Nokia Of America Corp v. Woodbury Wireless LLC

1. Case Identification

• Case #: IPR2025-00048
• Patent #: 9,496,930
• Filed: October 17, 2024
• Petitioner(s): Nokia of America Corporation, AT&T Services, Inc., T-Mobile USA, Inc.
• Patent Owner(s): Woodbury Wireless LLC
• Challenged Claims: 1-14 and 16-20

2. Patent Overview

• Title: Methods and Apparatus for Overlapping MIMO Physical Sectors
• Brief Description: The ’930 patent is directed to a wireless communication system using multiple-input-multiple-output (MIMO) antennas. The technology involves positioning directional antennas such that their physical coverage sectors overlap, creating "virtual sectors" where selected antennas can cooperate as a MIMO system to improve communication performance based on signal measurements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lastinger and Gore - Claims 1-14 and 16-20 are obvious over Lastinger in view of Gore.

• Prior Art Relied Upon: Lastinger (Application # 2005/0003865) and Gore (Patent 9,408,220).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lastinger, a prior publication by the same inventors as the ’930 patent, discloses a nearly identical system architecture and functionality. Lastinger teaches a wireless cell with multiple radios and directional antennas arranged with overlapping physical sectors to form "virtual sectors." It explicitly discloses using MIMO techniques, selecting antennas based on feedback from a client device (e.g., signal quality), and forming MIMO transmissions using antennas from different radios over the same channel. Petitioner contended this prior art meets the core limitations of the challenged independent claims (1, 16, and 18), which recite a wireless station with multiple "transmission points," "portions," or "groups," each having MIMO capability and cooperating to improve a transmission. Lastinger was also argued to teach receiving information based on measurements from a client device and altering transmissions (e.g., changing channels, physical sectors, or power) in response.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that Lastinger expressly references using known MIMO and beamforming techniques but does not elaborate on their specific implementation. A Person of Ordinary Skill in the Art (POSITA) would combine Lastinger with Gore because Gore provides the specific, well-known details for implementing the exact MIMO and adaptive beamforming techniques that Lastinger identifies as desirable. Both references address the same technical problem of increasing wireless system capacity and performance by altering transmissions based on channel quality feedback from client devices, providing a clear motivation to use Gore’s specific teachings to implement Lastinger’s conceptual framework.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining the references because it amounted to applying known, predictable techniques (from Gore) to a known system (Lastinger) to achieve the expected benefits of improved signal quality and reduced interference.
  • Key Aspects: The core of Petitioner's argument rested on the assertion that Lastinger, by the patent's own inventors, laid out the entire inventive concept, and the ’930 patent is an attempt to re-patent the same fundamental system using slightly different terminology.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
• Argument Against §325(d) Denial: Petitioner contended that although Lastinger was cited during the original prosecution, it was never substantively considered or applied by the examiner. It was allegedly "buried" within an Information Disclosure Statement (IDS) listing over 700 other references, meaning the arguments and mappings presented in the petition are new and were not previously evaluated.
• Argument Against Discretionary Denial under Fintiv: Petitioner argued that the relevant factors weigh in favor of institution. The merits of the petition were presented as particularly strong, given the nearly identical disclosure in Lastinger. Further, the co-pending district court litigation was described as being in its early stages, with a trial date set for October 2025, well after a Final Written Decision (FWD) would issue. Petitioner also argued that there would be minimal overlap of issues, as the district court is expected to limit the Patent Owner to asserting a small fraction of the claims challenged in the IPR.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-14 and 16-20 of the ’930 patent as unpatentable.