NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IPCOM GMBH & CO.,
Appellant
v.
HTC CORPORATION,
Appellee
______________________
2015-1754
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board, in No. 95/001,193.
______________________
Decided: July 11, 2016
______________________
MEREDITH MARTIN ADDY, Tabet DiVito & Rothstein,
LLC, Chicago, IL, argued for appellant. Also represented
by MATTHEW MICHAEL HOLUB, Katten Muchin Rosenman
LLP, Chicago, IL; JEFFREY A. FINN, Finn IP Law, PC, Los
Angeles, CA.
MICHAEL A. OBLON, Perkins Coie, LLP, Washington,
DC, argued for appellee. Also represented by DAN L.
BAGATELL, TYLER R. BOWEN, Phoenix, AZ.
______________________
2 IPCOM GMBH & CO. v. HTC CORPORATION
Before PROST, Chief Judge, PLAGER and LOURIE, Circuit
Judges.
PROST, Chief Judge.
This appeal is from a decision by the United States
Patent and Trademark Office Patent Trial and Appeal
Board (“Board”) in an inter partes reexamination of U.S.
Patent No. 7,043,751 (“’751 patent”). The ’751 patent was
issued to Robert Bosch GmbH in May 2006 and was later
assigned to IPCom GmbH & Co. (“IPCom”). In 2009, HTC
Corporation (“HTC”) requested inter partes reexamina-
tion of the ’751 patent and the examiner rejected all
claims as anticipated and/or obvious in view of the prior
art. The Board affirmed all rejections. On appeal are
only three claims: claims 6, 26, and 30. For the reasons
stated below, we affirm the Board’s rulings.
BACKGROUND
Cell phones communicate with cell towers by sending
or receiving data over a shared “channel,” such as a
“random access channel” (“RACH”). However, if many
phones try to use the RACH at the same time, the chan-
nel may become overloaded, and some messages will not
be transmitted to the cell tower. To reduce overload,
cellular networks can manage access to the channel and
thereby limit the number of phones that can transmit
messages over the channel at a given time.
The ’751 patent describes a method and system for al-
locating access rights to channels in a wireless network.
’751 patent col. 1 ll. 9–11. At given times, the network
provides “access authorization data” to cell phones (also
called “subscriber stations”) within the network by broad-
casting “information signals” over a signaling channel.
Id. at col. 4 ll. 41–45. A phone within the network com-
pares the access authorization data with stored values in
the phone to determine whether it has been granted
IPCOM GMBH & CO. v. HTC CORPORATION 3
access to the channel. Id. at col. 5 ll. 20–24; col. 7 ll. 16–
22. As the volume of phones and transmissions increases,
the network adjusts the access authorization data param-
eters so fewer phones can access the channel at a given
time.
There are two types of access authorization data de-
scribed in the ’751 patent: “access class data” (“ACD”) (or
“access class information” (“ACI”)) and an “access thresh-
old value” (“ATV”). Id. at col. 1 ll. 22–64. ACD restricts
network access based on the phone’s “user class,” which is
the class assigned to the phone by its “subscriber identifi-
cation module” (SIM card). A phone seeking access to the
network would perform an “access class test,” whereby it
would compare its user class to the ACD provided by the
network to determine if it was granted access. Id. Differ-
ent phones have different user classes; for example, a
phone belonging to an emergency responder may have a
higher-priority class than a phone belonging to another
user. Id. Thus, the emergency responder’s phone would
be more likely than that of another user to be granted
access to the network at times of overload. Id.
The network may also provide an ATV, which re-
stricts access based on a random distribution. Using an
ATV, a phone seeking access to the network would per-
form a random number test, whereby the phone would
generate a random number and compare that number to
the broadcast ATV to determine whether it is granted
access. Id. at col. 5 ll. 16–25.
The ’751 patent teaches that when a phone wants to
send a message, the phone first determines whether the
access authorization data provided by the network in-
cludes ACD, an ATV, or both. Id. at col. 1 ll. 25–29, 45–
64. If only ACD is provided, the phone only performs the
access class test. Id. at col. 6 l. 65–col. 8 l. 5. If the net-
work only provides an ATV, the phone only performs the
random number test. Id. at col. 5 l. 36–col. 6 l. 64. If both
4 IPCOM GMBH & CO. v. HTC CORPORATION
ACD and an ATV are provided, the phone first performs
the user class test, and then, if that fails, it performs the
random number test. Id. at col. 8 ll. 6–27. The phone
repeats this process each time it wants to transmit a
message.
The relevant pieces of prior art are the GSM Specifi-
cations. GSM (the “Global System for Mobile Communi-
cations”) is a periodically-updated standard developed by
the European Telecommunications Standards Institute to
describe protocols for cellular networks. At the time of
the filing of the ’751 patent, the March and October 1998
GSM 04.60 Specifications (collectively, the “GSM Specifi-
cations”) were in effect. Relevant to this appeal, the GSM
Specifications disclose techniques by which a phone can
access and transmit information over a channel (called
the “PRACH”). According to the GSM Specifications, for a
phone to gain access to the PRACH, it would first need to
obtain permission to access the network through an
access class test. After passing the access class test, the
phone would need to pass an additional test before it
could transmit messages over the PRACH. The GSM
Specifications refer to this as “packet access” control and
include a “packet access procedure” that compares an
ATV (called a “persistence level”) to a random number to
determine whether a particular phone can transmit
messages over the network. Thus, a phone would gener-
ate a random number and compare it to the persistence
level; if the random number is greater than or equal to
the persistence level value, then the message would be
transmitted. The phone would repeat this process every
time it wants to send a message over the network.
This case began with a declaratory judgment lawsuit
filed by HTC against IPCom, to which IPCom responded
by counterclaiming for infringement of the ’751 patent. In
2012, the district court granted HTC’s motion for partial
summary judgment of noninfringement. IPCom appealed
that ruling and we affirmed the district court. While the
IPCOM GMBH & CO. v. HTC CORPORATION 5
district court case was pending, HTC filed a request for
inter partes reexamination of all 13 claims of the ’751
patent based on anticipation and obviousness in view of
the GSM Specifications alone or in combination with
secondary references. The United States Patent and
Trademark Office granted the request and rejected all
claims as unpatentable. In response, IPCom moved to
add new claims 14–31 and later amended many of those
claims in response to rejections. The examiner again
rejected all claims, first in an Action Closing Prosecution,
and then, after IPCom responded, in a Right of Appeal
Notice. IPCom appealed to the Board, which affirmed the
examiner’s rejections. IPCom then requested reconsidera-
tion, but the Board denied the request. IPCom then
timely appealed to us. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A) (2012).
DISCUSSION
We review the Board’s legal determinations de novo
and its underlying factual determinations for substantial
evidence. Rambus Inc. v. Rea, 731 F.3d 1248, 1251 (Fed.
Cir. 2013). Anticipation is a question of fact and thus the
Board’s anticipation determination is reviewed for sub-
stantial evidence. Also, during reexamination, claims are
given “their broadest reasonable interpretation consistent
with the specification.” In re NTP, Inc., 654 F.3d 1268,
1274 (Fed. Cir. 2011).
There are three claims on appeal: claims 6, 26, and
30. Claims 6 and 26 are representative of the issues here.
Claim 6 recites, in relevant part:
A method for allocating rights of access to at least
one telecommunications channel . . . comprising
the steps of . . . comparing the access threshold
value with a random number . . . and granting a
right of access to a telecommunications channel of
the at least one subscriber station as a function of
an outcome of the comparison; and further com-
6 IPCOM GMBH & CO. v. HTC CORPORATION
prising asking . . . whether the access authoriza-
tion data include . . . access class information . . .
in which case . . . the at least one subscriber sta-
tion is assigned to an at least one predetermined
user class to which access to at least one telecom-
munication channel . . . is granted.
’751 patent at claim 6 (emphases added). Claim 26 re-
cites, in relevant part,
A subscriber station to which an access to at least
one telecommunication channel . . . can be grant-
ed, comprising: . . . an evaluation unit . . . , the
evaluation unit for asking . . . , on the basis of the
access class data, whether the access authoriza-
tion data include an access threshold value for
comparison of the access threshold value with a
random number or a pseudo-random number, and
for ascertaining, as a function of an outcome of a
comparison whether an access of the at least one
subscriber station to the at least one telecommu-
nications channel is enabled.
J.A. 4900 (emphases added). IPCom contends that the
Board erred in construing the terms “access” and “right of
access” in claims 6, 26, and 30 and the phrase “asking . . .
on the basis of the access class data” in claim 26. We take
each argument in turn.
With respect to claims 6 and 30, the Board found that
they were anticipated by the GSM Specifications because
the GSM Specifications disclosed granting access to a
network through the use of a random number test using
ATV. IPCom argues that was erroneous. It contends that
the GSM Specifications teach that access to the network
is granted solely through the access class test (using
ACD), whereas the ’751 patent teaches that access to the
network can be granted through either the class test
(using ACD) or the random number test (using an ATV).
Thus, IPCom argues that the GSM Specifications cannot
IPCOM GMBH & CO. v. HTC CORPORATION 7
anticipate the ’751 patent because it does not disclose
both options for granting access.
IPCom is incorrect. It is true that in the first step of
the technique disclosed in the GSM Specifications, a
phone uses ACD, not an ATV, to initially gain access to
the network. But, the GSM Specifications further disclose
that after a phone has the permission to access the net-
work, it still needs to use an ATV in order to gain permis-
sion to transmit a message over the network. And every
time the phone wants to send a message, it needs to
request access to the network again through a random
number test using an ATV. As the Board determined, the
claims merely refer to “right of access” and are not limited
to the “initial” access to the network. Thus, under the
broadest reasonable interpretation of the claims, the term
“right of access” can be construed to include both the first
request for access to the network and the subsequent
requests to transmit messages over the network.
IPCom’s arguments to the contrary are unavailing.
IPCom contends that the claims only deal with the first
attempt to gain access to the network and that everything
that happens after the phone has gained such access is
irrelevant, including attempted transmissions. But none
of the citations it provides to the claim language or the
specification support such a narrow reading. The claims
generally refer to granting “rights of access” to the RACH
or say that “access” to the RACH “is enabled” or “can be
granted.” The claims do not say whether that right of
access includes only the initial permission to be on the
network or if it also includes the ability to transmit mes-
sages over the network. Moreover, the ’751 patent recog-
nizes that a phone may need to make subsequent requests
for access, stating:
Before each access to the RACH 30 by the first
mobile station 5, the evaluation unit 60 draws a
random . . . number R and asks whether the ran-
8 IPCOM GMBH & CO. v. HTC CORPORATION
dom . . . number R is at least as great as the ac-
cess threshold value S. Only then is access to the
[RACH] allowed.
’751 patent col. 5 ll. 20–25 (emphasis added). Thus,
reading the claims to cover more than merely the initial
access to the network is consistent with the specification.
IPCom also argues that requiring a phone to pass
tests before attempting a first transmission on the RACH
is for “preventing” overload, whereas, in the event of data
collision, requiring a phone to pass tests before making
subsequent attempts to transmit on the RACH is for
“relieving” existing overload. IPCom contends that the
’751 patent is directed to “preventing” overload and thus
the “right of access” language can only refer to the first
attempt to access the network. But neither the claim
language nor the specification make any distinction
between “prevention” and “relief” of overload. Indeed, the
specification describes restricting access to “avoid[]”
overload, id. at col. 4 ll. 10–12, and lists a number of ways
to attain “relief of the [RACH],” id. at col. 10 ll. 24–41.
Because there is no meaningful difference between pre-
vention and relief as explained in the ’751 patent, IP-
Com’s argument on this front is unpersuasive. The Board
thus correctly construed “right of access” under the broad-
est reasonable interpretation standard to include subse-
quent attempts to access the network to transmit a
message.
IPCom also challenges the Board’s ruling that claim
26 is anticipated by the GSM Specifications. IPCom
argues that the Board erred in construing the claim to
cover “anything that happens after the ‘asking’ ‘on the
basis of access class data.’” Appellant’s Br. 49. But the
Board did no such thing. Instead, the Board concluded
that the claim requires nothing more than asking wheth-
er an ATV is present based on any aspect of the access
class data. It does not require, as IPCom argues, that the
IPCOM GMBH & CO. v. HTC CORPORATION 9
“asking” depend upon “information encoded in the ACD.”
Id. at 50. IPCom improperly imports the preferred em-
bodiment of the ’751 patent—whereby a phone determines
whether or not to use an ATV based on whether it was
granted access using ACD—into the claims. As the Board
noted, if IPCom wanted to limit the claims in such a
manner, it could have. Instead, claim 26 merely requires,
in some way, asking whether to look at an ATV based on
ACD. Under the broadest reasonable interpretation, this
claim is satisfied by the GSM Specifications, where access
is initially determined on the basis of ACD and thereafter
is based upon an ATV. We therefore conclude that the
Board properly found claim 26 anticipated by the GSM
Specifications.
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion.
AFFIRMED