Ericsson Inc v. Dali Wireless Inc

1. Case Identification

• Case #: IPR2022-01345
• Patent #: 11,006,343
• Filed: August 3, 2022
• Petitioner(s): Ericsson, Inc.
• Patent Owner(s): Dali Wireless, Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Distributed Antenna System
• Brief Description: The ’343 patent describes a Distributed Antenna System (DAS) for wireless communications. The system uses a central digital access unit (DAU) that receives radio resources from multiple signal sources (e.g., base stations) and dynamically allocates them to a plurality of remote units (DRUs) based on factors like network load and resource management.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wu - Claims 1-3, 5-10, 12-14, and 16-21 are obvious over Wu in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Wu (Application # 2010/0128676).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wu discloses all limitations of the challenged claims. Wu describes a "Carrier Channel Distribution System" where a base transceiver station (BTS), comprising a matrix switch and host units (collectively the claimed "digital access unit"), routes carrier channels ("radio resources") to remote transceiver units (RTUs). Petitioner asserted that Wu’s system explicitly teaches dynamically reconfiguring the allocation of channels to RTUs based on a routing policy that considers network conditions such as traffic load and load balancing. This policy allows the system to send a first set of channels to an RTU at a first time and a different, second set of channels at a second time based on these conditions, directly mapping to the core limitations of independent claims 1 and 12.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. Petitioner argued that any minor differences between Wu’s disclosure and the claims would have been obvious modifications based on the general knowledge of a Person of Ordinary Skill in the Art (POSITA) at the time.
  • Key Aspects: Petitioner emphasized that the Board had previously instituted an inter partes review (IPR) and subsequently entered an adverse judgment canceling all claims of the parent ’178 patent based on the same teachings of Wu. Petitioner contended the patent owner is therefore estopped from arguing the patentability of the substantially similar claims of the ’343 patent over Wu.

Ground 2: Obviousness over Wu and Cannon - Claims 4, 11, 15, and 22 are obvious over Wu in view of Cannon.

• Prior Art Relied Upon: Wu (Application # 2010/0128676) and Cannon (Application # 2010/0177760).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Wu by adding Cannon to address dependent claims related to the specific implementation of dynamic adjustments at the remote units. While Wu taught the principle of reallocating resources based on load, Cannon disclosed a practical method for implementing this functionality. Cannon described a DAS where remote units contain a programmable logic device, such as a Field-Programmable Gate Array (FPGA), that can be reconfigured to alter the bandwidths and frequencies processed by the unit. Petitioner argued that combining Cannon's programmable remote unit with Wu's dynamic allocation system rendered claims requiring the system to "dynamically adjust a capacity of at least the first remote unit" (claim 4) and for remote units to be "automatically configured by the system" (claim 11) obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Wu and Cannon to implement Wu’s dynamic resource allocation framework. Wu provided the "what" and "why" (reallocate channels based on load), while Cannon provided a known and suitable "how" (use a programmable FPGA in the remote unit). Cannon expressly taught that using an FPGA was beneficial for allowing a remote unit to be adjusted to meet the changing needs of the end user, which aligned perfectly with Wu's objective of managing network traffic load.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as using FPGAs to program and reconfigure radio transceivers was a well-known, predictable, and accepted technique in the art.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially the Same Prior Art: Petitioner argued denial under 35 U.S.C. §325(d) would be improper. Although Wu and Cannon were cited to the Examiner during prosecution, they were part of an Information Disclosure Statement (IDS) containing over 390 references. Petitioner asserted the Examiner objected to the volume of references and never substantively analyzed Wu or Cannon, constituting sufficient Examiner error to warrant institution.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv. It contended the petition presented compelling evidence of unpatentability, particularly given the prior adverse judgment against the parent ’178 patent on the same primary reference (Wu). Petitioner also noted it would adopt a stipulation not to pursue the same grounds in parallel district court litigation. An analysis of the remaining Fintiv factors (e.g., the early stage of the co-pending litigation) was presented to show they also weighed in favor of institution.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-22 of the ’343 patent as unpatentable under 35 U.S.C. §103.