LG Electronics, Inc. v. Maxell, LTD.

1. Case Identification

• Case #: IPR2025-00520
• Patent #: 10,244,284
• Filed: January 21, 2025
• Petitioner(s): LG Electronics, Inc. and LG Electronics USA, Inc.
• Patent Owner(s): Toshiyuki Kurita, et al.
• Challenged Claims: 18-20

2. Patent Overview

• Title: Display Apparatus and Video Processing Apparatus
• Brief Description: The ’284 patent describes a video processing method and apparatus capable of simultaneous wireless communications. The apparatus uses a first radio circuit to transmit digital video to an external device and a second radio circuit to connect to a network (e.g., the Internet), with a controller that manages the resource "assignment" between the two connections to prioritize the video transmission.

3. Grounds for Unpatentability

Ground 1: Obviousness over Honkanen and N95 - Claims 18-20 are obvious over Honkanen in view of N95.

• Prior Art Relied Upon: Honkanen (Application # 2006/0135076) and N95 (Nokia N95-1 User Guide).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Honkanen teaches a communication device with multiple radio interfaces (e.g., Bluetooth, WLAN) and a control unit for managing simultaneous connections to minimize interference by adjusting connection parameters. For independent claim 18, Honkanen’s Bluetooth interface serves as the “first radio communication circuit” for transmitting data to an external user interface, and its WLAN interface serves as the “second radio communication circuit” for connecting to the internet. Honkanen, however, does not detail user-initiated actions. Petitioner argued that N95, a user manual for a Nokia device (Honkanen's assignee), supplies this element by disclosing a user selecting a video clip and initiating its transmission via a specific radio connection like Bluetooth.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA), seeking to implement the high-level system of Honkanen (a Nokia application), would naturally look to a commercial product manual like N95 for a practical implementation. This combination would predictably allow user-initiated transmissions, a known technique for enhancing usability and security by giving the user control over connections.
  • Expectation of Success: A POSITA would have a high expectation of success, as N95 provides a concrete, working example of the type of multi-radio device described in Honkanen, and both are from the same entity (Nokia).
  • Key Aspects: Petitioner contended that Honkanen teaches prioritizing one connection over another (the "more than" limitation) by adjusting connection parameters, such as narrowing the bandwidth of a WLAN connection to prevent it from interfering with a Bluetooth connection transmitting video.

Ground 2: Obviousness over Dua and Barnes - Claims 18-20 are obvious over Dua in view of Barnes.

• Prior Art Relied Upon: Dua (Application # 2006/0258289) and Barnes (Application # 2005/0136949).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Dua discloses a media player with two separate transceivers: a short-range transceiver (e.g., Bluetooth, Wi-Fi) for sending media to a nearby external device (like a TV) and a network transceiver for simultaneously connecting to the Internet via a cellular network. This maps to the claimed dual-circuit system. While Dua shows the system, it lacks detail on how to prioritize connections for optimal performance. Barnes allegedly fills this gap by teaching a method for a portable device to manage multiple communication links, specifically by selecting a connection with higher bandwidth or speed for video transmission to avoid buffering and interruptions.
  • Motivation to Combine: A POSITA would be motivated to combine Barnes's intelligent connection management with Dua's dual-transceiver system to ensure a smooth, high-quality video-sharing experience. Applying Barnes’s explicit teaching to prioritize high-bandwidth connections for video is a logical and predictable solution to a known problem in the art.
  • Expectation of Success: Success would be reasonably expected because both references address the common challenge of streaming media over multiple wireless links. Integrating Barnes's bandwidth-based prioritization logic into Dua's device is a straightforward enhancement.
  • Key Aspects: The combination directly addresses the "more than" limitation by using Barnes's rationale to prioritize Dua's higher-bandwidth short-range transceiver for video transmission over its lower-bandwidth cellular network transceiver.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 19 and 20 by adding references like the Bluetooth-Specification, IEEE 802.11g, and Kao (Application # 2004/0264600) to the Honkanen/N95 and Dua/Barnes combinations. These grounds argued that a POSITA would consult these well-known standards and references to implement the specific different frequency bandwidths (claim 19) and modulation/demodulation methods (claim 20) inherent to technologies like Bluetooth, WLAN, and GSM.

4. Key Claim Construction Positions

• "assignment": Petitioner argued this term should be construed as "assigning particular connection parameter(s) (such as bandwidth, modulation scheme, transmission rate/capacity and schedule) to the connection." This construction is based on the ’284 patent's specification, which describes different transmission "schemes" defined by these exact parameters. This interpretation is critical to mapping prior art that teaches managing interference by adjusting such parameters.
• "a user issues an indication": Petitioner proposed this phrase requires the user to indicate two things: (1) to transmit video information, and (2) to use the first radio communication circuit for the transmission. This position is supported by a District Court's construction of similar language in a child of the ’284 patent and is central to how user actions in the prior art (e.g., N95) satisfy the claim limitation.

5. Arguments Regarding Discretionary Denial

• Fintiv Factors: Petitioner argued that discretionary denial under §314(a) is unwarranted. The petition asserted strong merits for institution and noted that the co-pending district court litigation is in a very early stage, with no trial date set and claim construction not yet underway. Petitioner projected that a Final Written Decision (FWD) from the Board would likely issue approximately 1.5 years before any potential trial date, weighing heavily against denial.
• §325(d) Factors: Petitioner contended that denial under §325(d) is improper because the petition relies on prior art references and combinations (Honkanen, N95, Dua, Barnes) that were not before the Examiner during the original prosecution of the ’284 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 18-20 of Patent 10,244,284 as unpatentable under 35 U.S.C. §103.