PTAB

IPR2015-01807

Qualcomm Inc v. ParkerVision Inc

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1. Case Identification

2. Patent Overview

  • Title: Wireless Protocol Converter
  • Brief Description: The ’012 patent discloses a system for extending the coverage of a broadband wireless service, such as a cellular network, by using a repeater combined with a protocol converter. The device is configured to receive data in one protocol (e.g., a cellular protocol) and convert it to another protocol (e.g., a Local Area Network protocol) for use by local wireless devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6, 8-10, 13, and 15-18 are obvious over Williams in view of Eccles

  • Prior Art Relied Upon: Williams (Application # 2003/0158954) and Eccles (Patent 7,376,091).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Williams taught a flexible software-defined translator (SDT) that can be incorporated into a mobile repeater to translate between “any known” communication protocol, including broadband cellular protocols like CDMA2000. This SDT receives wireless data at a repeater. Petitioner asserted Eccles taught a “wireless bridge” or Network Access Point (NAP) specifically designed to interface between a cellular network and a Local Area Network (LAN) using protocols like 802.11. Petitioner contended that Williams taught the claimed steps of automatically “sensing” a received protocol based on RF signal characteristics and “dynamically selecting” an appropriate protocol for translation. The combination of Williams’s flexible repeater/translator and Eccles’s specific LAN/WAN bridging functionality allegedly met all limitations of the challenged claims.
    • Motivation to Combine: A POSITA would combine these references to enhance the capabilities of each. Williams’s system, which could handle “any known” protocol, would be improved by incorporating the specific and well-understood LAN/cellular bridging teachings of Eccles. Conversely, the functionality of Eccles’s NAP would be predictably improved by incorporating Williams’s repeater technology to extend its operational range and by using Williams’s dynamic protocol selection to increase flexibility.
    • Expectation of Success: Petitioner argued success would be expected because the combination involved applying the known technique of a repeater (from Williams) to a known system (Eccles's bridge) to achieve the predictable result of extended range. The systems were complementary, both addressing the known problem of protocol conversion between different wireless network types.

Ground 2: Claims 1-3, 6, 8-10, 13, and 15-18 are obvious over Williams, Eccles, and Ohanian

  • Prior Art Relied Upon: Williams (Application # 2003/0158954), Eccles (Patent 7,376,091), and Ohanian (Patent 6,122,287).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in case the "sensing" limitation was construed narrowly to require protocol detection by extracting information from the message data content itself, rather than from general RF signal characteristics as taught by Williams. Petitioner argued Ohanian taught this specific technique. Ohanian disclosed a system that automatically detected a protocol by receiving and analyzing data packets, comparing specific fields, unit length, or structure against expected values for known protocols.
    • Motivation to Combine: A POSITA seeking to implement the protocol sensing feature of the combined Williams/Eccles system would have been motivated to incorporate Ohanian’s method. Ohanian expressly stated its invention could be used in a system that links or bridges two or more networks, directly aligning with the purpose of the Williams/Eccles combination. This would improve the system by providing a more robust method for protocol identification.
    • Expectation of Success: Petitioner asserted a high expectation of success, as it involved substituting or augmenting one known protocol detection technique (from Williams) with another known, more specific technique (from Ohanian) to achieve the predictable result of accurately identifying protocols in a multi-protocol environment.

Ground 3: Claim 14 is obvious over Eccles, Williams, and McIntosh

  • Prior Art Relied Upon: Eccles (Patent 7,376,091), Williams (Application # 2003/0158954), and McIntosh (Application # 2003/0139180).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted apparatus claim 14, which recited a converter with a first wireless transceiver for a cellular system, a second for a LAN device, a converter coupled between them, and controllable settings for selecting from a plurality of protocols. Petitioner argued that Eccles and Williams together disclosed the core converter structure with cellular and LAN transceivers. Williams specifically taught the "controllable settings" for selecting protocols, either by a user or automatically. McIntosh was introduced because it taught bridging cellular networks with WLANs and expressly motivated the use of a plurality of different LAN protocols (e.g., 802.11 and HiperLAN) that could be selected based on factors like cost or bandwidth, directly teaching the "plurality of LAN protocols" element.
    • Motivation to Combine: A POSITA designing the converter taught by Eccles and Williams would have been motivated by McIntosh to make the LAN interface more flexible by supporting multiple standards, which was a known design goal. Williams’s disclosure of controllable settings provided a known and logical method to manage the multiple LAN and cellular protocols disclosed by Eccles and motivated by McIntosh.
    • Expectation of Success: The combination was argued to be a predictable assembly of known elements. A POSITA would expect success in integrating multiple protocol options (McIntosh) into a known converter architecture (Eccles) and managing them with known control methods (Williams).

4. Key Claim Construction Positions

  • "sensing said ... protocol": Petitioner argued this term should be construed as "detecting the protocol from the received data without prior knowledge of the identity of the protocol that the data is formatted in." This construction was central to Petitioner's argument that Williams's teaching of detecting protocols from RF signal characteristics met the limitation, while also providing the basis for the alternative ground including Ohanian.
  • "wide area network (WAN) protocol": Petitioner proposed this term meant "a communication protocol used with a network that extends over a large distance, such as a cellular telephone protocol." This construction was used to argue that teachings related to "cellular protocols" in the prior art directly applied to claims reciting the broader "WAN protocol."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 6, 8-10, and 13-18 of the ’012 patent as unpatentable.