Toyota Motor Corp v. Intellectual Ventures II LLC

1. Case Identification

• Case #: IPR2022-01130
• Patent #: 8,811,356
• Filed: June 13, 2022
• Petitioner(s): Toyota Motor Corp., and Continental Automotive Systems, Inc.
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 1-7, 22-28, and 43-46

2. Patent Overview

• Title: Active Feedback Control Between User Equipment and Network Device
• Brief Description: The ’356 patent describes methods and systems for managing communication between user equipment (UE) and a network device (e.g., a base station). The technology involves allocating distinct resources for four channel types: an uplink data channel, an uplink control channel, a downlink data channel, and a downlink control channel used for active feedback.

3. Grounds for Unpatentability

Ground 1: Anticipation over the IEEE 802.16 Standard - Claims 22, 23, 25-28, 45, and 46 are anticipated by the Standard under 35 U.S.C. §102.

• Prior Art Relied Upon: IEEE Std 802.16-2004 (“the Standard”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Standard, which defines the WiMAX protocol, discloses every limitation of independent claims 22 and 45. The Standard describes a subscriber station (SS), equivalent to the claimed UE, communicating with a base station (BS). The Standard’s “Ranging Subchannel” is the claimed “uplink physical control channel,” and its “uplink bursts” constitute the “physical uplink shared channel,” with each being allocated different time-frequency resources.
    • The SS receives resource allocation information for the Ranging Subchannel via a UL-MAP message. It then sends a Ranging Code signal on this control channel during a time interval when it is not sending data on the uplink shared channel.
    • After the initial ranging process, the SS receives a second UL-MAP message allocating resources for uplink bursts, over which it sends data in assigned time intervals.
    • The SS receives feedback, such as power adjustment information, in a Ranging Response (RNG-RSP) message transmitted from the BS in a mapped region of the downlink, which functions as the claimed “downlink control channel.”
    • Dependent claims were also argued to be disclosed, with the RNG-RSP message containing power control information (claim 25) and the system supporting Time Division Duplex (TDD) operation (claims 28 and 46).

Ground 2: Obviousness over the Standard in view of Mohanty - Claims 1-7, 43, and 44 are obvious over the Standard in view of Mohanty under 35 U.S.C. §103.

• Prior Art Relied Upon: The Standard and Mohanty (Application # 2007/0105600).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets the apparatus claims (e.g., claim 1), which recite a "processor configured to" perform the method steps disclosed in the Standard. Petitioner argued that the Standard discloses all the functions performed by the claimed UE, and Mohanty teaches the conventional, obvious way to implement those functions. Mohanty explicitly describes an SS compliant with the Standard that uses a processor executing instructions from memory to perform its communication functions. The functions recited in claim 1—receiving resource allocation, sending data over an uplink shared channel, sending a signal over an uplink control channel, and receiving feedback—directly map to the functions performed by the SS in the Standard.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) seeking to implement the communication system of the Standard would be motivated to use a known processor-based architecture as taught by Mohanty. The Standard describes the protocol's functions but not specific hardware implementation details. Mohanty provides these missing details for a compatible device. A POSITA would combine these teachings to create a functional device, leveraging the known advantages of processors like cost-efficiency, computational power, and the flexibility of software-based updates.
  • Expectation of Success: A POSITA would have had a high expectation of success. Implementing the functions of a communication protocol on a general-purpose processor was a well-established and routine practice in the art. Mohanty confirms this by describing a processor-based SS for use with the Standard, demonstrating the combination was known and predictable.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-7, 24, 43, and 44 based on the Standard alone, arguing a POSITA would have found it obvious to implement the functions of the Standard's SS using a conventional processor.

4. Key Technical Contentions (Beyond Claim Construction)

• The petition’s central technical contention, underpinning all grounds, was the direct mapping of the ’356 patent’s generic channel terminology to specific, well-defined messages, channels, and resource regions within the IEEE 802.16 Standard. Petitioner contended that a POSITA would readily understand:
  • The “uplink physical control channel” corresponds to the Standard’s “Ranging Subchannel.”
  • The “physical uplink shared channel” corresponds to the Standard’s allocated “uplink bursts.”
  • The “downlink control channel” corresponds to the mapped regions of the downlink subframe used for transmitting control messages like the RNG-RSP and UL-MAP.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) and the Fintiv factors would be inappropriate. The core arguments were:
  • The petition was filed diligently within 3.5 months of receiving infringement contentions, and prior to significant investment in the parallel district court litigation, where events like claim construction and expert discovery had not yet occurred.
  • Petitioner Toyota stipulated it would not pursue the IPR grounds in the district court if review is instituted, mitigating concerns of duplicative efforts.
  • The overlap between proceedings is limited, as Petitioner Continental is not a party to the litigation, and the IPR challenges additional claims not asserted in court.
  • Petitioner asserted the merits of the petition are strong and rely on prior art that is materially different from and non-cumulative of the art considered during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 22-28, and 43-46 of the ’356 patent as unpatentable.