Ericsson Inc v. Dali Wireless Inc

1. Case Identification

• Case #: IPR2022-01419
• Patent #: 10,334,499
• Filed: August 15, 2022
• Petitioner(s): Ericsson, Inc.
• Patent Owner(s): DALI Wireless Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Distributed Antenna System
• Brief Description: The ’499 patent discloses a field-reconfigurable Distributed Antenna System (DAS). The system features a central "baseband unit" designed to receive radio resources from multiple signal sources and dynamically route digital representations of these resources to a plurality of remote antenna units to flexibly manage network performance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wu - Claims 1-5, 8-11, 13-16, and 18-19 are obvious over Wu

• Prior Art Relied Upon: Wu (Application # 2010/0128676).
• Core Argument for this Ground: Petitioner argued that Wu, which discloses a "Carrier Channel Distribution System," teaches every element of these claims. The petition asserted that the challenged claims are not patentably distinct from claims of the related ’178 and ’473 patents, which were previously canceled or found unpatentable in prior proceedings based on Wu. Wu’s system uses a central host unit to dynamically route carrier channels from base transceiver stations (BTSs) to remote transceiver units (RTUs) based on a configurable routing policy.
  • Prior Art Mapping: Petitioner argued that Wu’s combination of a matrix switch (250) and host units (230) meets the "baseband unit" limitation of independent claims 1, 8, and 14. Wu’s disclosure of a BTS (240) that can be coupled to more than one multi-band transceiver (260) was asserted to teach a "plurality of signal sources." The core patentability feature—sending a first set of radio resources at a first time and a different, second set at a later time—was allegedly taught by Wu’s reconfigurable routing policy, which can "allocate more channels" to a region to increase bandwidth in response to network conditions like traffic load.
  • Motivation to Combine (for §103 ground): As an obviousness challenge, Petitioner argued a person of ordinary skill in the art (POSA) would have found it obvious to implement Wu’s teachings to dynamically alter the number of channels allocated to a remote unit. This was presented as a predictable application of known traffic management principles to achieve the desired result of optimizing bandwidth.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in configuring Wu’s system to vary channel allocation, as Wu’s routing policy is explicitly described as being reconfigurable to react to network events and conditions.

Ground 2: Obviousness over Wu and Sabat-552 - Claims 6, 7, 12, and 17 are obvious 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: This ground targeted dependent claims requiring the baseband unit to interface with one or more additional baseband units, including through direct and indirect connections. Petitioner contended that while Wu provides the foundational DAS, Sabat-552 explicitly teaches the claimed interconnectivity.
  • Prior Art Mapping: Petitioner argued Sabat-552 teaches an open-access RF distribution system comprising multiple hub sites (30) with hubs (35) that function as baseband units. These hubs are interconnected by digital cross-connects (37), which enable signals from a base station at one hub to be routed to remote units connected to other hubs. Sabat-552 explicitly discloses that these connections can be direct or indirect (passing through an intervening hub), thus mapping directly onto the limitations of claims 7, 12, and 17.
  • Motivation to Combine: A POSITA would combine Wu's dynamic resource allocation system with Sabat-552's scalable, interconnected hub architecture. The motivation, as taught by Sabat-552, was to achieve the well-understood benefits of expanding network coverage and sharing infrastructure without incurring the cost of building additional base stations. This combination would create a more robust and economically efficient DAS.
  • Expectation of Success: A POSA would have reasonably expected that combining these systems would be successful. Both Wu and Sabat-552 operate on the established principles of digitizing, routing, and distributing RF signals over a network, making their integration predictable.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §325(d). It contended that although Wu was before the Examiner in an Information Disclosure Statement (IDS), the Examiner failed to appreciate its teachings, constituting an error sufficient to warrant institution.
• Petitioner also argued against discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. The petition asserted that it presents compelling evidence of unpatentability, especially because the challenged claims are substantially similar to claims in a parent patent that were canceled over the same art. Furthermore, Petitioner stipulated that it would not pursue in parallel district court litigation the same grounds raised in the petition. It also characterized the parallel litigation as being in its early stages, minimizing concerns about judicial efficiency.

5. Relief Requested

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