PTAB

IPR2018-01659

Cellco Partnership v. Barkan Wireless IP Holdings LP

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Base Stations
  • Brief Description: The ’284 patent relates to wireless telecommunication systems, specifically gateways (base stations) that connect mobile devices to a packet-based data network. The purported novelty involves the gateway interfacing with and being regulated by a "coordination center" over the network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bergenwall - Claims 1-3, 5-6, 10, 12-14, 16-18, and 20-21 are obvious over Bergenwall.

  • Prior Art Relied Upon: Bergenwall (WO 99/35800).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bergenwall, which was never considered during the original prosecution of the ’284 patent, discloses all elements of the independent claims and most dependent claims. Bergenwall teaches a system for the fast, automated installation of IP-based, auto-configuring base stations into an existing cellular network. Petitioner asserted that Bergenwall’s “base transceiver station (BTS) 100” is the claimed “gateway,” its “IP information network” is the claimed “packet-based data network,” and its “configuration server (CFS) 104” is the claimed “coordination center.” The petition highlighted that an examiner in a related prosecution (’638 patent) repeatedly found nearly identical claims to be unpatentable over Bergenwall, and the Patent Owner only overcame these rejections by adding limitations not present in the challenged claims of the ’284 patent.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner argued that Bergenwall alone renders the claims obvious.
    • Expectation of Success (for §103 grounds): Not applicable.
    • Key Aspects: Petitioner contended that because the Patent Owner’s priority claim to a 1999 PCT application is defective, Bergenwall (published July 15, 1999) qualifies as a statutory bar under 35 U.S.C. §102(b) against the patent’s 2001 filing date.

Ground 2: Obviousness over Bergenwall and Shibasaki - Claims 9, 16, and 17 are obvious over Bergenwall in view of Shibasaki.

  • Prior Art Relied Upon: Bergenwall (WO 99/35800) and Shibasaki (Patent 6,724,731).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring the gateway to report its "operational status" to the coordination center, which then maintains a record of that status. Petitioner asserted that to the extent Bergenwall’s disclosure of reporting location and configuration information is not sufficient, Shibasaki explicitly teaches this functionality. Shibasaki discloses a radio communication system where a server monitors the status of multiple base stations by sending confirmation commands and updating a link condition management table to reflect whether each station is connected or disconnected.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine these references because Bergenwall expressly states its system can be used with "known network elements." A POSITA seeking to implement status monitoring in Bergenwall’s system would look to analogous art like Shibasaki, which teaches a known method for managing the operational status of base stations over an IP network.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references are analogous and disclose servers managing network elements; no architectural changes would be required to integrate Shibasaki’s status monitoring into Bergenwall’s system.

Ground 3: Obviousness over Bergenwall and Borgelt - Claims 6-8, 14, and 15 are obvious over Bergenwall in view of Borgelt.

  • Prior Art Relied Upon: Bergenwall (WO 99/35800) and Borgelt (Patent 5,398,285).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claims requiring a "unique identity" (e.g., a unique number or digital document) containing an "encryption key" to conduct "encrypted communications." While Bergenwall generally suggests using "known encryption methods," Borgelt provides specific details for such methods. Borgelt teaches a method for generating passwords and encrypting communications between base stations and system controllers using public key cryptography, digital signatures, and unique identification codes.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to implement the known encryption methods mentioned in Bergenwall by consulting a reference like Borgelt. Borgelt provides a detailed and compatible solution for securing communications in a cellular system, directly addressing the need for protection on an IP network as described in Bergenwall.
    • Expectation of Success (for §103 grounds): Success would be expected as Borgelt is analogous art relating to secure communications in systems with base stations. Implementing Borgelt’s known encryption techniques would not alter the fundamental architecture of Bergenwall’s system.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Bergenwall with Thro (Patent 5,864,764) for details on gateways and controllers; Bergenwall with Thro and Sudia (Patent 6,009,177) for further encryption details; and Bergenwall with Vedel (Patent 5,974,308) for features related to a "consideration-related policy database."

4. Key Claim Construction Positions

  • "coordination center": Petitioner proposed this term be construed as “computer(s) that coordinates operation of the [gateways].” The petition argued that because the term has no established meaning, its scope is limited by the specification, which describes the center’s function as coordinating base station operations.
  • "consideration-related policy database": Petitioner proposed this term means a “billing database located on the Internet that is not the same database as the authentication database.” This construction was based on disclaimers made during prosecution where the Patent Owner distinguished prior art by arguing the claimed database was a billing database (not an authentication database) and was located on the Internet.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d) or §314(a). The petition contended that its challenge was substantially different from a previously filed IPR by Unified Patents (IPR2018-01186) because it relied on new prior art references (Bergenwall, etc.) not cited in the original prosecution or the Unified Patents IPR. Petitioner also asserted that as a new petitioner filing before any preliminary response in the other IPR, the General Plastic factors strongly favored institution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of Patent 8,014,284 as unpatentable.