Ericsson Inc v. Procomm Intl Pte Ltd

1. Case Identification

• Case #: IPR2024-01452
• Patent #: 8,583,100
• Filed: December 31, 2024
• Petitioner(s): Ericsson Inc. and Cellco Partnership d/b/a Verizon Wireless
• Patent Owner(s): Procomm International Pte. Ltd
• Challenged Claims: 1-4, 6, 8-11, 14-15, and 17-19

2. Patent Overview

• Title: Distributed Remote Base Station System
• Brief Description: The ’100 patent relates to a distributed antenna system (DAS) where base station functionality is distributed among multiple remote antenna units. The system comprises a host unit that sends downlink RF sampled data to the remote units, which can process and route signals among themselves and transmit to user equipment, thereby increasing network capacity and processing speed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Aarflot, Laroia, and Wiedeman - Claims 1-4, 6, 8-11, 14-15, and 17-19 are obvious over Aarflot, alone or in view of Laroia and Wiedeman.

• Prior Art Relied Upon: Aarflot (Patent 8,908,650), Laroia (Patent 7,899,495), and Wiedeman (Patent 6,985,454).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Aarflot is the primary reference, disclosing a distributed base station architecture nearly identical to that claimed in the ’100 patent. Aarflot taught a system with a host unit, termed a Radio Equipment Control (REC) node, communicatively coupled to a plurality of remote antenna units, termed Radio Equipment (RE) nodes. These RE nodes could be arranged in various network topologies (e.g., daisy-chain, tree, ring), included co-located processing circuitry (framer/deframer), and distributed base station functionality between the REC and REs.

  • Petitioner asserted that the key feature added during prosecution to achieve allowance—simultaneously transmitting the same RF signal from two or more remote antennas—was not explicitly detailed in Aarflot but was well-known in the art and explicitly taught by Laroia. Laroia disclosed achieving macrodiversity through "bicasting," where a primary base station transmits a packet and also forwards a replicate packet to a secondary base station for subsequent transmission. Petitioner mapped this teaching to the limitations requiring a first remote unit to generate a transport signal representing a "duplicate" of its transmitted RF signal and send it to a second remote unit for transmission.

  • To the extent Patent Owner might argue that Aarflot’s "framer/deframer" circuitry is not a "network layer router" as claimed, Petitioner contended that Wiedeman cured any alleged deficiency. Wiedeman disclosed a satellite communication system using co-located network layer routers (specifically, IP routers) to route data packets. Petitioner argued that Aarflot's circuitry performs the function of a network layer router or, alternatively, a person of ordinary skill in the art (POSA) would be motivated to substitute Wiedeman's well-known IP routing for Aarflot's routing protocol.

  • Motivation to Combine: A POSA would combine Aarflot with Laroia to incorporate the well-understood benefits of macrodiversity into Aarflot's distributed system. This combination would predictably improve signal quality, combat fading, and enable seamless soft handoffs for mobile users moving between coverage areas of different remote units. The motivation to combine Aarflot with Wiedeman was presented as a simple substitution of one known routing method (Wiedeman's IP routing) for another (Aarflot's protocol) to achieve the predictable result of reliable data transport, while also allowing for easier interfacing with standard IP-based networks.

  • Expectation of Success: Petitioner argued a POSA would have a high expectation of success. Implementing macrodiversity and simulcasting, as taught by Laroia, were established techniques for improving wireless communication networks. Similarly, using IP routers for data transport, as taught by Wiedeman, was a ubiquitous and reliable solution. Integrating these predictable technologies into Aarflot's architecture would not require undue experimentation and would lead to the expected performance improvements.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inappropriate because the asserted prior art references (Aarflot, Laroia, Wiedeman) were not cited or considered by the examiner during the prosecution of the ’100 patent, making the challenge neither cumulative nor redundant.
• Regarding discretionary denial under Fintiv due to a co-pending district court case, Petitioner asserted that the factors weigh in favor of institution. The litigation was in its early stages with minimal investment (Factor 3), and Petitioner stipulated that it would not pursue the same invalidity grounds in district court if the IPR is instituted (Factor 4). Petitioner also contended that the merits of the petition are exceptionally strong, claiming Aarflot is a "parallel disclosure" with "identical architecture" to the ’100 patent, which should compel the Board to institute review (Factor 6).

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 8-11, 14-15, and 17-19 of Patent 8,583,100 as unpatentable.