficiently shown under part two of the 

Advanced Bionics framework that the Office materially erred when it 

allowed the challenged claims. As Advanced Bionics explains, the record 

developed by the Office informs what the petitioner must show to 

demonstrate the Office materially erred. Advanced Bionics, Paper 6 at 10. 

With respect to Cole and D’Amore, the record developed by the Office is 

sparse because Cole was one of about 1,500 references identified in 

information disclosure sheets and never discussed substantively during 

prosecution, and D’Amore was not before the Office. Pet. Reply 3; 

Ex. 1002, 281–443. In light of the sparse record, Petitioner’s showing on the 

merits is enough to demonstrate that the examiner erred. Specifically, to the 

extent the examiner substantively considered Cole and a reference 

cumulative of D’Amore as a combination and concluded that the 

combination does not teach claim 1, the examiner materially erred. Instead, 

for the reasons outlined below, the asserted combination teaches claim 1. 

Given the Petition’s analysis and the sparse record developed by the Office 

addressing the Petition’s asserted references, Petitioner has sufficiently 

shown under part two of the Advanced Bionics framework that the Office 

materially erred when it found the prior art does not teach claim 1. 

For these reasons, we decline to exercise our discretion to deny the 

Petition based on § 325(d). 

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B. Claim Construction 

In an inter partes review proceeding, we construe patent claims using 

the same standard used in a civil action under 35 U.S.C. § 282(b), including 

construing the claim in accordance with the ordinary and customary 

meaning of the claim as understood by one of ordinary skill in the art and the 

prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither 

party proposes an express construction for any claim terms. Pet. 3; see 

generally Prelim. Resp. 8. We agree that no claim terms require express 

construction for purposes of this Decision. 

C. Level of Ordinary Skill in the Art 

Petitioner contends a person of ordinary skill in the art at the time of 

the invention “would have had (1) at least a bachelor’s degree in computer 

science, electrical engineering, or a related field, and (2) at least two years of 

industry experience in services and application implementation in 

communication networks,” and that “[a]dditional graduate education could 

substitute for professional experience, and vice versa.” Pet. 3 (citing 

Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s definition 

at this stage of the proceeding. Prelim. Resp. 7. On this record, we agree 

with Petitioner’s definition. 

D. Description of Primary Prior Art References 

1. Cole (Ex. 1005) 

Cole is directed to a communication manager. Ex. 1005, code (54). 

Cole’s Figure 2 is reproduced below. 

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Figure 2 is a block diagram of a mobile device in a communication system. 

Id. ¶¶ 17, 187. Cole’s connection manager “manages the various 

communication interfaces” between mobile devices and remote networks 

“to determine which connections should be active at any given time.” 

Id. ¶ 36, see id. ¶ 15. Cole teaches that the connection manager can 

“schedule various events to effectively use available bandwidth without 

negatively impacting performance.” Id. ¶ 74. 

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2. D’Amore (Ex. 1006) 

D’Amore describes “management and arbitration of dedicated mobile 

communication resources for mobile applications.” Ex. 1006, code (57). 

D’Amore’s Figure 2 is reproduced below. 

Figure 2 is “a block diagram of a sample access terminal.” Id. ¶ 19. 

D’Amore’s policy management module can “approve or deny access to a 

mobile device resource and/or mobile network resource for a mobile 

application” “based at least in part on a priority level or a privilege code 

associated with the mobile application.” Id. ¶ 51. 

E. Obviousness Analysis 

In its first two obviousness grounds, Petitioner contends that claims 

1–8, 10, 13–15, and 20 would have been obvious over Cole either alone, or 

in combination with D’Amore. Pet. 7–61. Specifically, according to 

Petitioner, Cole teaches claim 1’s processor, modem, and memory. See id.

at 18–25. In addition, Petitioner explains, Cole’s connection manger 

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includes claim 1’s network-service deferral process for a subset of 

background processes requesting network services. See id. at 25–39. 

Petitioner alternatively relies on D’Amore for disclosing “the ‘selected 

subset’ feature of claim 1 (‘a selected subset of the background network 

service usage activities’) as additional support to Cole’s disclosure of this 

feature.” Pet. 7. Petitioner adds Rao or Aleksic to address additional 

limitations in dependent claims 9, 11, 12, 16, 18, and 19. Id. at 69–84. 

Patent Owner raises several arguments to contest Petitioner’s 

obviousness challenge. We address those arguments below. 

1. Elements [1.5] and [1.6] 

Elements [1.5] and [1.6] recite “based at least in part on a current 

WWAN network busy state, select[ing] a corresponding current service 

usage control policy for the background network service usage activities,” 

and “determin[ing] respective deferred time slots for each of the background 

network service usage activities based on the current service usage control 

policy.” Petitioner asserts that Cole teaches the claimed policy that is 

dependent on a network busy state because Cole teaches that “[w]hen the 

monitored load exceeds a predetermined threshold . . . the connection 

manager 260 may take one of several actions to manage the load.” Ex. 1005 

¶ 75; see Pet. 30. According to Petitioner, Cole teaches selecting a policy in 

such times because Cole includes a “postponement policy” under which “the 

connection manager . . . may postpone the actions automatically.” Pet. 30 

(quoting Ex. 1005 ¶ 85). Petitioner goes on to explain that Cole teaches 

determining deferred time slots because “Cole further discloses that “[t]he 

connection manager 260 reschedules the aborted activity at a later time, 

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presumably when the bandwidth load will be decreased or a better 

connection will be available.’” Id. at 34 (quoting Ex. 1005 ¶ 80). 

Patent Owner contends that Petitioner’s obviousness challenge fails 

because it improperly conflates selecting a policy with “actions taken 

pursuant to the policy.” Prelim. Resp. 10. According to Patent Owner, 

“[t]he Petition has, at most, set forth evidence that some sort of policy exists, 

but provides no evidence that any such policy is selected on the basis of a 

network busy state.” Id. at 11. 

On the current record, we disagree with Patent Owner’s argument. At 

the outset, we disagree with Patent Owner’s argument that Cole’s 

postponement policy is selected independent of a network busy state (see

Prelim Resp. 11) because, as Petitioner explains, Cole teaches that the 

connection manager may take one of several load-management actions 

“[w]hen the monitored load exceeds a predetermined threshold.” Ex. 1005 

¶ 75; see Pet. 30. Further, Cole teaches selecting a policy because it teaches 

‘take[ing] one of several actions to manage the load,” and “determin[ing] if 

certain bandwidth activities should be aborted to preserve bandwidth for 

other applications.” Ex. 1005 ¶¶ 75, 80. To the extent Patent Owner is 

suggesting that a processor “selecting” a policy requires more than such 

actions, Patent Owner points to nothing in claim 1’s language or the 

specification that suggests such a narrow construction. See Prelim. Resp. 

10–11; see also Ex. 1001 at 12:20–23 (explaining that “a service usage 

control policy is used for assisting in network access control of network 

service usage activities”). Likewise, to the extent Patent Owner is arguing 

that the claim requires selecting a policy from multiple possible networkbusy policies, the claim is not so limited. Although the disputed claim 

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language recites distinct policy-selecting and time-slot determining steps, 

nothing in claim’s plain language otherwise limits the claimed policy 

selection such that it would exclude Cole’s determination to implement a 

postponement policy when the network load exceeds a threshold. 

Next, Patent Owner argues that Petitioner’s obviousness challenge is 

deficient because Petitioner fails to show how Cole’s determination of 

deferred time slots is based on the current service usage control policy, as 

claim 1 requires. Prelim Resp. 12–15. According to Patent Owner, “[t]he 

Petition does not even allege, much less show, that ‘respective deferred time 

slots’ are ‘based on’ what the Petition alleges to be the claimed ‘service 

usage control policy.’” Id. at 14. We disagree with Patent Owner’s 

argument. Cole’s rescheduling is based on its postponement policy because 

Cole’s policy selection (i.e., “determin[ing] if certain bandwidth activities 

should be aborted,” Ex. 1005 ¶ 80) is a necessary predicate to determining 

deferred time slots. See Ex. 1005 ¶ 75 (explaining that “[w]hen the 

monitored load exceeds a predetermined threshold . . . the connection 

manager 260 may take one of several actions”). That is, the rescheduling 

action always follows the policy selection based on network load. On this 

record, such a relationship is enough to satisfy claim 1’s “based on” 

language. 

Given Petitioner’s analysis as outlined above, on this record we agree 

with Petitioner that Cole teaches “select[ing] a corresponding current service 

usage control policy for the background network service usage activities,” 

and “determin[ing] respective deferred time slots for each of the background 

network service usage activities based on the current service usage control 

policy” as claim 1 requires. 

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2. Summary 

Other than as outlined above, Patent Owner does not additionally 

challenge Petitioner’s obviousness contentions. We have reviewed 

Petitioner’s arguments and the underlying evidence cited in support and are 

persuaded that, at this stage, Petitioner sufficiently demonstrates a 

reasonable likelihood of succeeding in its challenges to claims 1–20. 

III. CONCLUSION 

After considering the evidence and arguments presented in the current 

record, we determine that Petitioner has demonstrated a reasonable 

likelihood of success in proving that at least one of the challenged claims of 

the ’773 patent is unpatentable. We therefore institute trial on all challenged 

claims and grounds raised in the Petition. At this stage of the proceeding, 

we have not made a final determination as to the patentability of any 

challenged claim or as to the construction of any claim term. Any final 

determination will be based on the record developed during trial. 

IV. ORDER 

In consideration of the foregoing, it is hereby: 

ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes

review of claims 1–20 of the ’773 patent is instituted with respect to all 

grounds set forth in the Petition; and 

FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 

37 C.F.R. § 42.4(b), inter partes review of the ’773 patent shall commence 

on the entry date of this Order, and notice is hereby given of the institution 

of a trial. 

 

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For PETITIONER: 

W. Karl Renner 

Jeremy J. Monaldo 

Usman A. Khan 

FISH & RICHARDSON P.C. 

axf-ptab@fr.com 

jjm@fr.com 

khan@fr.com 

For PATENT OWNER: 

Reza Mirzaie 

Dale Chang 

Amy E. Hayden 

James A. Milkey 

Neil A. Rubin 

Philip X. Wang 

RUSS AUGUST & KABAT 

rmirzaie@raklaw.com 

dchang@raklaw.com 

ahayden@raklaw.com 

jmilkey@raklaw.com 

nrubin@raklaw.com 

pwang@raklaw.com 

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