Trials@uspto.

gov Paper 7
Tel: 571-272-7822 Entered: September 26, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_______________

UNIFIED PATENTS INC.,

Petitioner,

v.

GENERAL ACCESS SOLUTIONS, LTD.,

Patent Owner.
_______________

Case IPR2017-01178
Patent 9,225,555 B2
_______________

Before KEN B. BARRETT, JEFFREY A. STEPHENS, and

CHRISTA P. ZADO, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

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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C. The 555 Patent

The 555 patent relates to a wireless communication system and
routing messages therein. Ex. 1001, col. 3, ll. 5658. In particular, the
patent describes a wireless communication device in wireless
communication with a base station and mobile stations. Id. at col. 5, ll. 30
32. The wireless communication device includes first and second
transceivers coupled to each other. Id. at col. 5, ll. 3233. The 555 patent
describes the relationship between the transceivers and the transmission of
signals among the different components of the wireless communication
system:
The first transceiver is coupled to an antenna and is operable to
communicate with the base station, which is also in wireless
communication with other wireless communication devices.
The second transceiver is coupled to another antenna and is in
wireless communication with the plurality of mobile stations.
The first transceiver receives a first signal from the base station
intended for a one of the mobile stations, and in response the
second transceiver transmits the first signal to the mobile
station. The second transceiver receives a second signal from
the mobile station intended for the base station, and in response
the first transceiver transmits the second signal to the base
station.
Id. at col. 5, ll. 3345.
Figure 2 of the 555 patent (annotated by Petitioner) is reproduced
below:

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Pet. 8; Ex. 1001, Fig. 2. Figure 2 illustrates the wireless communication

system implemented as a fixed wireless access communication system. Id.
at col. 6, ll. 2527. Base station 212 communicates with the transceiver of
the integrated access device 224 located at subscriber station 214. Id. at
col. 7, ll. 3549. Base station 212 is coupled to access process 228, which
controls operations of the communication system and is coupled to a
communication network such as a public-switched telephone network or a
packet data network. Id. at col. 7, ll. 5662. In Figure 2, a WLAN
(wireless local area network) transceiver 238 is positioned at subscriber
station 214 at the integrated access device 224 to be connected to the
transceiver circuitry of the integrated access device. Id. at col. 8, ll. 48.
Mobile station 244 within the cell defined by WLAN transceiver 238 forms
a radio link with the WLAN transceiver. Id. at col. 8, ll. 818. Because of
the connection of the WLAN transceiver to the transceiver of the integrated
access device 224, signals originated at the mobile station and

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communicated to the WLAN transceiver can, in turn, be provided to the

transceiver of the integrated access device to be communicated to another
device through the base station. Id. at col. 8, ll. 1926, col. 7, l. 62col. 8,
l. 3. Analogously, signals can be communicated to the mobile station from
the base station through the integrated access device and WLAN transceiver.
See id. at col. 8, ll. 2629.
The 555 patent also discusses handover of communications between
WLAN transceivers when a mobile station moves from one subscriber
station to another. Id. at col. 11, ll. 1929. Determination of when to
initiate handover of communications is made responsive to measurements of
signal characteristics of communication signals communicated between the
WLAN transceiver and the mobile station. Id. at col. 11, ll. 3033.

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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local area network transceiver determines signal

characteristics of the first computing device, and the
second transceiver transmits the first signal to the first
computing device based on the determined signal
characteristics of the first computing device; and
the second transceiver receives a second signal from the first
computing device, the second signal intended for the base
station, and the first transceiver transmits the second
signal to the base station.

Ex. 1001, col. 12, l. 52col. 13, l. 7 (emphasis added).

E. Asserted Grounds of Unpatentability

Petitioner asserts the following grounds of unpatentability:
References Basis1 Claims challenged
Hohnstein2 and Phillips3 103(a) 120

Hohnstein and Agrawal4 103(a) 120

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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Petitioner would prevail in establishing that one of the challenged claims

would have been obvious over the proposed combinations of prior art.
We review the challenges presented in the Petition in accordance with
the above-stated principles.

B. Level of Ordinary Skill in the Art

Patent Owner agrees with Petitioner that a person of ordinary skill in
the art (POSITA) for this patent would have been a telecommunications
engineer having the equivalent of a bachelors degree or equivalent
knowledge obtained through work experience, including several years of
experience in the design of telecommunications systems. Prelim. Resp. 4;
see Pet. 10. We adopt the parties agreed-upon description of the level of
ordinary skill in the art.

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 transceiver. Prelim. Resp. 1620. We determine that express

construction of the term terrestrial base station for purposes of this
Decision will aid in resolving the controversy between the parties relating to
this term, and that no other terms require construction at this stage.

1. terrestrial base station

Petitioner does not propose an express definition of terrestrial base
station, but Petitioners arguments, supported by the Declaration of
Dr. Michael D. Kotzin, indicate that Petitioner contends that a base station
means a device [that] provides connectivity of devices (mobile or
otherwise) to other communication networks, such as telephone or data
networks. Ex. 1008 67 (Declaration of Michael D. Kotzin, Ph.D.); see
Pet. 19 (citing Ex. 1008). Petitioner also implicitly argues that a terrestrial
base station is a ground based structure that is connected to back end
elements by wireline. See Pet. 25 (citing Ex. 1008 83).
Patent Owner proposes that the term terrestrial base station used in
independent claims 1 and 11 means a base transceiver station (BTS) within
a cellular network that communicates with an external network, 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. Prelim. Resp. 1617.
Patent Owners proposed construction falls within Petitioners
experts broader description of a base station, and Patent Owner does not
address Petitioners argument that the claimed terrestrial base station is a
ground-based structure. We consider whether Patent Owners proposed

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construction is the broadest reasonable interpretation in light of the

Specification of the 555 patent.
Patent Owner contends that its proposed construction is consistent
with the Specification of the 555 patent. Prelim. Resp. 17. A proposed
construction that is consistent with the Specification, however, is not
necessarily the broadest reasonable interpretation that is consistent with the
Specification. After reviewing the Specification, including the specific
passages relied on by Patent Owner, we determine that the examples of base
stations described therein do not support construing the term terrestrial base
station as proposed by Patent Owner.
Patent Owner states [t]he 555 patent describes that transceiver base
station 110 operates within a standard cellular telephone and data network,
citing the 555 patent at column 6, line 67, to column 7, line 4. Prelim.
Resp. 17. Based on this citation, Patent Owner proposes to limit the recited
base station to a base transceiver station (BTS) within a cellular
network. Prelim. Resp. 1617. To the extent Patent Owner uses the term
base transceiver station (BTS) as coterminous with the broadest
reasonable interpretation of base station, its incorporation into Patent
Owners construction of the term terrestrial base station is unhelpful and
unnecessary. On the other hand, to the extent Patent Owners use of the
phrase base transceiver station (BTS) within a cellular network is intended
to require a particular type of base station within a particular type of wireless
network, such limitation is not supported by the language of the independent
claims or the Specification of the 555 patent.
The 555 patent describes transceiver base station 110, which is
exemplary of a plurality of transceiver base stations in fixed wireless

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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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The independent claims of the 555 patent expressly recite limitations

relating to transmission and reception of signals by the base station, without
the additional limitations proposed by Patent Owner. Claim 1 recites that
the first transceiver receives a first signal from the base station that is
intended for a first computing device within the coverage area of the
second transceiver, and also that the second transceiver receives a second
signal from the first computing device that is intended for the base station
and is transmitted to the base station by the first transceiver. The claim
further recites that the terrestrial base station is in direct wireless
communication with a plurality of wireless communication devices. Claim
11 contains similar limitations.
It is unclear whether Patent Owners proposed construction
referencing transmission and reception of signals by the base station is
separate from, or part of, the transmission and reception of signals involving
the base station recited in the claims. Thus, Patent Owners proposed
construction does not serve to clarify the meaning of the term terrestrial
base station. The passages relied on by Patent Owner also do not indicate
that a base station will always communicate in the ways described in
connection with the embodiment of Figure 1 and as specified in Patent
Owners proposed construction. Therefore, we decline to import into the
claims the specific transmission and reception of signals proposed by Patent
Owner.
Accordingly, on this record and for purposes of this Decision, we
construe terrestrial base station to mean a ground-based device that
provides connectivity of devices (mobile or otherwise) to other
communication networks, such as telephone or data networks.

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D. Asserted Obviousness over Hohnstein and Phillips

Petitioner contends claims 120 of the 555 patent are unpatentable
under 35 U.S.C. 103(a) over Hohnstein and Phillips. Pet. 2355. Patent
Owner disputes Petitioners contentions. Prelim. Resp. 2738. For reasons
that follow, we determine Petitioner has demonstrated a reasonable
likelihood of prevailing as to the challenged claims.

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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Pet. 16; Ex. 1002, Fig. 1. Figure 1 illustrates Hohnsteins communication

system in which [e]ach access point 22 defines coverage area 24 such as,
for example, a cell, covering a reception range of access point 22. Ex.

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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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Petitioner contends Hohnsteins distribution point 40 is a base

station because it receives data packets from other distribution points 40
and forwards them to access points 22, can receive packets from subscriber
units 26 via access points 22, and can receive packets from external
communication systems. Pet. 17 (citing Ex. 1002, col. 6, ll. 3443).
Petitioner describes an example from Hohnstein in which a distribution
point 40 can determine that a packet destination is in a communication
system outside of communication system 20, and can transmit the packet to
its destination via a gateway 50. Pet. 17 (citing Ex. 1002, col. 6, ll. 5558).
Petitioner argues distribution point 40 can include back end communication
interface 106, which can provide connection between distribution point 40
and the Internet. Pet. 17 (citing Ex. 1002, col. 8, ll. 5254). Petitioner
contends that, based on these features, one of ordinary skill in the art would
have considered distribution point 40 to be a base station, Pet. 19 (citing
Ex. 1008 67), because distribution point 40 provides connectivity of
devices (mobile or otherwise) to other communication networks, such as
telephone or data networks, Ex. 1008 67 (Kotzin Decl. (citing Ex. 1002,
col. 1, ll. 2150)).
Patent Owner contends Hohnstein fails to teach or suggest the
terrestrial base station recited in claim 1. Prelim. Resp. 27. In particular,
Patent Owner argues Hohnstein explicitly disparages and distinguishes
itself from systems having base transceiver stations (BTSs), which Patent
Owner argues is simply another name for the terrestrial base station
recited in claim 1 of the 555 patent. Id. Patent Owner contends that
Hohnstein identifies several alleged shortcomings with base transceiver
stations, such as difficult installation and maintenance, as well as rigid

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architecture. Id. According to Patent Owner, Hohnstein then transitions, at

the very end of its Background section, by identifying a need for a wireless
communication system that would purportedly eliminate these deficiencies.
Id. at 28. Patent Owner emphasizes Hohnsteins statement that [w]hat is
needed is a wireless communication system that has greater flexibility and is
less expensive to install. Ex. 1002, col. 2, ll. 67; see Prelim. Resp. 28.
Patent Owner argues that [a]fter disparaging terrestrial base stations in its
Background section, Hohnstein goes on to describe its own invention and
system without ever mentioning base transceiver stations or BTSs again in
its entire specification. Prelim. Resp. 28 (emphasis omitted).
Based on our preliminary construction of terrestrial base station, the
evidence supports Petitioners assertion that Hohnsteins distribution point
40 is a base station. Although Hohnstein does not state that its distribution
point 40 is a base station, it performs the same functions as a base station
in providing connectivity of a network of communication devices to other
communication networks. See, e.g., Ex. 1002, col. 6, ll. 3443 (describing
different sources from which a distribution point 40 may receive an
information packet and transmission of the packet to access point 22 in
communication with distribution point 40).
As Patent Owner acknowledges, Prelim. Resp. 28, after stating that a
wireless communication system with greater flexibility and less expensive
installation is needed, Hohnstein proposes that the point at which subscriber
units first contact the wireless communication system should be self-
supporting, relatively small, and adaptable to a wide variety of wireless
applications, Ex. 1002, col. 2, ll. 912. Hohnstein next describes how its
access points, which are the point at which subscriber units first contact the

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wireless communication system, id. at col. 2, ll. 910, require less

installation cost and exhibit greater flexibility by not requiring any hard-
wired connections to the remainder of the communication system, id. at
col. 2, ll. 1518. Thus, Hohnstein emphasizes providing access points
between the subscriber units and base stations. We are not persuaded that
Hohnsteins failure to use the term base station to describe its distribution
points 40 precludes them from being base stations when they perform the
same functions as base stations.
Patent Owner also contends that Hohnsteins distribution point 40
lacks many of the features understood by a POSITA to be present in a
terrestrial base station. Prelim. Resp. 29. In particular, Patent Owner
states, citing the Declaration of Paul Struhsaker, the inventor of the 555
patent, that distribution point 40 does not operate like a base station within
a standard cellular network, and provides no direct communication with
external networks, but instead must communicate through access points
downstream and gateways upstream. Prelim. Resp. 2930 (citing Ex. 2001
46; Ex. 1002 Fig. 1, col. 6, ll. 5559).
For the reasons discussed above, at this stage, we do not accept Patent
Owners proposed construction of terrestrial base station as limited to
operating within a cellular network. In addition, Hohnstein shows a
network of transceivers each with its own coverage area, see, e.g., Ex. 1002,
Fig. 1, and Patent Owner and its Declarant do not explain why this is not a
cellular network, or why a base station must operate in a standard cellular
network to the extent such a term is narrower than a cellular network.
Similarly, with regard to direct communication with external networks,
Patent Owner and its Declarant do not explain why a base station must have

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direct communication with external networks in order to perform its function

as a base station, and this point is not directly addressed by Patent Owners
proposed construction of terrestrial base station. Even if a base station
were interpreted to require direct communication with external networks, at
this stage, Petitioner has shown sufficiently that Hohnsteins distribution
point 40 can be in direct communication with external networks. For
example, Hohnstein teaches a distribution point can receive an information
packet from another distribution point or from an external communication
system, Ex. 1002, col. 6, ll. 3437, which suggests direct communication
with external networks and is consistent with Hohnsteins teaching that
distribution point 40 can be a gateway 50 with a back end interface
connected to external networks, id. at col. 8, ll. 4954. See Pet. 1719.
Patent Owner also contends that [d]istribution point 40s modular
capabilities are so flexible that considering it a terrestrial base station would
render the term terrestrial base station meaningless because each access
point has the capability to function as a distribution point when additional
access points are added downstream. Prelim. Resp. 30 (citing Ex. 1002,
col. 11, ll. 513). Patent Owner argues [t]his modularity is the exact
opposite of the terrestrial base station recited in the claims of the 555
patent, which is a core component in what Hohnstein criticizes as a rigid
architecture. Id.
On this record, we do not agree with Patent Owner that the modularity
of Hohnsteins distribution points disqualifies them as base stations or
renders the term meaningless. As Hohnstein teaches in the passage cited by
Patent Owner, an access point may have the capability to function as a
distribution point 40. Ex. 1002, col. 11, l. 7. This teaching maintains a

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difference in functionality between access points on the one hand, which

facilitate communication between subscriber units and distribution points,
and distribution points on the other hand, which facilitate communication
with external networks and other distribution points. The mere capability of
a particular structure to perform both functions under different
circumstances does not preclude a distribution point from being considered a
base station when configured to perform the functions of a base station.
Accordingly, at this stage, Petitioner has shown sufficiently that
Hohnsteins distribution point 40 is a base station as recited in claim 1.
Patent Owner does not dispute Petitioners contention that Hohnsteins
distribution points 40 are terrestrial because they are ground based
structures attached to the ground by the pole or building on which they are
mounted. Pet. 25 (citing Ex. 1002, col. 9, ll. 2224; Ex. 1008 83). Thus,
at this stage, Petitioner has shown sufficiently that Hohnstein teaches a first
transceiver in direct wireless communication with a terrestrial base station,
as recited in claim 1.
Petitioner has also shown sufficiently that Hohnstein teaches the
terrestrial base station is in direct wireless communication with a plurality of
wireless communication devices, Pet. 26 (citing Ex. 1002, col. 5, ll. 4247;
Ex. 1008 86), and Patent Owner does not challenge this assertion except to
argue that distribution point 40 is not a terrestrial base station, Prelim.
Resp. 31.
a second wireless local area network transceiver
Petitioner contends Hohnsteins access points 22 have a second
wireless local area network transceiver in direct wireless broadband
communication with a plurality of computing devices located within a

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coverage area of the second transceiver. Pet. 2728. In particular,

Petitioner argues [a]ccess point 22, which is formed by antenna module
502, is a local radio access point (LRAP) and defines a coverage area 24
using antennas 570 and 574 attached to access data terminal 566. Pet. 27
(citing Ex. 1002, col. 4, ll. 1114, col. 15, ll. 3334, 3840).
Patent Owner argues access point 22 is a wide area transceiver, not a
wireless local area network transceiver. Prelim. Resp. 31 (citing Ex. 2001
48). Patent Owner argues that the term local is understood to mean a
small, limited area such as a home, school, university, hotel, office,
residential or commercial building. Id. at 32 (citing Ex. 2001 49). Patent
Owner explains that [b]oth access point 22 and distribution point 40 of
Hohnstein can be equivalent structures, with operation differing only by
what role they presently embody within the network. Id. at 33. According
to Patent Owner, [t]he coverage range of each is thus effectively the same,
so that they both define wide area networks as required by distribution point
40. Id.
As Petitioner indicates, Hohnstein teaches that access point 22 may
be, for example, a local radio access point (LRAP), Ex. 1002, col. 4, ll. 9
11, which supports the contention that access points are used to form local
area networks. Similarly, Figure 1 shows each coverage area 24 is a smaller,
localized area near each access point 22, as opposed to the larger coverage
area of a distribution point 40, which may include multiple access points.
Ex. 1002, Fig. 1. Although local area networks may include or are
frequently employed at a home, school, university, hotel, office, residential
or commercial building, Patent Owner and its Declarants evidence do not
persuade us that these are the only coverage areas that may employ local

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area networks. And, even accepting Patent Owners argument that a

distribution point is a transceiver for a wide area network, it does not follow
logically that an access point, which Hohnstein teaches has the capability to
function as a distribution point, id. at col. 11, l. 7, cannot support a local
area network when functioning as an access point rather than a distribution
point.
Accordingly, for the reasons given, at this stage, Petitioner has shown
sufficiently that Hohnstein teaches the wireless communication device
comprises a second wireless local area network transceiver, as recited in
claim 1.
Patent Owner does not challenge Petitioners assertion that
Hohnsteins access point 22 is in direct wireless broadband communication
with a plurality of computing devices located within a coverage area of the
access point, or that the second transceiver [is] coupled to the first
transceiver. Pet. 2829. Petitioner has shown a reasonable likelihood of
prevailing on this assertion.
the first transceiver receives a first signal . . ., and the second
transceiver receives a second signal
Petitioner describes how Hohnstein and Phillips teach the remaining
limitations of claim 1 related to the signals received by the first and second
transceivers. Pet. 2942 (citing, inter alia, Ex. 1002, col. 5, ll. 119, col. 6,
ll. 3443, col. 8, ll. 731; Ex. 1003 at 2224, 62, 99, 107109, 12324, 163
65, 26972; Ex. 1008 93124 (Kotzin Decl.)). Petitioner also articulates
reasons why one of ordinary skill in the art would have used Phillips
teachings related to its handover procedure to determine signal
characteristics of Hohnsteins subscriber unit (the claimed first computing

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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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same reasons as claim 1. Pet. 5053. Patent Owner disagrees with

Petitioner for the same reasons argued in support of claim 1. Prelim. Resp.
37. For the same reasons discussed above as to claim 1, based on the present
record, we are persuaded Petitioner has established a reasonable likelihood it
would prevail in showing that challenged claim 11 would have been obvious
under 35 U.S.C. 103(a) in view of the teachings of Hohnstein and Phillips.
c. Dependent Claims 210 and 1220
Claims 210 depend, directly or indirectly, from independent claim 1,
and dependent claims 1220 similarly depend from claim 11. Petitioner
contends that Hohnstein and Phillips teach the additional limitations of these
dependent claims. Pet. 4350, 5455.
In addition to the arguments presented in support of the independent
claims, Patent Owner argues dependent claims 7 and 17 are not obvious
because Hohnstein and Phillips fail to teach or suggest a battery monitor
operable to transmit an alarm signal to the base station via the first
transceiver. Prelim. Resp. 36, 3738.
Petitioner argues:
[O]ne of ordinary skill in the art would have found it obvious
that when power supplied by AC power supply 530 and
charge/discharge circuit 520 and an electrical storage device
522 is not sufficient to power antenna module 502, backhaul
data terminal 554 would alarm a base station 40 that is
transmitting packets to it in order to alert that the access point
will no longer service subscriber units in its coverage area.
Pet. 47 (citing Ex. 1008 135 (Kotzin Decl.). Patent Owner argues
Petitioner is unable to find proof of an alarm in Hohnstein and simply
imagines it into the reference, and that the bald assertions and bare

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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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persuaded Petitioner has shown sufficiently for purposes of this Decision

that Hohnstein and Phillips teach the additional limitations recited in
dependent claims 210 and 1220, or that such limitations would have been
obvious modifications based on the teachings of these references.
Accordingly, we determine the information presented shows a reasonable
likelihood that Petitioner would prevail in establishing that claims 210 and
1220 are unpatentable under 35 U.S.C. 103(a) over Hohnstein and
Phillips.

E. Asserted Obviousness over Hohnstein and Agrawal

Petitioner contends claims 120 of the 555 patent are unpatentable
under 35 U.S.C. 103(a) over Hohnstein and Agrawal. Pet. 5671.
Petitioners contentions are the same as those presented in asserting
obviousness over Hohnstein and Phillips, except Agrawal is relied on for
teaching the second wireless local area network transceiver determines
signal characteristics of the first computing device, and the second
transceiver transmits the first signal to the first computing device based on
the determined signal characteristics of the first computing device, as
recited in claims 1 and 11. Pet. 5865. Patent Owner disputes Petitioners
contentions for the same reasons argued in relation to the challenges based
on Hohnstein and Phillips. Prelim. Resp. 3842.
Having reviewed the Petition and supporting evidence, and having
considered Patent Owners arguments and evidence in response, we are
persuaded Petitioner has shown sufficiently for purposes of this Decision
that Hohnstein and Agrawal teach all limitations of claims 120, or that such
limitations are obvious modifications based on the teachings of these

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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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