PTAB

IPR2021-00949

Samsung Electronics Co Ltd v. Evolved Wireless LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method for Performing Random Access Procedure
  • Brief Description: The ’679 patent describes a method for performing a random access procedure during the handover of a mobile terminal from a source base station to a target base station in a wireless communication system. The purported invention aims to reduce collisions on the random access channel (RACH) by having the network provide a dedicated preamble to the mobile terminal for use during the handover process.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 6-8 are obvious over Nokia in view of Hu

  • Prior Art Relied Upon: Nokia (3GPP Draft R2-061135) and Hu (Chinese Patent Application Publication No. CN159602A).
  • Core Argument for this Ground: Petitioner argued that Nokia discloses a complete framework for an intra-LTE handover procedure that includes nearly all steps of the challenged claims. However, where Nokia describes a generic "non contention based access burst" or a conventional RACH procedure, Hu explicitly teaches the missing element: using a dedicated preamble (or "random access resource") assigned to a specific mobile terminal to ensure a contention-free handover. A person of ordinary skill in the art (POSITA) would have been motivated to combine Hu’s specific method for avoiding RACH collisions with Nokia’s general handover process to improve the speed, efficiency, and success rate of the handover, which was a known problem.
    • Prior Art Mapping: Petitioner asserted that the combination of Nokia and Hu teaches all limitations of independent claims 1 and 6. Nokia was argued to teach a mobile terminal (UE) that receives a "Handover Command" from the network containing "necessary parameters" to perform a handover. This command initiates a RACH procedure where the UE synchronizes with the target cell. Hu was argued to teach that to improve handover success, the network should designate a dedicated "access resource" (an uplink synchronization code, i.e., a preamble) for a specific UE. A POSITA would have incorporated Hu's dedicated preamble as one of the "necessary parameters" in Nokia's Handover Command. Following the handover command, Nokia teaches that the UE transmits on the RACH to acquire timing advance (mapping to transmitting the dedicated preamble), receives a response from the network containing a "UL allocation" (mapping to the random access response with an uplink grant), and then uses this grant to transmit a "Handover Confirm" message (mapping to transmitting uplink data using the grant).
    • Motivation to Combine: Petitioner contended that a POSITA seeking to implement the handover procedure in Nokia, which explicitly mentions a "Non contention based access burst," would naturally look for established methods to achieve a contention-free process. Hu addresses the same problem in the same field of art by teaching the use of a dedicated preamble for a specific user to avoid collisions on a shared channel. A POSITA would combine Hu’s specific solution with Nokia’s broader handover framework to predictably improve the system's performance and reliability.
    • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in this combination. Integrating a dedicated preamble into Nokia's established signaling flow (i.e., within the Handover Command) was presented as a straightforward application of known telecommunication principles to achieve the predictable result of a more robust, collision-free handover.

4. Key Claim Construction Positions

  • Petitioner argued that the term "handover" requires no special construction and should be given its plain and ordinary meaning. Petitioner specifically contended against a narrower construction that might be proposed by the Patent Owner (based on a prior litigation) that would limit "handover" to only "hard" or "break-before-make" scenarios. Petitioner asserted that the claims contain no such limiting language, and the specification does not disavow other types of handovers (e.g., "soft" or "make-before-break"). Petitioner maintained that the asserted prior art discloses a "handover" even under the Patent Owner's potentially narrower construction.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented extensive arguments that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §314(a) (based on Fintiv factors) or §325(d).
  • Arguments against Fintiv Denial: Petitioner argued that factors weigh in favor of institution because a co-pending district court case was stayed. Regarding a parallel ITC investigation, Petitioner made a dispositive stipulation that, if the IPR were instituted, it would not pursue any invalidity grounds in the ITC based on Nokia. Petitioner asserted this stipulation eliminates any significant overlap between the proceedings. Further, it argued that the investment in the ITC case was minimal at the time of filing and that the IPR would be completed before any final ITC determination.
  • Arguments against §325(d) Denial: Petitioner argued that denial would be improper even though Nokia and Hu were cited to the USPTO during prosecution of the ’679 patent. Petitioner contended that the Examiner never substantively analyzed these references, combined them, or used them in any rejection. They were merely two of hundreds of references cited in an Information Disclosure Statement. Petitioner asserted that the Examiner materially erred by overlooking the strong and clear case of obviousness presented by the combination of Nokia and Hu, making Board review appropriate.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-3 and 6-8 of the ’679 patent as unpatentable under 35 U.S.C. §103.