Volkswagen Group Of America Inc v. Neo Wireless LLC

1. Case Identification

• Case #: IPR2022-01567
• Patent #: 10,447,450
• Filed: September 27, 2022
• Petitioner(s): Volkswagen Group of America, Inc.
• Patent Owner(s): Neo Wireless LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: Method and System for Multi-Carrier Packet Communication with Reduced Overhead
• Brief Description: The ’450 patent discloses a resource allocation method for orthogonal frequency-division multiplexing (OFDM) communication systems. The method aims to reduce signaling overhead by defining communication segments in a time-frequency plane using "time-frequency resource units" specified by only two parameters: a starting time-frequency coordinate and N, the number of units in the segment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vijayan089 and Laroia - Claims 1-5, 7-11, and 13-17 are obvious over Vijayan089 in view of Laroia.

• Prior Art Relied Upon: Vijayan089 (Application # 2005/0058089) and Laroia (Application # 2005/0277429).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vijayan089, like the ’450 patent, discloses an OFDM system that allocates resources using time-frequency "transmission slots." Vijayan089 explicitly teaches defining an "assigned segment" using two parameters: "the start of the segment (which may be given by the starting subband and symbol period) and the length of the segment." This corresponds to the ’450 patent’s "starting time-frequency coordinate" and "N time-frequency resource units." Laroia was cited for its teaching of a base station assigning a "terminal identification (ID) information" to a wireless terminal, enabling the terminal to identify messages intended for it.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Laroia's identifier with Vijayan089's system to implement the "unicast communications" already suggested by Vijayan089. Using an identifier is a well-known technique to differentiate between multiple devices. This combination would further Vijayan089's stated goal of minimizing power consumption by allowing a device to process only data streams intended for it.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both references describe conventional OFDM systems, and assigning identifiers to facilitate unicast transmissions was a ubiquitous and well-understood technique in the art.

Ground 2: Obviousness over Vijayan475 and Wu - Claims 1-5, 7-11, and 13-17 are obvious over Vijayan475 in view of Wu.

• Prior Art Relied Upon: Vijayan475 (Application # 2005/0141475) and Wu (Application # 2005/0063345).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Vijayan475 discloses a similar resource allocation scheme to Vijayan089 but applies it to a "multiplexed logical channel (MLC)" rather than a physical layer channel. Vijayan475 defines a segment's starting coordinate and length (N-value) using parameters like "Start Offset," "Slot Info," and "Stream Lengths" to convey the number of allocated slots. Wu was cited for disclosing an OFDM system where a base station assigns a "sixteen bit UE identifier" to route messages and identify which receiver is to receive specific downlink content in designated OFDM slots.
  • Motivation to Combine: The motivation was similar to Ground 1. A POSITA would have been motivated to implement Wu’s UE identifier in Vijayan475’s system to enable unicast communications and allow individual devices to efficiently discern their own allocated resources. This would be a simple and known method to improve the functionality of Vijayan475's system.
  • Expectation of Success: Success would have been expected, as the combination involves applying a standard technique (device identifiers) to a conventional OFDM framework to achieve a predictable result (targeted communication).

Ground 3: Obviousness over Vijayan089, Laroia, and Choi - Claims 6, 12, and 18 are obvious over Vijayan089 and Laroia in view of Choi.

• Prior Art Relied Upon: Vijayan089 (Application # 2005/0058089), Laroia (Application # 2005/0277429), and Choi (Application # 2005/0243774).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1 to address the additional limitation of "repetition coding" in claims 6, 12, and 18. Petitioner argued that Choi explicitly teaches enhancing data transmission by applying "repetition encoding" to OFDM symbols. Choi describes this technique as a way to improve "error correction" and provide a "more robust data transmission scheme," and it could be applied in the time and/or frequency domains.
  • Motivation to Combine: A POSITA would have been motivated to add Choi’s well-known repetition coding technique to the Vijayan089/Laroia system to improve robustness and error correction. Vijayan089 already acknowledged the goal of error correction through other means ("forward error correction coding"), and applying Choi’s technique would be a known way to further this objective in an OFDM system.
  • Expectation of Success: There would be a high expectation of success in applying this simple, well-known coding technique to the established OFDM system of Vijayan089 and Laroia.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 6, 12, and 18 based on the combination of Vijayan475, Wu, and Choi, which relied on the same rationale as Ground 3 but used the base combination from Ground 2.

4. Arguments Regarding Discretionary Denial

• Petitioner argued strongly that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The parallel district court litigation was in its very early stages, with no trial date set and no significant resources invested by the court or parties. Petitioner also stipulated that, if IPR is instituted, it will not pursue the same grounds or prior art in the parallel litigation, mitigating concerns of duplicative efforts.
• Petitioner also contended that denial under §325(d) would be improper. None of the asserted prior art references or combinations were considered during prosecution of the ’450 patent. Further, this petition is not an improper serial petition because the Petitioner had not previously challenged the ’450 patent. A prior IPR filed by a different party (Dell) on the same patent (IPR2021-01486) was denied, but Petitioner argued its current grounds are substantively different, rely on stronger art, and were developed independently.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of Patent 10,447,450 as unpatentable.