PTAB

IPR2019-00200

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

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1. Case Identification

2. Patent Overview

  • Title: Wireless Access System for Packet-Based Data Network
  • Brief Description: The ’312 patent discloses a system for providing wireless access to a packet-based data network. The system comprises a gateway (e.g., a base station) that interfaces with a mobile device and connects to a packet network, and a "coordination center" that communicates with and manages the gateway.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bergenwall and Borgelt - Claims 8-11, 13, 34, 39-45 and 47-55 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: Petitioner argued that Bergenwall teaches all major elements of the claimed system, including an IP-based, auto-configuring base station (the "gateway") that communicates with a configuration server (the "coordination center") over a public packet-based network. However, Bergenwall only generally mentions using "known encryption methods." Petitioner asserted that Borgelt, as analogous art, supplies the specific encryption techniques recited in the claims, such as associating a unique identity with a cryptographic key for authentication and secure communication.
    • Motivation to Combine: A POSITA would combine these references because Bergenwall expressly states its system uses "known encryption methods" like "encryption keys" and "digital signatures" without providing implementation details. This would directly motivate a POSITA to consult a reference like Borgelt, which details well-known public/private key encryption techniques for communication systems, to implement the security features suggested by Bergenwall.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because implementing Borgelt’s standard encryption would not alter Bergenwall’s fundamental architecture. Both references relate to communication systems where base stations and controllers exchange configuration and operational data.

Ground 2: Obviousness over Bergenwall, Sudia, and Thro - Claims 8-11, 13, 34, and 39-55 are obvious over Bergenwall in view of Sudia and Thro.

  • Prior Art Relied Upon: Bergenwall (WO 99/35800), Sudia (Patent 6,009,177), and Thro (Patent 5,864,764).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground uses the same base system from Bergenwall. Instead of Borgelt, it used Sudia to teach the claimed encryption elements and Thro to provide additional details about the structure and operation of the base stations and configuration server. Petitioner argued Sudia teaches using digital certificates to bind a unique identity (like a serial number) to a cryptographic key in a tamper-resistant device, mirroring the ’312 patent’s disclosure. Thro was argued to provide further detail on "known network elements" referenced by Bergenwall, such as using an embedded GPS for location reporting, monitoring signal strength, and periodically reporting status to a coordination center.
    • Motivation to Combine: The motivation to add Sudia is the same as for Borgelt in Ground 1—to implement the "known encryption methods" mentioned in Bergenwall. A POSITA would combine Thro because it details the structure and operation of "known network elements" for the same type of GSM/TCP/IP network described in Bergenwall, fitting together like "pieces of a puzzle." Thro’s teachings on GPS integration and periodic reporting would be seen as a way to automate and improve the configuration process described by Bergenwall.
    • Expectation of Success: The combination would have been successful because the references are highly compatible. Thro and Bergenwall describe analogous systems, and Sudia’s encryption methods are designed for the very type of packet network communications used in both.

Ground 3: Obviousness over Bergenwall, Sudia, Thro, and Shibasaki - Claims 43, 49, and 53 are obvious over Bergenwall, Sudia, and Thro in view of Shibasaki.

  • Prior Art Relied Upon: Bergenwall (WO 99/35800), Sudia (Patent 6,009,177), Thro (Patent 5,864,764), and Shibasaki (Patent 6,724,731).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on the combination of Bergenwall, Sudia, and Thro to specifically address claims related to periodic updates, verification, and disconnection (claims 43, 49, 53). Petitioner asserted that Shibasaki teaches a server that periodically polls base stations to verify their operational status. If a base station fails to respond, the server marks it as non-operable and disconnects it by ceasing to route data to it, directly teaching the limitations of claims 49 (periodically verifies operation) and 53 (disconnect selected gateways). The periodic response from the base station teaches the periodic update of claim 43.
    • Motivation to Combine: A POSITA would be motivated to add Shibasaki’s monitoring and disconnection functionality to the system of Bergenwall/Thro to enhance network management and reliability. Monitoring the status of base stations is a natural and logical addition to the network management functions described in the primary references.
    • Key Aspects: Petitioner noted that the examiner in the related ’638 prosecution had already found that Shibasaki teaches these specific claim elements in the context of Bergenwall.

  • Additional Grounds: Petitioner asserted alternative grounds (4-6) for all challenged claims. These grounds argued that if the term "coordination center" is construed to require determining and publishing a price policy, the combinations of Bergenwall, Borgelt, Sudia, Thro, and Shibasaki would be further combined with Vedel (Patent 5,974,308) and/or Kari (WO 97/26739), which teach dynamic pricing and billing functions in a cellular network.

4. Key Claim Construction Positions

  • "coordination center": Petitioner proposed this term be construed as "computer(s) that coordinates operation of the [gateways]." This construction is broad enough to read on the configuration server (CFS) and/or Base Station Controller (BSC) in Bergenwall. Petitioner argued the term has no established meaning and must be limited to the specification, which describes coordinating gateway operations.
  • "connection regulator adapted to facilitate data flow...": Petitioner argued this is a means-plus-function term under §112, paragraph 6, that lacks corresponding structure in the specification. For the purposes of the IPR, Petitioner proposed its plain and ordinary meaning: "a portion of the gateway that facilitates the data flow." This counters the Patent Owner's proposed construction and forms a basis for arguing the prior art inherently discloses such a component.
  • "gateway is associated, with a unique identity bound, to a cryptographic key": Petitioner argued this should be construed to mean "the gateway's unique identity and a cryptographic key are bound together in a digital certificate." This construction is based on the patent's only disclosed embodiment and what a POSITA would understand from the term "binding" in the context of cryptography.

5. Key Technical Contentions (Beyond Claim Construction)

  • Defective Priority Claim: A central argument was that the ’312 patent is not entitled to its claimed 1999 priority date. Petitioner asserted the priority chain is broken because an intervening application in the chain failed to properly identify its relationship to the prior PCT application, as required by statute and regulations. If this argument prevails, Bergenwall (published July 1999) becomes a statutory bar under §102(b) against the patent, which would have a later effective filing date of 2001.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). The reasons provided were that this was the first IPR filed against the ’312 patent; the primary prior art (Bergenwall, Thro, Sudia) was never considered by the examiner during the original prosecution; and the parallel district court litigation trial was not scheduled until August 2019, providing ample time for an FWD before trial.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 8-11, 13, 34, and 39-55 of Patent 8,559,312 as unpatentable.