SmartSky scored a legal victory this week with the US Patent Office declining to institute an inter partes review of U.S. Patent No. 9,312,947 (“the ‘947 patent”), a challenge lodged by Gogo in April. The ruling at this stage is based on the USPTO’s believe that Gogo “has not demonstrated a reasonable likelihood of prevailing in demonstrating that at least one challenged claim of the ’947 patent is unpatentable over the prior art of record.” As a result, the issue won’t even make it to a formal hearing for review.
Gogo has been proven unequivocally wrong in its challenge. We continue to believe they will have great difficulty commercializing their future 5G network without infringing on SmartSky’s expansive intellectual property portfolio.– SmartSky Chairman and CEO Haynes Griffin
Gogo’s filing against the ‘947 was based, in large part, on the company’s belief that the prior art was easiest to locate. Dave Mellin, Director of Communications for Gogo’s Business Aviation division explained at the time of filing, “We’re challenging how innovative [the ‘947 patent] is vs. what SmartSky is claiming. From a larger perspective, we are trying to show that the SmartSky patent portfolio is not necessarily as strong as they claim it is.”
SmartSky is using the victory to celebrate not only the legality of the ‘947 patent, but also claiming a broader win for the company. Said SmartSky President Ryan Stone, “The failure of their effort this early in the process is both a repudiation of the baseless claims Gogo has made regarding our patent portfolio in the past, and an important validation of our claims to the contrary.”
Stone also points out that the victory came early in the process; the USPTO could have granted the review and then still upheld the patent. Losing at this early stage is a major blow.
Words have meaning
Core to the case was the definition of Software Defined Radios and how they interact to help form the SmartSky air-to-ground network, particularly with respect to beam forming. Gogo argued that the definition should center on the word software rather than the full term. SmartSky disputed this interpretation, suggesting that a “person of ordinary skill in the art” (a legal term to suggest that a qualified electrical engineer in this case would be interpreting the filing) would understand the difference between these two ideas. The USPTO sided with SmartSky on this interpretation:
Rather than defining or clarifying the “software defined radio” limitation, Petitioner’s proposed language essentially rearranges the claim language while changing “software defined radio” to just “software.” Patent Owner argues, and we agree, that Petitioner’s version of the purported plain and ordinary meaning effectively broadens the claim language by reading “software defined radio” out of the claim (see Prelim. Resp. 13), and we agree with Patent Owner that a radio configured via “software” is not synonymous with a radio configured via “software defined radio.” See Ex. 2001 ¶¶ 50–52, 55 (stating that beamforming conducted using software does not mean that the beamforming is done using software defined radio).
Gogo also argued that prior filings described “base stations that use digital signal processing to generate multiple beams that are steered to track moving vehicles such as airplanes” and other concepts that should be interpreted as invalidating the ‘947 patent because they existed before the filing was made. Again, the USPTO ruled otherwise, “Petitioner has not established that the combined teachings of Miura and Agee teach ‘a radio configured via software defined radio to utilize beamforming to generate a plurality of steerable beams,’ as claimed.”
The bulk of the USPTO’s ruling – including all of the above – focuses on two of the twenty claims in Gogo’s petition. The other 18 claims earn only brief mention an not demonstrating “a reasonable likelihood” of success under broader review at the closing of the ruling.
Gogo issued a statement on Friday morning indicating it disagrees with the USPTO’s decision and emphasizing its belief that it is not currently infringing on “any valid patent held by SmartSky.” Gogo also does not expect this week’s ruling to impact the development or deployment of its upcoming Gogo 5G ATG network upgrade.
Prior SmartsSky/Gogo Patent Lawsuit Coverage:
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