Cisco Systems Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00964
• Patent #: Patent 6,285,892
• Filed: April 22, 2019
• Petitioner(s): Cisco Systems, Inc.
• Patent Owner(s): Philips Intellectual Property & Standards
• Challenged Claims: 1, 4-5, and 8

2. Patent Overview

• Title: System for Reducing Power Consumption of Wireless Terminals
• Brief Description: The ’892 patent relates to a system for reducing power consumption in networked wireless terminals, particularly within wireless Asynchronous Transfer Mode (ATM) networks. The system manages data transmission by switching terminals between a low-power mode and a data-receiving mode to conserve battery life.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chen’98 and Chen’97 - Claims 1, 4-5, and 8 are obvious over Chen’98 in view of Chen’97.

• Prior Art Relied Upon: Chen'98 (a 1998 IEEE publication titled "A Comparison of MAC Protocols for Wireless Local Networks Based on Battery Power Consumption") and Chen'97 (a 1997 IEEE publication titled "Low-power Access Protocols Based on Scheduling for Wireless and Mobile ATM Networks").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Chen'98 and Chen'97 taught all limitations of the challenged claims. Chen’98 described an energy-conserving medium access control (EC-MAC) protocol for wireless networks that used a base station to schedule data transmission slots. This protocol allowed mobile terminals to enter a "standby mode" when not actively transmitting or receiving, thus saving power. While Chen'98 provided the general framework, Chen'97, which described the same EC-MAC protocol in greater detail, supplied the specific implementation details. Chen'97 taught that a "schedule beacon" message from the base station contained slot allocations grouped by a sender ID (i.e., the transmitter's address) and a virtual circuit identifier (VCid). Petitioner asserted this combination of identifiers in the beacon message taught the claimed limitations of identifying the transmitter and the set of receiving terminals. Based on this schedule beacon, each terminal could determine if it was an intended recipient for data in a given slot and power on its receiver only at the appropriate time, leaving it in a low-power "standby mode" otherwise.
  • Motivation to Combine: Petitioner presented several motivations for a person of ordinary skill in the art (POSITA) to combine the references. First, Chen’98 expressly cited Chen’97 as a reference providing further details on the EC-MAC protocol, creating a direct link between the two documents. Second, the papers shared multiple co-authors, and a POSITA researching the EC-MAC protocol would naturally have consulted related work by the same authors. Third, a POSITA would combine Chen'97's detailed schedule beacon format and its explicit support for efficient peer-to-peer and multicast transmissions to improve the functionality and performance of the general system described in Chen'98, which was a known design choice to enhance network efficiency.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success in combining the teachings. Both references described the same underlying EC-MAC protocol, ensuring compatibility. Furthermore, the techniques described, such as using terminal and connection identifiers to manage traffic and scheduling transmissions to enable power-saving modes, were well-known and their application would yield predictable results in improving network efficiency and conserving battery life.

4. Key Claim Construction Positions

• "low-power mode": Petitioner proposed this term be construed as a “mode that can be switched to, where a relatively small amount of power is consumed by the wireless terminals relative to the data-receiving mode.” This construction was based on the patent’s own description that the mode is not a "power-off" state but one that consumes a "relatively small amount of power."
• "identifying / identifies": Petitioner argued this term should be construed as “including the address(es) of / includes the address(es) of.” This position was based on statements made by the applicant during prosecution to overcome a prior art rejection, where the applicant clarified that the claim required a receiver to be "actually addressed" in a transmitted message.
• "second message": Petitioner proposed construing this term as an “acknowledgement message to the transmit request.” This construction was derived from the prosecution history, where the applicant added the term to the claims and described the amended claims as requiring receivers to enter data-reception mode based on an "acknowledgement message" to a prior transmit request.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 4-5, and 8 of the ’892 patent as unpatentable.