Kyocera Corp v. Adaptix Inc

1. Case Identification

• Patent #: Patent 6,947,748
• Filed: November 26, 2014
• Petitioner(s): Kyocera Corporation and Kyocera Communications Inc.
• Patent Owner(s): Adaptix, Inc.
• Challenged Claims: 8, 9, 21, and 22

2. Patent Overview

• Title: OFDMA With Adaptive Subcarrier-Cluster Configuration and Selective Loading
• Brief Description: The ’748 patent discloses methods and systems for adaptive subcarrier selection in an Orthogonal Frequency Division Multiple Access (OFDMA) wireless system. The technology involves a subscriber unit measuring channel quality for various subcarriers, selecting a preferred set of candidate subcarriers, and sending feedback to a base station, which then allocates subcarriers for use.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ritter, Van Nee, and Chuang

• Claims 8, 9, 21, and 22 are obvious over Ritter in view of Van Nee and Chuang.
  • Prior Art Relied Upon: Ritter (German Patent No. DE 198 00 953 C1), Van Nee (Japanese Application Publication H10-303849), and Chuang ("A pilot based dynamic channel assignment scheme...", 1993).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Ritter, an adaptive channel allocation system using OFDMA, teaches most limitations of independent claims 8 and 21. Ritter's mobile station measures the quality of frequency segments (subcarriers), determines suitable segments, and transmits this information back to a base station for assignment. Petitioner argued Chuang supplies the limitation of using pilot signals from a base station to measure downlink interference. To meet the limitation of sending an indication of desired coding and modulation rates, Petitioner combined Van Nee, which discloses a mobile unit's control circuit dynamically adjusting parameters like coding rate and modulation schemes based on channel conditions and sending feedback. For claim 9, Van Nee was argued to teach using a "received signal-to-noise plus interference ratio" as an index for scaling these parameters, thus meeting the "SINR index" limitation.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Chuang with Ritter because using pilot symbols was a well-known and effective technique for channel monitoring, as acknowledged in the ’748 patent itself. A POSITA would combine Van Nee with Ritter to add the known functionality of adaptive modulation and coding to an existing OFDMA system to improve performance and flexibility, which was a predictable variation responsive to market pressures for more robust wireless platforms.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining these references unites known elements for their intended purposes within the same technical context of adaptive channel allocation in OFDM/OFDMA systems, yielding predictable results.

Ground 2: Obviousness over Hashem I and Hashem II

• Claims 8, 9, 21, and 22 are obvious over Hashem I in view of Hashem II.
  • Prior Art Relied Upon: Hashem I (Patent 6,721,569) and Hashem II (Patent 6,701,129).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Hashem I and Hashem II, from the same inventors and expressly interlinked, teach all challenged claim limitations. Hashem I discloses a remote unit that measures channel quality (as a signal-to-interference or S/I ratio), compares it to a threshold to determine "acceptable sub-carriers," and sends feedback including an average S/I and a bitmask of acceptable subcarriers. To supply the "pilot symbols" limitation, Petitioner pointed to Hashem II, which is explicitly incorporated by reference in Hashem I and describes using pilot signals to measure the S/I ratio. Hashem I further teaches that the remote unit sends information about the "Link Mode" (which includes coding and modulation rates) it desires, and that the S/I measurement is used to determine the appropriate Link Mode, thereby functioning as the claimed "SINR index."
    • Motivation to Combine: The primary motivation asserted was the explicit incorporation by reference of Hashem II within Hashem I, indicating the inventors intended the disclosures to be read as a single, interlocking system. The combination was also presented as a predictable use of a known technique (pilot symbols from Hashem II) to improve a similar device (the channel allocation system of Hashem I).
    • Expectation of Success: Success would have been expected because the references were designed to complement each other in an OFDM-based adaptive channel allocation system. Applying the specific pilot symbol measurement technique of Hashem II to the system of Hashem I was a predictable implementation.

4. Key Claim Construction Positions

• "pilot symbol": Petitioner argued for the construction "symbols, sequences, or signals known to both the base station and subscriber." This broad construction, supported by the patent's specification, was crucial for its argument that the measurement techniques in Chuang and Hashem II meet the claim limitation.
• "SINR": Petitioner proposed construing SINR as "signal-to-interference-plus-noise ratio and related measures such as signal-to-interference ratio (SIR or S/I)...". This was critical to Petitioner's argument, as it allowed the "quality value" disclosed in Ritter and the "S/I" ratio in Hashem I to satisfy the "SINR index" limitation in claims 9 and 22, even if those references did not explicitly mention "noise."

5. Key Technical Contentions (Beyond Claim Construction)

• Inherent OFDMA in Hashem I: Petitioner contended that even if Hashem I does not explicitly disclose a multi-user OFDMA system, it is inherent or would have been an obvious modification. Because Hashem I's system measures interference, a POSITA would understand that a primary source of such interference in a cellular system is other subscriber units. Therefore, applying Hashem I's adaptive allocation to a multi-user system to optimize channels for each user would be an obvious application of its teachings.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d) by distinguishing its petition from two other pending IPRs against the same patent. It asserted that this petition presents substantially different arguments, using different prior art combinations and focusing on obviousness rather than anticipation. Furthermore, Petitioner noted that the other petitions were likely to be withdrawn following a settlement, making this petition the Board's only opportunity to evaluate these specific invalidity arguments.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 8, 9, 21, and 22 of Patent 6,947,748 as unpatentable.