PTAB

IPR2025-00290

Google LLC v. Pegasus Wireless Innovation LLC

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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Configuring Dual Connectivity
  • Brief Description: The ’118 patent relates to methods and equipment for configuring dual connectivity (DC) in wireless networks. The technology focuses on a user equipment (UE) communicating with both a master base station and a secondary base station, wherein the secondary base station determines the addition of its own signaling radio bearer (SRB) and communicates configuration information directly to the UE.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are anticipated by or obvious over Futaki (WO 2017/119247) under 35 U.S.C. §102/§103.

  • Prior Art Relied Upon: Futaki (WO 2017/119247)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Futaki, which describes a radio architecture for interworking between different Radio Access Technologies (RATs) like LTE and 5G, discloses every element of the challenged claims. Independent claims 1, 7, and 10 require a method or equipment where the addition of a secondary base station SRB is "determined by the secondary base station." Petitioner contended this was the key limitation relied upon for allowance during prosecution. Petitioner asserted that Futaki explicitly discloses this feature, showing a 5G-specific secondary base station (eNB 6) initiating the addition of its own SRB by transmitting a request message (e.g., an X2AP message) to the master base station without a prior request from the master. Futaki further discloses the secondary base station transmitting a Radio Resource Control (RRC) message with configuration information directly to the UE via this new SRB and the UE transmitting a failure message if it cannot comply.
    • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued it would have been obvious to use Futaki’s teachings. Futaki expressly states that its disclosed embodiments can be implemented independently or combined, providing a clear motivation for a person of ordinary skill in the art (POSITA) to combine features described across different figures and sections to arrive at the claimed invention.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Futaki’s components are all described as part of a cohesive system for enabling DC between LTE and 5G networks, and the reference explicitly suggests combining its various disclosed features.

Ground 2: Claims 1-15 are obvious over Futaki in view of 3GPP 36.300 and 3GPP 36.331 under 35 U.S.C. §103.

  • Prior Art Relied Upon: Futaki, 3GPP TS 36.300 (Release 12), and 3GPP TS 36.331 (Release 12).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Futaki is viewed as having any minor gaps, a POSITA would have looked to the well-known 3GPP standards to supply the missing details. Futaki itself states its disclosed SRBs are "similar to" bearers in LTE Release 12 DC, directly pointing a POSITA to these standards. The 3GPP standards provide detailed, established procedures for DC operations, including the "SeNB Addition procedure" (3GPP 36.300) and specific RRC messaging protocols and failure reporting mechanisms (3GPP 36.331), such as the SCGFailureInformation message. For example, 3GPP 36.300 teaches that upon certain failures on the secondary cell group (SCG), the UE informs the master base station of an "SCG failure type" rather than triggering a full re-establishment procedure, directly mapping to the claimed failure reporting method.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Futaki with the 3GPP standards to ensure that a new system for interworking 5G and LTE RATs (as taught by Futaki) would be compatible with and leverage established, proven techniques from existing LTE DC standards. Futaki’s explicit reference to LTE Release 12 provides a direct motivation to consult and apply the detailed procedures from the corresponding 3GPP 36.300 and 3GPP 36.331 specifications.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success because the combination involves applying standardized, well-documented, and proven procedures for DC from the 3GPP standards to the specific inter-RAT DC architecture described in Futaki. The principles were designed to be robust and backward-compatible.

4. Key Claim Construction Positions

  • Petitioner argued that the claim preambles are limiting.
  • Petitioner contended that the term "configured to" in apparatus claim 10 should be construed to mean "actually configured to and not merely capable of performing the claimed function."
  • Petitioner asserted that under these constructions, the prior art still falls within the bounds of the claims.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv Factors): Petitioner argued against discretionary denial, asserting that the Fintiv factors weigh in favor of institution. Key arguments included: (1) a stay of the parallel district court litigation is possible, especially given jurisdictional disputes; (2) the trial date is more than nine months away and uncertain due to the complexity of three consolidated cases with multiple parties; (3) investment in the parallel litigation is minimal as it is in the early stages; and (4) the merits of the petition are exceptionally strong, particularly the anticipation ground based on Futaki, which was not before the Examiner.
  • §325(d): Petitioner argued against denial under §325(d), contending that the Examiner committed a material error during prosecution by allowing the claims. The primary references asserted in the petition (Futaki and the 3GPP standards) were not considered by the Patent Office. Petitioner argued these references are not cumulative to the art of record because they teach the very limitation—the secondary base station determining the addition of the SRB—that the Examiner found missing in the previously cited art.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-15 of the ’118 patent as unpatentable.