PTAB

IPR2019-00631

Cellco Partnership v. Barkan Wireless IP Holdings LP

Key Events

Petition

petition

Title: Wireless Telecommunication Base Station Management
Brief Description: The ’312 patent relates to wireless telecommunications systems featuring base stations, referred to as "gateways," that interface with a central "coordination center" over a packet-based data network. The patented gateways are adapted to determine their own physical location and report this and other operational data to the coordination center for network management.

Prior Art Relied Upon: Averbuch (Patent 5,901,142) and Thro (Patent 5,864,764).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Averbuch teaches the fundamental architecture of a cellular system operating over a TCP/IP packet network, including a system controller and packet data router for managing mobile communications. Thro was asserted to disclose the specific claimed "gateway" (as an "infrastructure transceiver") and "coordination center" (as a "configuration server"). Thro’s system includes gateways with GPS for self-location that periodically report their status and local radio frequency (RF) environment to the server, allegedly meeting the core limitations of the non-encryption claims.
- Motivation to Combine: A POSITA would combine these references as they both describe elements of the same commercially available Motorola 'iDEN' network, were filed within months of each other, and use similar technical terminology. Petitioner contended that Thro’s auto-configuration and management functionalities for base stations would have been a recognized and desirable improvement to the network disclosed in Averbuch, providing an express motivation for the combination.
- Expectation of Success: A POSITA would have had a high expectation of success because the combination involves integrating complementary and highly related technologies from what is effectively the same underlying system.

Prior Art Relied Upon: Averbuch (Patent 5,901,142), Thro (Patent 5,864,764), and Borgelt (Patent 5,398,285).
Core Argument for this Ground:
- Prior Art Mapping: This ground adds Borgelt to the base combination of Averbuch and Thro to teach the encryption-related limitations. Petitioner argued that Borgelt, also a Motorola patent, explicitly teaches the use of public/private key cryptography for digital signatures and data security in communications between a base station and a system controller. This includes binding a cryptographic key to a unique identifier for the base station, authenticating the base station to the controller, and encrypting communications.
- Motivation to Combine: A POSITA would add Borgelt’s security features to the Averbuch/Thro system to protect the sensitive software updates and RF operational parameters that Thro’s configuration server sends to its base stations. The importance of encrypting such critical network control communications provided a strong motivation to incorporate known security techniques like those in Borgelt.
- Key Aspects: Petitioner emphasized that during the prosecution of the related ’638 patent, the PTO Examiner repeatedly found that Borgelt taught these same encryption elements in a nearly identical context.

Prior Art Relied Upon: Averbuch (Patent 5,901,142), Thro (Patent 5,864,764), and Sudia (Patent 6,009,177).
Core Argument for this Ground:
- Prior Art Mapping: As an alternative to Borgelt, this ground asserted that Sudia teaches the claimed encryption elements. Petitioner argued Sudia extensively details well-known cryptographic techniques, such as RSA and Diffie-Hellman, as applied to packet communication networks like the internet. Sudia’s teachings allegedly include using a digital certificate issued by a certificate authority to bind a device's serial number (a unique identity) to its public encryption key.
- Motivation to Combine: A POSITA would have been motivated to apply Sudia’s established encryption and authentication methods to the Averbuch/Thro system for the same reasons as with Borgelt: to secure the critical communications between the gateways and the coordination center. Sudia provides a detailed and robust framework for implementing security on the exact type of TCP/IP network used in the primary references.
Additional Grounds: Petitioner asserted alternative obviousness grounds (Grounds 4-6) which added Vedel (Patent 5,974,308) to the primary combinations. These grounds were intended to address a potential claim construction of "coordination center" that required it to determine and publish a price policy, a feature Petitioner argued was taught by Vedel.

"coordination center": Petitioner contended that the challenged claims were obvious regardless of whether this term is construed to include the disputed function of determining and disseminating a price policy.
"said gateway is associated, with a unique identity bound, to a cryptographic key": Petitioner proposed this term be construed to mean "the gateway's unique identity and a cryptographic key are bound together in a digital certificate issued by a certificate authority." This construction was central to Petitioner’s argument that prior art like Sudia, which explicitly teaches digital certificates, meets the limitations of the encryption claims.

Petitioner argued that discretionary denial under §314(a) and §325(d) would be inappropriate. The petition asserted it was not an improper serial petition but rather a necessary and "prudent response" to the Patent Owner's alleged "gamesmanship" in related proceedings. Specifically, Petitioner claimed this filing was prompted by the Patent Owner's threat to introduce new, 20-year-old evidence to swear behind a primary reference (Bergenwall) used in earlier-filed petitions, thereby forcing Petitioner to rely on different prior art combinations.

Petitioner requests institution of an inter partes review and cancellation of claims 1-11 and 13-55 of Patent 8,559,312 as unpatentable.