PTAB

IPR2014-00525

ZTE Corp v. IPR Licensing Inc

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1. Case Identification

2. Patent Overview

  • Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate Data Communications
  • Brief Description: The ’244 patent describes a dual-mode wireless device capable of preferentially transferring packet data over a short-range, high-rate network (like an IEEE 802.11 WLAN) while maintaining a communication session with a long-range cellular network, even when no cellular physical channels are actively in use for data transfer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jawanda and Industry Standards - Claims 1-8, 14-16, 19-29, 36-38, and 41-44 are obvious over Jawanda in combination with the GPRS and IEEE 802.11 Standards.

  • Prior Art Relied Upon: Jawanda (Patent 6,243,581), GPRS Standards (publicly available by Nov. 1998), and the IEEE 802.11 Standard (publicly available Aug. 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jawanda taught the core invention: a dual-mode mobile device that communicates over both a cellular network (WWAN) and a higher-speed WLAN. Jawanda disclosed seamlessly handing off data transfer to the WLAN while optionally maintaining the WWAN connection. To the extent Jawanda lacked specific implementation details, Petitioner asserted that the GPRS Standards and the IEEE 802.11 Standard provided them. Specifically, the GPRS Standards disclosed the claimed "plurality of assigned physical channels" and taught maintaining a "Packet Data Protocol Context" (PDP Context) even when radio links are released, which directly corresponds to the patent's limitation of "maintain[ing] a communication session" in the absence of physical channels.
    • Motivation to Combine: Petitioner contended that Jawanda provided an express motivation by explicitly naming "GPRS" as a possible cellular protocol for its dual-mode device. A person of ordinary skill in the art (POSITA) implementing Jawanda's system would have naturally consulted the well-known GPRS Standards for technical details. Similarly, a POSITA would have looked to the prevalent IEEE 802.11 Standard to implement Jawanda’s generic WLAN, as it was a leading, internationally accepted protocol at the time.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining known network protocols (cellular and WLAN) using established standards was a predictable design choice to achieve the known benefit of offloading data to higher-bandwidth networks.

Ground 2: Obviousness over Lemiläinen and Industry Standards - Claims 1-8, 14-16, 19-29, 36-38, and 41-44 are obvious over Lemiläinen in combination with the GPRS and IEEE 802.11 Standards.

  • Prior Art Relied Upon: Lemiläinen (Patent 6,681,259), GPRS Standards, and the IEEE 802.11 Standard.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lemiläinen, like Jawanda, disclosed a dual-mode device capable of switching between cellular and WLAN networks "without terminating active connections." Lemiläinen taught maintaining a logical connection (IP address) at the TCP layer even after physical layer channels are released, thus meeting the "maintain a communication session" limitation. For claim 8's requirement of a CDMA network, Petitioner argued that while Lemiläinen expressly named GSM/GPRS, selecting the well-known CDMA technology instead would have been an obvious and predictable variation for a POSITA.
    • Motivation to Combine: The motivation to combine was even stronger than with Jawanda. Lemiläinen expressly taught a multi-mode terminal that communicates with a "GPRS system" and a "WLAN according to the IEEE standard 802.11." Therefore, a POSITA was explicitly directed to combine the teachings of Lemiläinen with the very standards Petitioner relied upon to supply any necessary implementation details.
    • Expectation of Success: A POSITA would have expected success because Lemiläinen described integrating these specific, standardized technologies to achieve seamless network switching.

Ground 3: Obviousness over Lemiläinen and UMTS Standards - Claims 1-8, 14-16, 19-29, 36-38, and 41-44 are obvious over Lemiläinen in combination with the Draft UMTS Standards and the IEEE 802.11 Standard.

  • Prior Art Relied Upon: Lemiläinen (Patent 6,681,259), Draft UMTS Standards (publicly available by June 1999), and the IEEE 802.11 Standard.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was similar to Ground 2 but substituted the Draft UMTS Standards for the GPRS Standards. Petitioner argued the Draft UMTS Standards, like GPRS, fully disclosed the "plurality of physical channels" and "maintain communication session" limitations (via a PDP Context). Crucially, Petitioner asserted that unlike GPRS, the Draft UMTS Standards expressly disclosed CDMA cellular communication capabilities, directly teaching the limitation of claim 8 without relying on an obviousness argument for substituting technologies.
    • Motivation to Combine: As Lemiläinen taught combining a cellular system with an IEEE 802.11 WLAN, a POSITA would have been motivated to use the emerging 3G technology detailed in the Draft UMTS Standards, which were based on CDMA. The Draft UMTS Standards themselves suggested dual-mode devices combining a WCDMA transceiver with a WLAN transceiver, reinforcing the motivation to apply Lemiläinen's dual-mode teachings to the next-generation CDMA technology.
    • Expectation of Success: A POSITA would have reasonably expected to successfully combine these technologies, as it represented the natural evolution of cellular systems toward 3G CDMA protocols while retaining the known benefits of WLAN offloading.

4. Key Claim Construction Positions

  • "release," "allocate," and "deallocate": Petitioner argued these terms must be construed in context and have distinct meanings. It contended that "assigned" physical channels are those made available to the device by the network, whereas to "allocate" an assigned channel means the device selects it for active use. This construction was proposed to counter the Patent Owner's allegedly circular definitions and to clarify that the device manages (allocates/deallocates) a pool of channels previously provided (assigned) by the network.
  • "maintain a communication session... in an absence of the plurality of assigned physical channels": For the purposes of the IPR, Petitioner adopted the broad construction that Patent Owner successfully argued for in a prior ITC investigation involving the parent patent. This construction was "maintain a logical connection with the cellular wireless network when none of the plurality of physical channels are in use by the subscriber unit." Petitioner argued that even under this broad construction, which is satisfied by maintaining a PDP Context, the claims were obvious over the prior art.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8, 14-16, 19-29, 36-38, and 41-44 of the ’244 patent as unpatentable.