Intel Corp v. Hera Wireless SA

1. Case Identification

• Case #: IPR2018-01372
• Patent #: Patent 8,412,115
• Filed: July 17, 2018
• Petitioner(s): Intel Corporation
• Patent Owner(s): Hera Wireless S.A.
• Challenged Claims: 1-6

2. Patent Overview

• Title: Radio Communication Apparatus
• Brief Description: The ’115 patent describes a radio apparatus for use in Multiple-Input Multiple-Output (MIMO) wireless communication systems. The purported invention is a radio that stores a value indicating the potential multiplicity of formable spatial paths and transmits this value to another radio apparatus at a predetermined timing to configure the communication link.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are anticipated by or obvious over Wallace

• Prior Art Relied Upon: Wallace (Application # 2002/0193146).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wallace, which discloses negotiations between a base station and mobile station to determine transmission modes, teaches all limitations of the challenged claims. Wallace’s mobile station stores and transmits "diversity capability information," including the number of antennas and Channel State Information (CSI), at predetermined times, such as during call setup. This information functions as the claimed "value indicating possible multiplicity." Wallace's disclosure of transmitting CSI values (e.g., SNR) reflecting path quality also met the limitation in dependent claims 3 and 6 of storing a value indicating the "number of spatial paths capable of attaining normal reception."
  • Motivation to Combine (for §103 grounds): For the obviousness assertion, Petitioner argued it was an obvious design choice to use Wallace's disclosed memory device to store antenna and CSI information before transmission, as this applied a known technique to achieve the predictable result of transmitting the values.

Ground 2: Claims 1-6 are obvious over Wallace in view of Ling

• Prior Art Relied Upon: Wallace (Application # 2002/0193146) and Ling (Application # 2003/0003880).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Ling’s teachings on improving CSI feedback were a natural and obvious addition to the system in Wallace. Ling teaches using compressed "data rate indicators" as a form of CSI, where a zero value indicates a path should not be used. This provides an efficient method for communicating the "value indicating possible multiplicity" and identifying paths capable of normal reception. Furthermore, Ling’s explicit teaching of reporting CSI "periodically" addressed the "predetermined timing" limitation.
  • Motivation to Combine: A POSITA would combine Ling's efficient data rate indicators and periodic reporting with Wallace’s system to improve communication efficiency and quality. This combination would reduce feedback overhead and allow the system to better adapt to changing channel conditions, a shared objective of both references. The references are in the same technical field, share inventors, and address the same problem of adapting MIMO communications.
  • Expectation of Success: Success was expected because integrating Ling's methods would be straightforward, as Wallace's system already measured the SNR values needed to calculate Ling's data rate indicators.

Ground 3: Claims 1-6 are anticipated by or obvious over Paulraj

• Prior Art Relied Upon: Paulraj (Patent 6,351,499).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended Paulraj, which details a MIMO system that adapts based on channel quality, discloses all claim limitations. In Paulraj, a receiver calculates and stores a parameter "k" representing the number of spatial streams to use, based on quality measurements like Signal-to-Interference-plus-Noise Ratio (SINR). This "k" value is a direct parallel to the claimed "value indicating possible multiplicity." Paulraj discloses transmitting this value at predetermined times (e.g., system initialization and regularly during operation) to configure the link. Paulraj also explicitly discloses storing the "k" value in a database or lookup table before it is used or transmitted, satisfying the "stores beforehand" limitation.
  • Motivation to Combine (for §103 grounds): For the alternative obviousness argument, Petitioner contended that applying well-known memory storage techniques to Paulraj's disclosed parameters would have been a conventional and predictable design choice.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-6 based on Paulraj in view of Mukerjee (Patent 5,479,484), arguing it would have been obvious to use the processor and memory taught in Mukerjee to implement the control and storage functions of Paulraj’s system.

4. Key Claim Construction Positions

• Petitioner proposed constructions for "communication unit," "storage unit," and "control unit" only in the event the Board applied a means-plus-function analysis under 35 U.S.C. §112 ¶6.
• Petitioner argued these terms have an ordinary meaning to a POSITA (e.g., a "storage unit" is a memory). However, if treated as functional limitations, the specification provides sufficient corresponding structure (e.g., the memory MMU for the "storage unit" and the processor/control circuit USP for the "control unit"), making the ultimate construction functionally equivalent under either interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the primary references relied upon in the petition—Wallace, Ling, Paulraj, and Mukerjee—were not before the examiner during the original prosecution of the ’115 patent.
• It was further argued that these references were not cumulative of the art previously considered by the USPTO.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of Patent 8,412,115 as unpatentable.