Intel Corp v. Hera Wireless SA

1. Case Identification

• Case #: IPR2018-01701
• Patent #: 7,454,234
• Filed: September 14, 2018
• Petitioner(s): Intel Corporation
• Patent Owner(s): Hera Wireless SA.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Wireless Communication System
• Brief Description: The ’234 patent discloses a wireless communication system where a multi-antenna base station transmits a multiple-field frame to a radio terminal. The base station includes a single information bit within the frame to instruct the terminal which reception operation (e.g., diversity reception) to use, adapting the terminal’s reception to the base station’s specific transmission technique.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are anticipated or rendered obvious by Park

• Prior Art Relied Upon: Park (International Publication No. WO 99/59263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Park disclosed a base station in a mobile communication system that sends a multiple-field frame to a mobile station in response to a connection request. This frame contained a “TSTD mode change” field, which Petitioner asserted was a single bit with two possible values indicating whether the base station was using Time-Switched Transmission Diversity (TSTD). This single bit instructed the mobile station to adapt its reception mode (TSTD or non-TSTD) to the base station's transmission mode, thus meeting the limitations of independent claims 1 and 4. Dependent claims were met because the two values of the bit specified different reception operations (claim 2) and Park disclosed using a plurality of antennas for transmission and reception (claim 3).
  • Motivation to Combine (for §103 grounds): In the alternative for obviousness, Petitioner argued that using a single bit to differentiate between two operating modes is the most efficient and obvious method for instructing a terminal, as it minimizes signal processing overhead.
  • Expectation of Success (for §103 grounds): The use of a single bit for binary state signaling was a simple and well-understood technique, ensuring a high expectation of success.

Ground 2: Claims 1-4 are anticipated by Ishida

• Prior Art Relied Upon: Ishida (Application # 2001/0014588).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Ishida disclosed a Personal Handy Phone System (PHS) base station that transmits a multiple-field "link channel assignment message" to a mobile station in response to a connection request. Ishida explicitly taught modifying the standard PHS frame to use a single reserved bit as a "D flag" to instruct the terminal whether diversity reception was available or if a "diversity reception stop instruction" was being issued. When the flag was set to 1, the terminal would stop diversity reception and use a single antenna. Petitioner argued this directly mapped to all limitations of claims 1 and 4, as the single bit controlled the terminal's reception operation based on the base station's instruction. Dependent claims were met because the two flag values (0 or 1) specified distinct reception operations (claim 2) and Ishida disclosed using a plurality of antennas (claim 3).

Ground 3: Claims 1-4 are obvious over PHSv2 in view of Uhlik

• Prior Art Relied Upon: PHSv2 (Personal Handy Phone System ARIB Standard, Version 2) and Uhlik (Patent 7,158,493).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that PHSv2, an admitted prior art standard on which the ’234 patent is based, disclosed all elements of the claims except for a single bit indicating a reception operation. The PHSv2 "link channel assignment message" frame format, however, contained several "reserved" bits explicitly saved for future extensions. Uhlik taught a system where a base station sends a configuration message containing a single "hopping" bit to instruct a terminal whether to use frequency hopping.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Uhlik’s single-bit signaling with the PHSv2 system for several reasons. First, frequency hopping was a known technique to improve TDMA systems like PHS by reducing interference, a stated goal of PHSv2. Second, using one of PHSv2's reserved bits for Uhlik’s "hopping" bit was a simple modification that would allow base stations to communicate with both legacy and new frequency-hopping-enabled terminals, thereby maximizing network flexibility and maintaining backward compatibility.
  • Expectation of Success (for §103 grounds): The combination involved implementing a known signaling technique (a single control bit) into a known standard with designated placeholder bits, making the integration straightforward with a high expectation of predictable results.

• Additional Grounds: Petitioner asserted an additional challenge that claims 1-4 are anticipated or rendered obvious by Uhlik alone, which taught a single "hopping" bit in a configuration message to control a terminal's reception.

4. Key Claim Construction Positions

• Petitioner argued that the claim 2 and 4 phrase "accept the multiple-field frame only in a prescribed manner" should be construed to apply not only to the initial frame containing the instruction bit but also to all subsequent frames transmitted from the base station to the terminal. Petitioner contended that limiting the instruction's effect to only the frame in which it is received would be nonsensical, as a terminal cannot adapt its reception for a frame it has already received. This construction was argued to be supported by the specification and necessary to avoid excluding all disclosed embodiments.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It was contended that Park, though cited in an Information Disclosure Statement (IDS), was never substantively addressed by the examiner. Regarding Ishida, Petitioner noted that while the examiner initially rejected claims over it, the subsequent allowance record is silent because the patent owner's assignor failed to file a required statement explaining the substance of an interview where Ishida was discussed. Finally, PHSv2 and Uhlik were argued to be new to the Patent Office, presenting art and arguments not previously considered.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 of the ’234 patent as unpatentable.