PTAB

IPR2022-01223

Apple Inc v. Smart Mobile Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: IP-Enabled Communication Device for Multiplexing Signals
  • Brief Description: The ’075 patent discloses wireless communication devices featuring multiple transmit/receive units that operate on different networks and frequencies. The technology is designed to manage communications across different network paths simultaneously, responding to changes in signal strength or connectivity to improve performance.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 5 are obvious over Yegoshin in view of Bernard, Johnston, and Preiss.

  • Prior Art Relied Upon: Yegoshin (Patent 6,711,146), Bernard (Patent 5,497,339), Johnston (Patent 5,784,032), and Preiss (Patent 6,031,503).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of the four references taught every limitation of the challenged claims. Yegoshin was asserted to disclose the foundational system: a dual-mode wireless device capable of communicating over both a cellular network and a local area network (LAN), such as a WLAN. Yegoshin taught switching between these networks and the potential for simultaneous communication paths. Bernard was argued to provide the necessary implementation details for managing multiple network connections, which Yegoshin lacked. Bernard disclosed a device cradle with multiple communication circuits (cellular, packet radio, etc.) and a communication server for multiplexing and routing data packets from these different networks to a connected device over a single interface.
    • To meet the limitations requiring multiple antennas for each communication unit, Petitioner relied on Johnston and Preiss. Johnston taught using a multi-antenna diversity system for the cellular transceiver to improve signal quality and reliability in multipath fading environments. Similarly, Preiss taught a polarization-diverse antenna assembly for a WLAN communication card to achieve the same benefits for WLAN connections. Petitioner contended that combining these teachings would result in a dual-mode device with multiple antennas for its cellular unit (from Johnston) and multiple antennas for its WLAN unit (from Preiss). The combination was argued to meet the limitations of independent claim 1 concerning a plurality of communication units operating on different frequencies with separate antenna sets, switching between networks based on signal strength, and multiplexing data. Dependent claims 2, 3, and 5 were argued to be obvious as they recited inherent properties of such a system (different protocols), an obvious use case (separating voice and non-voice data), and a necessary function (programming processors to differentiate signals, as taught by Bernard's routing logic).
    • Motivation to Combine (for §103 grounds): A POSITA would combine Yegoshin with Bernard because Yegoshin described a conceptual multi-purpose device but lacked specific implementation details for multiplexing and routing. Bernard provided a known, practical solution for adding and managing multiple network connections. A POSITA would combine this base system with Johnston and Preiss to incorporate the well-known and predictable benefits of antenna diversity to improve the performance and reliability of the cellular and WLAN communications, respectively—an established technique for addressing signal fading, which was a known problem.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the combination involved applying conventional technologies for their known purposes. Integrating Bernard's multiplexing architecture into Yegoshin's dual-mode phone, and adding established antenna diversity techniques from Johnston and Preiss to the respective cellular and WLAN components, would have used predictable engineering solutions to achieve a more robust and versatile device.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate.
  • Under §325(d): Denial was argued to be unwarranted because the prior art references relied upon in the petition (Yegoshin, Bernard, Johnston, and Preiss) were not considered by the examiner during the original prosecution of the ’075 patent.
  • Under §314(a) (Fintiv Factors): Petitioner argued the factors weighed against denial. The parallel district court litigation was in its early stages with minimal investment, as claim construction had not yet occurred and discovery was not set to close for over a year. While the district court trial date (December 2023) was close to the deadline for a Final Written Decision (FWD), Petitioner argued it had acted expeditiously and that estoppel provisions would narrow the issues in litigation, preventing duplicative efforts and conserving judicial resources.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-3 and 5 of the ’075 patent as unpatentable.