PTAB

IPR2016-01861

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 ’051 patent discloses a communication method for reducing contention traffic in a point-to-multipoint system. It describes a protocol where a remote station uses different states (e.g., Idle, Grant Pending) and request types (contention, piggyback, unicast) to manage upstream bandwidth requests to a central station, with the purported novelty residing in a contention-free request mechanism that activates after data transmission ceases but before a timeout period expires.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abi-Nassif, DOCSIS 1.1, and POAPA - Claims 1, 2, 4-5, 21-23, and 25-26 are obvious over Abi-Nassif in view of DOCSIS 1.1 and POAPA.

  • Prior Art Relied Upon: Abi-Nassif (WO 99/61993), DOCSIS 1.1 (Data-Over-Cable Service Interface Specifications, SP-RFIv1.1-I02-990731), and POAPA (Patent Owner’s Admitted Prior Art).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Abi-Nassif, which is based on the DOCSIS 1.0 standard, discloses nearly all limitations of the independent claims. Abi-Nassif teaches a MAC protocol with three operating states (INACTIVE, CONTENTION, ACTIVE) that correspond to the patent's system for managing bandwidth requests, including contention-based requests, piggybacking requests with data, and contention-free requests via unicast polling. Petitioner contended the only element missing from Abi-Nassif is transitioning to an idle state after a specific timeout period. DOCSIS 1.1, an evolution of the standard used in Abi-Nassif, was introduced to supply this missing teaching, as it explicitly describes Polling Service Flows that become "inactive" after a configurable "Timeout for Active QoS Parameters" expires. POAPA was cited to support the teaching that piggyback requests can indicate the amount or size of pending data.
    • Motivation to Combine: A POSITA would combine DOCSIS 1.1 with the DOCSIS 1.0-based system of Abi-Nassif because it represented a natural and backwards-compatible evolution of the same technology. Incorporating the enhanced Quality of Service (QoS) features of DOCSIS 1.1, such as timed-out service flows, would have been a predictable way to improve bandwidth management and efficiency. Modifying Abi-Nassif's piggybacking based on POAPA was argued to be a simple substitution of one known element for another to yield predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success in this combination due to the direct technological lineage and backwards compatibility between DOCSIS 1.0 and 1.1, ensuring the components would function together as expected.

Ground 2: Obviousness over DOCSIS 1.1, Abi-Nassif, and POAPA - Claims 1, 2, 4-5, 21-23, and 25-26 are obvious over DOCSIS 1.1 in view of Abi-Nassif and POAPA.

  • Prior Art Relied Upon: DOCSIS 1.1 (SP-RFIv1.1-I02-990731), Abi-Nassif (WO 99/61993), and POAPA.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that DOCSIS 1.1, as the primary reference, teaches every claimed limitation except for the explicit application to a wireless system. DOCSIS 1.1 discloses a point-to-multipoint system using contention, piggybacking (during fragmentation), and contention-free unicast requests via its Real-Time and Non-Real-Time Polling Service Flows. Crucially, it also teaches that these service flows become inactive after a configurable timeout, corresponding to the patent's timeout to an idle state. Abi-Nassif was introduced to supply the teaching of implementing a DOCSIS-based MAC protocol over a wireless medium, as it explicitly states its physical medium can include "air, atmosphere, or space for wireless...communication." POAPA was used, as in Ground 1, to supplement the teaching of piggybacking.
    • Motivation to Combine: A POSITA would be motivated to implement the DOCSIS 1.1 protocol in a wireless context as taught by Abi-Nassif. The petition argued that adapting wired MAC protocols for wireless use was a well-known industry trend at the time, particularly with the incorporation of DOCSIS principles into the IEEE 802.16 wireless standard. This modification would yield predictable benefits, such as improved QoS for wireless data flows and lower installation costs compared to wired systems.
    • Expectation of Success: The extensive, ongoing industry efforts to apply DOCSIS to wireless networks before the patent's priority date demonstrated that a POSITA would have had a high expectation of success in implementing the DOCSIS 1.1 protocol over a wireless physical layer.

4. Key Claim Construction Positions

  • Petitioner argued that the preambles of independent claims 1 ("A method of operating a wireless communication unit") and 21 ("A wireless communication unit operable to communicate...") are non-limiting. The argument was based on the assertion that these phrases merely state the intended use of the invention and were not relied upon during prosecution to distinguish over prior art.

5. Key Technical Contentions (Beyond Claim Construction)

  • Cable Art as Analogous Art: A central contention was that prior art related to cable modem technology, specifically the DOCSIS standards, is analogous to the wireless communication field of the ’051 patent. Petitioner argued that the fields are analogous because they address the same fundamental problems of contention resolution and QoS management in shared-medium networks. Furthermore, Petitioner provided evidence that the wireless industry was already actively incorporating DOCSIS technology into wireless standards (e.g., IEEE 802.16) prior to the patent's priority date, demonstrating that a person of ordinary skill in the art would have looked to cable technology to solve problems in the wireless domain.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 4-5, 21-23, and 25-26 of the ’051 patent as unpatentable under 35 U.S.C. §103.