PTAB

IPR2022-01004

Samsung Electronics Co Ltd v. Smart Mobile Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System to Interface Internet Protocol (IP) Based Wireless Devices with Subtasks and Channels
  • Brief Description: The ’943 patent discloses a wireless communication device capable of handling simultaneous Internet Protocol (IP) based data transmissions. The system uses multiple transceivers to process separate data streams in parallel, with each processing "subtask" assigned to a distinct "channel" that can be individually sampled and clocked.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5-9 are obvious over Byrne

  • Prior Art Relied Upon: Byrne (European Patent Application 0 660 626 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Byrne discloses all limitations of the challenged claims. Byrne teaches a multi-mode “cellular cordless telephone” (CCT) with a plurality of antennas and separate transceivers for cellular and cordless operations, which constitute the claimed communication component. Petitioner contended that the distinct cellular and cordless operations are the claimed "subtasks," and their respective communication pathways are the "channels." The core of the argument was that because Byrne’s CCT uses different protocols for each mode (e.g., GSM for cellular, DECT for cordless), a Person of Ordinary Skill in the Art (POSITA) would have understood that these channels must be sampled and clocked individually to accommodate their different bandwidths, data rates, and processing requirements.
    • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
    • Expectation of Success (for §103 grounds): Not applicable.
    • Key Aspects: The central assertion was that the key limitation added during prosecution—"one or more channels are sampled and clocked individually"—is an inherent and obvious feature of any multi-protocol device like the one disclosed in Byrne.

Ground 2: Claims 1, 2, 5-9 are obvious over Raleigh in view of Byrne

  • Prior Art Relied Upon: Raleigh (Patent 6,144,711) and Byrne.
  • Core Argument for this Ground:
    • Prior Art Mapping: Raleigh discloses a sophisticated wireless communication system using multiple-input, multiple-output (MIMO) techniques and space-time signal processing. This system processes multiple data streams in parallel across "substantially independent spatial subchannels" using multiple antennas, transmitters, receivers, and processors, which Petitioner argued meets the limitations of independent claims 1, 5, and 8. Byrne was cited to provide the context of a dual-mode (cellular and cordless) device, showing the motivation to apply Raleigh’s advanced cellular technology in a device also capable of cordless communication. Raleigh’s use of multiple antennas to differentiate signals met the "enhanced capabilities" limitation of claim 2.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Raleigh and Byrne to improve the performance of the cellular communication function in Byrne's dual-mode telephone. Incorporating Raleigh's advanced MIMO processing would predictably increase data capacity, reduce interference, and improve spectral efficiency for the cellular mode, while leaving the cordless mode operative.
    • Expectation of Success (for §103 grounds): Success would be expected, as the combination involved applying a known, superior cellular communication scheme (Raleigh) to a known type of wireless device (Byrne's dual-mode phone) to achieve well-understood benefits.

Ground 3: Claim 12 is obvious over Byrne in view of Johnston and Pillekamp

  • Prior Art Relied Upon: Byrne, Johnston (Patent 5,784,032), and Pillekamp (Patent 5,594,737).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground specifically addressed claim 12, which requires a "first set of antennas" operating in a first frequency band and a "second set of antennas" in a different second band. Byrne provides the foundational dual-mode cellular/cordless phone but is not explicit about using multiple antennas for each system. Johnston teaches using multiple antennas ("three-way diversity antenna") in a cellular phone to improve signal quality. Pillekamp teaches using multiple antennas ("two antennas A1, A2") in a cordless phone (e.g., DECT) for antenna diversity.
    • Motivation to Combine (for §103 grounds): A POSITA seeking to improve the reliability and performance of both modes in Byrne's CCT would have been motivated to implement well-known antenna diversity techniques. A POSITA would logically look to Johnston for a cellular antenna diversity solution and to Pillekamp for a cordless antenna diversity solution, combining them into Byrne's device to provide the claimed first and second sets of antennas.
    • Expectation of Success (for §103 grounds): The combination was argued to be a predictable application of known technologies to their respective, compatible systems (cellular and cordless) to achieve their well-known benefits (improved signal quality and energy savings).

  • Additional Grounds: Petitioner asserted numerous other obviousness challenges. These included adding WO748 (International Publication No. WO 98/27748) to Byrne and Raleigh-Byrne combinations to teach network switch box limitations for claims 3-4 and 16-17. Billström (Patent 5,590,133) was added to teach Internet Protocol-based communication for claims 13-14. Further grounds combined these references to challenge claims 12, 15, and 18-20.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its early stages, with minimal investment and no claim construction yet held. The trial date was set for October 23, 2023, less than one month before the statutory deadline for a Final Written Decision (FWD) in the IPR. Petitioner further asserted that it would cease pursuing the IPR grounds in the district court if the petition was instituted, eliminating concerns of overlapping issues.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-9 and 12-20 of the ’943 patent as unpatentable.