Tesla Inc v. Intellectual Ventures II

1. Case Identification

• Case #: IPR2025-00218
• Patent #: 10,136,416
• Filed: November 21, 2024
• Petitioner(s): Tesla, Inc.
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Allocating Channel Resources in a Cellular Communication System
• Brief Description: The ’416 patent discloses a method for efficiently allocating radio resources in a cellular communication system. It purports to achieve this by using indicator bits within a Broadcast Channel (BCH) to dynamically indicate whether a specific timeslot in a frame will be used as a signaling channel (e.g., for paging) or reallocated for use as a shared data channel when no signaling is needed.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are obvious over Kim in view of Vayanos

• Prior Art Relied Upon: Kim (Patent 8,761,814) and Vayanos (Patent 8,144,735).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kim addressed the same problem as the ’416 patent—wasted radio resources from unused signaling channels. Kim taught a method for improving resource efficiency by using indicator bits in a broadcast channel to signal whether a subsequent time interval would contain a Paging Channel (PCH) for signaling or if those resources would be used for a Downlink Shared Channel (DL-SCH) for data. This, Petitioner contended, disclosed the core novelty of the ’416 patent. Vayanos was cited for teaching standard components of a 3GPP-compliant User Equipment (UE), such as a receiver and a processor (controller), and disclosing the conventional format of a Paging Indicator Channel (PICH) as comprising a plurality of bits (e.g., 300 bits per frame).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kim’s dynamic resource allocation method with the standard 3GPP-compliant UE hardware and PICH format described by Vayanos. Because both Kim and Vayanos operated within the 3GPP standards framework (UMTS/LTE), a POSITA would have seen it as a conventional and predictable design choice to implement Kim’s system using the well-known UE architecture and channel structures taught by Vayanos to ensure system compatibility and workability.
  • Expectation of Success: A POSITA would have a high expectation of success in this combination. The integration involved applying a known technique (a PICH with multiple bits, as taught by Vayanos) to an existing, improvement-ready method (Kim's dynamic channel allocation) to achieve the predictable result of paging specific groups of terminals based on specific indicator bits, all within the established 3GPP framework.

Ground 2: Claims 1-12 are obvious over Kim, Vayanos, and Applicant Admitted Prior Art (AAPA)

• Prior Art Relied Upon: Kim (Patent 8,761,814), Vayanos (Patent 8,144,735), and Applicant Admitted Prior Art from the ’416 patent specification.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reinforced Ground 1 by using the ’416 patent’s own background section as evidence that the techniques taught by Kim and Vayanos were well-known in the art. Petitioner asserted that the AAPA described conventional paging procedures that confirmed key claim elements. Specifically, the AAPA acknowledged that a PICH comprises "multiple indicator bits," that idle UEs periodically decode the PICH to check for a set indicator bit, and that upon finding a set bit, the UE reads the Paging Channel (PCH) using its unique identifier (UE-ID) to determine if a message is intended for it.
  • Motivation to Combine: Petitioner argued that the AAPA demonstrated that the combination of Kim and Vayanos was not just a logical step but was consistent with what the patent’s own applicant considered to be the known state of the art. A POSITA would have been motivated to implement Kim’s system using the standard paging procedures described in the AAPA (and taught by Vayanos) because they were the established, conventional methods for paging in 3GPP systems.
  • Expectation of Success: The expectation of success was argued to be high, as the combination merely involved using well-vetted, standardized paging techniques, which the patent owner had admitted were known, to implement the resource-saving method of Kim. This represented the predictable use of prior art elements according to their established functions.

4. Arguments Regarding Discretionary Denial

• §325(d) Denial: Petitioner argued denial is inappropriate because the primary references, Kim and Vayanos, were not considered during prosecution. Therefore, the challenge is not cumulative or redundant to the Examiner's search.
• Fintiv Denial: Petitioner asserted that the Fintiv factors strongly favor institution. The parallel district court case was in its very early stages, with no claim construction hearing scheduled and a proposed trial date of May 14, 2026, well after the one-year statutory deadline for a Final Written Decision in the IPR. Petitioner contended that investment in the parallel proceeding has been minimal, and the petition was filed promptly after infringement contentions were served.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-12 of the ’416 patent as unpatentable under 35 U.S.C. §103.