Intel Corp v. Hera Wireless SA

1. Case Identification

• Case #: IPR2018-01702
• Patent #: 7,873,389
• Filed: September 14, 2018
• Petitioner(s): Intel Corporation
• Patent Owner(s): Hera Wireless SA.
• Challenged Claims: 1-3

2. Patent Overview

• Title: Wireless Communication with Reception Mode Signaling
• Brief Description: The ’389 patent relates to wireless communication systems using multi-antenna base stations. It discloses a method where a base station transmits a frame containing a single information bit to a radio terminal, instructing the terminal on which reception operation to use to best adapt to the base station's specific transmission technique.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 are anticipated or rendered obvious by Park.

• Prior Art Relied Upon: Park (WO 99/59263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Park disclosed all limitations of the challenged claims. Park teaches a mobile communication system where a base station, upon receiving a connection request, transmits a message to the mobile station. This message has a format (Fig. 8C) that constitutes a multiple-field frame. The frame includes a "TSTD mode change" field, which Petitioner asserted is a single bit indicating one of two reception operations (TSTD or non-TSTD mode), and an "other information elements" field, which constitutes data in a mutually different field. Petitioner noted that the European examiner for the ’389 patent's counterpart concluded that Park disclosed these limitations.
  • Motivation to Combine (for §103 grounds): In the alternative, Petitioner argued it would have been obvious to use a single bit for the TSTD mode change field, as it is the most efficient way to signal a choice between two states.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in using a single bit for a binary instruction, as this is a fundamental and predictable design choice in digital communications.

Ground 2: Claims 1-3 are anticipated by Ishida.

• Prior Art Relied Upon: Ishida (Application # 2001/0014588).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Ishida, which was conceded as prior art during prosecution of a parent application, anticipates every claim limitation. Ishida discloses a Personal Handyphone System (PHS) base station that sends a "diversity reception stop instruction" in response to a traffic channel assignment request. This instruction is a single "D flag" bit within a Link Channel Assignment Message, which is transmitted in a multiple-field frame conforming to the PHS standard. The D flag instructs the terminal whether to use diversity reception, and it is located in a different field from other data in the frame (e.g., message type, LCH type). Petitioner asserted that Ishida discloses the same solution to the same problem described in the ’389 patent.

Ground 4: Claims 1-3 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: PHSv2, which the ’389 patent acknowledges as background art, discloses the essential framework of a PHS system, including communication between a base station and terminal via multiple-field frames. The PHSv2 standard explicitly includes "reserved" bits in its Link Channel Assignment Message frame that are saved for future extensions. Uhlik teaches a wireless 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 POSITA would combine Uhlik's teaching of a single-bit instruction for an optional reception mode (frequency hopping) with the established PHSv2 system. The motivation was to improve PHSv2's interference abatement capabilities—a stated goal of PHSv2—by implementing the known technique of frequency hopping. Using one of PHSv2's "reserved" bits for this single-bit instruction would be an obvious design choice to implement the new feature while maintaining backward compatibility with legacy terminals.
  • Expectation of Success (for §103 grounds): A POSITA would expect success because applying a known interference-reduction technique like frequency hopping to a known wireless system (PHS) was a predictable improvement. Implementing the control mechanism via a single reserved bit was a straightforward and common engineering practice.

• Additional Grounds: Petitioner asserted an additional challenge in Ground 3, arguing claims 1-3 are anticipated or rendered obvious by Uhlik alone.

4. Key Claim Construction Positions

• Petitioner argued that the claim 2 phrase "accept the multiple-field frame only in a prescribed manner" should be construed to apply to frames transmitted after the initial response frame containing the instruction bit.
• Petitioner contended that a construction limiting the instruction's effect to the very frame that contains it would be nonsensical, as a terminal cannot adapt its reception method for a frame it has already received using a different method. This position was supported by language in the ’389 patent stating that the terminal applies the new reception operation "from that point onward."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is not barred by 35 U.S.C. §325(d) because the asserted prior art and arguments are new and were not substantively considered during prosecution.
• Park: Although listed on an IDS, the examiner never substantively addressed or mentioned Park in any office action or reason for allowance.
• Ishida: While Ishida was mentioned in an interview summary for a parent application, the summary lacked any substantive reasoning, and the applicant failed to file a required "statement of the substance of the interview," leaving the record silent on the examiner's analysis.
• Uhlik and PHSv2: Neither reference was ever before the examiner during prosecution of the ’389 patent. Petitioner argued PHSv2 is particularly important as the ’389 patent is an admitted improvement upon the PHS standard.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3 of the ’389 patent as unpatentable.