PTAB

IPR2018-00673

LG Electronics, Inc. v. WI-LAN INC.

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1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Transmission of Multiple Modulated Signals Over Wireless Networks
  • Brief Description: The ’743 patent discloses a process for a device to request uplink transmission resources from a base station. The process involves a two-step transmission: first, a message indicating the device has data to transmit, and second, a subsequent message indicating the specific amount of data awaiting transmission, which the base station uses to allocate resources.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-9 are obvious over Phillips in view of Agrawal.

  • Prior Art Relied Upon: Phillips (Patent 6,198,728) and Agrawal (Patent 5,889,816).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Phillips and Agrawal disclosed all elements of the challenged claims. Phillips taught the core communication protocol for requesting uplink resources. Specifically, Phillips described a wireless terminal transitioning from an "inactive" to an "active" state by first sending a "minimal" signal during an "alert period" to inform a base station it has data to transmit. In response, the base station allocated one or more uplink time slots (termed a "superslot") in the next communication frame. The terminal then used this allocated "superslot" to transmit control information specifying the number of packets it needed to send. Petitioner contended this sequence directly maps to the limitations of independent claim 1.
    • Prior Art Mapping (Cont.): For independent claim 6, which requires transmitting a message "requesting the base station to poll the cellular telephone," Petitioner argued that Phillips’ "minimal" signal from an inactive terminal serves this exact purpose. The signal functioned as a request for the base station to allocate resources, which is functionally equivalent to a request to be polled. For the dependent claims, Petitioner asserted that Phillips disclosed using a "laxity factor" as a priority parameter for queuing data, which mapped to the priority and quality of service (QoS) limitations in claims 3, 8, and 9. Agrawal was primarily cited to supply elements not detailed in Phillips, such as the implementation of the system in a "cellular" context and the use of standard hardware like a processor for the Media Access Controller (MAC) and a transceiver for communications, which were well-known in the art.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Phillips and Agrawal to implement a complete and efficient wireless system. Phillips provided a sophisticated but abstract protocol for managing uplink requests in an Asynchronous Transfer Mode (ATM) system but did not specify the underlying hardware architecture or its implementation in a cellular network. Agrawal, also in the wireless ATM field, explicitly taught implementing MAC protocols on processors (CPUs or FPGAs) and using radio transceivers. Agrawal also described the benefits of a cellular architecture, including mobility support, frequency reuse, and broader coverage. Therefore, a POSITA would have been motivated to implement Phillips' efficient messaging protocol using the flexible and well-defined hardware and network architecture taught by Agrawal to achieve a practical, robust, and scalable system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Agrawal's teachings on using programmable hardware (CPUs/FPGAs) and standard transceivers provided a known, straightforward path for implementing the protocol logic of Phillips. The combination involved applying known hardware solutions to a similar system to achieve predictable improvements in functionality and performance.

4. Key Claim Construction Positions

  • The petition proposed a construction for the term "UL transmission resource," which appeared in claims 1-8 but not in the specification.
  • Petitioner argued that during prosecution, this term was added to be analogous to "bandwidth." The specification used "bandwidth" to refer to allocations of "time slots." Therefore, Petitioner asserted that "UL transmission resource" should be construed to at least include "time slots," which was critical for mapping the "superslot" and "time slot" allocations in Phillips to the claim limitations.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate because the grounds relied upon prior art and arguments that were not substantively considered during prosecution.
  • It was noted that although Phillips was listed in an Information Disclosure Statement, it was one of 179 cited patents and the examiner never discussed its teachings. Furthermore, Agrawal was not cited or considered at all during the original prosecution. The petition also relied on new expert declaration testimony, further distinguishing its arguments from the record before the examiner.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 6-9 of the ’743 patent as unpatentable under 35 U.S.C. §103.