Ericsson Inc v. Headwater Partners II LLC

1. Case Identification

• Case #: IPR2025-00404
• Patent #: 9,413,502
• Filed: January 2, 2025
• Petitioner(s): Ericsson Inc. and Nokia of America Corporation
• Patent Owner(s): Headwater Partners II LLC
• Challenged Claims: 1-17, 19, 26, 28-41, and 43-46

2. Patent Overview

• Title: Backhaul assisted by user equipment
• Brief Description: The ’502 patent discloses a telecommunications system where a base station (BS) connects user equipment (UE) to data networks via multiple backhaul pathways. The system includes a direct connection to a first data network and an alternative path through one or more backhaul user equipment (bUE) devices to a second data network, with the BS selecting the pathway for routing traffic.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ishii - Claims 1-5, 12-17, 26, 28, 30-32, 37, 38, 40, and 43 are obvious over Ishii.

• Prior Art Relied Upon: Ishii (Patent 9,544,827).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishii discloses every limitation of the independent claims. Ishii teaches a wireless system with a base station that connects to a core network (the claimed "first data network") via a primary backhaul connection. Ishii also discloses using multiple "small node devices" or "advanced user equipment" (functionally equivalent to the claimed bUEs) that can offload traffic. These small node devices connect to a different network, the Internet (the claimed "second data network"), via their own backhaul links. Petitioner asserted that Ishii’s base station selects the appropriate backhaul path (either direct or via a small node device) to route traffic, thereby connecting a UE to either the first or second data network.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner argued Ishii itself teaches all elements and a POSITA would have found it obvious to implement the system as claimed. For limitations not explicitly disclosed, Petitioner contended they were inherent or obvious modifications. For example, Petitioner argued it would be obvious to modify Ishii’s BS to transmit resource block (RB) scheduling information for the backhaul traffic, as radio resource management was a common issue, and Ishii discloses a plurality of bUEs needing to share resources.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success because Ishii describes a complete, functional system that addresses the same problems as the ’502 patent using the same fundamental architecture.

Ground 2: Obviousness over Ishii and Sfar - Claims 6-11, 19, 29, 33-36, 39, 41, and 44-46 are obvious over Ishii in view of Sfar.

• Prior Art Relied Upon: Ishii (Patent 9,544,827) and Sfar (International Publication No. WO 2013/037903A2).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims requiring the backhaul path selection to be based on certain parameters. Petitioner argued that Ishii provides the foundational system architecture, as detailed in Ground 1. Sfar addresses the same problem of selecting an alternative backhaul path when a primary path is insufficient. Sfar explicitly teaches making this selection based on parameters associated with the backhaul links. Specifically, Sfar discloses obtaining "first parameters" (e.g., availability, link quality) associated with the wireless link between the primary BS and the alternative backhaul BS (the bUE) and "second parameters" (e.g., quality of service) associated with the bUE’s connection to its own network.
  • Motivation to Combine (for §103 grounds): A POSITA, starting with Ishii's system for offloading backhaul traffic, would combine its teachings with Sfar to implement a more intelligent selection mechanism. Both references are in the same field and address the same problem of improving backhaul efficiency. Sfar provides the missing detail of using specific link parameters to make the selection, which Petitioner argued was an obvious improvement to Ishii's system. A POSITA would be motivated to use Sfar’s parameter-based selection method to optimize the decision of when to offload traffic in Ishii’s network.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in combining the references because it involved applying a known selection technique (from Sfar) to a known network architecture (from Ishii) to achieve the predictable result of improved, parameter-based backhaul routing.

4. Key Claim Construction Positions

• “client side modem functionality” (Claim 5): Petitioner proposed this term be construed as "a subset of a UE device or bUE device functionality." This construction is based on the patentee’s explicit definition in the ’502 patent’s specification. Petitioner argued this definition is controlling and means that any bUE device inherently comprises this functionality, making claim 5’s limitations readily met by Ishii’s disclosure of small cell base stations acting as bUEs.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be improper. Under §325(d), denial is not warranted because the primary references, Ishii and Sfar, were never cited or considered during prosecution. Under §314(a) and the Fintiv factors, denial is unlikely because the parties in the related district court litigation jointly moved to dismiss the ’502 patent, mitigating concerns of parallel proceedings.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-17, 19, 26, 28-41, and 43-46 of the ’502 patent as unpatentable.