Ericsson Inc v. Procomm Intl Pte Ltd

1. Case Identification

• Case #: IPR2024-01453
• Patent #: 7,103,377
• 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, 2, 4-5

2. Patent Overview

• Title: Small Signal Threshold and Proportional Gain Distributed Digital Communications
• Brief Description: The ’377 patent describes a method for gain control in a distributed antenna system (DAS). The method manages the system's total dynamic range by sensing individual signal levels from multiple antennas, comparing them to a "dynamic range fair share threshold," and attenuating signals that exceed this threshold to prevent system overload.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 4-5 by Solum under 35 U.S.C. §102

• Prior Art Relied Upon: Solum (Application # US2003/0162516)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Solum, which describes a distributed automatic gain control system, discloses every limitation of the challenged claims. Solum was cited during prosecution of the ’377 patent but was not applied by the examiner.
    • Independent Claim 1: Solum’s system addresses the same problem as the ’377 patent: managing the limited dynamic range of a system that combines signals from multiple remote antenna units.
      • Sensing signal levels: Solum’s input power calculators (208) are connected to each input port to monitor and determine the power level of each incoming signal, which corresponds to the claimed "sensing a signal level at each of the plurality of distributed antennas."
      • Comparing to a threshold: Solum’s system monitors and evaluates the sensed signal levels to determine whether any signal "exceeds a predetermined level." Petitioner asserted that this predetermined level is equivalent to the claimed "dynamic range fair share threshold" because Solum's gain control applies a "fair weighting" that is proportional to each signal's power, thus treating signals proportionally rather than equally.
      • Attenuating signals greater than the threshold: When a signal in Solum exceeds the predetermined threshold, its controller (230) determines and applies weighting coefficients (gain factors) via variable gain controllers to attenuate the signal and avoid an overflow condition.
      • Determining the gain factor: Solum’s controller determines the gain factor in response to feedback from a combined power calculator (228), which measures the aggregate signal level after attenuation. This feedback on the system's remaining capacity (i.e., whether the combined signal is below a "decay threshold" or above an "attack threshold") directly corresponds to determining the gain factor "in response to a remaining portion of the total system dynamic range after attenuation of other signal levels."
    • Dependent Claims:
      • Claim 2 (threshold is an inverse of antenna quantity): Petitioner argued a person of ordinary skill in the art (POSA) would understand that in Solum's system, as the number of antennas increases, the individual signal threshold must decrease to stay within the total dynamic range, establishing the claimed inverse relationship.
      • Claim 4 (unity gain for signals ≤ threshold): Solum only attenuates signals that exceed its threshold. Petitioner contended that signals at or below the threshold are therefore not attenuated, which is equivalent to applying a unity gain.
      • Claim 5 (gain factor is inversely proportional to signal level): Solum states its controller sets weighting coefficients based on individual input power calculators. Petitioner argued this means a smaller input signal corresponds to a larger weighted coefficient, which implies the gain factor applied for attenuation is inversely proportional to the signal level.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same Art or Arguments: Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting that although Solum was before the examiner in an Information Disclosure Statement (IDS), it was never substantively considered or applied against the claims. Petitioner contended that Solum was not "effectively before the examiner" and that the examiner materially erred by allowing the claims, as Solum allegedly anticipates every limitation.
• §314(a) - Parallel Litigation (Fintiv): Petitioner argued that discretionary denial under 35 U.S.C. §314(a) is not warranted. An analysis of the Fintiv factors allegedly favors institution, as the co-pending district court litigation is in its early stages with minimal investment, and Petitioner stipulated it would not pursue the same invalidity grounds in that litigation if an inter partes review (IPR) is instituted. Furthermore, Petitioner asserted the petition presents compelling merits of unpatentability, arguing Solum is a parallel disclosure from the same corporate entity as the ’377 patent that clearly anticipates the challenged claims.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1, 2, and 4-5 of the ’377 patent as unpatentable.