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 in Radio Access Network
  • Brief Description: The ’118 patent discloses methods for configuring dual connectivity (DC) for user equipment (UE) in a wireless network. The technology focuses on scenarios where a UE connects to both a master base station and a secondary base station, particularly when they use different radio access technologies (e.g., LTE and 5G), and purports to solve issues related to interworking between them.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are Anticipated by or Obvious over Futaki

  • Prior Art Relied Upon: Futaki (International Publication No. WO 2017/119247).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Futaki, which describes a system for interworking between LTE and New 5G radio access technologies (RATs), discloses every element of the challenged claims. A central argument was that Futaki teaches the key limitations added during prosecution to secure the patent: that the secondary base station determines the addition of its own signaling radio bearer (SRB). Petitioner contended Futaki's 5G specific eNB (secondary base station) initiates the addition of a new 5G SRB by transmitting control information to the master base station without a prior request, thereby "determining" the addition. Futaki also allegedly discloses the UE receiving radio resource control (RRC) configuration messages directly from this secondary base station and transmitting a failure message to the master base station if it cannot comply.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that even if not strictly anticipating, the claims would have been obvious. Futaki expressly stated its multiple disclosed embodiments could be implemented independently or in any suitable combination, providing a clear motivation for a person of ordinary skill in the art (POSITA) to combine features described across different sections of the reference.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in combining Futaki's teachings, as the reference describes them as applicable to the same general LTE/5G dual connectivity architecture.

Ground 2: Claims 1-15 are Obvious over Futaki in view of 3GPP 36.300 and 3GPP 36.331

  • Prior Art Relied Upon: Futaki (WO 2017/119247), 3GPP TS 36.300 ("3GPP 36.300"), and 3GPP TS 36.331 ("3GPP 36.331").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Futaki contains any minor gaps regarding the claimed subject matter, two related 3GPP technical specifications for LTE (Release 12) supply the missing details. 3GPP 36.300 provides the overall architecture and procedures for DC, including the "SeNB Addition procedure," which details the signaling flow for adding a secondary base station. 3GPP 36.331 provides the specific RRC protocol details, message formats, and procedures for implementing the functions described in 3GPP 36.300, such as transmitting an SCG failure information message when a UE fails to configure a resource on the secondary base station.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Futaki with the 3GPP standards because Futaki's disclosure is explicitly grounded in 3GPP technologies and states its disclosed bearers are "similar to" bearers in LTE Release 12 DC. A POSITA implementing Futaki’s system for interworking LTE and 5G RATs would naturally look to the established and detailed 3GPP standards for LTE to implement the necessary DC procedures, such as SRB addition and failure reporting, to ensure compatibility and functionality.
    • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the 3GPP standards provided proven, successful methods for DC in an LTE-only environment. Applying these established procedures to the LTE-5G hybrid environment of Futaki would be a predictable extension, especially since 5G standards were developed with backward compatibility in mind.

4. Key Claim Construction Positions

  • Petitioner noted that in related district court litigation, the parties proposed that most terms be given their plain and ordinary meaning.
  • Petitioner applied the construction of "configured to" from the litigation, meaning "actually configured to and not merely capable of performing the claimed function," and argued the prior art met this standard.
  • Petitioner also contended that the preambles of the independent claims are limiting.

5. Arguments Regarding Discretionary Denial

  • §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation is in its very early stages, with jurisdictional challenges pending and no substantive rulings issued. The trial date is scheduled for more than nine months after the deadline for a final written decision (FWD), and its timing is uncertain due to the complexity of the multi-defendant cases. Therefore, Petitioner contended that an IPR would resolve patentability issues more efficiently and before the district court expends significant resources.
  • §325(d): Petitioner argued against denial under §325(d), stating that the primary prior art references (Futaki, 3GPP 36.300, and 3GPP 36.331) were never considered by the USPTO during prosecution. Petitioner asserted that these references disclose the very limitations the examiner found missing in the art of record, and their omission constituted a material error by the Patent Office, weighing strongly in favor of institution.

6. Relief Requested

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