Ericsson Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-01550
• Patent #: 7,016,676
• Filed: August 29, 2019
• Petitioner(s): Ericsson Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1, 2, and 8

2. Patent Overview

• Title: Method, Network and Control Station for the Two-Way Alternate Control of Radio Systems of Different Standards in the Same Frequency Band
• Brief Description: The ’676 patent describes an interface-control protocol for a radio system where devices operating under different communication standards (e.g., HiperLAN/2 and 802.11a) share a common frequency band. A central control station manages alternate access to the band for the different systems in a time-division multiplex mode.

3. Grounds for Unpatentability

Ground 1: Obviousness over Shellhammer - Claims 1 and 2 are obvious over Shellhammer

• Prior Art Relied Upon: Shellhammer (Patent 7,039,358)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shellhammer taught all limitations of claims 1 and 2. Shellhammer described a wireless network where 802.11 devices and Bluetooth devices (two different "radio interface standards") shared the same 2.4 GHz ISM frequency band. An 802.11 Access Point (AP) functioned as the claimed "control station" by managing access through a time-multiplexing scheme. Specifically, the AP controlled access by sending a global Clear to Send (CTS) signal to halt all 802.11 communications for a defined period (a Network Allocation Vector or NAV period), thereby making the frequency band available for Bluetooth devices. This action occurred after 802.11 stations completed their transmissions and no longer requested access, directly mapping to the final limitation of claim 1. For claim 2, Petitioner asserted that the AP in Shellhammer determined the duration of the NAV period, during which Bluetooth stations were allowed to use the band, and conveyed this duration within the CTS signal, as was known in the 802.11 standard.
  • Motivation to Combine (for §103 grounds): N/A (single reference ground).
  • Expectation of Success (for §103 grounds): N/A (single reference ground).

Ground 2: Obviousness over Shellhammer and Haartsen - Claim 8 is obvious over Shellhammer in view of Haartsen

• Prior Art Relied Upon: Shellhammer (Patent 7,039,358) and Haartsen (Patent 7,280,580).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Shellhammer taught the base system of claim 8, including a control station (the AP) managing alternate use of a frequency band for stations of different standards (802.11 and Bluetooth). The AP performed functions in accordance with the 802.11 standard. The final limitation of claim 8, which required the control station to cause the 802.11 system to "interpret the radio channel as interfered and to seize another radio channel," was taught by Haartsen. Haartsen disclosed an adaptive frequency hopping technique for 802.11 systems to improve performance by avoiding interference. It taught detecting channels with heavy interference, marking them as "forbidden," and modifying the pre-defined hopping sequence to substitute these interfered channels with non-interfered ones.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Haartsen's interference avoidance technique with Shellhammer’s co-existence system to improve the performance and throughput of the 802.11 communications. Shellhammer acknowledged the need to reduce interference, and Haartsen provided an explicit solution for doing so in the context of 802.11 frequency hopping, a mechanism expressly mentioned in Shellhammer.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because both references were directed to 802.11 network operations and interference mitigation, making the integration of Haartsen's teachings into Shellhammer's system straightforward and predictable.

Ground 3: Obviousness over Lansford - Claims 1 and 2 are obvious over Lansford

• Prior Art Relied Upon: Lansford (Patent 6,937,158)

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Lansford taught a system where a controller (Device A) managed a shared 2.4 GHz frequency band for devices using two different standards, HomeRF and Bluetooth. The controller managed access by determining a "contention-free period" during which HomeRF communications were suspended to allow the controller to communicate with a Bluetooth device. This suspension was triggered by a communication request from the Bluetooth device. Petitioner argued that if no Bluetooth device requested communication, the HomeRF devices would simply continue to operate, thus rendering the band available for the HomeRF system when the Bluetooth system did not request access, meeting the final limitation of claim 1. For claim 2, Petitioner asserted that Lansford’s controller determined the duration of the time blocks allocated to HomeRF and Bluetooth, thereby determining the duration in which each system was allowed to utilize the frequency band.
  • Motivation to Combine (for §103 grounds): N/A (single reference ground).
  • Expectation of Success (for §103 grounds): N/A (single reference ground).

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 8 based on the combination of Shellhammer and Panasik (Patent 6,643,278). This ground relied on a similar theory to Ground 2, where Panasik, like Haartsen, was used to supply the teaching of modifying a frequency hopping sequence to avoid channels with detected interference.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §§ 314 or 325(d). Petitioner contended that although four other IPRs against the ’676 patent had been filed by other parties (Microsoft and Marvell), this petition should be instituted because it was Petitioner’s first such filing, Petitioner is not related to the other petitioners, and this petition challenges a unique combination of claims (1, 2, and 8) not collectively challenged in any other single petition. Furthermore, Petitioner argued it only learned of the primary reference (Shellhammer) from the other petitions and filed its own petition promptly thereafter. Finally, since no patent owner preliminary responses or institution decisions had been issued in the other cases, and none of the asserted art was considered during the original prosecution, the Board would not be reconsidering previously analyzed art or arguments.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, and 8 of the ’676 patent as unpatentable under 35 U.S.C. §103.