PTAB

IPR2019-00631

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 Communication System with Coordinated Base Stations
  • Brief Description: The ’312 patent relates to wireless telecommunications systems featuring base stations (referred to as "gateways") that interface with a central "coordination center." The technology is directed at a system and method for adding new base stations to an existing network infrastructure, wherein the coordination center manages the operation of these gateways.

3. Grounds for Unpatentability

Ground 1: Obviousness over Thro and Averbuch - Claims 1-7, 14-33, and 35-38 are obvious over Thro in view of Averbuch.

  • Prior Art Relied Upon: Thro (Patent 5,864,764) and Averbuch (Patent 5,901,142).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Thro teaches the core components of the claimed system: an "infrastructure transceiver" that functions as the claimed "gateway" and a "configuration server" that functions as the claimed "coordination center" for managing base stations. The combination with Averbuch was argued to supply necessary details of the underlying TCP/IP packet network, including routing IP packets and tracking mobile units as they move between base stations, functionalities that Thro presumes as part of the existing network. For example, Thro’s gateway determines its location via an embedded GPS and reports it to the coordination center, satisfying key limitations of independent claim 1.
    • Motivation to Combine: A POSITA would combine Thro and Averbuch because both Motorola-owned patents describe aspects of the same commercial network (iDEN), were filed only months apart, and are highly complementary. Petitioner asserted that Averbuch provides the detailed network management and coordination functionality (e.g., mobile tracking, handover procedures) that Thro’s system for auto-configuring base stations requires to operate effectively in a real-world mobile environment.
    • Expectation of Success: The combination was argued to be predictable and straightforward. The references describe compatible systems and technologies, with Averbuch merely providing a known, detailed solution for network management to enhance the auto-configuration system taught in Thro.

Ground 2: Obviousness over Thro, Averbuch, and Borgelt - Claims 8-11, 13, 34, and 39-55 are obvious over the combination of Thro and Averbuch in view of Borgelt.

  • Prior Art Relied Upon: Thro (Patent 5,864,764), Averbuch (Patent 5,901,142), and Borgelt (Patent 5,398,285).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Borgelt, another Motorola patent, teaches the claimed encryption elements. Petitioner relied heavily on the prosecution history of a related patent (’638 patent) where the Examiner found multiple times that Borgelt taught binding a cryptographic key to a base station's unique identifier and using that key for encrypted communications. Borgelt's disclosure of using public key cryptography, including digital signatures for authentication and encryption for data security, was argued to map directly to the limitations of the challenged encryption claims (e.g., claims 8-11).
    • Motivation to Combine: A POSITA would be motivated to add Borgelt's teachings to secure the communications between the base station and coordination center taught by Thro/Averbuch. Borgelt explicitly teaches the importance of encrypting software updates and activation commands—key functions of Thro’s configuration server—to protect network integrity from unauthorized access.
    • Expectation of Success: Petitioner argued success was expected because applying well-known encryption techniques, as taught by Borgelt, to the packet-based network of Thro/Averbuch was a straightforward implementation. The components described in the primary references were asserted to have the necessary processing capacity for such encryption.

Ground 3: Obviousness over Thro, Averbuch, and Sudia - Claims 8-11, 13, 34, and 39-55 are obvious over the combination of Thro and Averbuch in view of Sudia.

  • Prior Art Relied Upon: Thro (Patent 5,864,764), Averbuch (Patent 5,901,142), and Sudia (Patent 6,009,177).
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to Borgelt, Petitioner argued Sudia provides extensive detail on implementing the claimed cryptographic techniques. Sudia was shown to teach using digital certificates (e.g., via Diffie-Hellman or RSA algorithms) to bind a device's serial number (a unique identity) to its public key, which Petitioner argued mirrors the ’312 patent’s own disclosure. Sudia also allegedly teaches storing keys in "tamper-resistant" hardware with key-erasure capabilities, mapping to the limitation in claim 13.
    • Motivation to Combine: The motivation was to secure the data, software, and parameter updates exchanged between the base station and coordination server in the Thro/Averbuch system. A POSITA would apply Sudia's well-known techniques for data security (encryption) and authenticity (digital signatures) to protect these critical communications, especially when transmitted over a public TCP/IP network.
    • Expectation of Success: The combination was presented as predictable because Sudia's methods are designed specifically for packet networks like the one in Thro/Averbuch. Petitioner asserted there is nothing unique about the base system that would prevent the successful application of Sudia’s standard encryption protocols.
  • Additional Grounds: Petitioner asserted alternative grounds (4-6) that were substantially similar to Grounds 1-3 but added Vedel (Patent 5,974,308) to the combinations to explicitly address potential claim constructions requiring a pricing/billing policy.

4. Key Claim Construction Positions

  • "coordination center": Petitioner noted that while the prior art invalidates the claims under either party's construction, it proposed a construction from litigation as "one or more computers that coordinates the operation of add-on base stations and determines and disseminates a price policy to add-on base stations."
  • "said gateway is associated, with a unique identity bound, to a cryptographic key": Petitioner proposed this term requires that "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 its argument that Sudia explicitly teaches this element.
  • "wherein said cryptographic key resides within tamper-free hardware": Petitioner pointed to the specification's definition of "tamper-free" as including "means to destroy its contents or delete the information therein, if someone tries to tamper with it." This construction was used to evaluate whether the prior art met this specific limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate. The petition was framed as a necessary and direct response to the Patent Owner's alleged "strategic gamesmanship"—specifically, the threat to introduce "newly-discovered," 20-year-old conception evidence to antedate a key prior art reference ([Bergenwall](https://ai-lab.exparte.com/case/ptab/IPR2019-00631/doc/1007)) used in Petitioner's earlier-filed IPRs.
  • Petitioner contended that under the General Plastic factors, this follow-on petition does not constitute improper serial petitioning. The core reason provided was that it was filed prudently in response to new information (the Patent Owner's threat), which was not available during the initial filings. Therefore, Petitioner argued this filing was not an attempt to harass or use a prior decision as a "roadmap," but to ensure a complete challenge in light of the Patent Owner's litigation tactics.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-11 and 13-55 of the ’312 patent as unpatentable.