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. IPR2014-00454
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Exhibits ...................................................................................................................... v
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) .............................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Party-In-Interest ............................................................................ 1
`
`Related Matters ...................................................................................... 1
`
`Lead and Back-Up Counsel ................................................................... 1
`
`Service Information ............................................................................... 2
`
`Power of Attorney ................................................................................. 2
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW: 37 C.F.R.
`§ 42.104 ........................................................................................................... 2
`
`A. Grounds For Standing ........................................................................... 2
`
`B.
`
`Identification of Challenged Claims and Relief
`Requested .............................................................................................. 2
`
`IV. SUMMARY OF THE ‘883 PATENT ............................................................. 4
`
`A.
`
`B.
`
`C.
`
`Brief Description ................................................................................... 4
`
`Summary of the Prosecution History of the ‘883 Patent ...................... 7
`
`Prior Markman Order Regarding Certain Claims of ‘883
`Patent ..................................................................................................... 9
`
`V.
`
`CLAIM CONSTRUCTIONS UNDER 37 C.F.R. § 42.104(b)(3) ................ 11
`
`A.
`
`B.
`
`Legal Overview; Adoption of Prior Constructions ............................. 11
`
`Construction of means-plus-function terms recited in
`claim 14 ............................................................................................... 13
`
`i
`
`

`

`
`
`
`C.
`
`D.
`
`E.
`
`Construction of “dynamic connection” as recited in claim
`14 ......................................................................................................... 14
`
`Construction of “system controlling means” as recited in
`claim 19 ............................................................................................... 14
`
`Construction of means-plus-function terms recited in
`claim 19 ............................................................................................... 15
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16
`
`VII. 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 ............................................................. 17
`
`i.
`
`ii.
`
`MPT Specification .................................................................... 18
`
`Cioffi ......................................................................................... 19
`
`iii. Claim Chart for Claim 1 ........................................................... 21
`
`Claim 2 is anticipated by MPT Spec., is obvious in view
`of MPT Spec., or is obvious in view of MPT Spec. and a
`combination of one or more of Cioffi, Thompson, and
`Tobagi .................................................................................................. 24
`
`Claim 3 is anticipated by MPT Spec., is obvious in view
`of MPT Spec., or is obvious in view of MPT Spec. and a
`combination of one or more of Thompson, McNamara,
`and Hester ............................................................................................ 27
`
`Claim 4 is anticipated by MPT Spec., is obvious in view
`of MPT Spec., or is obvious in view of MPT Spec. and a
`combination of one or more of Thompson and Sirazi ........................ 29
`
`B.
`
`C.
`
`D.
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`
`
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Claim 5 is obvious in view of MPT Spec. and a
`combination of one or more of Thompson, Hester, and
`Goodings ............................................................................................. 31
`
`Claim 6 is anticipated by each of Hayes, Cioffi and MPT
`Spec., or is obvious in view of a combination of one or
`more of Hayes, MPT Spec., and Cioffi ............................................... 32
`
`i.
`
`Hayes ......................................................................................... 33
`
`ii. MPT Spec. ................................................................................. 33
`
`iii. Cioffi ......................................................................................... 34
`
`iv. Claim Chart for Claim 6 ........................................................... 34
`
`Claim 7 is anticipated by each of Hayes, MPT Spec., and
`Cioffi, or is obvious in view of a combination of one or
`more of Hayes, MPT Spec., and Cioffi ............................................... 37
`
`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 Spec. ............................................ 39
`
`Claim 9 is obvious in view of Cioffi & Akashi, or
`obvious in view of Cioffi & Akashi and comb. of Hayes
`and/or MPT Spec. ................................................................................ 41
`
`Claims 10 and 11 are anticipated by each of MPT Spec.
`and Cioffi, obvious in view of each of MPT Spec. and
`Cioffi, obvious in view of MPT Spec. and Hayes,
`obvious in view of Cioffi and Hayes, or obvious in view
`of MPT Spec., Cioffi, and Hayes ........................................................ 42
`
`i.
`
`ii.
`
`Claim 10 .................................................................................... 42
`
`Claim 11 .................................................................................... 43
`
`K.
`
`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 Spec. and Cioffi ....................... 45
`
`iii
`
`

`

`
`
`
`i.
`
`ii.
`
`Claim 12 .................................................................................... 45
`
`Claim 13 .................................................................................... 46
`
`L.
`
`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.
`
`ii.
`
`Claims 14-18 ............................................................................. 49
`
`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
`
`
`1 As used herein, “MPT Specification” or “MPT Spec.” 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,
`
`
`
`
`
`v
`
`

`

`
`
`
`Exhibit 1006: “MPT 1343 – Performance Specification,” January 1988,
`
`revised and 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
`
`
`Petitioner submits that MPT 1327 and MPT 1343 constitute one prior art reference.
`
`See also Roy Dec. at ¶ 11.
`
`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
`
`

`

`
`
`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 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 this petition.
`
`B. Related Matters
`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
`
`BACK-UP 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
`
`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 this 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).
`
`Power of Attorney
`
`E.
`A power of attorney is filed herewith according to 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: 37 C.F.R. § 42.104
`A. Grounds For Standing
`Petitioner certifies that the ‘883 Patent is available for inter partes review
`
`and that Petitioner is not barred or otherwise estopped from requesting inter partes
`
`review challenging the identified claims on the grounds identified herein petition.
`
`B.
`Identification of Challenged Claims and Relief Requested
`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
`
`2
`
`

`

`
`
`prior art references, is provided in the form of detailed 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 & 10-11 are anticipated under § 102(b) by MPT Spec.
`
`Ground 2: Claims 1, 6-8, 10-11 & 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 Spec.
`
`Ground 6: Claims 1, 6-8, 10-11 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 Spec. in view of Cioffi.
`
`Ground 10: Claims 6-7 are obvious under § 103(a) by Hayes and/or MPT Spec.
`
`Ground 11: Claim 2 is obvious under § 103(a) by MPT Spec. in view of one or
`
`more of Cioffi, Thompson, and Tobagi.
`
`Ground 12: Claim 3 is obvious under § 103(a) by MPT Spec. in view of one or
`
`more of Thompson, McNamara, and Hester.
`
`Ground 13: Claim 4 is obvious under § 103(a) by MPT Spec. in view of one or
`
`more of Thompson and Sirazi.
`
`Ground 14: Claim 5 is obvious under § 103(a) by MPT Spec. in view of one or
`
`3
`
`

`

`
`
`more of Thompson, Hester, and Goodings.
`
`Ground 15: Claim 8 is obvious under §103(a) by Cioffi in view of Hayes and/or
`
`MPT Spec.
`
`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 Spec.
`
`Ground 18: Claims 10-11 are obvious under § 103(a) by MPT Spec. in view of
`
`Hayes and/or Cioffi.
`
`Ground 19: Claims 12-13 are obvious under § 103(a) by Hayes in view of MPT
`
`Spec. and/or Cioffi.
`
`Ground 20: Claims 14-20 are obvious under § 103(a) by Thompson and Cioffi.
`
`Each reference 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
`
`is prior art under § 102(b). Each of the applications for Cioffi, Thompson and
`
`Hester was filed prior to July 18, 1994 and is thus prior art under § 102(e).
`
`IV. SUMMARY OF THE ‘883 PATENT
`A. Brief Description
`The ‘883 Patent relates to methods and apparatuses for facilitating access to
`
`4
`
`

`

`
`
`shared communication channels in a multi-access communication system. (The
`
`‘883 Patent (Ex. 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
`
`5
`
`

`

`
`
`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 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
`
`6
`
`

`

`
`
`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 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), App., 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.
`
`7
`
`

`

`
`
`
`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 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).
`
`8
`
`

`

`
`
`
`Prior Markman Order Regarding Certain Claims of ‘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 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
`
`9
`
`

`

`
`
`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 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
`
`10
`
`

`

`
`
`two or more terminals’ requests.”
`
`Claims 1 and 6: “Remote terminals” means “communication 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). Thus the words of the claim are given their plain
`
`meaning unless inconsistent with the specification. In re Zletz, 893 F.2d 319, 321
`
`(Fed. Cir. 1989). Means-plus-function claims are construed to cover corresponding
`
`structure 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 spec. to support its positions for
`
`11
`
`

`

`
`
`construing the claims. The Magistrate substantially adopted C-Cation’s position
`
`and purportedly construed the claims as broadly as reasonable in light of the spec.
`
`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 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
`
`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 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
`
`

`

`
`
`
`B. Construction of means-plus-function terms 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 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.
`
`13
`
`

`

`
`
`(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).
`
`C. Construction of “dynamic connection” as recited in claim 14
`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 specification also explains that the “mapping of
`
`forward and reverse signalling data channels is under the control of the central
`
`controller dynamically” and that “[a]t any time, the central controller can initiate
`
`the terminal re-assignment process if deemed appropriate for the varying traffic
`
`demand or other system dynamics.” (Id., 7:6-8 and 8:32-34). As such, a broadest
`
`reasonable interpretation of a dynamic connection is a connection that can be
`
`changed at any time.
`
`D. Construction of “system controlling means” as recited in claim 19
`Independent claim 19 recites in the preamble “[i]n a multiple access
`
`communication system having a central controller, a plurality of communication
`
`channels, and a plurality of remote terminals” and proceeds to recite that “each of
`
`said plurality of remote terminals comprising:… (f) system controlling means for
`
`14
`
`

`

`
`
`controlling the communication system comprising a micro-processor and
`
`associated EPROM and RAM.” Limitation (f) was introduced as an amendment in
`
`response to the first office action. (‘883 file history (Ex. 1003), 10/01/1995
`
`Response, p. 9). However, there is no support in the ‘883 Patent specificati