Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`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 IPR2014-00454
`Patent 5,563,883
`____________________
`
`
`
`
`
`
`
`
`
`PATENT OWNER C-CATION TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
`
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`

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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Table of Contents
`
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. STANDARD FOR GRANTING INTER PARTES REVIEW .................................. 3
`
`III. THE PETITION IS BARRED UNDER 35 U.S.C. § 315(b) ................................... 6
`
`IV. OVERVIEW OF U.S. PATENT NO. 5,563,883 ................................................... 12
`
`V. CLAIM CONSTRUCTION ................................................................................... 16
`
`A. Construction of Select Terms in Claim 14 .......................................................... 17
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`1.
`
`2.
`
`“Transmitting Means” and “Receiving Means”............................................ 17
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`“Modulating Means” and “Demodulating Means” ....................................... 22
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`B. Remaining Terms in Claims 1, 3, 4, and 14 ........................................................ 25
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`VI. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW CLAIMS 1, 3, 4
`OR 14 OF THE ’883 PATENT ARE UNPATENTABLE .................................... 26
`
`A. Claim 1 ................................................................................................................ 26
`
`1.
`
`The system of McNamara does not include the claimed “central controller”
`and teaches away from centralized systems .................................................. 28
`
`2. McNamara does not disclose or render obvious the “reassigning” step
`recited by claim 1(e) ...................................................................................... 36
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`B. Claim 3 ................................................................................................................ 40
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`C. Claim 4 ................................................................................................................ 41
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`D. Claim 14 .............................................................................................................. 41
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`1.
`
`2.
`
`The structure of Thompson ........................................................................... 42
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`Thompson fails to disclose the claimed “modulating means” as recited by
`claim 14(d) .................................................................................................... 43
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`VII. CONCLUSION .................................................................................................... 45
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Table of Authorities
`
`Cases
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
` IPR2013-00453, Paper 31 (PTAB Jan. 22, 2014) ..................................................... 12
`
`August Tech. Corp. v. Camtek Ltd.,
` 655 F.3d 1278 (Fed. Cir. 2011) ................................................................................... 4
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
` 796 F.2d 443 (Fed. Cir. 1986) ......................................................................... 5, 36, 38
`
`Dell Inc. v. Electronics and Telecom. Res. Inst.,
` IPR2014-00152, Paper 12 (PTAB May 16, 2014) ................................... 3, 5, 39, 45
`
`Dupuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
` 567 F.3d 1314 (Fed. Cir. 2009) ............................................................................. 5, 40
`
`Ex parte Ronald A Katz Tech. Lic.L.P.,
` Appl. No. 2008-005127 (BPAI Mar. 15, 2010) ........................................................ 16
`
`Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l, Inc.,
` 389 F.3d 1370 (Fed. Cir. 2004) ................................................................................. 24
`
`In re Rambus, Inc.,
` 694 F.3d 42 (Fed. Cir. 2012) ..................................................................................... 16
`
`JVW Enters., Inc. v. Interact Accessories, Inc.,
` 424 F.3d 1324 (Fed. Cir. 2005) ................................................................................. 19
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
` 751 F.3d 1362 (Fed. Cir. 2014) ................................................................................. 40
`
`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398 (2007) .................................................................................................... 4
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
` 587 F.3d 1324 (Fed. Cir. 2009) ................................................................................. 3
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) ................................................................................. 16
`
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`ii
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`U.S. Patent No. 5,563,883
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`SAS Inst., Inc. v. ComplementSoft, LLC,
` IPR2013-00581, Papers 15, 17
` (PTAB Dec. 30, 2013; Feb. 25, 2014) ................................................... 4, 5, 39, 42, 45
`
`Paper No. 19
`Filed: August 27, 2014
`
`
`
`
`Telecordia Techs., Inc. v. Cisco Sys., Inc.,
` 612 F.3d 1365 (Fed. Cir. 2010) ................................................................................. 23
`
`Vizio, Inc. v. International Trade Com'n,
` 605 F.3d 1330 (Fed. Cir. 2010) ................................................................................... 4
`
`Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
` 239 F.3d 1225 (Fed. Cir. 2001) ................................................................................. 19
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
` IPR2013-00054, Paper 12 (PTAB Apr. 8, 2013) ......................................... 3, 40, 45
`
`Zetec, Inc. v. Westinghouse Electric Co., LLC,
` IPR2014-00384, Paper 10 (PTAB July 23, 2014) ..................................................... 28
`
`Statutes
`
`35 U.S.C. § 311(b) ........................................................................................................ 18
`
`35 U.S.C. § 314(a) ................................................................................................. 1, 4, 6
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`35 U.S.C. § 315 (b) ................................................................................................... 6, 12
`
`35 U.S.C. § 315(b) ......................................................................................................... 2
`
`35 U.S.C. § 316(e) .......................................................................................................... 4
`
`Other Authorities
`
`77 Fed. Reg. 157 ........................................................................................................ 2, 4
`
`Standing Order ¶ 121.5.2 (BPAI Mar. 8, 2011) ........................................................... 42
`
`Regulations
`
`37 C.F.R. § 42.108 .......................................................................................................... 4
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`37 C.F.R. §§ 42.22 ........................................................................................................ 28
`
`42 C.F.R. §42.104 ................................................................................................... 28, 45
`
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`iii
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Exhibit List
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`
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`_ C
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`C—Cation Tech 2013
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`
` Exhibit #
`Exhibit Description
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`
`
`
`C-Cation Tech 2012
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`
`-Cation Tech’s Infringement Contentions Against
`
`
`Comcast, C—Cation Tech, LLC v. Comcast Corp, No.
`
`
`2: 1 1-cv-30 (dated December 2, 2011)
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`
`C-Cation Tech 2014
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`C-Cation Tech 2015
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`
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`C-Cation Tech 2016
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`C—Cation Tech 2017
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`Arris Group Inc’s Form 10-K annual report for the fiscal
`year ended December 31, 2009
`
`
`iv
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`,
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`Paper No. 19
`Filed: August 27, 2014
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`I.
`
`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 Arris Group, Inc. (“Arris” or
`
`“Petitioner”) as Paper No. 1 in this proceeding, which requests inter partes
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`review of claims 1, 3, 4, and 14 of US. Patent No. 5,563,883 (“Petition”).1 This
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`response is timely pursuant to 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 the Petition does not present “a reasonable likelihood that
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`the petitioner would prevail” with respect to any of the four challenged claims.
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`35 U.S.C. § 314(a).
`
`As an initial matter, the Petition is barred under 35 U.S.C. § 315(b)
`
`because it was filed more than three years after Petitioner’s privy—Comcast—was
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`served with a complaint in a district court action alleging infringement of the
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`’883 patent. The complaint in that action alleged that Comcast’s use of
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`components purchased from Petitioner infringed the ’883 patent. —
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`US. Patent No. 5,563,883 (Petitioner’s Exhibit 1001) is referred to
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`throughout this response as “the ’883 patent.”
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`_ Because
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`Comcast requested and received indemnification for payments it made in the
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`prior district court action,_
`
`_ Accordingly,
`
`the instant Petition is time barred under 35 U.S.C. § 315(b). See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (hereinafter
`
`“Practice Guide”) (“A common consideration is whether the non-party
`
`exercised or could have exercised control over a party’s participation in a
`
`proceeding .
`
`. .”).
`
`Even if the Petition is considered timely under 35 U.S.C. § 3 1 5 (b), the
`
`Board should decline to institute inter partes review because the Petition fails to
`
`show that there is a reasonable likelihood that Petitioner would prevail in its
`
`assertions that claims 1, 3, 4, or 14 of the ’883 patent are unpatentable over the
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`cited prior art. For example, the prior art cited by Petitioner does not disclose
`
`the use of a central controller to dynamically allocate signalling data channels to
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`meet the requirements of varying traffic demand and growth by assigning and
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`reassigning remote terminals to signalling data channels, as recited in claim 1,
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`or the “means for modulating signalling data,” as recited in claim 14. Nor does
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`the Petition articulate any basis to support the notion that it would have been
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`obvious to one of ordinary skill in the art at the time of the invention to add
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`these missing features to the cited prior art. See, e.g., Wowza Media Sys, LLC
`
`1). Adobe Sys. Ina, IPR2013—00054, Paper 12 at 15 (PTAB Apr. 8, 2013) (citing
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`Perfect Web Techs., Inc. v. Info USA, Inc, 587 F.3d 1324, 1330 (Fed. Cir.
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`2009)). Specifically, while the Petition relies on the declaration of Stuart Lipoff
`
`in asserting the obviousness of these critical elements, Mr. Lipoff does not
`
`provide any underlying facts that support his assertions. Lacking any factual
`
`support, Mr. Lipoff’s conclusions are entitled to no weight. See, e. g., Dell Inc.
`
`v. Electronics and Telecom. Res. Inst, IPR2014—00152, Paper 12 at 19—21
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`(PTAB May 16, 2014) (finding proposed expert testimony “not supported by
`
`underlying facts or data” to be “not persuasive” and declining to institute review
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`on any grounds proposed in the petition). Accordingly, Petitioner has not
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`specified where each element of a challenged claim is found in the prior art
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`references either standing alone or in combination as required under 37 C.F.R. §
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`42.104(b)(4), and the Board should decline to institute inter partes review on
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`each of the grounds proposed in the Petition. See, e. g, Wowza Media Sys. ,
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`IPR2013-00054, Paper 12 at 15.
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`II.
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`STANDARD FOR GRANTING INTER PARTES REVIEW
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`A petition for inter partes review may be granted when “the information
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`presented in the petition .
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`.
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`. 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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`Case lPR2014—00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). A petitioner bears
`
`the burden of showing that this statutory threshold has been met. See Practice
`
`Guide, 77 Fed. Reg. at 48,756 (“The Board .
`
`.
`
`. may institute a trial where the
`
`petitioner establishes that the standards for instituting the requested trial are met .
`
`.
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`. .”). A petitioner bears the burden of proving unpatentability by a preponderance
`
`ofthe evidence. 35 U.S.C. § 316(e).
`
`Where a petition challenges a claim as obvious, it must show where each
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`claimed limitation is taught in the prior art. See, e. g., Vizio, Inc. v. Int’l Trade
`
`Com ’n, 605 F.3d 1330, 1343 (Fed. Cir. 2010); August Tech. Corp. v. CamtekLtcl,
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`655 F.3d 1278, 1287 (Fed. Cir. 2011); Dell, IPR2014-00152, Paper 12 at 19-21;
`
`see also 42 C.F.R. § 42.104(b)(4). In particular, a petition must support a proposed
`
`obviousness ground with “sufficient articulated reasoning with rational
`
`underpinning .
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`.
`
`. .” SASInst., Inc. v. ComplementSofz‘, LLC, IPR2013-00581,
`
`Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int 7 Co. v. Teleflex, Inc, 550
`
`U.S. 398, 418 (2007)); accord ActiveVideo Networks v. Verizon Communs. Inc,
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`694 F.3d 1312, 1328 (Fed Cir. 2012).
`
`In asserting that a claim is obvious, a party may not pick elements from the
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`prior art in isolation. Rather, while specific portions of the prior art must be
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`identified for each claim element, the prior art reference must be considered as a
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`whole, including portions that teach away from the claimed invention. A single
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
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`line in a prior art reference should not be taken out of context and relied upon with
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`the benefit of hindsight to show obviousness. See Bausch & Lamb, Inc. v. Barnes-
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`Hind/Hydrocurve, Inc., 796 F.2d 443, 447-48 (Fed. Cir. 1986). A reference is
`
`considered to “teach away” from a claimed invention “when a person of ordinary
`
`skill, upon reading the reference, would be discouraged from following the path set
`
`out in the reference, or would be led in a direction divergent from the path that was
`
`taken by the applicant.” Dupuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
`
`F.3d 1314, 1327 (Fed. Cir. 2009) (internal citations omitted). Indeed, “an inference
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`of nonobviousness is especially strong Where the prior art’s teachings undermine
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`the very reason being proffered as to why a person of ordinary skill would have
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`combined the known elements.” Id. at 1326.
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`Moreover, where a petition relies on an expert’s assertions to suggest that a
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`person of ordinary skill in the art would find it obvious to modify a prior art
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`reference, the expert must provide sufficient factual support for those assertions.
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`See Dell, IPR2014-00152, Paper 12 at 20-21. A factually unsupported expert
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`assertion, particularly those that contradict the prior art, should be disregarded.
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`SAS Inst, IPR2013-00581, Paper 17 at 3-4 (PTAB Feb. 25, 2014) (the Board “is
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`not required to take every statement by a petitioner’s expert as established fact”
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`and “is required to assess the persuasiveness of the testimony in light of other
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`Case IPR2014-00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`factual evidence in the record, e.g., the explicit wording of the prior art and the
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`scope of the claimed invention”).
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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
`
`claims.” 37 CPR. § 42.108(b); see also 35 U.S.C. § 314(a).
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`III. THE PETITION IS BARRED UNDER 35 U.S.C. § 315(b)
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`35 U.S.C. § 315(b) provides that “an inter partes review may not be
`
`instituted if the petition requesting the proceeding is filed more than 1 year after
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`the date on which the petitioner, real party in interest, or privy of the petitioner is
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`served with a complaint alleging infringement of the paten .” The instant Petition
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`is barred as Petitioner is a privy of Comcast, who was served with a complaint for
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`infringement of the ’883 patent more than three years prior to the date on which the
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`instant Petition was filed.
`
`On January 25, 2011, Patent Owner filed a complaint for patent infringement
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`against Comcast Corporation and others alleging that each of the defendants’ cable
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`systems infringed the ’883 patent (“the First Action”). See EX. 2002.2 In the First
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`The First Action was filed in the United States District Court for the Eastern
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`District of Texas and assigned docket number 2:11-cv—00030. On April 5, 2011,
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`Patent Owner filed a First Amended Complaint in the First Action adding Comcast
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`-
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`Paper No. 19
`Filed: August 27, 2014
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`Action, Patent Owner accused Comcast’s systems that include products purchased
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`from Petitioner, including specifically cable modem termination systems
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`(“CMTSS”) and cable modems, of infringing the ”883 patent.
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`Cable Communications, LLC and Comcast of Houston, LLC as defendants. See
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`EX. 2003. The Comcast entities are collectively referred to herein as “Comcast.”
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`Pursuant to a settlement agreement, Patent Owner and Comcast subsequently
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`stipulated to the dismissal of the First Action on January 21, 2014. See EX. 2004,
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`2005.
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`3
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`use of these CMTSs was accused of infringing the ’883 patent in the First Action.
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`See, e.g., EX. 2013 at Exhibit A.
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`OOBOQ)m"T. m
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`Case IPR2014-00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`4:.I|4:.
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`00|
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Comcast did in fact make indemnification claims_
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`_ against Petitioner in connection with the
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`First Action.5 Petitioner’s 2013 annual report, which Petitioner filed with the
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`Securities and Exchange Commission, states:
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`C—Caz‘ion:
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`The Company and Comcast reached a settlement related to
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`Comcast’s litigation with C-Cation, whereby the Company
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`[Arris] agreed to pay Comcast to settle indemnification claims
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`against the Company in the quarter ended December 31, 2013.
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`EX. 2006 at 125 (emphasis added).
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`Because indemnification claims were made,—
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`5
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`Petitioner produced_ in
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`response to the Board’s July 24, 2014 Order (Paper No. 15) requiring Petitioner to
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`produce “Agreement(s) between Arris and Comcast under which Comcast
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`requested indemnification for the claims brought against Comcast in the [First
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`Action] that reference (or are contingent on) Arris’s ability to control the
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`litigation.” Paper 15 at 5.
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`10
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`Case IPR2014—00746
`US. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`_6—
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`Petition’s 2009 annual report—the last annual report filed by Petitioner with
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`the Securities and Exchange Commission prior to the commencement of the First
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`Action—provides additional evidence indicative of Petitioner’s motivation for
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`controlling the First Action. The annual report indicates that Comcast was
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`Petitioner’s top customer and that Petitioner’s profits depended on its CMTS sales.
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`For example, with respect to Comcast, the annual report states:
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`Our business comes primarily from a few key customers. The
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`loss of one of these customers or a significant reduction in sales
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`to one of these customers would have a material adverse effect
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`on our business.
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`Our two largest customers (including their affiliates, as
`
`applicable) are Comcast and Time Warner Cable. For the year
`
`ended December 31, 2009, sales to Comcast accounted for
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`approximately 31.9% and sales to Time Warner Cable
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`accounted for approximately 20.8% of our total revenue.
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`EX. 2017 at 21.
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`Further, the annual report notes that Petitioner’s margins were dependent on
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`its CMTS sales. See id. at 15, 18 (“One of the principal growth markets for us is
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`11
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`Because the First Action was more than three years old when the Petition
`
`was filed, the Petition is time barred under 35 U.S.C. § 315(b). See Practice Guide
`
`at 48759 (“A common consideration is whether the non-party exercised or could
`
`have exercised control over a party’s participation in a proceeding. . . . The
`
`concept of control generally means that ‘it should be enough that the nonparty has
`
`the actual measure of control or opportunity to control that might reasonably be
`
`expected between two formal coparties.’”) (emphasis added) (quoting Wright &
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`Miller § 4451); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-
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`00453, Paper 31 at 16 (PTAB Jan. 22, 2014) (two parties may be in privity where a
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`complaint for infringement served on the first party gives rise to an obligation for
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`indemnity and opportunity for control of the litigation by the second party).
`
`IV. OVERVIEW OF U.S. PATENT NO. 5,563,883
`The ’883 patent issued on October 8, 1996 from an application filed on
`
`July 18, 1994. The patent issued with 20 claims, including independent claims 1
`
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`the high speed data access market into which we sell a CMTS . . .”), 36 (“Gross
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`margin percentage was 41.8% in 2009, up 7.5 percentage points from 2008
`
`reflecting higher sales of our higher margin CMTS product line coupled with lower
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`sales of lower margin EMTA and ATS products.”), 42 (“Higher sales to multiple
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`customers of our CMTS products, in particular Comcast . . .”).
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`12
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`and 14, which are at issue here. Claims 3 and 4 depend directly from claim 1.
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`Paper No. 19
`Filed: August 27, 2014
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`
`
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`The ’883 patent describes and claims a novel way to effectively provide and
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`manage communications between remote devices and a central controller over a
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`shared, i.e., multiple access, communications medium like those found in cable
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`communication systems.
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`The ’883 patent recognizes 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, cols. 1:15-
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`56, 7:46-49.
`
`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 experiences increase in severity and frequency as the capacity
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`of a channel is approached. In describing the then-existing systems, the ’883
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`patent notes that previous systems did not have a central controller that
`
`reassigned individual remote terminals from a signalling data channel on which a
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`remote terminal was experiencing a degradation in quality to a different and more
`
`suitable signalling data channel. Id. at col. 1:60-2:8.
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`13
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 19
`Filed: August 27, 2014
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`To solve this problem, the ’883 patent presents an efficient, flexible and
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`extensible method wherein a central controller monitors the systems’ signalling
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`data channels and reassigns individual remote terminals to a more suitable
`
`signalling data channel. In doing so, the system of the ’883 patent can meet the
`
`requirements of varying traffic demand, channel quality, and growth. Id. at cols.
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`2:4-7, 2:38-52 (“This dynamic signalling channel allocation and terminal
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`assignment method also aids in redundancy for anomalies such as interference or
`
`component failure.”), col. 4:1-11 (“Accordingly the achieved benefits of the
`
`present invention are: . . . Flexible and extensible scheme for assigning remote
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`terminals to the signalling channels; Flexible and extensible scheme for
`
`supporting system growth and new services requirements.”), and claim 1.
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`The central controller of the ’883 patent monitors the channels in use for
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`factors 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 can dynamically reassign individual remote
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`terminals to more suitable signalling data channels at startup, during failure
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`recovery or as deemed necessary:
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`Prompted by the remote terminals at startup, or through the
`failure recovery procedure, or deemed necessary by the central
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`controller, the channel allocation and terminal assignment
`process are initiated and 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. With this central controller, the system manages the remote
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`terminals and communication to and from the remote terminals over signalling
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`data channels efficiently. None of the prior art referred to in the ’883 patent,
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`cited in its prosecution history, or now cited in the Petition, describes a system
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`having these claimed features.
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`The ʼ883 patent also discloses and claims system architectures that are
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`suitable for performing these functions. See, e.g., ’883 patent, figs. 1 and 16, and
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`claim 14. For example, claim 14 provides a system for managing connections
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`between modulators and transmitters via a microprocessor to efficiently provide
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`forward signalling data channels to a plurality of remote terminals. The central
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`controller of claim 14 implements a frequency division multiple access
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`(“FDMA”) communications scheme in which each transmitter includes an
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`oscillator for tuning to a particular channel. See, e.g., id. at col. 12:47-52. A
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`benefit of the controller design of claim 14 is that the modulating means are a
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`shared resource having modulated forward signalling data output that is directed
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`to particular transmitters as needed. Id. at col. 12:4-12.
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`V. CLAIM CONSTRUCTION
`The ’883 patent was filed on July 18, 1994 and issued on October 8, 1996,
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`without any term adjustments. It is now expired. As such, the claims of the ’883
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`patent should be construed according to the methodology set forth in Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), namely according to how a
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`person of ordinary skill in the art would have understood a claim term in view of
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`the patent at the time of the invention, rather than the “broadest reasonable
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`construction.” See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Ex parte
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`Ronald A Katz Tech. Lic.L.P., Appl. No. 2008-005127 (BPAI Mar. 15, 2010)
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`(expanded panel decision).
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`While the Petition identifies the two claim construction standards, it does not
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`state which standard Petitioner applied in proposing its constructions.7 See Petition
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`at 5. The Patent Owner’s following constructions are based solely on the
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`applicable methodology set forth in Phillips.
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`A. Construction of Select Terms in Claim 14
`“Transmitting Means” and “Receiving Means”
`1.
`The Petition appears to assert that two claim terms in claim 14, “transmitting
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`means for transmitting user traffic or signalling data on said communication
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`channels” and “receiving means for receiving user traffic or signalling data on said
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`communication channels,” are indefinite.8 See Petition at 7-8. In particular, the
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`7
`As Petitioner notes, during the First Action, Magistrate Judge Payne
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`construed certain terms of claims 1, 3, and 4 of the ’883 patent applying the
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`methodology set forth in Phillips. See Petition at 6; Ex. 1004 at 2-4. While the
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`Petition adopts those constructions (see Petition at 6), it does not state which
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`standard it applied in proposing constructions for claim 14 of the ’883 patent.
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`8
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`Element (b) of claim 14 recites “transmitting means for transmitting user
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`traffic or signalling data on said communication channels” and element (c) of
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`claim 14 recites “receiving means for receiving user traffic or signalling data on
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`said communication channels.”
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`Petition argues that the recited “transmitting means” and “receiving means” lack
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`corresponding structure because the transmitters and receivers disclosed in the
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`patent “do not transmit and receive [on] the same channels” as the Petition asserts
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`is required by the claim. According to Petitioner, the ’883 patent only discloses “a
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`‘split-band’ CATV communication system where one group of channels is used for
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`downstream communication and another group of channels is used for upstream
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`communication.” Petition at 8. This argument is both improper and incorrect.9
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`The undisputed corresponding functions for the claimed “transmitting
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`means” and the “receiving means” are “for transmitting user traffic or signalling
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`data on said communication channels” and “for receiving user traffic or
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`signalling data on said communication channels,” respectively. The antecedent
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`basis for “said communication channels” is provided in the preamble of claim 14,
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`which recites “a multiple access communication system having a plurality of
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`communication channels for communicating with a plurality of remote terminals . .
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`9
`Petitioner’s argument is improper as it is essentially a thinly veiled proposed
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`ground of review under 35 U.S.C. § 112. By statute, a petitioner may only request
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`to cancel a patent claim “on a ground that could be raised under section 102 or 103
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`and only on the basis of prior art consisting of patents or printed publications.” 35
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`U.S.C. § 311(b).
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`. .” As such, “said communication channels” in claim 14 are used for
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`communication between the central controller and the remote terminals. Claim 14
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`does not require that a transmitter transmit communications on the same channel
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`on which a receiver receives communications. All claim 14 requires is a means to
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`transmit or receive, respectively, onto or from the plurality of communication
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`channels. As Petitioner’s asserted functional requirement finds no support in the
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`claim language, it is improper.10 See, e.g., JVW Enters., Inc. v. Interact
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`Accessories, Inc., 424 F.3d 1324, 1331 (Fed. Cir. 2005) (in determining function:
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`(1) “a court may not . . . adopt[] a function different from that explicitly recited in
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`the claim;” and (2) “a court errs by importing the functions of a working device
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`into the specific claims, rather than reading the claims for their meaning
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`independent of any working embodiment.”) (internal citations omitted); Wenger
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`Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001)
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`10 Moreover, Petitioner’s functional requirement that the transmitting means
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`and receiving means must act on the s