Huawei Device Co Ltd v. Maxell Ltd

1. Case Identification

• Patent #: 7,509,139
• Filed: November 20, 2017
• Petitioner(s): Huawei Device Co., Ltd.
• Patent Owner(s): Maxell, Ltd.
• Challenged Claims: 1, 7-14

2. Patent Overview

• Title: Method for Selecting Base Station
• Brief Description: The ’139 patent discloses a method for a wireless terminal to select a base station for connection. The method involves classifying a plurality of base stations into groups, calculating a group-level "characterizing quantity" of communication quality (e.g., by summing individual station signal levels), selecting a group based on these quantities, and finally selecting the optimal base station from within the chosen group.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 7-14 are obvious over Fukawa

• Prior Art Relied Upon: Fukawa (Patent 5,568,654)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fukawa teaches all limitations of the challenged claims. Fukawa discloses a mobile communication system where base stations are organized into groups called "composite zones." The system obtains an index of communication quality ("receive[d] levels") for each base station, calculates a "total received level" for each group (the characterizing quantity), selects the group with the "highest total received level," and then selects the individual base station within that group having the "highest received level." Petitioner asserted this process directly maps to the steps of independent claim 1.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Fukawa either anticipates or, at a minimum, renders claim 1 obvious. For dependent claims 7-9, Petitioner argued it would have been obvious to a Person of Ordinary Skill in the Art (POSITA) to use well-known quality metrics like received power, bit rate, or Signal-to-Noise Ratio (SNR) as the "received levels" in Fukawa's system, as these were a finite and predictable set of solutions for assessing signal quality.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in applying these standard metrics to Fukawa's system, as it would predictably result in selecting the base station with the best respective characteristic (e.g., highest power or bit rate).

Ground 2: Claims 7-10 and 12-14 are obvious over Fukawa in view of Alemany

• Prior Art Relied Upon: Fukawa (Patent 5,568,654), Alemany (Patent 7,894,823)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground used Fukawa for the foundational group-based selection method. Alemany was introduced to teach the specific limitations of the dependent claims. Alemany discloses using various metrics for determining link quality, including RSSI (received power), data rate, and bandwidth, which Petitioner mapped to claims 7 and 8. Alemany also explicitly teaches using positioning techniques like Enhanced Observed Time Difference of Arrival (E-OTD) to locate a mobile terminal, which was mapped to the positioning methods in claims 10 and 14.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Fukawa and Alemany because both relate to base station selection and address similar problems. Petitioner argued a POSITA would look to Alemany's explicit disclosure of multiple, standard link quality indicators (like RSSI and data rate) to implement or improve the more generic "received level" concept in Fukawa. Furthermore, the combination was motivated by the need to implement positioning, a known technique taught by Alemany and encouraged by regulatory mandates like the FCC's E-911 requirements.
  • Expectation of Success (for §103 grounds): Success would be expected because the combination involves applying well-known, interchangeable quality metrics and standard positioning techniques from Alemany to the established selection framework of Fukawa.

Ground 3: Claims 9, 11, and 12 are obvious over Fukawa in view of Jagadeesan

• Prior Art Relied Upon: Fukawa (Patent 5,568,654), Jagadeesan (Patent 7,082,301)

• Core Argument for this Ground:

  • Prior Art Mapping: This ground leveraged Jagadeesan for two key teachings not present in Fukawa's primary embodiment: implementing the selection logic within the mobile terminal itself (for apparatus claim 11) and using SNR as the quality metric (for claims 9 and 12). While Fukawa teaches a network-side controller, Jagadeesan expressly discloses a controller within the mobile station for making handoff decisions. Jagadeesan also identifies SNR as a key indicator of link quality.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify Fukawa's system by moving the control logic to the mobile terminal, as taught by Jagadeesan, for known benefits like improved performance (eliminating network communication delays) and increased robustness (failure of one terminal does not impact others). Petitioner asserted that terminal-side vs. network-side implementation was a simple, known design choice. Jagadeesan also provides an explicit motivation to use SNR, a known alternative to received power, to better assess link quality.
  • Expectation of Success (for §103 grounds): A POSITA would have expected a high likelihood of success, as this modification involved substituting one known location for control logic (network) with another (terminal) and using a standard, well-understood quality metric (SNR).

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground IV) against claims 13 and 14 based on the combination of Fukawa, Jagadeesan, and Alemany, arguing it would have been obvious to incorporate Alemany's teachings on using bit rates and positioning techniques into the terminal-side implementation derived from Fukawa and Jagadeesan.

4. Key Claim Construction Positions

• "characterizing quantities of the communication quality" (claims 1, 11): While disputing the term in parallel litigation, Petitioner, for the purpose of the IPR, adopted the Patent Owner's proposed construction: "characteristics of the communication quality for each of the groups." Petitioner argued that the prior art teaches the limitation even under this construction, for example, by calculating a "total received level" for each group.
• "a storage unit in which group information ... [is stored]" (claim 11): Petitioner analyzed this claim term post-correction (which added the bracketed text). Petitioner's argument centered on the obviousness of using a standard component like RAM in a mobile terminal (as taught by Fukawa) to store group information when implementing the selection logic on the terminal side.

5. Key Technical Contentions (Beyond Claim Construction)

• Reciprocity of Signal Measurement: A central technical contention was that Fukawa's measurement of "received levels" (signals from the terminal measured at the base station) is technically equivalent to the ’139 patent's approach (signals from the base station measured at the terminal). Petitioner argued that a POSITA would understand that the physical phenomena degrading a signal (e.g., interference, obstruction) are reciprocal and affect the channel equally in both directions, making the two measurement approaches interchangeable for assessing link quality.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The petition asserted that none of the asserted prior art references or grounds of unpatentability were considered by the Examiner during the original prosecution. Further, the petition was supported by the expert declaration of Dr. Robert Akl, which presented new evidence and analysis not previously before the Office.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1 and 7-14 of the ’139 patent as unpatentable.