PTAB

IPR2018-00705

LG Electronics Inc v. Wi LAN Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Pre-Allocated Random Access Identifiers
  • Brief Description: The ’320 patent is directed to methods and systems for managing wireless communications by pre-allocating identifiers, such as CDMA codes, to wireless devices. These identifiers are used for requesting resources over a random access channel in an Orthogonal Frequency Division Multiple Access (OFDMA) system, particularly one compliant with the IEEE 802.16 standard, to reduce the probability of collisions during processes like network handover.

3. Grounds for Unpatentability

Ground 1: Obviousness of Method Claims over Song in view of WiMAX - Claims 1, 3, 4, 8-10, 12, and 15 are obvious over Song in view of WiMAX.

  • Prior Art Relied Upon: Song (Application # 2005/0117539) and WiMAX (IEEE 802.16 Standard, Oct. 2004).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Song teaches a handover procedure for an IEEE 802.16e system that prevents ranging code collisions by distinguishing between "initial ranging codes" and a separate, reserved set of "handover ranging codes." This corresponds to the ’320 patent’s core concept of using a non-contention reserved access identifier. Song disclosed a mobile station (MSS) obtaining an indication of this reserved set from a target base station during handover and transmitting a selected handover code over a random access channel. The use of separate code sets for different functions, as taught by Song, met the "non-contention" limitation by reducing or avoiding collision probability.
    • Motivation to Combine: Petitioner asserted that while Song described a mobile station receiving a ranging response (RNG-RSP) message and subsequently adjusting its time and frequency offsets, it did not specify the contents of that message. A person of ordinary skill in the art (POSITA) would look to the governing IEEE 802.16 standard, WiMAX, for implementation details. WiMAX explicitly disclosed that the RNG-RSP message includes a "Timing Adjust" field to facilitate synchronization. A POSITA would combine WiMAX with Song to implement Song’s system in a standards-compliant manner, ensuring interoperability and improving synchronization efficiency.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references related to the same IEEE 802.16 wireless communication systems. The combination represented a predictable application of a known, standardized technique (the RNG-RSP message format from WiMAX) to improve a similar system (the handover procedure in Song).

Ground 2: Obviousness of Apparatus Claims over Song/WiMAX in view of Cleveland - Claims 16, 17, 20, 21, 25, 27, and 30 are obvious over Song in view of WiMAX, further in view of Cleveland.

  • Prior Art Relied Upon: Song (Application # 2005/0117539), WiMAX (IEEE 802.16 Standard, Oct. 2004), and Cleveland (Application # 2007/0066226).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed the apparatus claims, which added hardware limitations (e.g., a "processor," "receiver," and "transmitter") to the methods challenged in Ground 1. Petitioner argued that the combination of Song and WiMAX taught the method steps, as detailed previously. The Cleveland application was introduced to explicitly teach a mobile station configured with the necessary hardware components to perform these functions. Cleveland's Figure 3 showed a standard mobile device architecture comprising a main processor, RF transceiver, and associated processing circuitry for operation in an OFDMA network.
    • Motivation to Combine: Petitioner contended that a POSITA seeking to implement the wireless communication methods taught by Song and WiMAX would have found it obvious to use a mobile station with the standard hardware configuration disclosed in Cleveland. All three references operated in the same technical field of OFDMA/802.16 systems. The combination was a simple and predictable substitution of a known element (the generic mobile station in Song/WiMAX) with a more detailed, but functionally equivalent, known element (the mobile station hardware in Cleveland) to achieve the desired result.
    • Expectation of Success: Success was predictable because the combination involved implementing known communication techniques on standard, well-understood hardware. Each component (processor, transmitter, receiver) would perform its intended and well-known function to yield the predictable result of a functioning mobile device capable of executing the challenged method claims.

4. Key Claim Construction Positions

  • "non-contention": Petitioner argued that for the purposes of the inter partes review (IPR), under the Broadest Reasonable Interpretation (BRI) standard, the term "non-contention" should be construed to mean "reduces the probability of collision or avoids collision." This construction was asserted to be consistent with the ’320 patent's abstract, which stated that pre-allocating identifiers "reduces the probability of random access channel collisions." Petitioner noted this construction was also consistent with the Patent Owner's own arguments in related district court litigation and was critical to mapping the prior art, which achieved collision reduction by separating code sets rather than guaranteeing zero collisions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution was warranted and not redundant to a concurrently filed IPR (IPR2018-00704). This petition relied on prior art (Song, WiMAX, Cleveland) with effective dates that were significantly earlier than the ’320 patent's priority date. This was done specifically to preempt an anticipated "swearing behind" defense from the Patent Owner, who had alleged a conception date in related litigation that could potentially antedate the art used in the other petition. Petitioner argued this made the grounds in this petition distinct and necessary to ensure a complete review on the merits.

6. Relief Requested

  • Petitioner requested that the Board institute an IPR and cancel claims 1, 3, 4, 8-10, 12, 15-17, 20, 21, 25, 27, and 30 of the ’320 patent as unpatentable.