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IPR2021-00906

Cradlepoint Inc v. 3G Licensing SA

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1. Case Identification

2. Patent Overview

  • Title: Mobile Equipment for Sending an Attach Request to a Network
  • Brief Description: The ’388 patent discloses methods and apparatuses for transmitting control information in a Universal Mobile Telecommunications System (UMTS). The technology purports to solve alleged message size limitations on the Common Control Channel (CCCH) by providing new configurations that allow mobile devices to send larger messages.

3. Grounds for Unpatentability

Ground 1: Anticipation over TS-25.331 - Claims 1-3, 8, 9, 12, 56, and 57 are anticipated by TS-25.331 under 35 U.S.C. §102.

  • Prior Art Relied Upon: TS-25.331 (3rd Generation Partnership Project (3GPP) Technical Specification V6.1.0, March 2004).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the 3GPP UMTS standard specification, TS-25.331, discloses every limitation of the challenged method claims. Specifically, Petitioner asserted that a mobile terminal (UE) receiving a "first message" with configuration information is taught by the UE's reception of "SYSTEM INFORMATION" broadcast in a System Information Block (SIB), which contains a "PRACH system information list." The UE then "selects" a configuration by choosing a Transport Format (TF) from the available RACH Transport Format Sets (TFS). The subsequent transmission of a "second message," such as an "RRC CONNECTION REQUEST," on the CCCH utilizes this selected configuration. The claimed "additional transport format information for the CCCH" comprising RLC size or number of transport blocks was argued to be explicitly disclosed in the "Dynamic Transport Format Information" element within the RACH TFS defined by TS-25.331.
    • Key Aspects: This ground asserted that the core inventive concept of the ’388 patent was already standard practice within the UMTS protocol before the patent's priority date.

Ground 2: Obviousness over TS-25.331 in view of Bannister - Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62, and 63 are obvious over TS-25.331 in view of Bannister under 35 U.S.C. §103.

  • Prior Art Relied Upon: TS-25.331 and Bannister (a 2004 textbook titled "Convergence Technologies for 3G Networks").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that TS-25.331 teaches all limitations of the method claims (as detailed in Ground 1) and renders the apparatus claims (e.g., claim 33) obvious with the general knowledge of a person of ordinary skill in the art (POSITA). To the extent an additional reference was needed, Petitioner asserted that Bannister explicitly describes the conventional hardware components of a UMTS mobile device required by the apparatus claims. Bannister discloses a mobile device with an RF module, antenna, keypad, storage unit, display, and processing unit, all configured to operate within a UMTS network according to the protocols specified in TS-25.331.
    • Motivation to Combine: A POSITA would combine the teachings because Bannister is a comprehensive textbook that expressly references, summarizes, and explains the implementation of the TS-25.331 RRC protocol. Bannister was argued to be a natural complement, providing the hardware context for the protocol standard.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining the references, as it amounted to implementing the standard protocol (TS-25.331) on the standard hardware (Bannister) for which the protocol was designed.

Ground 3: Obviousness over Beckmann in view of TS-25.331 - Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, and 62-63 are obvious over Beckmann in view of TS-25.331 under §103.

  • Prior Art Relied Upon: Beckmann (Patent 7,333,443) and TS-25.331.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented to counter any potential argument that the claims require a "non-critical" message extension for backward compatibility. Petitioner argued that Beckmann teaches extending RRC configuration messages by adding an additional information element (IE) to convey transport format information. TS-25.331 teaches a mechanism for "non-critical" extensions that allows legacy devices to ignore any new, unrecognized IEs. The combination, therefore, taught extending a standard UMTS RRC message with a non-critical IE to provide additional transport format information (e.g., a larger RLC size for the CCCH), meeting all claim limitations.
    • Motivation to Combine: A POSITA would have been motivated to combine the references to improve the efficiency of the UMTS system defined by TS-25.331. Beckmann's technique for extending messages offered a known method to add enhanced functionality, such as support for larger message sizes, without disrupting legacy equipment, a common goal in standards evolution. Beckmann also explicitly references an earlier version of TS-25.331.
    • Expectation of Success: The combination would predictably result in adding new transport format information to RRC messages while maintaining forward-compatibility, as it involved applying a known message extension technique (Beckmann) to a system with a known mechanism for handling such extensions (TS-25.331).
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on TS-25.331 alone (Ground II) and the combination of Beckmann, TS-25.331, and Bannister (Ground V), which relied on similar arguments to those detailed above.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. It was contended that the co-pending district court litigations were in the early stages, with trial dates set for April 2023 and December 2022, providing ample time for a Final Written Decision (FWD) to issue first.
  • Petitioner also argued that denial under §325(d) was unwarranted because none of the prior art references relied upon in the petition (TS-25.331, Bannister, Beckmann) were considered by the examiner during the original prosecution of the ’388 patent, and the arguments presented were substantially different.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62, and 63 of Patent 7,580,388 as unpatentable.