PTAB

IPR2019-01185

Huawei Technologies Co Ltd v. Bell Northern Research LLC

Key Events

Petition

petition

Title: Automatic Handoff for Wireless Piconet Multimode Cell Phone
Brief Description: The ’156 patent discloses a multimode cellular phone capable of operating on different communication paths, such as cellular, cordless, and walkie-talkie modes. The patent’s purported innovation is a module for automatically switching an active call from one communication mode to another.

Prior Art Relied Upon: Longginou (WO 95/23485).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Longginou teaches every limitation of claim 1. Longginou discloses a dual-mode (e.g., cellular and cordless) handset that can "dynamically switch a call made in one mode to the second mode, by holding the current call until the call is re-established, using the second mode." This process involves determining a need to switch, establishing a second call while the first is held (creating simultaneous paths), and then automatically switching to the second call once it is successfully established, thereby dropping the first call. Petitioner asserted that the handset itself performs this automatic switchover, satisfying the claim requirement that the process is controlled by the multimode phone.

Prior Art Relied Upon: Longginou (WO 95/23485) and Bell (Patent 6,445,921).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if Longginou were found not to inherently disclose the step of "determin[ing] the telephone number of the far end cellular phone," this feature was well-known and explicitly taught by Bell. Bell discloses a multimode phone that, upon failure of a first communication path, initiates an automatic re-dial on a second path "using the previously dialed number, which is stored in the handset memory" or "using data from the caller ID which is stored in the handset memory."
- Motivation to Combine: A POSITA would combine Bell’s method of retrieving a stored number with Longginou’s automatic handoff system to enhance functionality. The motivation was to achieve the known benefits of convenience and speed by automating a step (re-dialing the same number) that would otherwise require manual user intervention during a call transfer.
- Expectation of Success: Combining a known memory-recall feature for phone numbers with a handoff procedure would have been a straightforward application of conventional techniques with a high expectation of success.

Prior Art Relied Upon: Gillig (Patent 5,127,042).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Gillig discloses a "cellular cordless telephone" capable of simultaneous operation and automatic switching between modes. Gillig describes a process for automatically transferring a call from cordless to cellular by "placing another call on the cellular system and waiting for the called party to answer," assuming the called party has call waiting. This explicit teaching of placing a second call while the first remains active was argued to meet the limitation of establishing simultaneous communication paths from the multimode phone itself. Once the second call is answered, the system automatically completes the transfer, satisfying the automatic switch over limitation.
Additional Grounds: Petitioner asserted additional anticipation challenges against claim 1 based on Byrne (Patent 5,737,703) and Tateyama (Japanese Publication No. H5-48526). Petitioner also asserted an obviousness challenge based on Gillig in view of Bell.

Petitioner argued that four key claim terms should be analyzed under two alternative constructions, asserting claim 1 is unpatentable under either interpretation. The terms are: "a cell phone functionality," "an RF communication functionality," "module to establish simultaneous communication paths...," and "an automatic switch over module..."
- First Construction (Means-Plus-Function): Petitioner argued these terms should be construed as means-plus-function limitations under §112, ¶6. The petition asserted that words like "functionality" and "module" are nonce words that recite a function without reciting sufficient definite structure. Under this construction, the corresponding structure for the "module" limitations would be the algorithms disclosed in the ’156 patent’s flowcharts (FIGS. 2 and 4), which describe the steps for establishing and switching communication paths.
- Second Construction (Standard Interpretation): Alternatively, if not treated as means-plus-function, the terms should be given their plain and ordinary meaning under the Phillips standard. For example, "cell phone functionality" would be construed as "RF transceivers operating in accordance with their respective telecommunications standards and using hardware and software." Petitioner contended that the prior art discloses these elements even under this broader construction.

Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’156 patent as unpatentable.