Google LLC v. Pegasus Wireless Innovation LLC

1. Case Identification

• Case #: IPR2025-00291
• Patent #: 10,594,460
• Filed: December 27, 2024
• Petitioner(s): Google LLC, Cellco Partnership d/b/a Verizon Wireless, T-Mobile USA, Inc., AT&T Services, Inc., Nokia of America, Corp., and Ericsson Inc.
• Patent Owner(s): KT Corporation
• Challenged Claims: 1-12

2. Patent Overview

• Title: Method and Apparatus for Performing Frequency Hopping
• Brief Description: The ’460 patent discloses methods and apparatuses for performing frequency hopping for uplink (UL) transmissions between a user equipment (UE) and a base station (BS) in a 5G New Radio (NR) access network. The technology involves using a "frequency hopping offset set" to configure UL control and data channels.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Shen - Claims 1, 3, 5, 7, 9, and 11 are anticipated by or obvious over Shen.

• Prior Art Relied Upon: Shen (WO 2019/136597)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shen, a 5G NR standards contribution, discloses all limitations of the independent claims. Shen teaches a UE receiving bandwidth part (BWP) configuration information and frequency hopping configuration information from a BS. Specifically, Shen disclosed configuring "different frequency domain displacement sets for different BWPs," which Petitioner asserted is the same as the ’460 patent’s "frequency hopping offset set composed of one or more frequency hopping offset values." Petitioner contended this disclosure meets the very limitation added during prosecution to overcome prior art, which the applicant had argued was missing a "set" of multiple offset values. Shen also disclosed that the frequency hopping offset value is indicated by downlink control information (DCI), meeting another key claim limitation.
  • Key Aspects: This ground asserted that Shen anticipates the exact feature that secured allowance of the ’460 patent.

Ground 2: Obviousness over Shen, Matsumura, and R1-1801080 - Claims 2, 4, 6, 8, 10, and 12 are obvious over Shen in view of Matsumura and R1-1801080.

• Prior Art Relied Upon: Shen (WO 2019/136597), Matsumura (WO 2019/097659), and R1-1801080 (a 3GPP contribution by NTT-DOCOMO)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while Shen provides the foundation for the independent claims, Matsumura and R1-1801080 supply the limitations of the dependent claims. For claim 2, Matsumura was cited for disclosing frequency hopping configuration information that includes an indication of whether hopping is enabled and physical resource block (PRB) allocation for different frequency regions. For claim 4, Petitioner argued Matsumura and R1-1801080 expressly teach determining the number of frequency hopping offset values based on whether the number of PRBs in the BWP is less than a preset threshold (e.g., 50 PRBs), a technique used to control when frequency hopping is enabled.
  • Motivation to Combine: A POSITA would combine Shen with Matsumura to improve the transmission performance of the UL control channel by exploiting a larger BWP bandwidth and increasing frequency selective gain, which are shared objectives of the references. A POSITA would combine the thresholding technique from Matsumura and R1-1801080 with Shen’s system to maximize frequency hopping efficiency without exceeding BWP bandwidth.
  • Expectation of Success: Petitioner asserted that combining these known techniques for improving 5G uplink performance would have been a routine modification with predictable results.

Ground 3: Anticipation/Obviousness over Zhang - Claims 1-12 are anticipated by or obvious over Zhang, optionally in view of Matsumura and R1-1801080.

• Prior Art Relied Upon: Zhang (WO 2018/203727), Matsumura (WO 2019/097659), and R1-1801080

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Zhang, another 5G standards contribution, anticipates all limitations of claims 1-12. Zhang disclosed a system for allocating UL resources, including BWP resources and intra-BWP PRB resources. Zhang’s frequency hopping configuration information, provided in a UL grant, includes an intra-BWP PRB resource block group (RBG) offset indication for different BWPs, which Petitioner contended meets the "frequency hopping offset set" limitation. For the dependent claims, Zhang was argued to teach determining the number of offset values based on a preset threshold, as the size of the BWP bandwidth consists of a fixed number of PRBs.
  • Motivation to Combine: To the extent any limitation was found missing in Zhang, Petitioner argued a POSITA would combine Matsumura and R1-1801080 with Zhang’s method to efficiently allocate UE resources and control uplink frequency hopping in 5G systems, consistent with the stated goals of all three references.
  • Expectation of Success: The proposed modification was described as a routine combination of known 5G resource allocation techniques that would yield predictable improvements.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 1-12 based on Yin (WO 2018/129085) in view of 3GPP technical specifications TS 36.211 and TS 36.213, and optionally Jersenius (Application # 2013/0322493).

4. Key Claim Construction Positions

• Petitioner argued for construing the term "a frequency hopping offset set composed of one or more frequency hopping offset values" to mean "a frequency hopping offset set composed of multiple frequency hopping offset values."
• This construction was based on arguments the Patent Owner made during prosecution to distinguish prior art that allegedly disclosed only a single, fixed offset value. Petitioner asserted this disclaimer is critical to the claim scope and that the cited prior art, such as Shen, meets this higher "multiple offset" standard.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner dedicated a substantial portion of the petition to arguing that the ’460 patent is not entitled to the priority dates of its earlier Korean applications (’980 and ’577 applications).
• The core of this argument was that key limitations, including the terms "frequency hopping configuration information" and the entire concept of a "frequency hopping offset set," were not disclosed until a later-filed application.
• This contention is critical because it establishes Shen, Matsumura, and Zhang as "intervening prior art" under §102, making them available to invalidate the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, contending that the factors weigh in favor of institution.
• Key arguments included: the parallel district court litigation is in its very early stages with no substantive rulings, a claim construction hearing is not scheduled until March 2025, and jurisdictional challenges are likely to cause further delays.
• Petitioner also asserted that the merits of the petition are exceptionally strong, with Grounds 1 and 3 presenting compelling cases for anticipation, and that the prior art was never considered by the examiner during prosecution, which weighs heavily against denial under §325(d).

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-12 of the ’460 patent as unpatentable.