Google Inc v. Intellectual Ventures II LLC

1. Case Identification

• Case #: IPR2014-01031
• Patent #: 7,848,353
• Filed: June 25, 2014
• Petitioner(s): Google Inc.
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 1-8 and 21-27

2. Patent Overview

• Title: Method, Communication System and Communication Unit for Synchronisation for Multi-Rate Communication
• Brief Description: The ’353 patent discloses methods and systems for determining operating bandwidth in a multi-bandwidth communication system. The technology involves a remote unit receiving a signal with two portions: a first portion at a predetermined bandwidth that indicates the operating bandwidth for a second, further portion of the signal.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Pierzga, HSDPA, and Shahar

• Legal Basis & Claims: Claims 1-6, 8, and 21-26 are anticipated under 35 U.S.C. §102 by Pierzga. Claims 7 and 27 are obvious under 35 U.S.C. §103 over Pierzga in view of HSDPA. Claim 8 is alternatively obvious over Pierzga in view of Shahar.
  • Prior Art Relied Upon: Pierzga (Application # 2001/0055320), HSDPA (a 3GPP Technical Specification), and Shahar (Patent 6,987,754).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pierzga, which discloses a frequency multiplex communication system, teaches all limitations of the independent claims. Pierzga's transmitter periodically sends an "ensemble plan" on a single, predetermined subcarrier (the "first signal portion") that specifies the number and allocation of subcarriers for the overall multiplexed signal. This "ensemble plan" serves as the claimed "indication of operating bandwidth." The remainder of the OFDM multiplexed signal, transmitted across multiple channels, constitutes the "further signal portion." Dependent claims related to filtering, data bursts, and synchronization signals were also alleged to be disclosed by Pierzga's teachings on receive filters, data packets, and unique word detection for frame synchronization.
    • Motivation to Combine (for §103 grounds): For claims 7 and 27, which add the limitation of a UMTS system, Petitioner asserted that UMTS was a well-known system at the time of invention. A POSITA would combine the known UMTS wireless network taught by HSDPA with Pierzga's communication system to achieve the predictable result of operating Pierzga's system in a standard cellular environment. For claim 8, which adds a computer-readable medium, Shahar explicitly discloses using executable code on a storage medium to program system components, which a POSITA would have been motivated to apply to the programmable components of Pierzga.
    • Expectation of Success (for §103 grounds): Petitioner contended that combining these known techniques and systems would have yielded predictable results.

Ground 2: Anticipation and Obviousness over HomeRF and HSDPA

• Legal Basis & Claims: Claims 1, 2, 4-6, and 21, 22, 24-26 are anticipated under §102 by HomeRF. Claims 3, 7, 23, and 27 are obvious under §103 over HomeRF, with some claims additionally in view of HSDPA.
  • Prior Art Relied Upon: HomeRF (HomeRF 2.0 Specification Revision 2.0) and HSDPA (a 3GPP Technical Specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the HomeRF specification discloses a system for communicating at multiple bandwidths. The claimed "signal" corresponds to HomeRF's PHY Protocol Data Unit (PPDU). HomeRF's "Extended Preamble High Rate Single PSDU" format transmits a preamble extension at a basic, low-rate modulation (the "first signal portion" at a "predetermined bandwidth"). This preamble includes a PDU Attributes (PDUA) field containing a modulation type code that indicates the high-rate modulation to be used for the rest of the packet. This PDUA field is the "indication of the operating bandwidth." The main data portion of the packet (the PSDU) is the "further signal portion," which is received at the high rate indicated by the PDUA.
    • Motivation to Combine (for §103 grounds): For claims 3 and 23 (reconfigurable filter), Petitioner argued it would have been obvious to make HomeRF's filters reconfigurable to handle different data rates. For claims 7 and 27 (UMTS system), Petitioner argued a POSITA would have been motivated to apply the UMTS wireless network taught by HSDPA to the known cellular communication systems of HomeRF to achieve predictable results, as both DECT (used in HomeRF) and UMTS are ETSI standards.
    • Expectation of Success (for §103 grounds): The proposed combinations involved applying standard, known networking technologies to an existing system, leading to a high expectation of success.

Ground 3: Obviousness over McFarland, Shahar, and HSDPA

• Legal Basis & Claims: Claims 1-8 and 21-27 are obvious under §103 over McFarland in view of Shahar and/or HSDPA.
  • Prior Art Relied Upon: McFarland (Patent 7,397,859), Shahar (Patent 6,987,754), and HSDPA (a 3GPP Technical Specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that McFarland discloses a multi-bandwidth OFDM wireless system that dynamically changes the number of carriers and symbol rate on a packet-by-packet basis. McFarland teaches using a short header in a base mode (the "first signal portion") that all nodes can receive. This header contains an "indication of which mode the remainder of the packet will be in," allowing the receiver to switch modes to receive the rest of the packet (the "further signal portion").
    • Motivation to Combine (for §103 grounds): While McFarland teaches a header, it does not explicitly disclose a synchronization channel signal (claims 5 and 25). Shahar teaches an OFDM packet with a header containing a "fixed pattern field" that provides timing and synchronization. A POSITA would have been motivated to incorporate Shahar's known synchronization technique into the header of McFarland's packets to improve system robustness, a predictable improvement. Similarly, Shahar's disclosure of programmatic control on a storage medium would be combined to meet claim 8. HSDPA would be combined to implement McFarland's system in a standard UMTS network.
    • Expectation of Success (for §103 grounds): Combining a known synchronization method (Shahar) with a known multi-rate system (McFarland) was a simple design choice with a high expectation of success.

4. Key Claim Construction Positions

• "Bandwidth": Petitioner argued that for the purposes of the IPR, the Broadest Reasonable Interpretation (BRI) of "bandwidth" should be "either a frequency range or a data rate as required by the context of its use." This construction was based on the term's dual definitions in the art and its interchangeable use with "data rate" and "chip rate" in the ’353 patent's specification.
• "logic for" elements: Petitioner asserted that the "logic for" limitations in claim 21 are not means-plus-function limitations under 35 U.S.C. §112(f). However, Petitioner argued that even if they were, the claims would be satisfied by any structure in the prior art that performs the recited functions, contending the patent's disclosure of corresponding structure is insufficient.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 21-27 of the ’353 patent as unpatentable.