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Unified Patents Inc. v. General Access Solutions, LTD., IPR2017-01178 (PTAB Sept. 26, 2017)
Unified Patents Inc. v. General Access Solutions, LTD., IPR2017-01178 (PTAB Sept. 26, 2017)
Unified Patents Inc. v. General Access Solutions, LTD., IPR2017-01178 (PTAB Sept. 26, 2017)
gov Paper 7
Tel: 571-272-7822 Entered: September 26, 2017
v.
Case IPR2017-01178
Patent 9,225,555 B2
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DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108
Case IPR2017-01178
Patent 9,225,555 B2
I. INTRODUCTION
A. Background
Unified Patents, Inc. (Petitioner) filed a Petition requesting inter
partes review of all claims, 120 (the challenged claims), of U.S. Patent
No. 9,225,555 B2 (the 555 patent). Paper 2 (Pet.). General Access
Solutions, Ltd. (Patent Owner) filed a Preliminary Response. Paper 6
(Prelim. Resp.).
Under 35 U.S.C. 314(a), inter partes review may not be instituted
unless the information presented in the petition shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition. For the reasons that follow, we
determine that, on this record, Petitioner has established a reasonable
likelihood that it would prevail with respect to all the challenged claims.
Accordingly, we institute inter partes review as to claims 120.
B. Related Matters
The parties indicate that the 555 patent is involved in the following
district court proceedings: General Access Solutions, Ltd. v. Pantech Co.,
Ltd. et al., Civil Action No. 2:16-cv-01348-RWS (E.D. Tex.); General
Access Solutions, Ltd. v. LG Electronics, Inc. et al., Civil Action No. 2:16-
cv-01349-RWS (E.D. Tex.); General Access Solutions, Ltd. v. Novatel
Wireless, Inc., Civil Action No. 2:16-cv-01350-RWS (E.D. Tex.); General
Access Solutions, Ltd. v. Xiaomi, Inc., Civil Action No. 2:16-cv-01351-RWS
(E.D. Tex.). Pet. 12; Paper 5, 2.
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D. Illustrative Claim
Claims 1 and 11 of the 555 patent are independent. Claim 1,
reproduced below with disputed limitations emphasized, is illustrative of the
claimed subject matter:
1. A wireless communication device, comprising:
a first transceiver in direct wireless communication with a
terrestrial base station, wherein the terrestrial base
station is in direct wireless communication with a
plurality of wireless communication devices; and
a second wireless local area network transceiver in direct
wireless broadband communication with a plurality of
computing devices located within a coverage area of the
second transceiver, the second transceiver being coupled
to the first transceiver wherein;
the first transceiver receives a first signal from the base station,
the first signal intended for a first computing device of
the plurality of computing devices, the second wireless
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1
Because the claims at issue have a filing date prior to March 16, 2013, the
effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
125 Stat. 284 (2011) (AIA), we apply the pre-AIA version of 35 U.S.C.
103.
2
US 6,816,706 B1, issued Nov. 9, 2004. Ex. 1002.
3
John A. Phillips & Gerard Mac Namee, Personal Wireless Communication
With DECT and PWT (1998). Ex. 1003.
4
US 5,722,051, issued Feb. 24, 1998. Ex. 1005.
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II. DISCUSSION
A. Principles of Law
In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. 312(a)(3) (requiring inter partes review
petitions to identify with particularity . . . the evidence that supports the
grounds for the challenge to each claim)). This burden never shifts to
Patent Owner. See Dynamic Drinkware, LLC v. Natl Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
partes review).
A claim is unpatentable under 35 U.S.C. 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 1718 (1966).
At this preliminary stage, we determine whether the information
presented in the Petition shows there is a reasonable likelihood that
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C. Claim Construction
We interpret claims of an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. See 37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
136 S. Ct. 2131, 214445 (2016). In applying a broadest reasonable
construction, claim terms generally are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007).
Petitioner proposes an express construction only for the term
wireless communication device. Pet. 1415. Patent Owner does not
provide an interpretation for wireless communication device, but proposes
constructions for the terms terrestrial base station and wireless local area
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network 100 shown in the embodiment of Figure 1. Ex. 1001, col. 6, ll. 50
52. In this embodiment, transceiver base station 110 receives signals from
and sends signals to external network 150. Id. at col. 6, ll. 6467. The 555
patent states: External network 150 may be, for example, the public
switched telephone network (PSTN) or one or more data networks, including
the Internet or proprietary Internet protocol (IP) wide area networks (WANs)
and local area networks (LANs). Id. at col. 6, l. 67col. 7, l. 4. Given the
absence of the specific language proposed by Patent Owner in these
passages, as well as the permissive language in describing the features of
one embodiment of the present disclosure, id. at col. 6, l. 49, at this stage,
we decline to construe base station as used in the claims to be limited to a
base transceiver station (BTS) within a cellular network.
In connection with the embodiment of Figure 1, the 555 patent also
describes the transmission and reception of signals at the transceiver base
stations as follows: the base stations (1) transmit forward channel (i.e.,
downstream) broadband signals to a plurality of subscriber premises, . . . and
receive reverse channel (i.e., upstream) broadband signals from the plurality
of subscriber premises, id. at col. 6, ll. 5256, and (2) receive the forward
channel signals from external network 150 and transmit the reverse channel
signals to external network 150, id. at col. 6, ll. 6467. Patent Owner
proposes, presumably based on these passages, that the terrestrial base
station recited in the claims transmits forward channel broadband signals
from the external network to a plurality of devices, and receives reverse
channel broadband signals from the plurality of devices to transmit back to
the external network. See Prelim. Resp. 1617.
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1. Overview of Hohnstein
Hohnstein teaches a communication system with a plurality of access
points 22 which may be, for example, a local radio access point (LRAP).
Ex. 1002, col. 4, ll. 911. Figure 1 of Hohnstein (annotated by Petitioner) is
reproduced below:
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1002, col. 4, ll. 1113. Subscriber units 26 within the coverage area can
communicate wirelessly with access point 22. Id. at col. 4, ll. 1618. Each
access point, in turn, communicates with at least one distribution point 40
over radio link 42, or may be wired or cabled to distribution point 40
through wireline link 44, or may be packaged with distribution point 40. Id.
at col. 5, ll. 4248.
Hohnsteins distribution points 40 route packets within the network,
such as from another distribution point, from subscriber unit 26 in
communication with distribution point 40 through access point 22, or from
an external communication system, to an access point 22, to another
distribution point 40, or to other networks. Id. at col. 5, ll. 5759, col. 6,
ll. 3448, col. 8, ll. 4954. Hohnsteins access point 22 may be embodied as
an antenna module 502 with multiple transceivers. See id. at col. 13, ll. 40
44, col. 15, ll. 712, Fig. 9, Fig. 11.
2. Overview of Phillips
Phillips describes the operation and applications of Digital Enhanced
Cordless Telecommunications (DECT) and Personal Wireless
Telecommunications (PWT), which are radio telecommunication standards.
Ex. 1003 at 3. A wireless relay station (WRS) can be used to extend the
range of the system. Id. at 270 (Sections 8.7.3, 8.8).
Phillips indicates that bearer handover may occur due to
interference or because a mobile handset has moved and the received signal
strength from a fixed station may become too weak to support a connection.
Id. at 123 (Section 5.2.4). Handover can be accomplished seamlessly by
establishing a new set of bearers for a connection before the error rate on the
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old bearers has increased to a level where the user would notice. Id. at 124.
Petitioners Declarant states that although DECT uses the term bearer
handover to describe this handover procedure, which adjusts
communication between elements, one of ordinary skill in the art would
have understood that this type of handover procedure is generic within the
telecommunications field. Ex. 1008 78.
3. Discussion
Petitioner provides explanations to account for all of the claim
limitations required by claims 120, and a reason to combine the teachings
of Hohnstein and Phillips, citing Dr. Kotzins Declaration in support. Pet.
2355; Ex. 1008.
a. Claim 1
terrestrial base station
Petitioner argues Hohnsteins access point 22 is a wireless
communication device. Pet. 2324. Petitioner asserts that access point 22
has a first transceiver in direct wireless communication with a terrestrial
base station because access point 22 includes backhaul antenna 552 and
backhaul data terminal 554, which can connect to distribution point 40 via
radio link 42. Pet. 2425 (citing Ex. 1002, col. 15, ll. 1518, col. 2, ll. 50
59, col. 3, ll. 68, col. 3, ll. 2123, col. 5, ll. 4247, col. 16, ll. 918).
Petitioner contends direct communication is shown in Figure 1 of Hohnstein,
which shows an access point 22 and a distribution point 40 communicating
over wireline link 44 with no intervening nodes. Pet. 2425; see Ex. 1002,
Fig. 1, col. 5, ll. 4247. The Figure also shows direct communication over
wireless radio links 42. Ex. 1002, Fig. 1.
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device), and would have transmitted data signals to the first computing
device based on the signal characteristics. Pet. 3241. For example,
Petitioner argues, with support of expert testimony, that one of ordinary skill
in the art would have wanted to maximize the likelihood of successful
wireless connectivity and would have recognized that adjustments, including
handover, based on monitored signal characteristics would help achieve
connectivity despite the high degree of variability in wireless
communications, especially communications involving mobile devices. Pet.
3637 (citing Ex. 1008 111). Considering the evidence and testimony
cited in support, Petitioner has shown sufficiently at this stage that
Hohnstein and Phillips teach the remaining limitations of claim 1, and that
their teachings would have been combined for the reasons stated by
Petitioners.
Conclusion
For the foregoing reasons, based on the present record, we are
persuaded Petitioner has established a reasonable likelihood it would prevail
in showing that challenged claim 1 would have been obvious under
35 U.S.C. 103(a) in view of the teachings of Hohnstein and Phillips.
b. Claim 11
Independent claim 11 recites limitations similar to those of claim 1.5
Petitioner contends claim 11 is obvious under 35 U.S.C. 103(a) for the
5
Although the second wireless local area network transceiver recited in
claim 11 lacks explicit antecedent basis, for purposes of this Decision we
follow the parties treatment of the the second wireless local area network
transceiver to be the earlier recited second transceiver in claim 11. See
Pet. 5253; Prelim. Resp. 37.
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expert opinion of Petitioners Declarant without any backing in the prior art
are insufficient to render a claim obvious. Prelim. Resp. 36.
Petitioner does not contend that Hohnstein explicitly teaches to
transmit an alarm signal to the base station via the first transceiver, but
provides reasoning as to why one of ordinary skill in the art would have
modified Hohnstein to transmit the alarm. Pet. 47 (citing Ex. 1008 135
(Kotzin Decl.)). Patent Owner does not challenge this reasoning, but
essentially argues it is inadequate on its face.
Considering the complexity of the limitation at issue, we determine
that Petitioners reasoning for modifying Hohnstein to transmit the recited
alarm, which is based on expert testimony, is adequate for purposes of this
Decision. Hohnstein expresses a desire to maintain operability of the
antenna module by detecting loss of AC power and supplying power from
backup sources. Ex. 1002, col. 14, ll. 1720. One of ordinary skill in the art
would have recognized that a loss of backup power could result in a loss of
intended communications, unless active components of the system are aware
of the power outage. Therefore, we find persuasive Petitioners assertion
that one of ordinary skill in the art would have implemented an alarm from
Hohnsteins access point 22 to the base station (distribution point 40) in
order to alert the base station that the access point will no longer service
subscribers in its coverage area. We note this would also be consistent with
Hohnsteins teaching that supervisor 56, with which each distribution point
communicates, may serve as a collection point for alarms and performance
measuring. See Ex. 1002, col. 7, ll. 2130.
Having reviewed the Petition and supporting evidence, and having
considered Patent Owners arguments as to claims 7 and 17, we are
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references, and that their teachings would have been combined for the
reasons stated by Petitioners. Accordingly, we determine the information
presented shows a reasonable likelihood that Petitioner would prevail in
establishing that claims 120 are unpatentable under 35 U.S.C. 103(a) over
Hohnstein and Agrawal.
III. CONCLUSION
We institute inter partes review of claims 120 based on the
following grounds: (1) claims 120 under 35 U.S.C. 103(a) as
unpatentable over Hohnstein and Phillips, and (2) claims 120 under
35 U.S.C. 103(a) as unpatentable over Hohnstein and Agrawal.
IV. ORDER
For the reasons given, it is
ORDERED that pursuant to 35 U.S.C. 314(a), inter partes review is
hereby instituted as to claims 120 of the 555 patent on the following
asserted grounds:
1. Claims 120 under 35 U.S.C. 103(a) as unpatentable over
Hohnstein and Phillips;
2. Claims 120 under 35 U.S.C. 103(a) as unpatentable over
Hohnstein and Agrawal.
FURTHER ORDERED that the trial is limited to the grounds
identified above, and no other grounds are authorized; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial, the trial
commencing on the entry date of this Decision.
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PETITIONER:
David L. Cavanaugh
Daniel V. Williams
Jonathan Stroud
Ashraf Fawzy
David.Cavanaugh@wilmerhale.com
Daniel.Williams@wilmerhale.com
jonathan@unifiedpatents.com
afawzy@unifiedpatents.com
PATENT OWNER:
Timothy Devlin
tdevlin@devlinlawfirm.com
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