Nokia Of America Corp v. Pegasus Wireless Innovation LLC

1. Case Identification

• Case #: IPR2025-00037

• Patent #: 10,616,932

• Filed: October 18, 2024

• Petitioner(s): Nokia of America Corp., Ericsson Inc., AT&T Services, Inc., Cellco Partnership d/b/a Verizon Wireless, and T-Mobile USA, Inc.

• Patent Owner(s): KT Corporation and Pegasus Wireless Innovation LLC

• Challenged Claims: 1-2, 4, 8-9, and 11

2. Patent Overview

• Title: Wireless Connection Method and Apparatus in Wireless Access Network Separation Structure
• Brief Description: The ’932 patent discloses wireless connection methods in a network architecture where a base station’s functions are split between a central unit (CU) and an access unit (AU). The invention focuses on the process of configuring a wireless connection for a terminal by managing the exchange of Radio Resource Control (RRC) messages between the terminal, the AU, and the CU.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 4, 8-9, and 11 are obvious over Lin1.

• Prior Art Relied Upon: Lin1 (International Publication No. PCT/CN2014/089300).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lin1, which was not considered during prosecution, discloses all limitations of the challenged claims. Lin1 teaches a network architecture with a split RRC function between an "anchor node" and a "serving node" to increase system capacity. Petitioner asserted a person of ordinary skill in the art (POSITA) would have understood Lin1’s anchor node and serving node to be equivalent to the ’932 patent’s central unit and access unit, respectively. Lin1 allegedly discloses the claimed method steps, including the serving node (access unit) receiving an uplink RRC message from a terminal (UE), forwarding it to the anchor node (central unit), receiving a responsive downlink RRC message from the anchor node, and transmitting it to the terminal. Critically, Petitioner contended Lin1 teaches distinguishing signaling radio bearers (SRBs) using "indication information" included in control messages, which directly corresponds to the "radio bearer identification information" limitation that was key to allowance.
  • Key Aspects: The argument hinges on the direct mapping of Lin1's split-node architecture and message handling, particularly the use of "indication information" to manage different SRB types, to the core limitations of the challenged claims.

Ground 2: Claims 1-2, 4, 8-9, and 11 are obvious over Lin1 in view of Lin2.

• Prior Art Relied Upon: Lin1 (International Publication No. PCT/CN2014/089300) and Lin2 (International Publication No. PCT/CN2014/089310).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lin1 discloses most claim limitations, and to the extent an element is considered missing, Lin2 supplies it. Lin2 explicitly discloses a serving node receiving an uplink RRC message from a user terminal and sending that message within a control plane message to an anchor node. It also shows the anchor node sending a responsive downlink RRC message back to the serving node. Lin2’s teachings focus on splitting RRC message processing for different SRB types between the serving node (handling SRB0) and the anchor node (handling SRB1 and SRB2) to reduce signaling load and improve capacity. This explicit functional split, Petitioner argued, makes the claimed method of distinguishing bearers obvious.
  • Motivation to Combine: A POSITA would combine Lin1 and Lin2 because they share a common inventor, were filed on the same day, and describe the same split-node network architecture to solve the same problem of increasing system capacity. Lin2’s detailed methods for reducing signaling load would have been seen as a natural and advantageous implementation for the architecture described in Lin1.
  • Expectation of Success: A POSITA would have had a high expectation of success because the references describe highly similar, compatible systems using standard 3GPP concepts. Implementing Lin2's specific RRC handling techniques within Lin1's architecture would have been a straightforward optimization.

Ground 3: Claims 1-2, 4, 8-9, and 11 are obvious over Lin1 in view of Zhang.

• Prior Art Relied Upon: Lin1 (International Publication No. PCT/CN2014/089300) and Zhang (International Publication No. WO 2014/127525).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zhang, like Lin2, provides teachings that reinforce the obviousness of the claimed invention when combined with Lin1. Zhang describes a split architecture with a "macro network node" (central unit) and a "micro network node" (access unit). Zhang explicitly teaches the micro node forwarding uplink RRC messages to the macro node and the macro node sending responsive downlink RRC messages back. Crucially, Zhang discloses using control information that "includes an identifier of a radio bearer (RB)" (e.g., 'SRB 1') to manage communication between the nodes. This directly teaches the claimed limitation of using radio bearer identification information to distinguish signaling bearers.
  • Motivation to Combine: A POSITA would combine Lin1 and Zhang because they share a common inventor and describe similar split-node architectures to improve network performance. Zhang is motivated by reducing access delay, a goal compatible with Lin1’s goal of increasing capacity. A POSITA would have looked to Zhang’s method of using explicit radio bearer identifiers to optimize the message handling in Lin1’s system.
  • Expectation of Success: A POSITA would have had a high expectation of success due to the complementary nature of the disclosures. Applying Zhang's explicit use of RB identifiers to Lin1's architecture would be a predictable implementation yielding the known benefit of reduced delay and more efficient processing.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued that discretionary denial under §325(d) is unwarranted because the asserted prior art (Lin1, Lin2, and Zhang) and the invalidity grounds based upon them were never presented to or considered by the Examiner during prosecution. Petitioner asserted the references address the specific limitation—distinguishing radio bearers based on identification information—that the Examiner relied upon for allowance, making the new art materially different from what was previously considered.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation is in a nascent stage. Key factors weighing against denial included: the trial date is not until at least September 2025 and is subject to delay; there has been minimal investment in the district court proceedings, with infringement and invalidity contentions only recently served and claim construction not scheduled until March 2025; and the merits of the petition are strong. Petitioner contended that instituting the IPR would simplify issues for the district court and promote efficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4, 8-9, and 11 of Patent 10,616,932 as unpatentable.