Tesla Inc v. Intellectual Ventures II

1. Case Identification

• Case #: IPR2025-00343
• Patent #: 10,292,138
• Filed: December 31, 2024
• Petitioner(s): Tesla, Inc.
• Patent Owner(s): Intellectual Ventures II LLC
• Challenged Claims: 1-6 and 8-13

2. Patent Overview

• Title: Data Transmission in a Wireless Communication System
• Brief Description: The ’138 patent discloses a method for a user equipment (UE) in a wireless system to manage the transmission of data for multiple communication services, known as "radio bearers." The system prioritizes uplink resource allocation based on the buffer occupancy of these radio bearers and purports to use a two-iteration process for selecting data for transmission.

3. Grounds for Unpatentability

Ground 1: Obviousness over Eckert, Bucknell, and Lohr-1 - Claims 1-4 and 8-11 are obvious over Eckert in view of Bucknell and Lohr-1.

• Prior Art Relied Upon: Eckert (Application # 2006/0088058), Bucknell (Application # 2007/0297435), and Lohr-1 (WO 2005/125252).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eckert discloses the foundational Universal Mobile Telecommunications System (UMTS) architecture, including a UE communicating with a network, using multiple radio bearers corresponding to MAC-d flows, and reporting buffer occupancy for each. However, Eckert provides insufficient detail on the UE’s internal architecture and a complex method for data selection based on network-provided weighting values. Bucknell supplies the missing UE architecture, teaching a processor coupled to a transceiver. Crucially, Bucknell teaches the two-iteration data selection process central to the challenged claims. Bucknell describes populating a MAC-e protocol data unit (PDU) by making multiple passes over the data queues. For example, a first iteration selects data from a "subset of queues" (e.g., all but the highest priority) based on priority parameters, and a second iteration selects data from the remaining queue(s) based on the amount of buffered data. Petitioner contended this directly maps to the claim limitations. Lohr-1 was cited to teach the claimed step of receiving parameters from the network, disclosing that a UE receives a "radio bearer control message" containing priorities for logical channels.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Eckert with Bucknell because both operate in the same UM-TS E-DCH (Enhanced Dedicated Channel) context. A POSITA would have been motivated to replace Eckert’s complex, weighting-based data selection with Bucknell’s more flexible and efficient iterative priority-based method to reduce control signaling overhead and implementation complexity. A POSITA would combine this with Lohr-1 to provide standard implementation details missing from Eckert on how a UE receives priority parameters from the network, which is a predictable integration of known UMTS functionalities.
  • Expectation of Success: A POSITA would have a high expectation of success, as all three references describe compatible components within the standardized UMTS protocol stack, addressing the same technical problem of multiplexing prioritized data for uplink transmission.

Ground 2: Obviousness over Eckert, Bucknell, Lohr-1, and Hans - Claims 5 and 12 are obvious over the combination from Ground 1 in view of Hans.

• Prior Art Relied Upon: Eckert (Application # 2006/0088058), Bucknell (Application # 2007/0297435), Lohr-1 (WO 2005/125252), and Hans (Patent 7,245,636).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Hans to the combination of Ground 1 to teach the limitation of claims 5 and 12 that the radio bearers are associated with at least one Packet Data Protocol (PDP) context. While Eckert discloses the lower protocol layers (Layers 1 and 2), it lacks detail on the network layer (Layer 3). Hans was introduced to supply this missing detail, as it explicitly describes the relationship between a PDP context (in the network layer), a Packet Data Convergence Protocol (PDCP) entity, and a radio bearer in a standard UMTS architecture. Hans teaches that each PDP context, which contains Quality of Service (QoS) parameters, is associated with a radio bearer via a PDCP entity.
  • Motivation to Combine: A POSITA implementing the system of Eckert, Bucknell, and Lohr-1 would have been motivated to incorporate the teachings of Hans to build a complete, standard-compliant protocol stack. Adding Hans's disclosure of the network layer and PDP contexts would be a predictable step to enable the UE to support data services, which is the fundamental purpose of the underlying system.
  • Expectation of Success: Success would be expected because Hans describes a conventional UMTS network layer that is designed to operate directly above the lower layers detailed in Eckert.

Ground 3: Obviousness over Eckert, Bucknell, Lohr-1, and Lohr-2 - Claims 6 and 13 are obvious over the combination from Ground 1 in view of Lohr-2.

• Prior Art Relied Upon: Eckert (Application # 2006/0088058), Bucknell (Application # 2007/0297435), Lohr-1 (WO 2005/125252), and Lohr-2 (Application # 2008/0254804).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Lohr-2 to the combination of Ground 1 to teach the limitation of claims 6 and 13 that the "single allocation of uplink resources" is received on a "physical shared channel from a scheduler in the network." Eckert teaches that a UE receives a single allocation of resources over an E-DCH channel, but lacks specifics on the signaling channel. Lohr-2 provides these details, disclosing an "Enhanced Absolute Grant Channel" (E-AGCH) which it explicitly describes as a physical and shared channel used by a scheduler (located in the NodeB/base station) to send scheduling grants for the E-DCH to the UE.
  • Motivation to Combine: A POSITA implementing the E-DCH scheduling taught by Eckert would have been motivated to consult a reference like Lohr-2 for standard-compliant details on the specific physical channel used for such scheduling grants. Implementing the E-AGCH from Lohr-2 into the Eckert system would be a straightforward application of a known channel for its intended purpose.
  • Expectation of Success: Success would be expected as Lohr-2 operates in the same UMTS E-DCH context as Eckert and Bucknell and provides a standard, interoperable solution for resource allocation signaling.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under §325(d), Fintiv, and General Plastic.
• §325(d): Petitioner asserted that the grounds are not the same or substantially the same as those previously presented to the Office. The primary reference, Eckert, was never considered during original prosecution or in two prior IPRs filed by other parties against the ’138 patent.
• Fintiv: Petitioner argued that the factors weigh against denial because the co-pending district court litigation is in a very early stage. The complaint was filed in April 2024, minimal investment has occurred, and the proposed trial date of May 2026 is after the statutory deadline for a Final Written Decision in this IPR.
• General Plastic: Petitioner contended that denial is unwarranted because this is the first IPR filed by Tesla against the ’138 patent. The prior IPRs were filed by unrelated entities (Toyota and Honda), and Petitioner argued that it has no "significant relationship" with them, making the first General Plastic factor dispositive against denial.

7. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-6 and 8-13 of the ’138 patent as unpatentable.