American Honda Motor Co Inc v. Neo Wireless LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Case #: [IPR2023-00793](https://ai-lab.exparte.com/case/ptab/IPR2023-00793)
- Patent #: [10,447,450](https://ai-lab.exparte.com/patent/10447450)
- Filed: March 30, 2023
- Petitioner(s): [American Honda Motor Co., Inc.](https://ai-lab.exparte.com/party/american-honda-motor-co-inc) and [Honda Development & Manufacturing of America, LLC](https://ai-lab.exparte.com/party/honda-development-and-mfg-of-america-llc)
- Patent Owner(s): [Neo Wireless LLC](https://ai-lab.exparte.com/party/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](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1001) describes a method for allocating resources in an Orthogonal Frequency-Division Multiplexing (OFDM) communication system. The method defines a communication segment using a starting time-frequency coordinate and an N-value (the number of "time-frequency resource units") to allegedly reduce control overhead compared to prior systems.

## 3. Grounds for Unpatentability
#### Ground 1: Claims 1-5, 7-11, and 13-17 are obvious over Vijayan089 and Laroia
  - **Prior Art Relied Upon:** [Vijayan089](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1005) (Application # 2005/0058089) and [Laroia](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1007) (Application # 2005/0277429).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that Vijayan089 taught the core inventive concept of the ’450 patent. Specifically, Vijayan089 disclosed an OFDM system that specified an assigned resource "segment" using two parameters: "the start of the segment" (a starting coordinate) and "the length of the segment" (a number of "transmission slots"), which corresponds to the claimed N-value. Petitioner asserted that Laroia taught the remaining limitation of assigning a specific identifier to a mobile station to allow it to recognize messages intended for it.
    - **Motivation to Combine:** Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to achieve predictable results. Vijayan089 disclosed "unicast communications" but did not explicitly detail how to implement identifiers. A POSITA would have been motivated to look to a reference like Laroia, which taught using terminal identifiers to improve system efficiency and reduce power consumption—a goal shared by Vijayan089.
    - **Expectation of Success:** A POSITA would have had a high expectation of success because combining a known resource allocation method (Vijayan089) with a standard technique for identifying devices (Laroia) in a conventional OFDM framework was a straightforward implementation of known technologies to achieve a predictable benefit.

#### Ground 2: Claims 1-5, 7-11, and 13-17 are obvious over Vijayan475 and Wu
  - **Prior Art Relied Upon:** [Vijayan475](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1006) (Application # 2005/0141475) and [Wu](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1008) (Application # 2005/0063345).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground presented an alternative to Ground 1. Petitioner argued that Vijayan475, like Vijayan089, taught defining a resource segment using a starting coordinate (derived from "Start Offset" and "Slot Info" parameters) and an N-value (the "number of slots allocated"). While functionally similar, Vijayan475 applied this technique to multiplexed logical channels (MLCs). Petitioner asserted that Wu taught assigning a "sixteen bit UE identifier" to a device so it knows which downlink content to receive.
    - **Motivation to Combine:** The motivation was analogous to Ground 1. Vijayan475 disclosed unicast communications, creating a need to differentiate between users. A POSITA would combine Wu's explicit teaching of a user-specific identifier with Vijayan475's system to allow a device to efficiently discern its own allocated resources from those of other devices, a simple and well-understood improvement.
    - **Expectation of Success:** Success would be expected, as this combination involved implementing a known identifier system (Wu) into a known resource allocation framework (Vijayan475) to improve the functionality of unicast transmissions in a predictable manner.

#### Ground 3: Claims 6, 12, and 18 are obvious over Vijayan089, Laroia, and Choi
  - **Prior Art Relied Upon:** Vijayan089 (Application # 2005/0058089), Laroia (Application # 2005/0277429), and [Choi](https://ai-lab.exparte.com/case/ptab/IPR2023-00793/doc/1009) (Application # 2005/0243774).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground built 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 taught enhancing data transmission by using "repetition encoding" to improve error correction and provide a more robust scheme, and that this technique could be applied to OFDM symbols in the time and/or frequency domains.
    - **Motivation to Combine:** A POSITA would be motivated to add Choi's repetition coding to the system of Vijayan089 and Laroia to improve its robustness and correct for errors, a known issue in wireless communication. Vijayan089 already used forward error correction, and adding Choi's simple repetition technique was a well-known method to further this goal.
    - **Expectation of Success:** A POSITA would have a high expectation of success in applying Choi's conventional repetition coding to the time-frequency units of the Vijayan089/Laroia system, as it was a known technique for improving signal reliability in OFDM systems.

- **Additional Grounds:** Petitioner asserted an additional obviousness challenge for claims 6, 12, and 18 based on the combination of Vijayan475, Wu, and Choi, relying on a similar motivation to add Choi's repetition coding to the base combination of Ground 2.

## 4. Arguments Regarding Discretionary Denial
- Petitioner argued that discretionary denial would be inappropriate for several reasons.
  - **Fintiv Factors:** Petitioner asserted that denial under `discretionary denial under Fintiv` was not applicable because there was no scheduled trial date in the parallel district court litigation, and the median time to trial in the relevant courts would place any trial well after a Final Written Decision (FWD) from the Board.
  - **Serial Petitions (§325(d)/General Plastic):** Petitioner contended that this was its first IPR petition for the ’450 patent. It argued that a prior IPR filed by a different party (Dell Inc.) was not a basis for denial because this petition used different prior art, different arguments, and a different expert, and was not a "roadmap" based on the prior failed attempt.
  - **Same Art or Arguments (§325(d)/Advanced Bionics):** Petitioner argued that the prior art combinations asserted in this petition were new, non-cumulative, and had not been previously presented to or considered by the USPTO during prosecution, weighing strongly in favor of institution.

## 5. Relief Requested
- Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of Patent 10,447,450 as unpatentable.

Honda challenges OFDM packet communication patent: all 18 claims argued as obvious over Vijayan & Laroia prior art for resource segment allocation.