PTAB

IPR2014-00101

StarWood HoTels Resorts Worldwide Inc v. LOne Star WiFi LLC

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1. Case Identification

2. Patent Overview

  • Title: System for Differentiated Wireless Network Access
  • Brief Description: The ’286 patent describes a system for offering differentiated access to computer resources, such as wireless internet, based on a user’s credentials or key. The system provides multiple classes or tiers of service, which can be differentiated by the types of files accessible, bandwidth allotment, or the level of internet access provided.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, 5, 8, 9, and 11-13 are obvious over Liu in view of PAWNs.

  • Prior Art Relied Upon: Liu (Patent 7,177,637) and PAWNs (a 2002 publication on secure connectivity).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Liu taught a wireless network access point (AP) providing multiple access modes (public and private) to authorized and non-authorized users, with access controlled by credentials. Liu’s public mode offered limited services, some free and others requiring payment. Petitioner asserted that PAWNs disclosed service models for public wireless networks, including providing differentiated bandwidth allocation based on a paid-for level of service. The combination of Liu’s base system for tiered access and PAWNs’s specific teachings on varying bandwidth and service levels allegedly disclosed every limitation of the challenged claims.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of Liu and PAWNs because they address the highly similar problem of providing differentiated wireless network access. Petitioner contended that PAWNs provided well-understood, practical solutions (e.g., tiered bandwidth) that a POSITA would have naturally used to implement the public network services generally described in Liu.
    • Expectation of Success: The combination involved applying known methods for service tiering to a known type of wireless system, which would have yielded predictable results.

Ground 2: Claims 3, 6, 7, 10, and 14-18 are obvious over Liu in view of PAWNs and further in view of Hagen.

  • Prior Art Relied Upon: Liu (’637 patent), PAWNs, and Hagen (Application # 2002/0075844).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Liu/PAWNs combination by adding Hagen to address limitations related to specific services like Voice over IP (VoIP). Petitioner argued Hagen described a differentiated wireless system that explicitly supported VoIP and detailed bandwidth allocation policies to prioritize traffic for such services. The combination of Liu and PAWNs provided the foundational multi-tiered access system, while Hagen supplied the specific, obvious design choice of including or excluding advanced services like VoIP on certain tiers, thereby rendering claims with such limitations obvious.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Hagen’s teachings as it merely provided an explicit example of a well-known design choice for implementing a differentiated system. Provisioning enhanced services like VoIP on higher-access tiers was argued to be a logical and obvious extension of the systems taught by Liu and PAWNs.
    • Expectation of Success: As Hagen merely articulated a known design choice, a POSITA would have had a high expectation of success in implementing it within the Liu/PAWNs framework.

Ground 3: Claims 1-18 are obvious over ORiNOCO in view of PAWNs and further in view of Liu.

  • Prior Art Relied Upon: ORiNOCO (a 2002 user's guide for a Lucent access point), PAWNs, and Liu (’637 patent).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted a different combination, starting with ORiNOCO as the primary reference. Petitioner argued ORiNOCO taught a specific hardware platform—an access point with dual network interface card (NIC) slots, allowing for multiple, individually securable network interfaces. These interfaces could be configured with different security modes (e.g., encryption, RADIUS authentication, or open access). Petitioner mapped this hardware to the "first and second networking device" limitations. PAWNs and Liu were then used to supply the rationale for using such a flexible hardware platform: to implement the differentiated access levels and tiered service models that they taught.
    • Motivation to Combine: A POSITA would combine the references because it represented a straightforward application of known service differentiation models (from PAWNs and Liu) to a commercially available and suitably flexible hardware platform (ORiNOCO). Securing different network interfaces with different credentials to provide varied levels of access was presented as a known technique for a known purpose.
    • Expectation of Success: Combining the hardware teachings of ORiNOCO with the service model teachings of PAWNs and Liu was a simple combination of known elements for their intended purpose and would have led to a predictable outcome.

4. Key Claim Construction Positions

  • "Networking Device": Petitioner proposed construing this term as "a component for transmitting and receiving network transmissions." This construction was based on the specification's context and expert testimony, as the term itself does not appear in the specification.
  • "Key": Proposed as "an encryption code or a code that allows access." Petitioner argued this broad construction was consistent with the patent's disclosure and supported its position that user credentials or payment indicators in the prior art satisfied this claim limitation.
  • "Overlapping Area": Proposed as "transmitting from any area within the transmission area of the first networking device." This construction supported the application of prior art where multiple logical networks were broadcast from a single physical device or location.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that two co-pending applications, the ’523 and ’690 applications, contained claims that were patentably indistinct from the challenged claims of the ’286 patent. Petitioner expressed concern that the Patent Owner could obtain allowance of these claims during the pendency of the IPR, thereby frustrating the purpose of the proceeding. To prevent this "end-around," Petitioner requested that the Board suspend prosecution of the related applications or, alternatively, issue a standing order requiring the Patent Owner to notify the Examiner of the IPR and its potential estoppel effects.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-18 of Patent 8,312,286 as unpatentable under 35 U.S.C. §103. Petitioner also requested ancillary relief in the form of a suspension or standing order related to co-pending, patentably indistinct applications.