Motorola Mobility LLC v. Evolved Wireless LLC

1. Case Identification

• Case #: IPR2021-01424
• Patent #: RE48,326
• Filed: September 13, 2021
• Petitioner(s): Motorola Mobility LLC and Motorola Electronics America, Inc.
• Patent Owner(s): Evolved Wireless LLC
• Challenged Claims: 14-16, 18-20

2. Patent Overview

• Title: Method for Performing a Random Access Procedure During Handover
• Brief Description: The ’326 patent describes a method for performing a random access procedure during the handover of a mobile terminal from a serving base station to a target base station. The method purportedly avoids collisions on the Random Access Channel (RACH) by providing the terminal with a specific preamble to use for the access procedure.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nokia in view of Hu - Claims 14-16 and 18-20 are obvious over Nokia in view of Hu.

• Prior Art Relied Upon: Nokia (3GPP Draft R2-061135, published on or before May 3, 2006) and Hu (Chinese Patent Application # CN159602A, published March 16, 2005).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nokia, a 3GPP standards contribution, taught nearly all limitations of the challenged claims. Nokia described a complete handover procedure where a User Equipment (UE) sends a measurement report, the source base station decides to hand off, context data is sent to the target, the target confirms, and the source sends a "Handover Command" to the UE. This command includes "necessary parameters" like System Information Blocks (SIBs). The UE then performs a RACH procedure with the target and sends a "Handover Confirm" message. Petitioner contended that Hu was necessary to explicitly teach using a dedicated, contention-free preamble in this context. Hu described a handover method where the target base station designates a specific "random access resource" (an uplink synchronization code, or preamble) for a specific mobile terminal to use. This dedicated resource prevents collisions on the shared access channel. Petitioner asserted that combining Hu's specific teaching of a dedicated preamble with Nokia's broader handover framework rendered the claims obvious.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Nokia and Hu because both references were in the same field (mobile communication handovers), addressed the same problem (improving handover speed and success rate), and were created by major developers of LTE standards. Nokia disclosed a handover using a "conventional RACH procedure," which a POSITA would understand occurs on a shared channel, thus creating a known need to avoid contention. Hu provided a well-known solution for contention-free access on a shared channel: assigning a dedicated preamble. A POSITA would have been motivated to incorporate Hu's specific implementation details into Nokia's general framework to create a more efficient and reliable handover process.
  • Expectation of Success (for §103 grounds): Petitioner argued that incorporating a dedicated preamble as taught by Hu into the RACH procedure of Nokia was a predictable design choice. The use of dedicated resources for contention-free access was a common technique, ensuring a POSITA would have a high expectation of success in implementing the combination.

4. Key Claim Construction Positions

• "Handover": Petitioner argued this term is well-known to a POSITA and requires no special construction. Petitioner opposed a potential construction from a prior litigation where Patent Owner argued the term implied a "hard" or "break-before-make" handover. Petitioner contended that the claims lacked any language to support such a narrow temporal limitation and that the invention was consistent with multiple known handover types.
• "Target base station": Petitioner asserted this term also has a plain and ordinary meaning. It opposed a potential prior construction limiting the term to a base station that is determined by the source base station, arguing that various handover types known in the art did not require such a determination by the source.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: A central contention was that the ’326 patent was not entitled to its claimed priority date of October 31, 2005, from its provisional application. Petitioner argued the provisional application failed to disclose key limitations recited in the challenged claims, including "receive a handover command message from a source base station" and "transmit[ing] a handover complete message." According to Petitioner, the provisional application described different protocols where communication post-handover-decision came directly from the target node, not the source. This failure to provide adequate written support allegedly pushed the patent’s effective priority date to its Korean application filing date of July 5, 2006. This later date was critical for establishing the Nokia reference (published May 2006) as valid prior art.

6. Arguments Regarding Discretionary Denial

• Discretionary Denial under §314(a) (Fintiv): Petitioner argued against discretionary denial based on parallel district court and International Trade Commission (ITC) proceedings. It noted the district court action was stayed. Crucially, Petitioner stipulated that if the IPR were instituted, it would not assert any invalidity grounds in the ITC proceeding based on Nokia or the specific grounds raised in the petition, thereby eliminating overlap between the forums. Petitioner also noted this was a "me-too" petition filed to join an earlier-filed Samsung IPR, a factor that typically weighs in favor of institution.
• Discretionary Denial under §325(d): Petitioner argued that denial would be improper because the specific combination of Nokia and Hu was not substantively considered by the examiner during prosecution. While both references were cited in a list of hundreds of documents, they were never applied in a rejection or materially discussed. Petitioner asserted that the examiner materially erred by overlooking the combined teachings, which directly address the core elements of the challenged claims. This lack of substantive review, Petitioner contended, warrants a fresh look by the Board.

7. Relief Requested

• Petitioner requests the Board institute an inter partes review and cancel claims 14-16 and 18-20 of the ’326 patent as unpatentable.