UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARRIS GROUP, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`Case: IPR2014-00746
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,563,883
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
`
`

`

`
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................. vi
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8 ............................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................ 1
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`
`III.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104 ........................................ 3
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested .................................................................................... 3
`
`C.
`
`Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3) ........ 5
`
`1.
`
`2.
`
`Terms Construed In Prior Litigation ........................................... 6
`
`Construction of Claim 14 ............................................................ 7
`
`V.
`
`Summary AND TECHNICAL BACKGROUND of the ’883 Patent ........... 11
`
`B.
`
`C.
`
`Background: 1970’s to the Early 1990’s ............................................. 11
`
`The Alleged Invention of the ’883 Patent ........................................... 15
`
`VI.
`
`level of ordinary skill in the art ..................................................................... 17
`
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(b) ................... 18
`
`A.
`
`Summary of the Unpatentability Arguments Over the McNamara
`Patent and Other Prior Art References: Claims 1 and 3-4 .................. 18
`
`ii
`
`

`

`
`
`B.
`
`Ground 1: Claims 1 and 4 are Invalid Under 35 U.S.C. § 103(a)
`over McNamara in view of Rocci and the MetroNet Paper ................ 18
`
`1.
`
`Claim 1 ...................................................................................... 19
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`Preamble: “In a multiple access communication
`system comprising a central controller, a shared
`transmission means for signalling data and user
`information, and a plurality of remote terminals, a
`method of allocating signalling data channels
`between said central controller and said plurality of
`remote terminals from a plurality of communication
`channels and of assigning remote terminals . . . .” ......... 19
`
`Limitation [A]: “establishing communications
`between said central controller and said plurality of
`remote terminals via a plurality of signalling data
`channels, each of said remote terminals being
`initially assigned to a pair of predetermined
`signalling data channels” ................................................ 22
`
`Limitation [B]: “monitoring the status of a plurality
`of signalling data channels in use between said
`central controller and said plurality of remote
`terminals for the usability of said signalling data
`channels” ......................................................................... 24
`
`Limitation [C]: “determining whether one of said
`plurality of remote terminals needs to be reassigned
`to a different signalling data channel other than said
`predetermined signalling data channel” ......................... 29
`
`Limitation [D]: “determining whether a different
`and suitable signalling data channel is available
`other than said predetermined channel.” ........................ 30
`
`Limitation [E]: “reassigning by said central
`controller said remote terminal to a different and
`suitable signalling data channel for communication
`henceforward.” ................................................................ 33
`
`2.
`
`Claim 4 ...................................................................................... 35
`
`iii
`
`

`

`
`
`a.
`
`b.
`
`c.
`
`Preamble: “In a multiple access communication
`system according to claim 1, said step of
`determining whether one of said plurality of remote
`terminals needs to be reassigned to a different
`signalling data channel other than said
`predetermined signalling data channel” ......................... 35
`
`Limitation [A]: “sensing the status of said
`predetermined signalling data channel which said
`terminal has been assigned to for overloading to
`determine whether said terminal needs to be
`reassigned to a different signalling data channel
`because of overloading” ................................................. 36
`
`Limitation [B]: “sensing the status of said
`predetermined signalling data channel which said
`terminal has been assigned to for failure to
`determine whether said terminal needs to be
`reassigned to a different signalling data channel” .......... 37
`
`C.
`
`Ground 2: Claim 3 is Invalid Under 35 U.S.C. § 103(a) Over
`McNamara, Rocci, and the MetroNet Paper as Applied To Claim
`1, and Further in view of Zudnek, Dufresne, and Nagasawa .............. 39
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Preamble: “In a multiple access communication system
`according to claim 1, said step of monitoring the status of a
`plurality of the signaling data channels in use between said
`central controller and said plurality of remote terminals for
`usability of said signaling data channels” ................................. 40
`
`Limitation [A]: “calculating the aggregate traffic load
`requirements of said plurality of signalling data channels
`in use”........................................................................................ 40
`
`Limitation [B]: “monitoring the past collision count of said
`plurality of signalling data channels in use” ............................. 42
`
`Limitation [C]: “Monitoring the transmission error count
`of said plurality of signalling data channels in use” ................. 45
`
`Limitation [D]: “sensing the status of said plurality of
`signalling data channels in use for failure” ............................... 47
`
`iv
`
`

`

`
`
`8.
`
`It would have Been Obvious to Modify McNamara to
`Provide for the “Monitoring” of the Claimed Parameters
`and “Sensing” For Failures ....................................................... 47
`
`D. Ground 3: Claim 14 is Invalid Under 35 U.S.C. § 103(a) Over
`Thompson in view of the Motorola 68360 Spec Sheet and Fultz ....... 48
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Preamble: “In a multiple access communication system
`having a plurality of communication channels for
`communicating with a plurality of remote terminals, a
`central controller” ..................................................................... 49
`
`Limitation [A]: “system controlling means for controlling
`the communication system comprising a micro-processor
`and associated EPROM and RAM” .......................................... 50
`
`Limitation [B]: “transmitting means for transmitting user
`traffic or signalling data on said communication channels” ..... 52
`
`Limitation [C]: “receiving means for receiving user traffic
`or signalling data on said communication channels” ............... 52
`
`Limitation [D]: “modulating means for modulating
`signalling data” ......................................................................... 53
`
`Limitation [E]: “demodulating means for demodulating
`signalling data” ......................................................................... 55
`
`Limitation [F]: “interfacing means for interfacing to a wide
`area network” ............................................................................ 56
`
`Limitation [G]: “switching means for making dynamic
`connections to switch signals among said transmitting
`means, said receiving means, said modulating means, said
`demodulating means, and said interfacing means” ................... 56
`
`Limitation [H]: “forward communication controlling
`means for selecting a forward signalling data channel via a
`dynamic connection between said transmitting means and
`said modulating means” ............................................................ 57
`
`VIII. CONCLUSION .............................................................................................. 59
`
`v
`
`

`

`
`
`
`PETITIONER’S EXHIBIT LIST
`
`ARRIS EX. NO.
`
`BRIEF DESCRIPTION
`
`1001
`
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`1014
`
`U.S. Patent No. 5,563,883 to Cheng
`
`Declaration of Stuart Lipoff
`Curriculum Vitae of Stuart Lipoff
`Claim Construction Memorandum and Order from C-
`Cation Techs., LLC v. Comcast Corp., et. al., 2:11-CV-
`30-JRG-RSP, Dkt. 222 (Jul. 3, 2013)
`Newton’s Telecom Dictionary: The Official Dictionary
`of Computer Telephony, Telecommunications,
`Networking, Data Communications, Voice Processing
`and the Internet (1994)
`William Stallings, Local and Metropolitan Area
`Networks (4th Ed. MacMillan Publishing Co. (1993))
`U.S. Patent No. 4,533,948 to McNamara et al.
`R.P. McNamara, et al., “MetroNet: An Overview of a
`CATV Regional Data Network,” NCTA 31st Annual
`Convention & Exposition, pp. 22-31 (May 3-5, 1982).
`NEWTON’S TELECOM DICTIONARY (8th ed. 1994)
`(excerpts)
`Interactive Television: Prospects for Two-Way Services
`on Cable, RAND Report No. R-888-MF (Nov. 1971)
`Gordon E. Moore, Cramming more components onto
`integrated circuits, ELECTRONICS, Vol. 38, No. 8 (Apr.
`19, 1965).
`John Graham, The Facts on File: Dictionary of
`Telecommunications (1983) (excerpts)
`U.S. Patent No. 4,870,408 to Zudnek
`U.S. Patent No. 4,920,533 to Dufresne et al.
`
`vi
`
`

`

`
`
`
`
`ARRIS EX. NO.
`1015
`1016
`1017
`1018
`
`1019
`1020
`
`1021
`
`1022
`
`1023
`
`BRIEF DESCRIPTION
`U.S. Patent No. 4,584,684 to Nagasawa et al.
`U.S. Patent No. 4,494,111 to Rocci et al.
`U.S. Patent No. 5,594,726 to Thompson, et al.
`David Charles Feldmeier, A CATV-Based High-Speed
`Packet-Switching Network Design, MIT Thesis (Apr.
`1986)
`U.S. Patent No. 5,255,086 to McMullan, Jr. et al.
`James Harry Green, The Irwin Handbook of
`Telecommunications, 4th Ed. (2000)
`Motorola Semiconductor Product Information for
`MC68360 (1993)
`K.E. Fultz and D.B. Penick, The T1 Carrier System, Bell
`Systems T.J. at 1405-51 (Sept. 1965).
`EP 0 214 718 to Alliant Computer Systems (Mar. 18,
`1987).
`
`
`
`vii
`
`

`

`
`
`I.
`
`INTRODUCTION
`ARRIS GROUP, Inc. petitions for Inter Partes Review (“IPR”) under 35
`
`U.S.C. §§ 311-319 and 37 C.F.R., Part 42 of claims 1, 3-4 and 14 of U.S. Patent
`
`No. 5,563,883 (“the ’883 Patent”) and shows herein that there is a reasonable
`
`likelihood that it will prevail by proving those claims are invalid.
`
`By July 18, 1994—the filing date of the ’883 Patent—the use of community
`
`access television (“CATV”) for two-way data transmission had been studied for
`
`decades. See, e.g., Decl. of Stuart Lipoff (Ex. 1002) at ¶¶ 61-67; Ex. 1006 at 90;
`
`Ex. 1010 at v, 4, 34-36, 71, 74-76. As demonstrated herein, claims 1, 3, 4, and 14
`
`combine old technologies in obvious ways to get only expected results. Therefore,
`
`inter partes review of claims 1, 3, 4, and 14 should be instituted and those claims
`
`should be canceled.
`
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`ARRIS GROUP, Inc. is the real party-in-interest for the instant petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’883 Patent is asserted in actions styled: C-Cation Techs., LLC v. Time
`
`Warner Cable Inc., et al., No. 2:14-cv-00059 pending in the United States District
`
`Court for the Eastern District of Texas. Moreover, the ’883 Patent is the subject of
`
`a petition for inter partes review filed by Cisco Systems Inc. (IPR2014-00454).
`
`
`
`
`
`

`

`
`
`The ’883 Patent was asserted in the following actions: C-Cation Techs., LLC
`
`v. Cable One, Inc., No. 2:11-cv-00030 (E.D. Tex.) (filed Jan. 25, 2011; terminated
`
`Jan. 21, 2014); Comcast Cable Communications, LLC v. C-Cation, Inc., No. 1:11-
`
`cv-01922 (S.D.N.Y.) (filed Mar. 18, 2011; terminated Jan. 21, 2014).
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Lead Counsel
`Back-Up Counsel
`
`Andrew R. Sommer (Reg. #53,932)
`
`Jonathan E. Retsky (Reg. #34,415)
`
`asommer@winston.com
`
`jretsky@winston.com
`
`WINSTON & STRAWN LLP
`
`WINSTON & STRAWN LLP
`
`1700 K Street NW
`
`35 West Wacker Drive
`
`Washington, D.C. 20006-3817
`
`Chicago, IL 60601
`
`T: (202) 282-5000; F: (202) 282-5100
`
`T: (312) 558-3791; F: (312) 558-5700
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Service via hand-delivery may be made at the postal mailing address of
`
`either lead or back-up counsel. Petitioner consents to service by e-mail.
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`The required fee is being paid through the Patent Review Processing
`
`System. No excess claim fees are required. The Office is authorized to charge any
`
`fee deficiency, or credit any overpayment, to Deposit Acct. No. 01-2125.
`
`
`
`2
`
`

`

`
`
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’883 Patent is available for IPR. Petitioner does
`
`not own the ’883 Patent. Before this Petition was filed, neither Petitioner nor any
`
`real party-in-interest filed a civil action challenging the validity of a claim in the
`
`’883 Patent. This Petition has been filed less than one year after the date on which
`
`Petitioner, a real party-in-interest, or a privy of the Petitioner was served with a
`
`complaint alleging infringement of the ’883 Patent. Neither Petitioner, any real
`
`parties-in-interest, nor any privies of Petitioner are estopped from challenging the
`
`claims on the grounds identified in this Petition.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests cancellation of claims 1, 3, 4, and 14 of the ’883 Patent in
`
`view of the following prior art references: (1) U.S. Patent No. 4,553,948 to
`
`McNamara et al. (Ex. 1007) (“McNamara”); (2) U.S. Patent No. 4,491,111 to
`
`Rocci et al. (Ex. 1016) (“Rocci”); (3) R.P. McNamara, et al., “MetroNet: An
`
`Overview of a CATV Regional Data Network,” NCTA 31st Ann. Convention and
`
`Expo., pp. 22-31 (May 3-5, 1982) (Ex. 1008) (“the MetroNet Paper”); (4) U.S.
`
`Patent No. 4,870,408 to Zudnek (Ex. 1013) (“Zudnek”); (5) U.S. Patent No.
`
`4,920,533 to Dufresne et al. (Ex. 1014) (“Dufresne”); (6) U.S. Patent No.
`
`4,584,684 to Nagasawa et al. (Ex. 1015) (“Nagasawa”); (7) U.S. Patent No.
`
`
`
`3
`
`

`

`
`
`5,594,726 to Thompson et al. (Ex. 1017) (“Thompson”); (8) K.E. Fultz, et al, “The
`
`T1 Carrier System” (Ex. 1022) (“Fultz”); (9) the Motorola Semiconductor Product
`
`Information for MC68360 (1993) (Ex. 1021) (“the MC68360 Spec Sheet”).
`
`Each of these prior art references constitutes prior art under 35 U.S.C. § 102
`
`(pre-AIA). Specifically, McNamara was filed in the United States on April 30,
`
`1982 and issued on August 6, 1985, Ex. 1007, and is therefore prior art under §
`
`102(a), (b), and (e). Rocci was filed in the United States on December 7, 1981 and
`
`issued on January 15, 1985, Ex. 1016, and is therefore is prior art under § 102(a),
`
`(b), and (e). The MetroNet Paper bears a publication date of May 3-5, 1982, Ex.
`
`1008, and is therefore prior art under § 102(a), (b). Zudnek was filed in the United
`
`States on April 30, 1987 and issued on September 26, 1989, Ex. 1013, and is
`
`therefore prior art under § 102(a), (b), and (e). Dufresne was filed in the United
`
`States on October 26, 1988 and issued on April 24, 1990, Ex. 1014, and is
`
`therefore prior art under § 102(a), (b), and (e). Nagasawa was filed in the United
`
`States on November 22, 1983 and issued on April 22, 1986, Ex. 1015, and is
`
`therefore prior art under § 102(a), (b), and (e). Thompson was filed in the United
`
`States on March 30, 1994, Ex. 1017, and is therefore prior art under § 102(e).
`
`Fultz was published in September 1965 and is prior art under 35 U.S.C. § 102(b).
`
`The MC68360 Spec Sheet has a publication date of 1993 and is prior art under at
`
`least 35 U.S.C. § 102(a).
`
`
`
`4
`
`

`

`
`
`Based on these references, and as explained in detail below, Petitioner
`
`presents the following grounds for trial:
`
`• Ground 1: Claims 1 and 4 are invalid under 35 U.S.C. § 103(a) over the
`
`McNamara Patent in view of the Rocci Patent and the MetroNet Paper.
`
`• Ground 2: Claim 3 is invalid under 35 U.S.C. § 103(a) over the
`
`McNamara Patent, the Rocci Patent, and the MetroNet Paper and further
`
`in view of the Zudnek Patent, the Dufresne Patent, and the Nagasawa
`
`Patent.
`
`• Ground 3: Claim 14 is invalid under 35 U.S.C. § 103(a) over the
`
`Thompson Patent in view of the Motorola MC 68360 Specification Sheet
`
`and Fultz.
`
`C. Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3)
`The claims of an unexpired patent are given their broadest reasonable
`
`interpretation in light of the specification. 37 C.F.R. § 42.100(b). Because the ’883
`
`Patent will likely expire before institution of trial on this petition, and almost
`
`certainly before conclusion of a trial, it bears noting that the claims of an expired
`
`patent are construed according to the methodology set forth in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`
`
`5
`
`

`

`
`
`Terms Construed In Prior Litigation
`
`1.
`In an earlier litigation, Magistrate Judge Payne construed the claims of the
`
`’883 Patent. See Ex. 1004. Although that order was not adopted by the district
`
`judge before that action was dismissed, Petitioner submits that Magistrate Judge
`
`Payne interpreted the claims applying Phillips, as the Board must once the ’883
`
`Patent expires. Thus, for the sake of simplicity, Petitioner requests that the Board
`
`apply the following constructions to certain terms of claims 1, 3, and 4:
`
`The term “signalling data,” present in claims 1, 3, 4, and 14 means
`
`“information concerned with the control of communications,” Ex. 1004 at 6-8,
`
`which the Court found supported by Exhibit 1001 at 7:43-44; FIG. 9.
`
`The term “signalling data channels,” present in claims 1, 3, 4, and 14 means
`
`“channels used for carrying signalling data; the channels may also carry user
`
`traffic,” Ex. 1004 at 9-12, which the Court found supported by Exhibit 1001 at
`
`1:32-35; 1:60-64; 2:5-8; 2:36-41.
`
`The term “remote terminals,” present in claims 1 and the preamble of claim
`
`14 means “communication devices at a location remote from a central controller,”
`
`Ex. 1004 at 17-19, which the Court found supported by Exhibit 1001 at 1:15-17,
`
`1:47-52, 3:14-16; 5:8-11; 5:24-26.
`
`The term “pair of predetermined signalling channels,” present in claim 1,
`
`means “a forward signalling data channel and a reverse signalling data channel
`
`
`
`6
`
`

`

`
`
`determined prior to establishing communications,” Ex. 1004 at 19-24, which the
`
`Court found supported by Exhibit 1001 at FIGs. 3b, 3c; 6:45-51; 7:6-31; 8:44-50;
`
`8:61-9:2; 14:1-3.
`
`The
`
`terms “said predetermined signalling data channel” and “said
`
`predetermined channel,” present in claims 1 and 4, both mean “one of the pair of
`
`predetermined signalling data channels,” Ex. 1004 at 41-44, which the Court found
`
`supported by Exhibit 1001 at 8:44-50.
`
` The term “monitoring the status of a plurality of signalling data channels
`
`in use . . . for the usability of said signalling data channels” means “monitoring at
`
`last two of the signalling data channels being used for one or more conditions that
`
`affect the usability of the signalling data channels,” Ex. 1004 at 25-28, which the
`
`Court found supported by Exhibit 1001 at 6:54-57; 8:32-41; claim 3.
`
` Construction of Claim 14
`
`2.
`In accordance with 37 C.F.R. § 42.104(b)(3) Petitioner provides the
`
`following constructions of the means-plus-function terms as recited in claim 14.
`
`“transmitting means for transmitting user traffic or signalling data on said
`
`communication channels” and “receiving means for receiving user traffic or
`
`signalling data on said communication channels” Petitioner submits that the
`
`claimed “transmitting means” and “receiving means” lack a corresponding
`
`structure since the claimed means must transmit and receive data on “said
`
`
`
`7
`
`

`

`
`
`communication channels.” See Ex. 1001 at 17:11-15 “Said communication
`
`channels” refers to “plurality of communication channels for communicating with
`
`a plurality of remote terminals, a central controller,” referenced in the preamble of
`
`claim 14.
`
` Since the ’883 Patent only describes a “split-band” CATV
`
`communication system where one group of channels is used for downstream
`
`communication and another group of channels
`
`is used
`
`for upstream
`
`communication, see Ex. 1001 at 5:31-53, FIG. 2; see also Ex. 1002 at ¶¶ 69-70
`
`(describing “split-band” CATV systems), the disclosed transmitters and receivers
`
`do not transmit and receive the same channels, i.e., “said communication
`
`channels.” Thus, the transmitting and receiving means terms cannot be construed
`
`because there is no corresponding structure that can transmit and receive “said
`
`communications channels.” See, e.g., 35 U.S.C. §112(b), (f); Ergo Licensing, LLC
`
`v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012) (“Failure to specify
`
`the corresponding structure in the specification amounts to impermissible pure
`
`functional claiming” rendering “the claim . . . indefinite.”).
`
`To apply the prior art to claim 14, Petitioner assumes that “said
`
`communication channels” refers to the downstream communication channels for
`
`the “transmitting means” limitation, such that the function is construed as
`
`“transmitting user traffic or signalling data on downstream communication channel
`
`frequencies.” Under this interpretation, the corresponding structure includes
`
`
`
`8
`
`

`

`
`
`multiple transmitters, due to the recitation of “channels” (and the fact each
`
`transmitter in the ’883 Patent can transmit on a channel). Ex. 1001 at 12:38-44;
`
`see also id. at 12:47-49 (“Each of the transmitters 160 . . . has an oscillator 165 for
`
`tuning to the corresponding channels.”). Moreover, in applying the prior art to
`
`claim 14, Petitioner further assumes that “said communication channels” refers to
`
`the upstream communication channels for the “receiving means” limitation, such
`
`that the function should be construed as “receiving user traffic or signalling data on
`
`downstream communication channel frequencies.” Under this interpretation, the
`
`corresponding structure is the receivers. See, e.g., Ex. 1001 at 12:38-44; see also
`
`id. at 12:47-49 (Each of the . . . receivers 161 has an oscillator 165 for tuning to the
`
`corresponding channels.”).
`
`“modulating means for modulating signalling data” The function of the
`
`“modulating means” is “modulating signalling data.” The corresponding structure
`
`for the “modulating means” is a modulator. See Ex. 1001 at 12:44-49; 13:7:12;
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`FIG. 16 (163).
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`“demodulating means for demodulating signalling data” The function of
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`the “demodulating means” is “demodulating signalling data.” The corresponding
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`structure for the “demodulating means” is a demodulator. See Ex. 1001 at 12:44-
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`49; FIG. 16 (164).
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`“interfacing means for interfacing to a wide area network” The function
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`of the “interfacing means” is “interfacing to a wide area network.” The
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`corresponding structure for the “interfacing means” is an “interface module.” See
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`Ex. 1001 at 5:12-15; 12:59-63; FIG. 16 (167).
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`“switching means for making dynamic connections to switch signals
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`among said transmitting means, said receiving means, said modulating means,
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`said demodulating means, and said interfacing means” The function of the
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`“switching means” is “making dynamic connections to switch signals among said
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`transmitting means, said receiving means, said modulating means, said
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`demodulating means, and said interfacing means.” The corresponding structure for
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`the “switching means” is a switching matrix. See Ex. 1001 at 12:55-59; 13:19-28;
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`FIG. 16.
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`“forward communication controlling means for selecting a forward
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`signalling data channel via a dynamic connection between said transmitting
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`means and said modulating means” The function of the “forward communication
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`controlling means” is “selecting a forward signalling data channel via a dynamic
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`connection between said transmitting means and said modulating means.” The
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`corresponding structure is a central controller. See Ex. 1001 at 13:4-14.
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`3. How the Construed Claims are Unpatentable under 37
`C.F.R. § 42.104(b)(4)
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`An explanation of how construed claims 1, 3-4, and 14 are unpatentable
`
`under the grounds identified above, including the identification of where each
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`element of the claim is found in the prior art patents and printed publications, is
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`provided infra, § VII.
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`4.
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`Supporting Evidence under 37 C.F.R. § 42.104(b)(5)
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`Each of the grounds for trial is supported by the Declaration of Mr. Stuart
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`Lipoff, Ex. 1002 as well as the other exhibits filed herewith. Mr. Lipoff’s
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`Declaration explains: the relevant level of ordinary skill in the art, how a person of
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`ordinary skill in the art would have understood scope and content of the prior art as
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`well as the conclusions that such a person would have made regarding the
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`obviousness of the subject matter claimed.
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`V.
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`SUMMARY AND TECHNICAL BACKGROUND OF THE ’883
`PATENT
`
`The ’883 Patent relates to systems and methods for using two-way CATV
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`systems to carry data. E.g., Ex. 1001 at Abstract, 1:7-12; Ex. 1002, ¶¶ 37, 39.
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`This section provides a general background of some aspects of two-way CATV
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`that existed before July 18, 1994 and then discusses the alleged invention.
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`Background: 1970’s to the Early 1990’s
`
`B.
`By at least the early 1970’s the telecommunications industry was exploring
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`the use of CATV for two-way data communication. Ex. 1002, ¶¶ 36, 61-67; Ex.
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`1010 at v. While two-way CATV systems were “technically feasible” by the early
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`1970’s, the market lagged the technology, making deployment of such networks
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`economically unfeasible. Ex. 1010 at v; Ex. 1002, ¶¶ 61-63.
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`Although the financial drivers for deploying two-way CATV systems were
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`yet to evolve, a vast array of potential data services kept the industry developing
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`new technologies for two-way CATV networks. Those services included videotex,
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`home banking and shopping, electronic mail, and alarm monitoring, to name a few.
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`See, e.g., Ex. 1002, ¶¶ 61, 88; Ex. 1007 at 1:13-16; Ex. 1008 at 23-24; Ex. 1010 at
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`4. Each of these services could coexist on a single network, giving consumers a
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`choice of services and thus increasing the subscriber base. Ex. 1002, ¶ 88; Ex.
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`1007 at 1:13-16.
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`To justify the investment in infrastructure needed to deploy two-way CATV
`
`services, carriers needed to be able to generate significant subscriber revenue;
`
`reaching many subscribers was necessary. Ex. 1010 at 65-67 (describing financing
`
`for profitability of two-way CATV systems). A two-way CATV network that
`
`would reach tens of thousands of subscribers was not unheard of by the early-to-
`
`mid 1980’s. Ex. 1008 at 25. During this time of significant technological
`
`development
`
`in the CATV industry, another industry—the semiconductor
`
`industry—was pushing the power of integrated circuits up, while driving their cost
`
`down. Ex. 1002, ¶¶ 63-66; Ex. 1020 at 81 (describing role of the rise of
`
`semiconductors and impact on adoption of digital telephony). Thus, by the late
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`1980’s and early 1990’s the cost and capabilities of integrated circuits led to two-
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`way CATV equipment that could perform more complex functions in a shorter
`
`time and at lower cost. Ex. 1002, ¶ 66.
`
`Since cable is a shared medium, having many terminals connected to the
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`cable results in competition or “contention” for access to the cable. Ex. 1006 at
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`171. This can cause packet collisions, which occur when transmitted packets reach
`
`the headend at the same time, destroying both packets. Id. The more terminals
`
`attempting to transmit, the more likely a collision is to occur. Ex. 1014 at 1:35-41;
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`2:39-43; 2:51-55. Another problem with adding more terminals is increased noise,
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`which can result in packet errors. Ex. 1006 at 171 (“The frame may be invalid, due
`
`to noise on the channel . . . .”); Ex. 1018 at 24 (“[T]he CATV system acts as a
`
`noise funnel for the upstream channels. As branches of the cable system combine .
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`. . the headend receives the amplified sum of all the noise on the system.”).
`
`The need for more subscribers to drive revenue, coupled with the problems
`
`associated with adding more subscribers to existing infrastructure, led the industry
`
`to develop many ways to address these problems. For example, CATV systems
`
`were configured as “split-band” systems, where data channels were divided
`
`between upstream and downstream channels operating on different frequencies.
`
`Ex. 1002, ¶¶ 69-70; Ex. 1006 at 110-11; Ex. 1019 at 1:47-61 (describing “split”
`
`systems, that “practically all” manufacturers of two-way CATV transmission
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`equipment provide). In a split-band system, the headend converts the upstream
`
`frequency to a paired downstream frequency, typically through a process of
`
`demodulation and modulation. Ex. 1002, ¶ 70; Ex. 1018 at 25 (“The headend . . .
`
`should receive the upstream channel, demodulate the data and remodulate the data
`
`on the downstream channel.”).
`
`Multiplexing allows the transmission of multiple signals over a single
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`channel. Ex. 1005 at 677 (defining “multiplex”). Using frequency division
`
`multiplexing, or “FDM,” the upstream and downstream channels could be divided
`
`into numerous channels. Ex. 1001 at 1:20-30; Ex. 1002, ¶¶ 54-57; Ex. 1006 at 29,
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`34-35. This allowed different remote terminals to access different channels, and
`
`allowed load to be distributed across those channels. Ex. 1002, ¶ 57.
`
`Moreover, medium access control methods were developed to reduce and
`
`accomodate packet collisions. By the early 1990’s “[t]he most commonly used
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`medium access control technique for bus-tree topologies [such as a CATV system]
`
`[was] carrier sense multiple access with collision detection (CSMA/CD),” which
`
`was originally developed in the 1970’s by Xerox and MITRE. Ex. 1006 at 170. In
`
`systems using CSMA/CD, the terminals listen to a shared channel to sense a carrier
`
`signal. Ex. 1007 at 5:46-47. If the channel is clear, the terminal transmits its
`
`message. Id. at 5:48-50. If another terminal also transmits and the packets collide,
`
`the collision is detected, and both transmitting terminals wait a random length of
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`
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`14
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`
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`time before retransmitting. Id. at 5:50-54. More traffic on a shared channel can
`
`cause more collisions, forcing remote terminals to wait more often to transmit. Ex.
`
`1002, ¶ 176 (discussing Ex. 1014 at 1:35-37, 1:38-41, 2:39-43, and 2:51-52).
`
`The concept of “frequency agility” was employed in two-way CATV
`
`communication systems well before July 18, 1994. For example, Rocci describes a
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`two-way CATV system used for security services. Ex. 1002, ¶ 146; Ex. 1016 at
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`1:38-42. When a remote terminal fails and jams a communication frequency, id. at
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`1:32-37, the headend can transmit instructions to the other remote terminals to
`
`change their frequency to a clear channel. Id. at Abstract; 2:19-23. Other prior art
`
`teaches the use of frequency agility for the purpose of load leveling—i.e.,
`
`“retuning the individual user modems . . . so that the data traffic load is more
`
`evenly distributed.” Ex. 1007 at 6:51-55.
`
` The Alleged Invention of the ’883 Patent
`
`C.
` The ’883 Patent “pertains generally to methods and apparatus for
`
`facilitating two-way multi-media communication based on a shared transmission
`
`media such as a coaxial cable TV-network, and more specifically to methods and
`
`apparatus for signalling channel management and protocol.” Ex. 1001 at 1:7-12.
`
`After conceding that “[t]here are many proposals of means for dynamically
`
`adjusti