Cellco Partnership d/b/a Verizon Wireless v. Barkan Wireless IP Holdings, L.P.

1. Case Identification

• Case #: IPR2018-01659
• Patent #: 8,014,284
• Filed: September 6, 2018
• Petitioner(s): Cellco Partnership D/B/A Verizon Wireless
• Patent Owner(s): Barkan Wireless IP Holdings, L.P.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Wireless Base Stations
• Brief Description: The ’284 patent relates to wireless telecommunications systems, specifically a gateway or base station that connects a mobile device to a packet-based data network. The purported novelty involves interfacing this gateway with a "coordination center" to regulate data flow.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bergenwall - Claims 1-3, 5-6, 9-10, 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 asserted that Bergenwall, which was never considered during the original prosecution of the ’284 patent, discloses all key elements of the independent claims. Bergenwall teaches an IP-based, auto-configuring base station that connects to a cellular radio system via an IP network. Its "configuration server (CFS)" performs the functions of the claimed "coordination center" by providing IP address information to the base station. Its base station acts as the claimed "gateway," its IP network is the "packet-based data network," and its internal processor is the "controller" that regulates data flow using information received from the CFS. Petitioner emphasized that an examiner in a related prosecution (’638 patent) repeatedly found nearly identical claims to be unpatentable over Bergenwall.
  • Key Aspects: The core of Petitioner's case rested on the argument that Bergenwall alone teaches the fundamental architecture of the claimed invention, rendering the claims obvious.

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 the "operational status" limitations in claims 9, 16, and 17. While Petitioner argued Bergenwall inherently discloses reporting operational status, Shibasaki was introduced to explicitly teach this feature. 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: A Person of Ordinary Skill in the Art (POSA) would combine these references because Bergenwall expressly states its system can be used with "known network elements." A POSA seeking to implement status monitoring—a known and desirable feature—would look to analogous systems like Shibasaki, which teaches managing the operational status of base stations over an IP network.
  • Expectation of Success: The combination would have been successful because no architectural changes would be required. Shibasaki's server-based status monitoring would fit seamlessly into Bergenwall’s architecture, where a central configuration server already communicates with base stations.

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 addressed limitations related to unique identity and encryption. Bergenwall suggests using "known encryption methods." Borgelt was presented as a reference that discloses these precise methods, teaching the use of public key cryptography, digital signatures, and unique identification codes to secure communications between base stations and system controllers. Borgelt teaches generating passwords and encryption keys tied to a base station's unique hardware ID.
  • Motivation to Combine: The motivation was explicit in Bergenwall’s disclosure, which acknowledges the need for security on an IP network and suggests using known encryption methods. A POSA would naturally turn to a reference like Borgelt, which details a well-known method for securing the exact type of communications system described in Bergenwall.
  • Expectation of Success: A POSA would expect success because Borgelt provides a known solution to a known problem (securing network communications) that is directly applicable to Bergenwall’s system without altering its core architecture.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Bergenwall with Thro (Patent 5,864,764) to add further detail on gateway internals; Bergenwall, Thro, and Sudia (Patent 6,009,177) for alternative encryption teachings; and Bergenwall and Vedel (Patent 5,974,308) for adding a "consideration-related policy database." Petitioner also presented alternative grounds (7-12) substituting these combinations for a different construction of "coordination center."

4. Key Claim Construction Positions

• "coordination center": Petitioner proposed this term be construed as "computer(s) that coordinates operation of the [gateways]." This construction was based on the specification's description of the center's function. Petitioner further argued that if the term is construed more narrowly to include determining and publishing a "price policy," the combination of Bergenwall with Vedel and/or Kari (WO 97/26739) would render the claims obvious.
• "consideration-related policy database": Petitioner argued this term should be construed as a "billing database located on the Internet that is not the same database as the authentication database." This construction was based on explicit disclaimers made during prosecution to distinguish prior art, where the patentee stated the database was a billing database (unlike an authentication database) and was "located on the Internet."

5. Key Technical Contentions (Beyond Claim Construction)

• Defective Priority Claim: A central contention was that the ’284 patent is not entitled to its claimed 1999 priority date due to a defective priority claim. Petitioner argued the priority claim failed for two reasons: 1) it used vague language ("is related to") instead of identifying the specific familial relationship (e.g., continuation, divisional) as required by 35 U.S.C. §120 and 37 C.F.R. § 1.78; and 2) it improperly attempted to claim foreign priority under 35 U.S.C. §119(a) nearly 22 months after the PCT filing, far exceeding the 12-month statutory window. If this argument is successful, Bergenwall becomes a statutory bar under §102(b).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) or §314(a) would be inappropriate. The petition was asserted to be distinct from a previously filed IPR by Unified Patents because it relies on new evidence and arguments, including multiple prior art references (Shibasaki, Borgelt, Thro, etc.) not used in the Unified Patents IPR or during prosecution. As a new petitioner, Petitioner argued the General Plastic factors strongly favor institution.

7. Relief Requested

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