UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Cisco Systems, Inc.
`Petitioner
`v.
`
`C-Cation Technologies, LLC
`Patent Owner
`Patent No. 5,563,883
`Filing Date: July 18, 1994
`Issue Date: October 8, 1996
`Title: DYNAMIC CHANNEL MANAGEMENT AND SIGNALLING METHOD AND
`APPARATUS
`
`
`
`
`Inter Partes Review No. _____
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`II.
`III.
`
`Exhibits ....................................................................................................................................v
`I.
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) ............................................... 1
`A.
`Real Party-In-Interest ....................................................................................... 1
`B.
`Related Matters ................................................................................................ 1
`C.
`Lead and Back-Up Counsel ............................................................................. 1
`D.
`Service Information .......................................................................................... 2
`E.
`Power of Attorney ............................................................................................. 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................................ 2
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 ...................................................................................................................... 2
`A.
`Grounds For Standing ...................................................................................... 2
`B.
`Identification of Challenged Claims and Relief Requested .............................. 2
`SUMMARY OF THE ‘883 PATENT ............................................................................. 4
`A.
`Brief Description ............................................................................................... 4
`B.
`Summary of the Prosecution History of the ‘883 Patent .................................. 6
`C.
`Prior Markman Order Regarding Certain Claims of the ‘883
`Patent ............................................................................................................... 8
`CLAIM CONSTRUCTIONS UNDER 37 C.F.R. § 42.104(b)(3) ................................. 10
`A.
`Legal Overview; Adoption of Prior Constructions .......................................... 10
`B.
`Construction of “system controlling means,” “transmitting
`means,” receiving means,” “modulating means,” “demodulating
`means,” “interfacing means,” “switching means”, and “forward
`communication controlling means” as recited in claim 14 .............................. 12
`
`IV.
`
`V.
`
`i
`
`

`

`
`
`
`VI.
`VII.
`
`
`
`
`
`C.
`D.
`
`E.
`
`B.
`
`Construction of “dynamic connection” as recited in claim 14 ......................... 13
`Construction of “system controlling means” as recited in claim
`19 ................................................................................................................... 14
`Construction of “user traffic transmitting means,” “user traffic
`receiving means,” “signalling data transmitting means,”
`“signalling data receiving means,” “user interfacing means,” and
`“communication controlling means” as recited in claim 19 ............................ 15
`LEVEL OF ORDINARY SKILL IN THE ART ............................................................. 15
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘883 PATENT IS UNPATENTABLE ................................................ 16
`A.
`Claim 1 is anticipated by each of MPT Specification and Cioffi,
`is obvious in view of each of MPT Specification and Cioffi, or is
`obvious in view of a combination of MPT Specification and
`Cioffi ............................................................................................................... 16
`i.
`MPT Specification ............................................................................... 17
`ii.
`Cioffi .................................................................................................... 18
`iii.
`Claim Chart for Claim 1 ...................................................................... 20
`Claim 2 is anticipated by MPT Specification, is obvious in view
`of MPT Specification, or is obvious in view of MPT Specification
`and a combination of one or more of Cioffi, Thompson, and
`Tobagi ............................................................................................................ 23
`Claim 3 is anticipated by MPT Specification, is obvious in view
`of MPT Specification, or is obvious in view of MPT Specification
`and a combination of one or more of Thompson, McNamara,
`and Hester ...................................................................................................... 26
`Claim 4 is anticipated by MPT Specification, is obvious in view
`of MPT Specification, or is obvious in view of MPT Specification
`and a combination of one or more of Thompson and Sirazi .......................... 28
`
`C.
`
`D.
`
`ii
`
`

`

`
`
`
`
`
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`Claim 5 is obvious in view of MPT Specification and a
`combination of one or more of Thompson, Hester, and
`Goodings ........................................................................................................ 30
`Claim 6 is anticipated by each of Hayes, Cioffi, and MPT
`Specification, or is obvious in view of a combination of one or
`more of Hayes, MPT Specification, and Cioffi ............................................... 31
`i.
`Hayes .................................................................................................. 32
`ii.
`MPT Specification ............................................................................... 32
`iii.
`Cioffi .................................................................................................... 33
`iv.
`Claim Chart for Claim 6 ...................................................................... 33
`Claim 7 is anticipated by each of Hayes, MPT Specification,
`and Cioffi, or is obvious in view of a combination of one or more
`of Hayes, MPT Specification, and Cioffi ......................................................... 36
`Claim 8 is anticipated by Cioffi, is obvious in view of Cioffi, or is
`obvious in view of Cioffi and a combination of one or more of
`Hayes and MPT Specification ........................................................................ 38
`Claim 9 is obvious in view of Cioffi and Akashi, or is obvious in
`view of Cioffi and Akashi and a combination of one or more of
`Hayes and MPT Specification ........................................................................ 40
`Claims 10 and 11 are anticipated by each of MPT Specification
`and Cioffi, are obvious in view of each of MPT Specification
`and Cioffi, are obvious in view of MPT Specification and Hayes,
`are obvious in view of Cioffi and Hayes, or are obvious in view
`of MPT Specification, Cioffi, and Hayes ......................................................... 41
`i.
`Claim 10 .............................................................................................. 41
`ii.
`Claim 11 .............................................................................................. 42
`Claims 12 and 13 are anticipated by Hayes, are obvious in view
`of Hayes, or are obvious in view Hayes and a combination of
`one or more of MPT Specification and Cioffi ................................................. 45
`
`iii
`
`

`

`
`
`
`L.
`
`i.
`Claim 12 .............................................................................................. 45
`Claim 13 .............................................................................................. 46
`ii.
`Claims 14-20 are anticipated by each of Thompson and Cioffi,
`are obvious in view of each Thompson and Cioffi, or are
`obvious in view of Thompson and Cioffi ........................................................ 47
`i.
`Claims 14-18 ....................................................................................... 49
`ii.
`Claims 19-20 ....................................................................................... 50
`iii.
`Claim Charts for Claims 14-20 ............................................................ 50
`VIII. CONCLUSION .......................................................................................................... 60
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`
`EXHIBITS
`
`Exhibit 1001: Declaration of Sumit Roy, Ph.D. (“Roy Declaration”)
`
`Exhibit 1002: U.S. Patent No. 5,563,883 to Cheng (“the ‘883 Patent”)
`
`Exhibit 1003: The ‘883 Patent file history
`
`Exhibit 1004: Claim Construction—Memorandum and Order, C-Cation
`
`Technologies, LLC v. Comcast Corp., et al., Case No. 2:11-CV-30-JRG,RSP, In the United
`
`States District Court For The Easter District of Texas Mashall Division (“Markman Order”)
`
`Exhibit 1005: “MPT 1327 – A Signalling Standard for Trunked Private Land Mobile
`
`Radio Systems,” January 1988, revised and reprinted in November 1991 (“MPT 1327”)1
`
`Exhibit 1006: “MPT 1343 – Performance Specification,” January 1988, revised and
`
`
`1 As used herein, MPT Specification refers to MPT 1327 (Exhibit 1005) and MPT 1343
`
`(Exhibit 1006). MPT 1327 and 1343 are part of the same signalling standard for trunked
`
`private land mobile radio systems. The two documents were published contemporaneously,
`
`along with documents forming other parts of the same standard, by the same agency.
`
`MPT1327 and MPT 1343 cross-reference each other and are clearly intended to be read in
`
`conjunction with one another and other parts of the standard. Thus, for the purpose of the
`
`IPR, Petitioner submits that MPT 1327 and MPT 1343 constitute one prior art reference.
`
`See also Roy Dec. at ¶ 11.
`
`
`
`
`
`v
`
`

`

`
`
`reprinted in November 1991 (“MPT 1343”)2
`
`Exhibit 1007: “91-92 Annual Report,” 1992, Radiocommunications Agency (“Annual
`
`Report”)
`
`Exhibit 1008: U.S. Patent No. 5,625,651 to Cioffi, filed on June 2, 1994, issued on
`
`April 29, 1997 (“Cioffi”)
`
`Exhibit 1009: U.S. Patent No. 5,594,726 to Thompson et al., filed on March 30,
`
`1994, issued on January 14, 1997 (“Thompson”)
`
`Exhibit 1010: “Modeling and Analysis of Computer Communication Networks,” 1st
`
`edition, by Jeremiah F. Hayes, published in 1984 (“Hayes3”)
`
`Exhibit 1011: “Multiaccess Protocols in Packet Communications,” by Fouad Tobagi,
`
`IEEE Transactions on Communications, Vol. Com-28, No. 4, April 1980 (“Tobagi”)
`
`Exhibit 1012: U.S. Patent No. 4,533,948 to McNamara et al., filed on April 30, 1982,
`
`issued on August 6, 1985 (“McNamara”)
`
` Exhibit 1013: U.S. Patent No. 5,355,374 to Hester et al., filed on December 14,
`
`1993, issued on October 11, 1994 (“Hester”)
`
`Exhibit 1014: “A Demand-Adaptive Media Access Protocol For Metropolitan Area
`
`
`2 Id.
`
`3 Exhibit 1010 includes the following sections of Hayes: Preface, fist table of content page,
`
`section 2.7, section 2.8, and chapters 7-8 and 9.
`
`
`
`
`
`vi
`
`

`

`
`
`Networks,” by Semir Sirazi, published in 1986 (“Sirazi”)
`
`Exhibit 1015: U.S. Patent No. 5,377,192 to Goodings et al., filed on November 13,
`
`1991, issued on December 27, 1994 (“Goodings”)
`
`Exhibit 1016: U.S. Patent No. 4,742,512 to Akashi et al., filed on July 18, 1986,
`
`issued on May 3, 1988 (“Akashi”)
`
`Exhibit 1017: “MC68360 Quad Integrated Communication Controller (QUICCTM),”
`
`1993, Product Brief, Motorola Semiconductor Product Information (“MC68360”)
`
`
`
`
`
`
`
`vii
`
`

`

`Through counsel, Cisco Systems, Inc. (“Petitioner”) hereby petitions for inter partes
`
`review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1-20 of U.S. Patent No.
`
`5,563,883 (“the ‘883 Patent”), and asserts there is a reasonable likelihood that it will prevail
`
`with respect to at least one of the challenged claims.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b)
`A.
`Real Party-In-Interest
`Petitioner, Cisco Systems, Inc., is the real party-in-interest for the instant petition.
`
`Related Matters
`B.
`On February 4, 2014, Patent Owner filed a complaint for patent infringement against
`
`Petitioner and several other companies in the U.S. District Court for the Eastern District of
`
`Texas. The action is captioned: Civil Action No. 2:14-cv-00059-JRG-RSP: C-Cation
`
`Technologies, LLC v. Time Warner Cable Inc., et. al.
`
`C.
`
`Lead and Back-Up Counsel
`LEAD COUNSEL
`
`Mitchell G. Stockwell (Reg. No. 39,389)
`(MStockwell@kilpatricktownsend.com)
`
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309-4528
`T: 404.815.6214; F: 404.541.3403
`
`BACK-UP COUNSEL
`
`Michael S. Pavento (Reg. No. 42,985)
`(MPavento@kilpatricktownsend.com)
`Vaibhav P. Kadaba (Reg. No. 45,865)
`(WKadaba@kilpatricktownsend.com)
`Russell A. Korn (Reg. No. 54,236)
`(RKorn@kilpatricktownsend.com)
`
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309-4528
`T: 404.815.6213; F: 404.541.4676
`
`1
`
`

`

`
`
`
`Service Information
`D.
`As identified in the attached Certificate of Service, a copy of the present petition, in
`
`its entirety, is being served to the address of the attorney or agent of record. Petitioner may
`
`be served at the lead counsel address provided in Section I(C) above.
`
`Power of Attorney
`E.
`A power of attorney is filed herewith in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`This petition is accompanied by a payment of $26,000, which is believed to be the
`
`amount specified by 37 C.F.R. § 42.15. Any necessary additional fees may be charged to
`
`Deposit Account No. 20-1430.
`
`III.
`
`REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104
`A.
`Grounds For Standing
`Petitioner certifies that the ‘883 Patent is eligible for inter partes review and further
`
`certifies that Petitioner is not barred or otherwise estopped from requesting inter partes
`
`review challenging the identified claims on the grounds identified within the present petition.
`
`Identification of Challenged Claims and Relief Requested
`B.
`Petitioner requests inter partes review of claims 1-20 of the ‘883 Patent on the
`
`grounds listed below and requests that each of the claims be found unpatentable. An
`
`explanation of how claims 1-20 are unpatentable under the statutory grounds identified
`
`below, including the identification of where each element is found in the prior art patents or
`
`publications and the relevance of the prior art references, is provided in the form of detailed
`
`2
`
`

`

`
`
`claim charts. Additional explanation and support for each ground of cancellation is set forth
`
`in the Declaration of Sumit Roy, PhD. (Ex. 1001).
`
`Ground 1: Claims 1-4, 6-7, and 10-11 are anticipated under § 102(b) by MPT Specification.
`
`Ground 2: Claims 1, 6-8, 10-11, and 14-20 are anticipated under § 102(e) by Cioffi.
`
`Ground 3: Claims 14-20 are anticipated under § 102(e) by Thompson.
`
`Ground 4: Claims 6-7 and 12-13 are anticipated under § 102(b) by Hayes.
`
`Ground 5: Claims 1-4, 6-7, and 10-11 are obvious under § 103(a) by MPT Specification.
`
`Ground 6: Claims 1, 6-8, 10-11, and and 14-20 are obvious under § 103(a) by Cioffi.
`
`Ground 7: Claims 14-20 are obvious under § 103(a) by Thompson.
`
`Ground 8: Claims 6-7 and 12-13 are obvious under § 103(a) by Hayes.
`
`Ground 9: Claim 1 is obvious under § 103(a) by MPT Specification in view of Cioffi.
`
`Ground 10: Claims 6-7 are obvious under § 103(a) by Hayes and/or MPT Specification.
`
`Ground 11: Claim 2 is obvious under § 103(a) by MPT Specification in view of one or more
`
`of Cioffi, Thompson, and Tobagi.
`
`Ground 12: Claim 3 is obvious under § 103(a) by MPT Specification in view of one or more
`
`of Thompson, McNamara, and Hester.
`
`Ground 13: Claim 4 is obvious under § 103(a) by MPT Specification in view of one or more
`
`of Thompson and Sirazi.
`
`Ground 14: Claim 5 is obvious under § 103(a) by MPT Specification in view of one or more
`
`of Thompson, Hester, and Goodings.
`
`3
`
`

`

`
`
`Ground 15: Claim 8 is Obvious under § 103(a) by Cioffi in view of Hayes and/or MPT
`
`Specification.
`
`Ground 16: Claim 9 is obvious under § 103(a) by Cioffi in view of Akashi.
`
`Ground 17: Claim 9 is obvious under § 103(a) by Cioffi in view of Akashi and one or more
`
`of Hayes and MPT Specification.
`
`Ground 18: Claims 10-11 are obvious under § 103(a) by MPT Specification in view of
`
`Hayes and/or Cioffi.
`
`Ground 19: Claims 12-13 are obvious under § 103(a) by Hayes in view of MPT
`
`Specification and/or Cioffi.
`
`Ground 20: Claims 14-20 are obvious under § 103(a) by Thompson in view of Cioffi.
`
`Each of the references relied upon in the above grounds qualifies as prior art under
`
`35 U.S.C. § 102 relative to the ‘883 Patent, which has an effective filing date of July 18,
`
`1994. Specifically, each of MPT 1327, MPT 1343, Hayes, Tobagi, McNamara, Sirazi,
`
`Goodings, and Akashi was published before July 18, 1993, and therefore is prior art under
`
`35 U.S.C. § 102(b). Each of the applications for Cioffi, Thompson, and Hester was filed
`
`prior to July 18, 1994, and thus each reference is prior art under 35 U.S.C. § 102(e).
`
`IV.
`
`SUMMARY OF THE ‘883 PATENT
`A.
`Brief Description
`The ‘883 Patent relates to methods and apparatuses for facilitating access to shared
`
`communication channels in a multi-access communication system. (The ‘883 Patent (Ex.
`
`4
`
`

`

`
`
`1002), 1:7-10, 1:15-20). More particularly, a central controller implements a multi-access
`
`protocol to facilitate access by remote terminals to communication channels that are shared
`
`among the remote terminals. (Id. at 5:8-45 and 5:58-6:51). The communication channels
`
`use two types of channels: signalling data channels and bearer channels. (Id. at 5:58-6:4).
`
`The signalling data channels primarily carry control information, while the bearer channels
`
`carry user traffic. (Id.). The multi-access protocol supports various channel access methods
`
`such as time division multiple access (TDMA), frequency division multiple access (FDMA),
`
`and code division multiple access (CDMA). (Id. at 1:20-29 and 6:57-60). Examples of multi-
`
`access communication systems that may implement the ‘883 Patent include telephone
`
`system and cable television (CATV) systems. (Id. at 1:47-57, 5:28-30, and 5:54-57). The
`
`background section of the ‘883 Patent notes that the related prior art encompasses systems
`
`and methods developed for radio telephony environments. (Id. at 1:60-63).
`
`The alleged invention of the ‘883 Patent is directed to a multi-access protocol that
`
`involves dynamic allocation (i.e., assignment and reassignment) of data signalling
`
`channels among remote terminals, polling of the remote terminals, and resolution of
`
`contention between the remote terminals requesting access to the data signalling channels.
`
`The signal allocation methods described in the ‘883 Patent can generally be used to
`
`allocate data signalling channels as well as traffic-bearer channels, but the patent
`
`acknowledges that the dynamic allocation/reassignment of traffic-bearer channels was well
`
`known in the art. (Id. at 5:58-6:4; 1:66-2:1). The polling methods include the use of general
`
`5
`
`

`

`
`
`and selective polls that can be executed on multiple channels simultaneously (Id. at 7:50-
`
`67) or using an overlapping method. (Id. at 11:58-12:35). The contention resolution methods
`
`include performing a binary search algorithm to identify a remote terminal that has a
`
`request. (Id. at 9:66-10:26).
`
`More specifically, claims 1-5 of the ‘883 Patent are directed to a method for
`
`establishing communication between a central controller and remote terminals via signalling
`
`data channels and for reassigning a remote terminal to another signalling data channel
`
`based on various conditions of the signalling data channels. Claims 6-12 are directed to a
`
`method for establishing communication between a central controller and remote terminals
`
`via signalling data channels and for resolving contention resulting from the remote terminals
`
`sharing the signalling data channels. Claims 14-18 and 19-20 are means-plus-function
`
`claims directed to a central controller and remote terminals, respectively, for performing
`
`aspects of the disclosed multi-access protocol.
`
`Section V. of Roy Declaration (Exhibit 1001) presents a more detailed overview of
`
`the ‘883 Patent. In addition, Section VI of Roy Declaration (Exhibit 1001) presents an
`
`overview of multi-access communication systems and describes the state of the art as of
`
`the effective filing date of the ‘883 Patent—July 18, 1994.
`
`Summary of the Prosecution History of the ‘883 Patent
`B.
`The original patent application, No. 276,534 ("the '534 application"), attached hereto
`
`as a part of Exhibit 1003, was filed on July 18, 1994, with 10 claims. Original independent
`
`6
`
`

`

`
`
`claims 1, 6, 9, and 10 were directed to a method for assigning signaling data channels, a
`
`method for resolving contentions, a central controller, and a remote terminal, respectively,
`
`within the context of a multiple access communication system. (‘883 file history (Ex. 1003),
`
`Application, pp. 28-33).
`
`The PTO issued a first Office Action rejecting all the claims under 35 U.S.C. § 112,
`
`second paragraph, claims 1 and 5 under 35 U.S.C. § 102(b) as anticipated by US Patent
`
`No. 4,573,206 (“Grauel”), independent claim 6 under 35 U.S.C. § 102(e) as anticipated by
`
`US Patent No. 5,355,375 (“Christensen”), and independent claim 10 under 35 U.S.C. §
`
`102(e) as anticipated by US Patent No. 5,374,952 (“Flohr”). (‘883 file history (Ex. 1003),
`
`08/04/95 Office Action, pp. 2-4). In response, Applicant amended the claims and added 10
`
`new dependent claims. (‘883 file history (Ex. 1003), 10/01/1995 Response, pp. 1-11). The
`
`amendments were aimed at clarifying the dynamic allocation of signalling data channels, the
`
`simultaneous nature of the polling, the resolution of contention by the central controller
`
`rather than the remote terminals, and to overcome § 112 issues.
`
`Regarding amended claim 1, Applicant argued that, unlike Grauel, the claim recites a
`
`plurality of predetermined signaling data channels, a central controller that selects an
`
`individual remote terminal for re-assignment, a determination whether a non-allocated
`
`signaling data channel is available, and an allocation of this channel and an assignment of a
`
`remote terminal to the channel. (Id., pp. 13-14). Regarding amended claim 6, Applicant
`
`argued that, unlike Christensen, the claim recites a plurality of signaling data channels and
`
`7
`
`

`

`
`
`a central controller that polls a group of remote terminals and that is involved in contention
`
`resolution. (Id., pp. 15-16). Regarding amended claim 10, Applicant argued that, unlike
`
`Flohr, the claim recites a remote terminal in a multiple access communication system,
`
`where a central controller controls and relays user traffic between remote terminals in a
`
`master-slave relationship and assigns a remote terminal to a pair of signalling data
`
`channels. (Id., pp. 16-17). It appears that the dynamic allocation of signalling data channels
`
`and the use of predetermined signalling data channels, and the contention resolution by the
`
`central controller rather than the remote terminals persuaded the examiner. The examiner
`
`then allowed the amended and new claims. (‘883 file history (Ex. 1003), 11/27/95 Notice of
`
`Allowability, p. 1). As-amended independent claim 9 issued as independent claim 14 and
`
`as-amended independent claim 10 issued as independent claim 19. (Id. at pp. 7-9).
`
`Prior Markman Order Regarding Certain Claims of the ‘883 Patent
`C.
`C-Cation Technologies, LLC previously asserted the ‘883 Patent against Comcast
`
`Corp. and other defendants in the Eastern District of Texas. (Ex. 1004). In that case, the
`
`Magistrate of the Court issued a claim construction memorandum and order (Id. at pp. 6-
`
`44). The case settled and there is no indication in the record that order was adopted by the
`
`Judge prior to settlement. The Magistrate’s claim construction order is summarized below.
`
`Claim 1
`
`The terms “Shared transmission means for signalling data and user information,” and
`
`“user information” of the preamble are not claim limitations and therefore do not require a
`
`8
`
`

`

`
`
`construction. The terms “determining whether one of said plurality of remote terminals
`
`needs to be reassigned” does not require additional construction, and the plain and ordinary
`
`meaning should be applied. The term “is available” does not need further construction. “Pair
`
`of predetermined signalling channels” means “a forward signalling data channel and a
`
`reverse signalling data channel determined prior
`
`to establishing communications.”
`
`“Monitoring the status of a plurality of the signalling data channels in use . . . for the usability
`
`of said signalling data channels” means “monitoring at least two of the signalling data
`
`channels being used for one or more conditions that affect the usability of the signalling data
`
`channels.” “Said predetermined signalling data channel” means “one of the pair of
`
`predetermined signalling data channels.” “Said predetermined channel” means “one of the
`
`pair of predetermined signalling data channels.” No further construction is necessary for the
`
`phrase “reassigning by said central controller said remote terminal to a different and suitable
`
`signalling data channel,” the plain and ordinary meaning should be applied.
`
`Claim 5
`
`“New signalling data channel” means “a channel that was not then being used as a
`
`signalling data channel.”
`
`Claim 6
`
`The term “shared transmission means” of the preamble is not a claim limitation and
`
`does not require a construction. “Predetermined signalling data channels of a plurality of
`
`signalling data channels” means “a forward signalling data channel and a reverse signalling
`
`9
`
`

`

`
`
`data channel determined prior to establishing communications.” “Each of said plurality of
`
`remote terminals can be assigned to any pair of said plurality of signalling data channels”
`
`means that “each remote terminal may be assigned to any forward signalling data channel
`
`and reverse signalling data channel.” “Polling a plurality of said plurality of remote terminals
`
`simultaneously” means “soliciting two or more of the plurality of remote terminals
`
`simultaneously.” In “resolving contention . . . by said central controller if there is a pending
`
`request from more than one remote terminal on the same signalling data channel,” the term
`
`“resolving” is not limited to the particular disclosed technique of selective polling and no
`
`further construction of the term is needed other than a construction of contention.
`
`“Contention” means “collision of two or more terminals’ requests.”
`
`Claims 1 and 6
`
`“Remote terminals” means “communication devices at devices at a location remote
`
`from the central controller.” “Signalling data” means “information concerned with the control
`
`of communications.” “Signalling data channels” means “channels used for carrying
`
`signalling data; the channels may also carry user traffic.”
`
`V.
`
`CLAIM CONSTRUCTIONS UNDER 37 C.F.R. § 42.104(b)(3)
`A.
`Legal Overview; Adoption of Prior Constructions
`A claim subject to inter partes review (“IPR”) is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37 C.F.R. §
`
`42.100(b). This means that the words of the claim are given their plain meaning unless that
`
`10
`
`

`

`
`
`meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`
`1989). Means-plus-function claim are construed to cover the corresponding structure that is
`
`described in the specification and equivalents thereof. See Lockheed Martin Corp. v. Space
`
`Systems/Loral, Inc., 324 F.3d 1308 (Fed. Cir. 2003).
`
`The Magistrate in the prior Comcast case construed various terms, including ones
`
`from independent claims 1 and 6. The Magistrate did not consider extrinsic evidence and,
`
`instead, purportedly construed the claims according to their plain meaning consistent with
`
`the specification. In particular, each of the parties to the Markman hearing relied on the ‘883
`
`Patent specification to support its positions for construing the claims. The Magistrate
`
`substantially adopted C-Cation’s position and purportedly construed the claims as broadly
`
`as reasonable in light of the specification.
`
`For the purpose of the IPR, Petitioner acknowledges that the PTO follows a different
`
`claim construction standard than that applied by a court, and that doing so can result in a
`
`broader, but not narrower, construction. However, to expedite the decision making process
`
`of the PTO, Petitioner proposes the constructions set out by the Magistrate in the prior
`
`Comcast case for this inter partes review proceeding only.4 Petitioner believes that this
`
`
`4 Other forums require different standards of proof and claim interpretation that are not
`
`applied by the PTO for inter partes review. Accordingly, any interpretation or construction of
`
`the challenged claims adopted or accepted by Petitioner in this IPR, either implicitly or
`
`11
`
`

`

`
`
`position may reduce the effort of the PTO because the Magistrate’s constructions are
`
`substantially the same as those advocated by C-Cation and are commensurate with the
`
`broadest reasonable interpretations of the claims in view of the specification. Petitioner
`
`proposes below certain additional constructions for claims not at issue in the Comcast case.
`
`For other claim terms, Petitioner submits, for the purposes of the IPR only, that the claim
`
`terms should be given their plain and ordinary meaning.5
`
`B.
`
`Construction of “system controlling means,” “transmitting means,”
`receiving means,” “modulating means,” “demodulating means,”
`“interfacing means,” “switching means”, and “forward communication
`controlling means” as recited in claim 14
`Independent claim 14 is directed to a central controller and recites associated
`
`means-plus-function limitations. The ‘883 Patent specification describes a corresponding
`
`structure shown in FIG. 16. In particular, the ‘883 Patent specification describes a system
`
`controlling means as a microprocessor, an EPROM and a RAM, a transmitting means as a
`
`transmitter 160, a receiving means as a receiver 160, a modulating means as a modulator
`
`163, a demodulating means as a demodulator 164, an interfacing means as a telephone
`
`interface module 167, and a switching means as a switching matrix. (The ‘883 Patent (Ex.
`
`1002), 12:38-40, 12:44-47, 12:55-13:1). Therefore, the foregoing means-plus-function
`
`
`explicitly, is not binding on Petitioner in any future litigation related to the ‘883 Patent. See
`
`In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`5 Id.
`
`12
`
`

`

`
`
`elements of claim 14 should be interpreted as encompassing the above-mentioned
`
`structures (and equivalent structures known at the time of the alleged invention),
`
`respectively. The ‘883 Patent specification further states:
`
`To allocate a forward signalling data channel, the central controller 10
`determines an available VF data modulator 163, a transmitter module
`160, and then commands the switching matrix to make the connection
`between the VF data modulator 163 and the RF transmitter 160. The
`signalling information or sporadic user data will come from the micro-
`processor to the VF modulator 163 via the system bus, and then the
`modulated VF signal is fed to the input of the transmitter module 160
`via the connection through the switching matrix before it is modulated
`to the RF channel.
`(Id., 13:4-13). As such, a broadest reasonable interpretation of forward communication
`controlling means is a micro-processor (and equivalent structures known at the time of the
`alleged invention).
`
`Construction of “dynamic connection” as recited in claim 14
`C.
`The ‘883 Patent specification recites, under the “objects of the invention:”
`
`a dynamic process… to adjust the number of signalling channels to
`meet the requirements of varying traffic demand and the system
`growth. This dynamic signalling channel allocation and terminal
`assignment method also aids in system redundancy for anomalies
`such as interference and component failure.
`(Id., 2:43-52). The ‘883 Patent spec