Case IPR2014-00454
`U.S. Patent No. 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`CISCO SYSTEMS, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`____________________
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`CASE IPR2014-00454
`Patent 5,563,883
`____________________
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`PATENT OWNER C-CATION TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
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`1
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`Case IPR2014-00454
`U.S. Patent No. 5,563,883
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`Table of Contents
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`INTRODUCTION .................................................................................................... 1
`I.
`II. STANDARD FOR GRANTING INTER PARTES REVIEW .................................. 4
`III. OVERVIEW OF U.S. PATENT NO. 5,563,883 ..................................................... 6
`IV. CLAIM CONSTRUCTION ..................................................................................... 9
`V. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW ANY CLAIM
`OF THE ’883 PATENT IS UNPATENTABLE ...................................................... 9
`A. CLAIM 1 ............................................................................................................. 11
`1. The MPT Specifications Fail to Disclose the Subject Matter of Claim 1 ....... 11
`a. The MPT Specifications and the Petition’s related assertions ...................... 13
`b. Mischaracterizations of the MPT Specifications in the Petition ................... 14
`c. The MPT Specifications do not disclose the “monitoring” recited by claim
`1(b) ................................................................................................................ 17
`d. The MPT Specifications do not disclose the “determining” recited by claim
`1(c) ................................................................................................................. 22
`e. The MPT Specifications do not disclose the “determining” recited by claim
`1(d) ................................................................................................................ 23
`f. The MPT Specifications do not disclose the “reassigning” recited by claim
`1(e) ................................................................................................................. 26
`2. Cioffi Fails to Disclose The Subject Matter of Claim 1 .................................. 29
`a. Cioffi and the Petition’s related assertions ................................................... 30
`b. Cioffi does not disclose “establishing communications” via “signalling data
`channels” as recited by claim 1(a) ................................................................ 32
`c. Cioffi does not disclose “determining” as recited by claim 1(c) .................. 34
`3. Claim 1 Is Not Obvious In View of the Combination of the MPT
`Specifications and Cioffi .................................................................................. 35
`B. CLAIMS 2-5 ....................................................................................................... 38
`C. CLAIM 14 ........................................................................................................... 38
`1. Cioffi Fails to Disclose the Subject Matter of Claim 14 .................................. 38
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`U.S. Patent No. 5,563,883
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`a. The structure of Cioffi ................................................................................... 38
`b. Cioffi fails to disclose a “system controlling means” as recited by claim
`14(a) ............................................................................................................... 39
`c. Cioffi fails to disclose a “switching means” as recited by claim 14(g) ........ 40
`d. Cioffi fails to disclose a “forward communication controlling means” as
`recited by claim 14(h) ................................................................................... 44
`2. Thompson Fails to Disclose the Subject Matter of Claim 14 .......................... 46
`a. The structure of Thompson ........................................................................... 46
`b. Thompson fails to disclose a “transmitting means” as recited by claim 14(b)
` 48
`c. Thompson fails to disclose a “receiving means” as recited by claim 14(c) . 50
`d. Thompson fails to disclose a “switching means” as recited by claim 14(g). 52
`e. Thompson fails to disclose a “forward communication controlling means” as
`recited by claim 14(h) ................................................................................... 53
`3. Claim 14 Is Not Obvious In View of the Combination of Cioffi and Thompson
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`55
`D. CLAIMS 15-18 ................................................................................................... 57
`VI. PETITION IS BARRED UNDER 35 U.S.C. § 315 (b) ........................................ 57
`VII. CONCLUSION ..................................................................................................... 60
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`U.S. Patent No. 5,563,883
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`
`Cases
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`Table of Authorities
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`ActiveVideo Networks, Inc. v. Verizon Comm., Inc.,
` 694 F.3d 1312 (Fed. Cir. 2012) ........................................................................ passim
`Apple, Inc. v. Evolutionary Intelligence, LLC,
` IPR2014-00080, Paper 8 (PTAB April 25, 2014) ..................................................... 11
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
` IPR2013-00453, Paper 31 (PTAB. Jan. 22, 2014) .................................................... 60
`August Technology Corp. v. Camtek Ltd.,
` 655 F.3d 1278 (Fed. Cir. 2011) ................................................................................... 4
`Blackberry Corp. v. Mobilemedia Ideas LLC,
` IPR2013-00016, Paper 32 (Feb. 25, 2014) ................................................................ 10
`Bomtech Electronics, Co. Ltd. v. Medium-Tech Medizingeräte Gmbh,
` IPR2014-00137 Paper 8 (PTAB April 22, 2014) ...................................................... 11
`Facebook, Inc. v. Evolutionary Intelligence, LLC,
` IPR2014-00093, Paper 12 (PTAB April 28, 2014) ................................................... 11
`K/S HIMPP v. Hear-Wear Techs., LLC,
` 2013-1549 (Fed. Cir. May 27, 2014) ............................................................ 3, 35, 56
`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398 (2007) .................................................................................................... 5
`Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
` 730 F.2d 1452 (Fed. Cir. 1984) ........................................................................... 14, 50
`Net MoneyIN, Inc. v. VeriSign, Inc.,
` 545 F.3d 1359 (Fed. Cir. 2008) ................................................................................. 15
`PCT Int’l, Inc. v. Amphenol Corp.,
` IPR2013-00229, Paper 17 (Dec. 24, 2013) ............................................................... 10
`Printing Indus. of Am. v. CTP Innovations, LLC,
` IPR2013-00489, Paper 15 (PTAB Dec. 30, 2013) .............................................. 15, 50
`Rohm and Haas Co. v. Brotech Corp.,
` 127 F.3d 1089 (Fed. Cir. 1997) ............................................................... 2, 34, 36, 38
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`SAS Inst., Inc. v. Complementsoft,LLC,
` IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... passim
`Spears v. Holland,
` Interf. No. 104,681, Paper 30 (BPAI Mar. 13, 2002) .................................................. 5
`Synopsys, Inc. v. Mentor Graphics Corp.,
` IPR2012-00041, Paper 21 (PTAB May 2, 2013) ................................................ 15, 50
`Therasense, Inc. v. Becton, Dickinson & Co.,
` 593 F.3d 1325 (Fed. Cir. 2010) ........................................................................... 14, 50
`Vizio, Inc. v. International Trade Com'n,
` 605 F.3d 1330 (Fed. Cir. 2010) ................................................................................... 4
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
` IPR2013-000054, Paper No. 16 (PTAB Jul. 13, 2013) ......................... 2, 34, 36, 38
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`Statutes
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`35 U.S.C. § 314 ...................................................................................................... 2, 4, 5
`35 U.S.C. § 315 ....................................................................................................... 57, 59
`35 U.S.C. § 316 ............................................................................................................... 4
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`Other Authorities
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`77 Fed. Reg. 157. ................................................................................................... passim
`Standing Order ¶ 121.5.2 (BPAI Mar. 8, 2011) ............................................................. 5
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`Regulations
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`37 C.F.R. § 42.100 ....................................................................................... 2, 33, 36, 38
`37 C.F.R. § 42.104 ................................................................................................ passim
`37 C.F.R. § 42.108 ...................................................................................................... 4, 5
`37 C.F.R. § 42.65 .................................................................................................. passim
`37 C.F.R. §§ 42.6 .......................................................................................................... 10
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`Exhibit #
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`C-Cation Tech 2001
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`Exhibit List
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`Exhibit Description
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`Litwin and Pugel, “The principles of OFDM,”
`www.rfdesign.com, January 2001, pp. 30-48 (available as
`of June 4, 2014 at
`rfdesign.com/images/archive/0101Puegel30.pdf)
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`C-Cation Tech 2002
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`Cisco Systems, Inc. Form 10-Q Quarterly Report
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`C-Cation Tech 2003
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`Terms of Sale and Software Agreement (publicly
`available as of June 4, 2014 at
`www.cisco.com/web/about/doing_business/legal/docs/tc-
`us.pdf)
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`I.
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`INTRODUCTION
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`Patent Owner C-Cation Technologies, LLC submits the following
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`preliminary response to the Petition filed by Cisco Systems, Inc. (“Petitioner”)
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`as Paper No. 7 in this proceeding, requesting inter partes review of claims 1-20
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`of U.S. Patent No. 5,563,883 (“Petition”).1 This response is timely pursuant to
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`the Board’s Notice in Paper No. 4.
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`Patent Owner respectfully requests that the Board decline to institute inter
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`partes review because Petitioner has not satisfied 37 C.F.R. § 42.104 insofar as
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`the Petition does not adequately support its allegations that any of claims 1-20
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`are unpatentable under either 35 U.S.C. § 102 or §103. Specifically, the
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`Petition provides almost no explanation or discussion of how the claims read on
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`the prior art. Instead, the Petition relies extensively on the conclusory
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`declaration of Dr. Roy (Petitioner’s Ex. 1001) which provides little, if any,
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`factual basis for his opinions.2 As such, it is entitled to little or no weight. See
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`1
`The initial petition filed by Petitioner in this proceeding as Paper No. 1 was
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`deemed defective by the Board. Petitioner was required to file a corrected petition,
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`and did so as Paper No. 7.
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`2
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`Though it is improper for a petition to incorporate by reference arguments
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`contained solely in an expert declaration (see infra V), Patent Owner provides this
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`37 C.F.R. § 42.65(a); 37 C.F.R. § 42.100(a); 77 Fed. Reg. at 48,763;
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`ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 694 F.3d 1312, 1327 (Fed.
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`Cir. 2012); Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
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`Cir. 1997); SAS Inst., Inc. v. Complementsoft,LLC, IPR2013-00581, Paper 17 at
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`3-4 (PTAB Feb. 25, 2014); Wowza Media Sys., LLC v. Adobe Sys. Inc.,
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`IPR2013-000054, Paper No. 16 at 4 (PTAB Jul. 13, 2013).
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`Due to these deficiencies, the Petition does not present “a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`The Petition’s shortfalls are particularly apparent with respect to claims
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`1-5 and 14-18 as it fails to articulate any plausible explanation as to how these
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`claims are unpatentable over the prior art. For example, none of the prior art
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`cited by Petitioner discloses the use of a central controller to dynamically
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`allocate signalling data channels to meet the requirements of varying traffic
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`demand and growth by assigning and reassigning remote terminals to signalling
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`data channels, as recited in claim 1, or the “means for selecting a forward
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`signalling data channel,” as recited in claim 14.
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`response to both the Petition and any corresponding portion of the Roy Declaration
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`cited in the Petition.
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`Moreover, while the Petition asserts 16 grounds under which one or more
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`claims are allegedly rendered obvious (Grounds 5-20), it provides, at best,
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`conclusory assertions with respect to how the prior art references might be
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`combined that are insufficient to support a claim of obviousness. See K/S
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`HIMPP v. Hear-Wear Techs., LLC, 2013-1549, slip op. at 6-7 (Fed. Cir. May
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`27, 2014); ActiveVideo Networks, 694 F.3d at 1328 (dismissing expert
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`testimony that “failed to explain how specific references could be combined,
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`which combination(s) of elements in specific references would yield a
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`predictable result, or how any specific combination would operate or read on the
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`asserted claims” and further dismissing expert testimony that generically recites
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`a desire for more efficient and cheaper systems that had more features for
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`customers); SAS Inst., IPR2013-00581, Paper 17 at 3-4 (observing that the
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`PTAB “is not required to take every statement by a petitioner’s expert as
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`established fact” and “is required to assess the persuasiveness of the testimony
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`in light of other factual evidence in the record, e.g., the explicit wording of the
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`prior art and the scope of the claimed invention”; and finding the petitioner’s
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`expert testimony unpersuasive).
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`Further, the Petition fails to construe several claim terms as is required by
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`37 C.F.R. § 42.104(b)(3); for example, it provides no proposed functions for the
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`means-plus-function limitations in claim 14 (see Petition at 13-14), and no
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`proposed constructions at all for several means-plus-function limitations recited
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`in claims 15-18.
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`Thus, even if the Board determines that the Petition shows that there is a
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`reasonable likelihood that the petitioner will prevail for at least one claim, the
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`Board should decline to institute review of claims 1-5 and 14-18.
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`II.
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`STANDARD FOR GRANTING INTER PARTES REVIEW
`A petition for inter partes review may be granted when “the information
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`presented in the petition . . . shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). A petitioner bears
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`the burden of showing that this statutory threshold has been met. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (hereinafter
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`“Practice Guide”) (“The Board . . . may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met . . . .”). A
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`petitioner also bears the burden of proving unpatentability by a preponderance of
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`the evidence. 35 U.S.C. § 316(e).
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`A party challenging a claim as obvious must show where each claimed
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`limitation is taught in the prior art. See, e.g., Vizio, Inc. v. International Trade
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`Com'n, 605 F.3d 1330, 1343 (Fed. Cir. 2010); August Technology Corp. v. Camtek
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`Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 42 C.F.R. § 42.104(b)(4). If a
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`petition asserts that a combination of prior art renders a claim unpatentable, it must
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`“set forth sufficient articulated reasoning with rational underpinning to support its
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`proposed obviousness ground.” SAS Inst., IPR2013-00581, Paper 15 at 12 (citing
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo
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`Networks, 694 F.3d at 1328.
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`In determining whether to institute an inter partes review, the Board may
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`“deny some or all grounds for unpatentability for some or all of the challenged
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`claims.” 37 C.F.R. § 42.108(b); see also 35.U.S.C. § 314(a).
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`Petitioner either glosses over entire claim elements or fails to address
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`limitations completely. By doing so, Petitioner puts the onus on the Board to fill in
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`the blanks. However, it is not the job of the Board to correct these inadequacies.
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`See, e.g., Standing Order ¶ 121.5.2 (BPAI Mar. 8, 2011) (stating that “[t]he Board
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`will not take on the role of advocate for a party, trying to make out a case the party
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`has not adequately stated”); see also Spears v. Holland, Interf. No. 104,681, Paper
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`30, p. 15 (BPAI Mar. 13, 2002) (“It is not the role of this board to help party Spears
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`articulate a difference between [claims]. That is the role of Spears’ counsel as an
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`advocate, not the role of the board as an unbiased and impartial decision maker.
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`Taking sides to aid one party to the detriment of the other is not what we do.”).
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`Accordingly, the duty to provide sufficient grounds for the institution of a review
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`proceeding falls squarely on Petitioner, and Petitioner has failed to perform its
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`duty.
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`III. OVERVIEW OF U.S. PATENT NO. 5,563,883
`U.S. Patent No. 5,563,883 (Petitioner’s Ex. 1002, hereinafter “the ’883
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`patent”) issued on October 8, 1996 from an application filed on July 18, 1994. It
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`includes 20 claims, of which claims 1, 6, 14, and 19 are independent. The ’883
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`patent describes and claims a novel way to effectively provide and manage
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`communications between remote devices and a central controller over a shared,
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`i.e., multiple access, communications medium.
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`The ’883 patent recognized that previous multiple access two-way
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`communication schemes were susceptible to degraded quality and responsiveness
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`on non-dedicated communication channels, such as signalling data channels, that
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`are shared by multiple remote terminals. See generally, ’883 patent, col. 1:15-56,
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`7:46-49.
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`From a user’s perspective, a shared communication channel with poor
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`quality results in delayed communications (e.g., long download times over a
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`shared network), lack of responsiveness, or dropped communications altogether.
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`Such undesirable results typically occur when the capacity of a channel is
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`approached or exceeded, or when a remote terminal sends a request to the central
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`controller that is lost or delayed. In discussing the then-existing systems, the
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`’883 patent notes that none had a central controller that reassigned individual
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`remote terminals from a signalling data channel on which a remote terminal was
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`experiencing a degradation in quality to a different and more suitable channel.
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`Id. at col. 1:60- 2:8.
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`To solve these problems, the ’883 patent presents an efficient, flexible and
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`extensible method wherein a central controller allocates signalling data channels
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`to meet the requirements of varying traffic demand, channel quality, and growth.
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`Id. at cols. 2:4-7, 2:38-52 (“This dynamic signalling channel allocation and
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`terminal assignment method also aids in redundancy for anomalies such as
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`interference or component failure.”). Id. at col. 4:1-11; claim 1.
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`The central controller of the ’883 patent monitors the channels in use for
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`parameters that affect the suitability of those channels. These factors include the
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`number of remote terminals on a channel, their traffic requirements, and available
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`bandwidth. Id. at col. 8:35-41.
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`The central controller dynamically allocates individual remote terminals
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`across the available signalling data channels at startup, during failure recovery or
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`as deemed necessary:
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`Prompted by the remote terminals at startup, or through the failure
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`recovery procedure, or deemed necessary by the central controller, the
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`channel allocation and terminal assignment process are initiated and
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`controlled by the central controller.
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`’883 patent, col. 3:36-50. As recited in claim 1, when the central controller finds
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`that a more suitable channel is available for one of the connected remote
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`terminals, the central controller can reassign that remote terminal to the more
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`suitable channel. Id. at cols. 7:32-38, 8:32-39, claim 1 steps (c), (d), and (e).
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`Thus, the ’883 patent discloses and claims a shared access communication
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`system that includes an intelligent controller that: (i) is centrally located, (ii)
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`assigns individual terminals to forward and reverse signalling data channels
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`common to a particular group of terminals; (iii) monitors the signalling data
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`channels for usability; and (iv) reassigns individual remote terminals to a more
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`suitable channel. By doing so, the system manages its remote terminals
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`efficiently. None of the prior art referred to in the ’883 patent, cited in its
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`prosecution history, or now cited in the Petition describes a system having these
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`capabilities.
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`The ʼ883 patent is also directed to system architectures that are suitable for
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`performing these functions. See, e.g., ’883 patent, Figs. 1, 16, claims 14-18. For
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`example, claim 14 provides a system for dynamic, micro-processor based
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`management of connections between modulating means and transmitting means
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`to provide forward signalling data channels to a plurality of remote terminals.
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`The central controller of claim 14 implements a frequency division multiple
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`access (“FDMA”) communications scheme in which each transmitter includes an
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`oscillator for tuning to a particular channel. See, e.g., ’883 patent, col. 12:47-52.
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`A benefit of the controller design described in claim 14 is that the modulating
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`means are a shared resource having modulated forward signalling data output that
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`is directed to particular transmitters as needed. Id. at col. 12:4-12.
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`IV. CLAIM CONSTRUCTION
`The discussion throughout this response with respect to all claim elements is
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`based on the constructions proposed in the Petition. In utilizing these proposals,
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`the Patent Owner does not necessarily agree that such constructions are proper or
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`should be adopted, and reserves the right to present alternate constructions at the
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`appropriate time in this and/or other proceedings.
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`V. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW ANY
`CLAIM OF THE ’883 PATENT IS UNPATENTABLE
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`As discussed above, a petitioner is required to identify how the challenged
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`claims, as construed, are rendered unpatentable by the prior art. The Petition fails
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`to do this for any of the challenged claims.
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`As an initial matter, the Petition’s extensive reliance on the declaration of
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`Dr. Roy is improper and should not be considered. The Board has consistently
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`determined that declarations are not to be used as a tool for circumventing page
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`limits as here. While a petition for inter partes review is limited to 60 pages, the
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`Petition includes a 269-page declaration from Dr. Roy as an exhibit (Ex. 1001), and
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`has referred to the same in the claim charts included in the Petition. See, e.g.,
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`Petition at 21-24. This is precisely the tactic that has been determined to be
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`improper. 37 C.F.R. §§ 42.6(a)(3) and 42.24(a)(i); Blackberry Corp. v.
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`Mobilemedia Ideas LLC, IPR2013-00016, Paper 32 at 21 (Feb. 25, 2014) (rejecting
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`attempt to incorporate expert testimony as incorporation of arguments from one
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`document into another is prohibited by 37 C.F.R. § 42.6(a)(3) . . . [and] also
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`violates the page limit set forth in 37 C.F.R. § 42.24(a)(1)(v).”); PCT Int’l, Inc. v.
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`Amphenol Corp., IPR2013-00229, Paper 17 at 2 (Dec. 24, 2013).
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`Even if the declaration of Dr. Roy is considered, the Petition includes sparse
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`and in many cases no explanation as to the factual basis for why claims 1-20 are
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`unpatentable. For example, with respect to the grounds of obviousness presented
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`in the Petition with respect to claim 1 (Grounds 5, 6, and 9), neither the Petition nor
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`the Roy Declaration provide:
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`• any explanation as to which claim elements would have been obvious;
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`• any specific allegations as to which portions of the prior art
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`references could be combined; or
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`• any factual basis for combining them.
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`See Petition at 17-24 (citing Roy Dec. ¶¶ 67, 271-273). The Petition is similarly
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`lacking as to the grounds of obviousness presented with respect to claim 14
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`(Grounds 6, 7, and 20). See Petition at 47-54 (citing Roy Dec. ¶¶ 199, 203, 412-
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`413). As such, the Petition cannot meet the burden of showing that there is a
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`reasonable likelihood that Petitioner will prevail as to any claim of the ’883 patent.
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`Bomtech Electronics, Co. Ltd. v. Medium-Tech Medizingeräte Gmbh, IPR2014-
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`00137 Paper 8 at 10-13, 17 (PTAB April 22, 2014); Facebook, Inc. v. Evolutionary
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`Intelligence, LLC, IPR2014-00093, Paper 12 at 14-15, 18-19 (PTAB April 28,
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`2014); Apple, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00080, Paper 8 at
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`25-26, 28-29 (PTAB April 25, 2014). The Petition should be denied for at least
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`this reason.
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`In addition, as explained in further detail below, even if the Petition is
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`accepted, the Board should decline to institute review for claims 1-5 and 14-18 for
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`the independent reason that the prior art presented in the Petition clearly does not
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`disclose several key elements of independent claims 1 and 14, nor are those claims
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`rendered obvious by the cited prior art.
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`A. CLAIM 1
`The MPT Specifications Fail to Disclose the Subject Matter
`1.
`of Claim 1
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`Grounds 1 and 5 of the Petition assert that claim 1 is anticipated or rendered
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`obvious, respectively, by the pair of references “MPT 1327 – A Signalling
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`Standard for Trunked Private Land Mobile Radio Systems,” (Petitioner’s Ex. 1005,
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`hereinafter “MPT 1327”) and “MPT 1343 – Performance Specification,”
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`(Petitioner’s Ex. 1006, hereinafter “MPT 1343”) when taken together (collectively,
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`the “MPT Specifications”).3 As described in detail below, the Petition fails to
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`establish a reasonable likelihood that claim 1 of the ’883 patent is unpatentable in
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`view of the MPT Specifications because the Petition’s assertions are based on a
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`combination of unrelated steps and features found throughout various parts of these
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`references. In an effort to make it appear that the MPT Specifications disclose
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`claim 1, the Petition uses the MPT Specifications like a catalog from which it picks
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`and chooses from among separate and distinct procedures in an effort to construct
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`the challenged claims. But this is improper and does not mask the fundamental
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`differences between the MPT Specifications and the method recited in claim 1 of
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`the ’883 patent.
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`With respect to Ground 5 (obviousness), the Petition provides no
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`particularized allegation that any specific element of claim 1 would have been
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`obvious in view of the MPT Specifications, let alone any factual basis for the same.
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`In any case, neither Ground 1 nor Ground 5 should be instituted with respect to
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`claim 1 because the MPT Specifications fail to disclose several elements recited in
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`claim 1, and the missing elements would not have been obvious in view of them.
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`3 While the Petition treats them as one combined document, MPT 1327 and
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`MPT 1343 are separate specifications spanning over 500 pages between them.
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`a.
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`
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`The MPT Specifications and the Petition’s related
`assertions
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`The MPT Specifications relate to a standard developed by the British
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`Ministry of Post and Telecommunications for communications between a “trunking
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`system controller” (TSC) and users’ radio units. MPT 1327 § 1.
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`In accordance with the MPT Specifications, when switched on, a mobile
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`radio unit must establish communications with the TSC over designated control
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`channels (e.g., MPT 1327 §§ 6.2.1.1; 6.2.1.2; see also § 2 at page 2-1 (providing
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`definition of “control channel”)). When a user wants to initiate a speech or data
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`call, the mobile directs the TSC to transfer the call participants to a “traffic
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`channel” for the duration of the call. See MPT 1327 §§ 1.2.3, 1.3.5.1, 1.3.5.2,
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`9.1.1.12. Thus, unlike the centrally controlled system of the ’883 patent, the MPT
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`Specifications envision a system where the mobile units request a channel change.
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`In addition to these basic operations, the 507-page MPT Specifications
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`describe numerous independent and complex functions, many of which take place
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`only in certain very specific circumstances. In asserting that claim 1 is
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`unpatentable in view of the MPT Specifications, the Petition relies on isolated steps
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`and parts from the following unrelated sections of the MPT Specifications:
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`• Control channel acquisition (see, e.g., MPT 1327 § 6.2.1.1);
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`• Management of data calls using data channels (see, e.g., MPT 1327 §§
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`5.7.3, 17.0.1(q));
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`• Converting control channels into traffic channels (see, e.g., MPT 1327 §
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`1.2.2; MPT 1327 § 6.1.1; MPT 1343 § 3.1);
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`• Frame length adaptation (see, e.g., MPT 1327 § 1.3.3.2);
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`• Traffic channel discipline (see, e.g., MPT 1327 §6.1.2.1); and
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`• System robustness (see, e.g., MPT 1327 § 1.2.2).
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`See Petition at 18-19, 21-24. Each of these self-contained functions includes its
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`own procedural steps, and the Petition provides no justification for cherry picking
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`and combining these steps.
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`b. Mischaracterizations of the MPT Specifications in the
`Petition
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`It is black letter law a reference disclosing each element of a claim is not
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`anticipatory unless the way in which the elements are arranged or combined in the
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`claim is also disclosed. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d
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`1325, 1331-33 (Fed. Cir. 2010) (it is legal error to instruct a jury that a reference is
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`anticipatory when it merely informs “those skilled in the art that all of the claimed
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`elements could have been arranged as in the claimed invention”) (emphasis in
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`original). “The requirement that the prior art elements themselves be ‘arranged as
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`in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate
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`parts, in disregard of the part-to-part relationships set forth in the claims and that
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`give the claims their meaning.’” Id. (quoting Lindemann Maschinenfabrik GMBH
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`v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). “[U]nless a
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`reference discloses within the four corners of the document not only all of the
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`limitations claimed but also all of the limitations arranged or combined in the same
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`way as recited in the claim, it cannot be said to prove prior invention of the thing
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`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Id. (citing Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis in
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`original)). See also Printing Indus. of Am. v. CTP Innovations, LLC, IPR2013-
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`00489, Paper 15 at 13-15 (PTAB Dec. 30, 2013) (finding that twenty-four cherry-
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`picked pages spanning six chapters of a prior art reference were not reasonably
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`likely to anticipate a challenged claim); Synopsys, Inc. v. Mentor Graphics Corp.,
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`IPR2012-00041, Paper 21 at 4-5 (PTAB May 2, 2013)