PTAB

IPR2021-00533

Nokia Of America Corp v. IPCom GmbH & Co KG

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Transmitting Signaling Information
  • Brief Description: The ’147 patent discloses a method for handover in a cellular communication system. The core concept involves a source base station transmitting a message to a mobile station that includes signaling information about whether specific data processing techniques, such as transmit diversity or joint predistortion, will be used by the target base station after the handover is complete.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6, 32-36, and 37-40 are obvious over 3GPP TS-25.331 in view of the Motorola Proposal.

  • Prior Art Relied Upon: TS-25.331 (3GPP TS-25.331 v1.0.0 (1999-04), “RRC Protocol Specification”) and Motorola Proposal (R2-99438, “RRC Parameters for the Support of Transmission Diversity,” May 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that TS-25.331, a foundational 3GPP standard, disclosed the claimed handover method, including transmitting a HANDOVER COMMAND message from a transmitting station (UTRAN) to a receiving station (UE). This message contained various "information elements" about the new radio link with the target station. However, this version of the standard did not explicitly provide a parameter for transmit diversity. The Motorola Proposal, submitted to the same 3GPP working group, explicitly proposed adding new parameters to the DL DPCH info information element within the HANDOVER COMMAND message. These new parameters would indicate whether the target station would use a specific type of transmit diversity (STTD), thereby teaching the limitation of signaling whether data is "processed in an additional transmitting station."
    • Motivation to Combine: A POSITA would combine these references because the Motorola Proposal was an explicit recommendation to modify and improve the TS-25.331 standard to add support for transmit diversity, a known technique for improving signal reliability. The proposal was submitted directly to the standards body responsible for TS-25.331, making the combination a logical and intended progression of the technology to enhance the existing framework.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved adding a new, well-defined parameter to an existing message structure within an established protocol. The proposal was a straightforward technical enhancement, not a complex or unpredictable integration.

Ground 2: Claims 1-4, 6, 32-36, and 37-40 are obvious over Weaver in view of Kotzin.

  • Prior Art Relied Upon: Weaver (Patent 5,848,063) and Kotzin (Patent 6,173,005).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Weaver disclosed a handover method in a CDMA system, including the use of a control message to provide a remote unit with new channel information for a target base station. Weaver specifically taught using transmit diversity (transmitting time-offset replicas of a signal) at "border" base stations to improve handover reliability. Kotzin taught an improvement over Weaver’s type of transmit diversity by using orthogonal transmit diversity, where data is split and transmitted from multiple antennas using different spreading codes. Kotzin explicitly stated that the mobile station must be informed of the parameters of this diversity scheme (e.g., Walsh code assignments, data division ratio) via a control channel so the signal can be properly decoded. The combination, therefore, taught sending a message indicating the use and type of "data processing" (Kotzin's improved diversity) at the target station.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Kotzin’s improved transmit diversity scheme into Weaver’s handover system to increase the reliability and performance of communication during the critical handover phase. Weaver identified a problem (difficulty in handover in narrow regions) and proposed a solution (transmit diversity), and Kotzin provided a known improvement to that very solution.
    • Expectation of Success: There would be a reasonable expectation of success because both patents operate in the same technical field (CDMA communications) and address the same fundamental goal of improving signal quality through diversity. Implementing Kotzin’s superior and well-defined diversity technique in Weaver's established handover framework would be a predictable enhancement.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv was inappropriate. It asserted that the parallel district court litigation was in its early stages, with trial dates that were uncertain due to the pandemic and court backlogs. Petitioner further stipulated that if the IPR was instituted, it would withdraw any identical invalidity grounds from the district court, thus eliminating overlap in issues and conserving judicial resources. Petitioner contended that these factors, combined with the strong merits of the invalidity arguments, weighed heavily in favor of institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 32-36, and 37-40 of the ’147 patent as unpatentable.