CommScope Technologies LLC v. Dali Wireless Inc

1. Case Identification

• Case #: IPR2022-01293
• Patent #: 10,334,499
• Filed: July 20, 2022
• Petitioner(s): CommScope Technologies LLC, Corning Optical Communications LLC
• Patent Owner(s): Dali Wireless, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: System for Transporting Wireless Communications
• Brief Description: The ’499 patent discloses a Distributed Antenna System (DAS) capable of dynamically allocating radio resources. The system comprises a central "baseband unit" (analogous to a digital access unit) that receives signals from multiple "signal sources" (base stations) and sends digital representations of radio resources to a plurality of remote antenna units for transmission. The key feature is the ability to change the number of radio resources sent to a remote unit over time.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5, 8-11, 13-16, 18-19 by Wu

• Prior Art Relied Upon: Wu (Application # 2010/0128676).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wu, which discloses a carrier transport system with fine-grained control for routing carrier channels, teaches every limitation of the challenged claims. Wu’s system includes host units and a matrix switch (collectively the "baseband unit") that receive carrier channels ("radio resources") from a base transceiver station ("signal source") and route them to remote transceiver units (RTUs). Crucially, Wu’s system uses a configurable routing policy to react to changing conditions (e.g., network load) by allocating more or fewer channels to an RTU. This explicitly teaches sending a first set of radio resources at a first time, and a second, different-sized set of radio resources at a second time, as required by the independent claims. Petitioner also argued that issue preclusion should apply, as the PTAB previously instituted an inter partes review (IPR) against the parent ’178 patent based on Wu anticipating a materially identical claim.
  • Key Aspects: The core of this ground rested on mapping Wu's dynamic channel allocation, managed by a routing policy that responds to triggers like network load, to the ’499 patent's central limitation of sending sets of radio resources with different numbers of resources at different points in time.

Ground 2: Anticipation of Claims 1-5, 8-11, 13-16, 18-19 by Hettstedt

• Prior Art Relied Upon: Hettstedt (Application # 2008/0119198).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hettstedt, which discloses a system for wireless indoor communications with load balancing management, anticipates the same set of claims. Hettstedt’s Cell Management Unit (CMU) serves as the "baseband unit," receiving carriers ("radio resources") from multiple base stations ("signal sources") and distributing them to remote radio heads (RHs). Hettstedt expressly teaches performing load balancing by de-activating, shifting, and activating carriers at the RHs based on load. For example, Hettstedt discloses de-activating an unused carrier at a low-load RH, which reduces the number of carriers in the set sent to that RH. This process inherently involves sending a first set of carriers at a first time (before load balancing) and a second set with a different number of carriers at a second time (after load balancing), thus meeting the key claim limitations.

Ground 3: Obviousness of Claims 6-7, 12, and 17 over Wu in view of Sabat-552

• Prior Art Relied Upon: Wu (Application # 2010/0128676) and Sabat-552 (Patent 6,963,552).

• Core Argument for this Ground:

  • Prior Art Mapping: These dependent claims add limitations requiring the baseband unit to have an interface to couple with one or more additional baseband units. While Wu discloses a single baseband unit configuration, Sabat-552 explicitly teaches a DAS where multiple central hubs (analogous to Wu's baseband units) are communicatively coupled via digital cross-connects. This allows a base station connected to one hub to have its signals distributed to remote units connected to other hubs.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Wu’s dynamic resource allocation with Sabat-552’s interconnected hub architecture to create a more scalable and cost-effective system. Sabat-552 provides the motivation of enabling signals from one base station to reach any remote unit in the multi-hub system, avoiding the cost of building additional base stations and distribution networks.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely requires duplicating Wu's already-disclosed baseband unit structure and connecting them with a well-known interface, such as the fiber optic cables taught in the ’499 patent itself.

• Additional Grounds: Petitioner asserted several additional obviousness challenges, including: (1) claims 1-5, 8-11, 13-16, and 18-19 are obvious over Wu, optionally combined with Sabat-426, to teach integrating components into a single unit; (2) all claims are obvious over the primary grounds in further view of the OBSAI industry standard for packetizing communications; and (3) various claims are obvious over combinations of Hettstedt with Wu or Sabat-552.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the examiner committed a clear error during prosecution. The examiner allowed the claims based on the novelty of sending a second set of radio resources with a number different from the first set. However, Petitioner contended this limitation is expressly disclosed in both Wu and Hettstedt. Petitioner noted that these references were cited in an Information Disclosure Statement (IDS) but never substantively discussed by the examiner, indicating they were overlooked. Petitioner further argued that the PTAB had already found this same examiner made the same material error when analyzing the parent ’178 patent against the same Wu reference, which led to IPR institution in that case.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-19 of the ’499 patent as unpatentable.