Airspan Networks Inc v. Barkan Wireless IP Holdings LP

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Airspan Networks Inc. (Delaware)
  • Defendant: Barkan Wireless IP Holdings, L.P. (Delaware)
  • Plaintiff’s Counsel: Dorsey & Whitney LLP
• Case Identification: 1:20-cv-00081, D. Del., 01/20/2020
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware Limited Partnership that resides in the district.
• Core Dispute: Plaintiff Airspan seeks a declaratory judgment of non-infringement, invalidity, and unenforceability of three patents owned by Defendant Barkan, which Barkan has asserted against Airspan's customer, Sprint, for its use of Airspan's wireless networking products.
• Technical Context: The patents relate to systems for expanding cellular network coverage by using privately-owned "add-on" base stations that connect to a packet-based network like the internet.
• Key Procedural History: The complaint details a complex history, including a prior lawsuit by Barkan against Sprint in the Eastern District of Texas. The patents-in-suit have been subject to numerous Inter Partes Review (IPR) proceedings at the USPTO; one IPR resulted in a Final Written Decision finding numerous claims of the ’284 patent unpatentable. The complaint also alleges that the ’312 and ’638 patents are unenforceable due to inequitable conduct during prosecution for allegedly failing to disclose material prior art.

Case Timeline

Date	Event
1999-08-12	Earliest Priority Date for ’284, ’312, and ’638 Patents
2011-09-06	U.S. Patent No. 8,014,284 Issues
2013-08-15	USPTO issues non-final rejection in prosecution of application leading to ’638 Patent
2013-09-05	Inventor allegedly pays issue fee for application leading to ’312 Patent
2013-10-15	U.S. Patent No. 8,559,312 Issues
2016-07-12	U.S. Patent No. 9,392,638 Issues
2018-12-07	USPTO institutes IPR (IPR2018-01186) on claims of the ’284 Patent
2019-10-14	Barkan files lawsuit against Sprint and CommScope in E.D. Texas
2019-12-04	USPTO issues Final Written Decision in IPR for ’284 Patent, finding multiple claims unpatentable
2020-01-20	Complaint for Declaratory Judgment filed by Airspan

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,014,284 - Cellular Network System and Method, issued Sep. 6, 2011

The Invention Explained

• Problem Addressed: The patent describes the installation of traditional cellular networks as expensive, time-consuming, and difficult, particularly in populated urban areas where public objection to high-power radio frequency (RF) equipment is an impediment (’284 Patent, col. 1:25-42).
• The Patented Solution: The invention proposes a system to expand cellular networks by using "add-on" base stations, which can be owned and operated by the public. These smaller, lower-power base stations connect to existing infrastructure, like the Internet, to create new wireless cells and are managed by a central "coordination center" that provides information for making calls without necessarily handling the call switching itself (’284 Patent, col. 2:10-30, col. 6:50-58).
• Technical Importance: This approach allows for the densification of a cellular network at a lower cost and with lower-power transmitters, addressing both coverage demands and public concerns about RF radiation (’284 Patent, col. 2:56-65).

Key Claims at a Glance

• The complaint states Barkan asserted claim 15 of the ’284 patent in the underlying litigation (Compl. ¶31). Claim 15 depends from claim 14, which in turn depends from independent claim 2. However, the complaint also notes that an IPR proceeding resulted in a Final Written Decision finding claims 2 and 14 unpatentable, which raises a significant question as to the continued validity of dependent claim 15 (Compl. ¶11).
• The essential elements of the asserted claim tree (Claims 2, 14, and 15) are:
  • A communication system comprising a coordination center connected to a packet-based data network.
  • Two or more gateways functionally associated with the network.
  • Each gateway comprising a transceiver for an RF link with a mobile device, a second interface to the data network, and a controller adapted to regulate data flow based on information received from the coordination center.
  • Each gateway further comprises a unique identity (added by claim 14).
  • The unique identity contains an encryption key, and the controllers are adapted to conduct encrypted communications with the coordination center (added by claim 15).

U.S. Patent No. 8,559,312 - Systems, Devices and Methods for Providing Access to a Distributed Network, issued Oct. 15, 2013

The Invention Explained

• Problem Addressed: The patent addresses the same problems as its parent ’284 patent: the high cost, complexity, and public objection associated with deploying traditional high-power cellular base stations in dense areas (’312 Patent, col. 1:26-44).
• The Patented Solution: The solution is again based on facilitating the installation of distributed cellular networks using "add-on" base stations that leverage existing infrastructure such as Internet connections. A central feature is that these base stations can be owned and operated by the public, incentivized by payments, to increase network density with smaller, lower-power cells (’312 Patent, col. 2:11-28, col. 2:49-59).
• Technical Importance: The technology aimed to democratize and accelerate the expansion of cellular infrastructure by creating a framework for third parties to add coverage to an established network.

Key Claims at a Glance

• The complaint states Barkan asserted independent claim 1 (Compl. ¶40).
• The essential elements of independent claim 1 are:
  • A gateway to a packet-based data network comprising:
  • a transceiver adapted to establish a radio frequency link with a mobile device;
  • a connector to a packet based data network; and
  • a connection regulator adapted to facilitate data flow between the mobile device and the packet-based data network;
  • wherein said gateway is adapted to determine a physical location of said gateway.

U.S. Patent No. 9,392,638 - Systems, Devices and Methods for Providing Access to a Distributed Network, issued Jul. 12, 2016

• Technology Synopsis: Continuing the same technical theme, the ’638 patent describes an "add-on" base station that connects to the public internet. The base station's controller determines its own geographical location, obtains routing information for a remote gateway from a central server, and routes data accordingly. The patent also introduces the concept of a "tamper-free unit" to store a unique identifier for the base station (’638 Patent, Claim 1).
• Asserted Claims: The complaint states Barkan asserted independent claim 1 (Compl. ¶49).
• Accused Features: The complaint specifically denies infringement of the "tamper-free unit" limitation, suggesting the entire Airspan AirUnity product is the accused instrumentality (Compl. ¶51).

III. The Accused Instrumentality

• Product Identification: The complaint identifies the "Airspan Accused Products" as the Airspan AirVelocity (model AV-100C), sold as the Sprint Airave 4, and the Airspan AirUnity (model AU587), sold as the Sprint Magic Box Gold (Compl. ¶¶25-27).
• Functionality and Market Context: The products are described as being designed and manufactured by Airspan and sold to its customer, Sprint, which then distributes them to its own customers (Compl. ¶27). Based on their commercial names (Airave, Magic Box) and the context of the patents, these products function as small cells or femtocells, providing localized cellular coverage for Sprint customers and using a broadband internet connection for network backhaul.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint, being for declaratory judgment, does not contain traditional infringement allegations or claim charts. Instead, it presents Airspan's non-infringement positions by identifying required claim elements that it alleges are absent from its products. The following tables summarize these non-infringement arguments.

’284 Patent Infringement Allegations

Claim Element (from Independent Claim 2)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a controller adapted to regulate data flow between the mobile device and the data network based, at least partially, on information received over the data network from said coordination center	The complaint alleges that the Airspan Accused Products do not include a controller that performs this function. It further alleges that Barkan's underlying complaint failed to allege specific facts showing such a controller exists.	¶33	col. 18:25-35

’312 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a connection regulator adapted to facilitate data flow between the mobile device and the packet-based data network	The complaint alleges that the Airspan Accused Products do not include such a "connection regulator." It further alleges that Barkan's underlying complaint failed to allege specific facts showing that this element is present.	¶42	col. 18:19-22

Identified Points of Contention

• Functional Mismatch: For both the ’284 and ’312 patents, the core dispute appears to be a functional one: do the processors and software within the Airspan products perform the specific regulatory and control functions recited in the claims (i.e., regulating flow "based on information...from said coordination center" or acting as a "connection regulator")? The DJ complaint suggests a fundamental mismatch.
• Scope Questions: The dispute will raise questions about the scope of functional terms like "coordination center" and "connection regulator." The court will need to determine if these terms cover general network management servers and data-handling components common in modern small-cell products or if they are limited to the more specific architecture described in the patents.
• Validity/Enforceability Threshold: A primary point of contention, preceding any infringement analysis for the ’284 patent, is whether claim 15 remains valid after the IPR cancellation of its parent claims (Compl. ¶11). For the ’312 patent, a threshold issue is whether it is unenforceable due to the detailed inequitable conduct allegations (Compl. ¶¶57-81).

V. Key Claim Terms for Construction

The Term: "coordination center" (’284 Patent, Claim 2)

• Context and Importance: This term is the lynchpin of the ’284 patent's system claim. Infringement depends on whether the accused system includes a component that meets this definition and provides the "information" that the accused gateway controller allegedly uses to regulate data flow. Practitioners may focus on this term because Airspan’s non-infringement argument hinges on the absence of this claimed interaction (Compl. ¶33).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests the center’s role is primarily informational, stating it "does not perform the actual call switching" but "just provides the information required for making a call" (’284 Patent, col. 6:50-53). A patentee could argue this covers any network server that provides routing or configuration data.
  • Evidence for a Narrower Interpretation: The detailed description lists specific duties for the center, including network integration, implementing a price policy, managing operability, and acting as a "Manager of phone locator" (’284 Patent, col. 7:34-40). A defendant could argue the term is limited to a single entity performing this combination of specific, non-technical (pricing) and technical roles.

The Term: "connection regulator" (’312 Patent, Claim 1)

• Context and Importance: Airspan's non-infringement defense for the ’312 patent is centered on the alleged absence of this element (Compl. ¶42). The construction of this term will therefore be dispositive of infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not appear to provide a specific definition for "connection regulator." In the parent ’284 patent, the corresponding element is a "controller adapted to regulate data flow" (’284 Patent, cl. 1), suggesting "connection regulator" could be broadly construed to mean any processing unit that manages the flow of data.
  • Evidence for a Narrower Interpretation: The term "regulator" may imply more than merely passing data. An accused infringer could argue that it requires active management, shaping, or control of the data stream in a specific manner that is not performed by a standard processor in a small cell, and that it must be a component distinct from a general-purpose processor.

VI. Other Allegations

• Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement theories, as it is focused on establishing Airspan's own non-liability.
• Willful Infringement: The complaint does not mention allegations of willful infringement.
• Unenforceability (Inequitable Conduct): The complaint makes a detailed allegation of inequitable conduct, asserting that the ’312 patent is unenforceable and that this status infects the related ’638 patent (Compl. ¶¶57-81). The core of the allegation is that during the prosecution of the application that became the ’312 patent, the inventor and his attorney became aware of a material prior art reference ("Bergenwall") through a rejection issued in the co-pending application for the ’638 patent. The complaint alleges they knew this reference was material to the patentability of the ’312 patent claims but intentionally withheld it from the ’312 patent's examiner with the intent to deceive the USPTO (Compl. ¶¶65-66, 78).

VII. Analyst’s Conclusion: Key Questions for the Case

1. A Threshold Question of Enforceability: Will the detailed allegations of inequitable conduct—specifically, the alleged withholding of the Bergenwall reference during the prosecution of the ’312 patent—be sufficient to render both the ’312 and the related ’638 patents unenforceable, potentially resolving a substantial portion of the dispute before a full technical analysis?
2. A Question of Procedural Viability: Can Barkan's assertion of claim 15 of the ’284 patent proceed, or is the claim invalid as a matter of law because its entire claim dependency chain (claims 2 and 14) was cancelled in a final, unappealed USPTO Inter Partes Review decision?
3. A Core Issue of Functional Equivalence: Beyond the procedural and conduct issues, a key technical question is whether the general-purpose processors and network management architecture of the accused Airspan products perform the specific functions of the claimed "controller" acting on information from a "coordination center" (’284 patent) and the "connection regulator" (’312 patent), or if there is a fundamental mismatch between the patented system and the accused technology.