Apple Inc v. Optis Wireless Technology LLC

1. Case Identification

• Case #: IPR2020-00466
• Patent #: 8,411,557
• Filed: February 28, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Optis Wireless Technology, LLC
• Challenged Claims: 1-10

2. Patent Overview

• Title: Mobile Station Apparatus and Radio Communication Method
• Brief Description: The ’557 patent describes a method for a mobile device to efficiently report control information to a base station over a Random Access Channel (RACH). The method involves associating different types of control information with distinct groups of predefined access sequences (signatures), randomly selecting a sequence from the appropriate group, and transmitting it to the base station.

3. Grounds for Unpatentability

Ground 1: Claims 1-10 are obvious over Harris in view of Tan.

• Prior Art Relied Upon: Harris (Patent 8,009,637) and Tan (Application # 2007/0165567).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Harris taught the core system of a mobile station (remote unit) receiving control information that indicates how spreading channel codes are partitioned into groups. The mobile station then determines the appropriate group based on a characteristic (e.g., received signal strength), randomly selects a code from that group, and transmits it. However, Harris did not expressly teach generating the codes from a "plurality of base sequences." Petitioner asserted Tan supplied this missing element by disclosing the generation of Constant Amplitude Zero Auto-Correlation (CAZAC) sequences, such as Chu sequences, from a plurality of base sequences (identified by a prime number "p") and creating additional sequences through cyclic shifts.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references for two primary reasons. First, Harris explicitly incorporated the Tan Provisional application by reference for the express purpose of using its sequences (Chu sequences) as the spreading channel codes in its system. Second, a POSITA would have been motivated to use Tan's sequences to reduce interference between simultaneous access attempts by different users, a known problem that Tan’s orthogonal sequences were designed to solve.
  • Expectation of Success: The combination was allegedly predictable and would have yielded the expected result of a robust random access system with low cross-correlation between different code sequences. A POSITA would have had a reasonable expectation of success because it involved implementing a specific, known type of sequence (from Tan) within a known system framework (from Harris) for its intended purpose.

Ground 2: Claims 1-10 are obvious over Sutivong in view of Tan.

• Prior Art Relied Upon: Sutivong (WO 2006/019710) and Tan (Application # 2007/0165567).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended this ground was highly similar to the combination an examiner found obvious during prosecution of the '557 patent’s parent application. Sutivong, like Harris, was argued to disclose a system where a mobile station receives control information from a base station, which partitions access sequences into groups corresponding to different ranges of channel quality values (CQI). The mobile station then randomly selects a sequence from the appropriate group for an initial access attempt. As in Ground 1, Sutivong did not disclose generating these sequences from a plurality of base sequences. Petitioner argued Tan provided this teaching.
  • Motivation to Combine: A POSITA would have been motivated to combine the teachings of Sutivong and Tan because they address the same technical problem: improving the reliability of initial access over a RACH. Sutivong described a system for managing access sequences but did not disclose any specific sequences or generation methods. A POSITA seeking to implement Sutivong’s system would have naturally looked to a reference like Tan, which explicitly taught how to generate sequences (Chu, GCL, CAZAC) suitable for RACH transmissions.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination would predictably improve the likelihood of a successful access attempt in Sutivong's system by using Tan's low cross-correlation sequences. The petition emphasized that during prosecution of the parent '530 application, the examiner had already found it would have been obvious to combine Sutivong and Tan.

4. Arguments Regarding Discretionary Denial

• The petition argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
• Regarding §325(d) (Same or Substantially Same Art or Arguments): Petitioner argued that while the examiner in the parent application rejected similar claims over Sutivong and Tan, the application for the ’557 patent was examined by a new examiner under the accelerated Patent Prosecution Highway (PPH) program. Consequently, the Sutivong and Tan references were never substantively considered during the prosecution that led to the challenged claims, making a review on these grounds appropriate.
• Regarding §314(a) (Fintiv Factors): Petitioner contended that the co-pending district court litigation was in its early stages. At the time of filing, no claim construction ruling had been issued, fact discovery was not yet closed, and the trial date was several months away and uncertain given the high number of patents and claims asserted. Therefore, an inter partes review (IPR) would be a more efficient and timely forum for resolving the validity of the challenged claims.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 of the ’557 patent as unpatentable under 35 U.S.C. §103.