Mediatek Inc v. Bell Northern Research LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Case #: [IPR2023-01414](https://ai-lab.exparte.com/case/ptab/IPR2023-01414)
- Patent #: [8,416,862](https://ai-lab.exparte.com/patent/8416862)
- Filed: September 25, 2023
- Petitioner(s): [MediaTek Inc.](https://ai-lab.exparte.com/party/mediatek-inc) and [NXP USA, Inc.](https://ai-lab.exparte.com/party/nxp-usa-inc)
- Patent Owner(s): [Bell Northern Research, LLC](https://ai-lab.exparte.com/party/bell-semiconductor-llc)
- Challenged Claims: 1-4, 9-12

## 2. Patent Overview
- Title: Feeding Back Transmitter Beamforming Information
- Brief Description: [The ’862 patent](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1001) relates to a method and device for reducing the amount of feedback data in a Multiple-Input-Multiple-Output (MIMO) wireless communication system. The technology involves a receiving device calculating a transmitter beamforming unitary matrix (V), decomposing that matrix to reduce its data size, and sending the reduced information back to the transmitting device.

## 3. Grounds for Unpatentability

#### Ground 1: Claims 1-4 and 9-12 are obvious over Li-748, Tong, and Mao.
  - **Prior Art Relied Upon:** [Li-748](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1004) (Patent 7,236,748), [Tong](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1005) (Application # 2008/0108310), and [Mao](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1006) (Patent 7,312,750).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that Li-748 taught a closed-loop MIMO system that determines a transmit beamforming matrix (V) using Singular Value Decomposition (SVD) based on training symbols. To the extent Li-748 did not explicitly disclose decomposing this matrix to reduce feedback, Tong taught this exact step, disclosing the decomposition of a unitary matrix V using a "Givens transform" to reduce the number of parameters sent back to the transmitter. Mao was cited for its conventional disclosure of a wireless system with RF units and frequency converters that transform RF signals to baseband signals for processing, supplying the hardware context.
    - **Motivation to Combine:** A Person of Ordinary Skill in the Art (POSITA) would combine the SVD-based MIMO system of Li-748 with the well-known Givens rotation decomposition taught by Tong to achieve the predictable benefit of reduced feedback bandwidth. A POSITA would further incorporate the standard RF-to-baseband conversion components taught by Mao as a necessary and conventional step to create a functional wireless device.
    - **Expectation of Success:** A POSITA would have had a high expectation of success because the combination involved applying known techniques (Tong's decomposition, Mao's RF hardware) to a known system (Li-748's MIMO architecture) to achieve predictable and desirable results.

#### Ground 2: Claims 1-4 and 9-12 are obvious over Tong and Mao.
  - **Prior Art Relied Upon:** Tong (Application # 2008/0108310) and Mao (Patent 7,312,750).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner asserted that Tong alone disclosed all key aspects of the challenged claims. Tong taught a MIMO system where a receiver uses pilot symbols (a preamble) to perform a channel measurement (estimate channel response), performs an SVD on the channel matrix to obtain the V matrix, and then decomposes the V matrix using a Givens transform to reduce feedback. Mao was again relied upon to teach the conventional hardware for converting received RF signals to baseband signals for processing by a baseband processor, as described in Tong.
    - **Motivation to Combine:** A POSITA would have been motivated to implement Tong's complete system using the standard RF front-end architecture disclosed by Mao. This combination represented a straightforward implementation of known components to achieve the benefits of Tong’s feedback reduction technique.
    - **Expectation of Success:** Success would be expected, as this combination amounted to implementing Tong's system with conventional, widely used RF hardware as taught by Mao, presenting no technical hurdles.

#### Ground 3: Claims 1, 3, 4, 9, 11, and 12 are obvious over Li-054 and Mao.
  - **Prior Art Relied Upon:** [Li-054](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1007) (Application # 2006/0092054) and Mao (Patent 7,312,750).
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that Li-054, like the ’862 patent, taught a method to reduce feedback by decomposing the beamforming matrix. Li-054 disclosed a receiver that receives training symbols, computes a beamforming matrix V via SVD, and then performs a "householder reflection" to reduce the dimensionality of the matrix before feeding it back. This householder reflection was presented as a form of the claimed "decomposing." Mao was again cited to provide the standard RF-to-baseband hardware context.
    - **Motivation to Combine:** A POSITA would combine Li-054's feedback reduction system with Mao’s conventional RF hardware to build a functional device. This would have been a common-sense integration of a processing technique with the necessary hardware to receive and process the signals.
    - **Expectation of Success:** The combination was a predictable implementation of Li-054's teachings using standard hardware components and techniques from Mao, leading to a high expectation of success in achieving reduced feedback bandwidth.

- **Additional Grounds:** Petitioner asserted that claims 2 and 10 are obvious over Li-054, Mao, and [Yang](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1008) (a 1991 article on SVD computation) to explicitly teach Cartesian-to-polar coordinate conversion. Petitioner also asserted that claims 1, 3-4, and 9, 11-12 are obvious over [Poon](https://ai-lab.exparte.com/case/ptab/IPR2023-01414/doc/1009) (Patent 7,710,925) in view of Mao, presenting Poon as another reference teaching SVD-based beamforming feedback.

## 4. Key Claim Construction Positions
- Petitioner argued that key claim terms should be given their plain and ordinary meaning, contending that formal constructions are unnecessary.
- For "a baseband processing module operable to...," Petitioner noted that a district court and the Board (in a prior IPR) found the term was well-known and recognizable without formal construction or treatment under §112, ¶6.
- For "decompose the estimated transmitter beamforming unitary matrix (V)...," Petitioner argued the term’s plain meaning is readily understandable. Petitioner asserted that even if the Board adopted a narrower construction requiring a reduction in angles or coefficients, the prior art (e.g., Tong's Givens rotation) would still meet that construction.

## 6. Arguments Regarding Discretionary Denial
- Petitioner argued against discretionary denial under §314(a) based on *Fintiv* factors, stating that the parallel district court cases are stayed, no trial dates are scheduled, and minimal discovery has occurred. Petitioner also cited the Director's guidance that parallel ITC proceedings do not warrant denial.
- Petitioner argued against denial under §325(d), asserting the grounds are not cumulative because the Board has never issued a Final Written Decision (FWD) on the merits of these grounds. A prior IPR on the same grounds (IPR2020-00108) was instituted but terminated due to settlement before a FWD.

## 7. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 and 9-12 of the ’862 patent as unpatentable.

MediaTek targets MIMO wireless patent: Tong & Li art cited for obviousness of claims on reducing beamforming feedback via matrix decomposition.