PTAB

IPR2016-01704

TCT Mobile US Inc v. Wireless Protocol Innovations Inc

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1. Case Identification

2. Patent Overview

  • Title: Protocol for Allocating Upstream Slots Over a Link in a Point-to-Multipoint Communication System
  • Brief Description: The ’256 patent discloses a Medium Access Control (MAC) layer protocol for managing upstream bandwidth requests from multiple customer premises equipment (CPE) devices over a shared link to a base station controller (BSC). The technology purports to reduce network contention by providing a method where a CPE, after transmitting its data backlog, can receive dedicated, non-contention "unicast request slots" to request new bandwidth, thereby avoiding competition with other CPEs, particularly for non-bursty data traffic like Voice over IP (VoIP).

3. Grounds for Unpatentability

Ground 1: Obviousness over Abi-Nassif in view of DOCSIS 1.1 - Claims 1, 4, and 7 are obvious over Abi-Nassif in view of DOCSIS 1.1.

  • Prior Art Relied Upon: Abi-Nassif (WO 99/61993) and DOCSIS 1.1 (Data-Over-Cable Service Interface Specifications, a technical standard).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Abi-Nassif, a MAC protocol for shared medium networks, discloses nearly every element of the challenged claims. It teaches a system with states analogous to the patent’s, including methods for a remote station to request bandwidth via contention, to use piggybacking while actively sending data, and to use non-contention unicast polls to request new bandwidth from an inactive state. The only element Petitioner contended was not explicitly taught by Abi-Nassif is the CPE transitioning to an idle state after a specific timeout period of inactivity.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to supplement Abi-Nassif with the teachings of DOCSIS 1.1 to supply the missing timeout feature. Because Abi-Nassif’s system was based on the earlier DOCSIS 1.0 standard, a POSITA would naturally look to the backward-compatible and more advanced DOCSIS 1.1 standard to improve Quality of Service (QoS). DOCSIS 1.1 explicitly teaches using a configurable timeout ("Timeout for Active QoS Parameters") to deem an unused service flow "inactive," thereby releasing network resources and providing the claimed idle state functionality.
    • Expectation of Success: The combination would have been a predictable improvement, as it involved integrating a known feature from a newer version of a standard into a system based on an older version of that same standard.

Ground 2: Anticipation by DOCSIS 1.1 - Claims 1, 4, and 7 are anticipated by DOCSIS 1.1.

  • Prior Art Relied Upon: DOCSIS 1.1 (a technical specification).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the DOCSIS 1.1 standard discloses every limitation of the challenged claims, albeit using different terminology (e.g., Cable Modem Termination System for BSC, Cable Modem for CPE). The standard details contention-based requests in designated slots, piggybacking requests during data transmission (especially within its fragmentation capability), and a "third type" of non-contention request via its Polling Service Flows (e.g., nrtPS), which provide periodic unicast request opportunities. Critically, DOCSIS 1.1 teaches a configurable "Timeout for Active QoS Parameters," which causes a service flow to become "inactive" if unused, directly mapping to the claimed limitation of operating in an "idle state" after a period of time. Dependent claims 4 and 7, which require a "deferring state," were mapped to the standard's mandatory collision back-off protocol.

Ground 3: Obviousness over DOCSIS 1.1 in view of Abi-Nassif - Claims 1, 4, and 7 are obvious over DOCSIS 1.1 in view of Abi-Nassif.

  • Prior Art Relied Upon: DOCSIS 1.1 and Abi-Nassif (WO 99/61993).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground serves as an alternative to Ground 2, specifically addressing a potential claim construction that limits the patent to wireless-only systems. Petitioner argued that DOCSIS 1.1, a cable standard, teaches the entire claimed method. Abi-Nassif provides the explicit teaching and motivation to apply this DOCSIS-based method to a wireless network.
    • Motivation to Combine: A POSITA would combine the teachings because applying established MAC protocols to different physical layers (wired to wireless) was a common and well-understood practice. Abi-Nassif itself explicitly states its protocol can be implemented over "air, atmosphere, or space for wireless and satellite communication." Furthermore, Petitioner provided evidence that by the patent’s priority date, the industry (e.g., the IEEE 802.16 standards body) was already actively incorporating DOCSIS 1.1 protocols into new standards for Broadband Wireless Access (BWA), demonstrating a clear motivation to use the robust QoS features of DOCSIS 1.1 in wireless applications.
    • Expectation of Success: Success would have been highly probable and predictable, as the industry was already well underway in designing and implementing DOCSIS-based wireless systems, leveraging the protocol's proven performance for both wired and wireless deployments.

4. Key Claim Construction Positions

  • Claims Not Limited to Wireless: Petitioner argued that the claims should not be limited to a wireless implementation. The claim language itself does not recite "wireless" or "cellular," and the specification contains explicit statements that its descriptions of terms like "link," "BSC," and "CPE" are illustrative and not limiting. This broad construction to include wired systems was central to Petitioner's argument that the claims are anticipated by the DOCSIS 1.1 cable modem standard.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4, and 7 of Patent 8,565,256 as unpatentable.