Takeaway: Institution of inter partes review was denied where expert declaration relied upon to provide missing element was unavailing due to the expert’s reliance on the challenged patent itself in opining as to what another prior art reference teaches.

In its Decision, the Board denied a Petition requesting inter partes review of claims 1, 8-13, 15, 18, 19, and 23-29 of the ’212 patent. The ’212 patent “describes a particular technique for adaptive channel allocation of subcarriers of an orthogonal frequency division multiple access (OFDMA) cellular communications system including multiple base stations and multiple subscriber units.” Petitioner asserted four challenges under 35 U.S.C. § 103(a).

Turning first to claim construction, the Board stated that it “construes claim terms in an unexpired patent using their broadest reasonable construction in light of the specification of the patent in which they appear.” Notably, however, “Petitioner submitted various claim term constructions adopted by the District Court in related litigation” and “Patent Owner indicated agreement with certain of those terms.” Regarding the term “pilot symbol,” the Board agreed with the District Court construction (which Patent Owner agreed with). Regarding the term “channel and interference information,” the Board was not persuaded to adopt Petitioner’s proposal. Because the phrase is not defined in the specification and there was no evidence presented that it is a term of art, the Board construed the phrase as “including various measurements that characterize a channel’s signal strength and interference.” Finally, the Board found the preamble of claim 1 to not be limiting, as Petitioner contended, “for purposes of this decision.”

The Board next addressed the grounds of the Petition, particularly Frodigh and Sollenberger. Based on the Board’s construction of “channel and interference information,” the Board was not persuaded by Patent Owner’s attempted distinction between “channel information” and “interference information.” However, the Board was persuaded that “Sollenberger does not describe measuring channel and interference information based on pilot symbols transmitted from a base station that is the same as the allocating base station.” The record thus “does not establish that Sollenberger bases its measurements on ‘pilot symbols’ from the allocating base station as claim 1 and 18 require.” Moreover, Petitioner did not rely on Sollenberger as describing an OFDMA system, but rather relied on expert declaration testimony to establish that one of ordinary skill would regard Frodigh as describing OFDMA. The Board, however, was also not persuaded by his logic: “1) the ’212 patent states that OFDMA is another method for multiple access using the basic format of OFDM . . . ; 2) Frodigh teaches an OFDMA system adapted for multiple mobile stations . . . ; and 3) multiple mobile stations use different subcarriers at the same time. . . .” The Board unequivocally stated that “[i]t is inappropriate for Dr. Bambos to rely on the ’212 patent itself to argue what Frodigh teaches.” Therefore, the Board declined to grant the Petition as to claims 1, 8, 11-13, 18, 19, 23, and 26-28 based only on Frodigh and Sollenberger because neither describe an OFDMA system.

The other proposed grounds of obviousness were equally unpersuasive: The addition of Ritter does not overcome the deficiencies noted above; Chuang does not teach measuring both channel and interference information based on pilot symbols; and the combination of Alamouti, Minegishi, and Ritter “does not disclose a subscriber unit that submits updated feedback information in order to receive a new set of subcarriers after being allocated a first set of subcarriers.” In view of these conclusions, the Board did not reach the issue of Patent Owner’s objective evidence of non-obviousness. No inter partes review was instituted.

Kyocera Corporation, et al. v. Adaptix, Inc., IPR2015-00318

Paper 10: Decision Denying Institution of Inter Partes Review

Dated: June 10, 2015

Patent: 7,454,212 B2

Before: Glenn J. Perry, Trevor M. Jefferson, and Justin Busch

Written by: Perry

Related Proceedings: IPR2014-01525; IPR2014-01408; “numerous lawsuits pending in district courts in Texas and California”