Trials@uspto.gov
`571-272-7822
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`Paper 22
`Entered: November 24, 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 IPR2014-00746
`Patent 5,563,883
`
`
`
`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`Motion to Seal Preliminary Response
`37 C.F.R. §§ 42.14, 42.108
`
`
`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: November 24, 2014
`
`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
`Patent 5,563,883
`
`
`
`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`Motion to Seal Preliminary Response
`37 C.F.R. §§ 42.14, 42.108
`
`
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`IPR2014-00746
`Patent 5,563,883
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`I. INTRODUCTION
`Arris Group Inc. (“Petitioner”) filed a Petition (Paper 1, “Petition” or
`“Pet.”) to institute an inter partes review of claims 1, 3, 4, and 14 (“the
`challenged claims”) of U.S. Patent No. 5,563,883 (“’883 Patent”). See 35
`U.S.C. §§ 311–19. C-Cation Technologies, LLC (“C-Cation” or “Patent
`Owner”) timely filed a Preliminary Response to the Petition. Paper 21
`(“Prelim. Resp.”). We determine under 35 U.S.C. § 314(a), and based on
`the record before us, that there is a reasonable likelihood that Petitioner
`would prevail with respect to claim 14. However, we determine under
`35 U.S.C. § 314(a), and based on the record before us, that there is not a
`reasonable likelihood that Petitioner would prevail with respect to claims 1,
`3, and 4.
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`A. Related Proceedings
`Petitioner indicates the ’883 Patent is at issue, and Petitioner is a
`named defendant, in C-Cation Technologies, LLC v. Time Warner Cable
`Inc., No 2:14-cv-0059 (E.D. Tex. 2014). Pet. 1. Claims 1–20 of the ’883
`Patent were also the subject of the Petition in Cisco Systems, Inc. v. C-
`Cation Technologies, LLC, Case IPR2014-00454 (PTAB) (“IPR2014-
`00454”). See IPR2014-00454, Paper 1 (February 20, 2014). We denied
`institution of inter partes review of Cisco’s Petition. See IPR2014-00454,
`Paper 12 (August 29, 2014).
`B. The ’883 Patent (Ex. 1001)
`The ’883 Patent relates to a “method and apparatus to support two-
`way multi-media communication services on a multiple access
`communication system, which comprises a central controller, a shared
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`transmission media[,] and a plurality of remote terminals dispersed
`throughout the network.” Ex. 1001, Abs.; see id. at col. 2, l. 65–col. 3, l. 1.
`Figure 1 of the ’883 Patent is reproduced below:
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`Figure 1 illustrates a multiple access communication system architecture
`with interconnections between remote terminals 14, central controller 10,
`and wide area networks 18. Ex. 1001, col. 4, ll. 21–25. Communication
`channels 16 are provided to wide area networks 18, and communication
`channels 20 are provided for supporting remote terminals 14. Id. at col. 5,
`ll. 12–15. Central controller 10 includes switch and control mechanism 32,
`forward signaling data channel (FD) 22, forward traffic bearer channel (FB)
`24, reverse signalling data channel (RD) 26, and reverse traffic bearer
`channel (RB) 28 receivers. Id. at col. 5, ll. 15–21, 31–36.
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`IPR22014-007446
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`Patennt 5,563,8883
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`Figure 16 of the ’8883 Patent
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`Figuure 16 illustrates central controlller 10. Exx. 1001, co
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`l. 5, ll. 1–22, col. 12,
`s 160 and
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`ll. 366–38. Cenntral controoller 10 inccludes a pluurality of ttransmitter
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`pluraality of trannsceivers 1161 for commmunicatiion on sharred transm
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`media 12. Id. aat col. 12, ll. 38–40. Voice Freequency (VVF) data mmodulators
`163
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`and VF daata demoduulators 1644 are providded for trannsmitting aand
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`receiiving signaalling data.. Id. at coll. 12, ll. 444–47. Trannsmitters 1
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`receiivers 161 eeach includde oscillatoor 165 for ttuning to thhe correspponding
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`channnels. Id. aat col. 12, lll. 47–49. A VF signnal comingg to transm
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`moddule 160 is first moduulated, bufffered, amp
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`lified, andd mixed witth the
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`oscilllator’s frequency to the RF chaannel. Id.
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`at col. 12,
`ll. 49–52.
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`frequuency (RF) signal cooming to reeceiver moddule 161 iss translatedd to the
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`interrmediate frrequency thhrough mixxer 166, thhen filteredd, amplifiedd, and
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`demodulated bback to the VF signal. Id. at coll. 12, ll. 522–55. A swwitching
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`matrrix, under tthe controll of a microoprocessorr, is used too connect VVF signals
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`betwween transmmitters 1600, receiverss 161, telepphone netwwork interffaces 168,
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`IPR2014-00746
`Patent 5,563,883
`VF data modulators 163, and VF data demodulators 164. Id. at col. 12, ll.
`55–59. Random Access Memory (RAM) stores dynamic information, such
`as remote terminal and channel status. Id. at col. 12, ll. 63–65. Erasable
`Programmable Read Only Memory (EPROM) is used to store invariant
`information such as micro-processor startup instructions. Id. at col. 12, l.
`65–col. 13, l. 1.
`Figure 6 of the ’883 Patent is reproduced below:
`
`
`Figure 6 illustrates the logic flow for registration, channel allocation,
`terminal assignment, and reassignment processes at central controller 10.
`Ex. 1001, col. 4, ll. 37–39, col. 8, ll. 16–18. Upon receiving a registration
`message on primary reverse signalling data channel or backup reverse
`signalling data channel, central controller 10 checks if remote terminal 14 is
`a new registering terminal. Id. at col. 8, ll. 18–20; see id. at col. 6, ll. 49–51.
`If remote terminal 14 is a new registering terminal and is authorized, central
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`Patent 5,563,883
`controller 10 proceeds to check for available signalling data channels for
`remote terminal 14. Id. at col. 8, ll. 20–23. If new remote terminal 14 has
`not been authorized, central controller 10 will deny new remote terminal 14
`from entering the network by issuing a terminal disable command. Id. at
`col. 8, ll. 23–26. If remote terminal 14 has been registered previously, the
`registration process is caused by channel failure recovery procedure sensed
`at the remote terminal, and the central controller will register the channel
`status and proceed to check for available signalling data channels for the
`remote terminal. Id. at col. 8, ll. 26–31. At any time, central controller 10
`can initiate the terminal re-assignment process if deemed appropriate for the
`varying traffic demand or other system dynamics. Id. at col. 8, ll. 31–34.
`
`C. Illustrative Claims
`Claims 1 and 14 are independent claims. Claims 3 and 4 depend from
`
`claim 1. Claims 1 and 14, reproduced below, are illustrative.
`1. 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 comprising the steps of:
`(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;
`(b) monitoring the status of a plurality of the signalling data
`channels in use between said central controller and said
`plurality of remote terminals for the usability of said
`signalling data channels;
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`Patent 5,563,883
`(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;
`(d) determining whether a different and suitable signalling
`data channel is available other than said predetermined
`channel; and
`(e) reassigning by said central controller said remote
`terminal to a different and suitable signalling data
`channel for communication henceforward.
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`14. In a multiple access communication system having a
`plurality of communication channels for communicating with a
`plurality of remote terminals, a central controller comprising:
`(a) system controlling means for controlling the
`communication system comprising a micro-processor and
`associated EPROM and RAM;
`(b) transmitting means for transmitting user traffic or
`signalling data on said communication channels;
`(c) receiving means for receiving user traffic or signalling
`data on said communication channels;
`(d) modulating means for modulating signalling data;
`(e) demodulating means for demodulating signalling data;
`(f) interfacing means for interfacing to a wide area network;
`(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; and
`(h) forward communication controlling means for selecting a
`forward signalling data channel via a dynamic connection
`between said transmitting means and said modulating
`means.
`Ex. 1001, col. 14, ll. 2753, col. 17, ll. 329.
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`II. ANALYSIS
`A. 35 U.S.C. § 315(b) Time Bar Based on Privity
`Patent Owner asserts the Petition is barred under 35 U.S.C. § 315(b)
`because Petitioner is a privy of Comcast, who was served with a complaint
`for infringement of the ’883 Patent (“the 2011 complaint”) over three years
`ago in an action styled C-Cation Techs., LLC v. Comcast Corp., 2:11-cv-
`0030 (E.D. Tex. 2011) (“the 2011 district court proceeding”). Prelim.
`Resp. 6. Patent Owner filed the 2011 complaint alleging infringement of the
`’883 Patent on January 25, 2011, and filed an amended complaint (“the
`amended 2011 complaint”) adding Comcast as a defendant on April 5, 2011.
`Id. at 6 (citing Ex. 2002), 6–7 n.2 (citing Ex. 2003). Patent Owner and
`Comcast stipulated to the dismissal of the 2011 district court proceeding
`with prejudice on January 21, 2014. Id. at 7 n.2; Ex. 2005.
`In support of its assertions that Comcast is a privy of Petitioner, Patent
`Owner directs our attention to indemnification clauses in a first purchase
`agreement (Ex. 2012) and a second purchase agreement between Petitioner
`and Comcast (Ex. 2014) (collectively “the Agreements”). Prelim. Resp. 7–
`9. Specifically, Patent Owner directs our attention to certain language
`contained in the Agreements directed to Comcast providing prompt notice to
`Petitioner of any infringement claims and Petitioner having sole control or
`full authority of any claim giving rise to indemnification obligations. Id.
`(citing Ex. 2012, 6; Ex. 2014, 22).
`Patent Owner alleges that Comcast made indemnification claims
`against Petitioner pursuant to the Agreements in connection with the 2011
`district court proceeding. Prelim. Resp. 10. To support its allegation, Patent
`Owner directs our attention to Petitioner’s 2013 Annual Report filed with the
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`Securities and Exchange Commission, which states: “The Company and
`Comcast reached a settlement agreement related to Comcast’s litigation with
`C-Cation, whereby the Company agreed to pay Comcast to settle
`indemnification claims against the Company in the quarter ended December
`31, 2013.” Id. (quoting Ex. 2006, 123). Patent Owner contends that because
`indemnification claims were made according to the provisions of the
`Agreements, Petitioner had, at the very least, the contractual ability to
`control the 2011 district court proceeding, and had actual notice of the 2011
`complaint or the amended 2011 complaint more than three years before it
`filed its Petition. Id. at 10–11.
`
`The plain language of 35 U.S.C. § 315(b) precludes institution if the
`petition “is filed more than 1 year after the date on which . . . privy of the
`petitioner is served with a complaint.” Patent Owner has not shown
`persuasively that Petitioner was a privy of Comcast at the time that Comcast
`was served with the 2011 complaint or the amended 2011 complaint alleging
`infringement of the ’883 Patent. “Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ or ‘privy’ to that proceeding is a highly fact-dependent question.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012) (citing Taylor v. Sturgell, 553 U.S. 880, 894 (2008)).
`
`Patent Owner does not provide evidence sufficient to demonstrate
`that, at the time of service of the 2011 complaint or the amended 2011
`complaint, Petitioner exercised control or could have exercised control over
`Comcast’s participation in the 2011 district court proceeding. Further,
`Patent Owner does not provide evidence sufficient to support its assertion
`that Comcast made indemnification claims pursuant to the Agreements. For
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`example, Patent Owner does not provide evidence sufficient to demonstrate
`that Comcast provided prompt notification to Petitioner, and that Petitioner
`exercised sole control or full authority according to the Agreements. At
`best, the evidence proffered by Patent Owner demonstrates that Comcast
`made claims for indemnification under the Agreements, and that Petitioner
`settled those claims Comcast made against Petitioner. See Ex. 2006, 125.
`Notably absent is evidence of Petitioner’s conduct in the 2011 district court
`proceeding from which we could infer that Petitioner exercised control or
`could have exercised control as provided for in the Agreements.
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`Accordingly, we determine that based on the evidence presented at
`this stage of the proceeding, 35 U.S.C. § 315(b) does not bar institution of
`inter partes review.
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`B. Claim Construction
`We interpret claims in an unexpired patent using the broadest
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`reasonable interpretation in light of the specification. See 37 C.F.R.
`§ 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. As
`acknowledged by the parties (Pet. 5; Prelim. Resp. 16), however, the term of
`the ’883 Patent ended 20 years from the July 18, 1994 application filing
`date. See 35 U.S.C. § 154(a)(2). Our review of claims of an expired patent
`is similar to that of a district court’s review. See In re Rambus, Inc., 694
`F.3d 42, 46 (Fed. Cir. 2012). We are guided by the principle set forth by the
`court in Phillips v. AWH Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005)
`(en banc) (citations omitted), that the words of a claim “are generally given
`their ordinary and customary meaning” as understood by a person of
`ordinary skill in the art in question at the time of the invention.
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`The Office interprets limitations arising under 35 U.S.C. § 112, sixth
`paragraph1, in light of the corresponding structure, material, or acts
`described in the specification. In re Donaldson Co., 16 F.3d 1189, 1193
`(Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which
`the interpretation of means-plus-function language arises, i.e., whether as
`part of a patentability determination in the PTO or as part of a validity or
`infringement determination in a court.”). 35 U.S.C. § 112, sixth paragraph,
`states that a claim limitation expressed in means-plus-function language
`“shall be construed to cover the corresponding structure . . . described in the
`specification and equivalents thereof.” In construing means-plus function
`limitations in accordance with 35 U.S.C. 112, sixth paragraph, it is improper
`to “import functional limitations that are not recited in the claim, or
`structural limitations from the written description that are unnecessary to
`perform the claimed function.” Wenger Mfg., Inc. v. Coating Mach. Sys.
`Inc., 239 F.3d 1225, 1233 (Fed. Cir 2001) (citing Micro Chem., Inc. v. Great
`Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)).
`1. Modulating Means
`Independent claim 14 recites “modulating means for modulating
`
`signalling data.” Petitioner asserts that the corresponding structure is a
`modulator. Pet. 9 (citing Ex. 1001, col. 12, ll. 44–49, col. 13, ll. 7–12, Fig.
`16 (163)).
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`1 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated
`35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 11229, 125 Stat.
`284, 296 (2011). Because the ’883 Patent has a filing date before September
`16, 2012 (effective date), we will refer to the pre-AIA version of § 112.
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`Patent Owner contends that the corresponding structure is not simply
`a generic “modulator,” as proposed by Petitioner, but should include the
`structure to effectuate fully that function. Prelim. Resp. 23 (citing
`Telecordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376 (Fed. Cir.
`2010)). Patent Owner asserts that the ’883 Patent Specification describes a
`“modulating means” as a conventional modulator configured to receive
`signalling information or user data from the microprocessor. Id. at 23–24
`(citing Pet. 9; Ex. 1001, col. 12, ll. 44–47, col. 13, ll. 7–10, 32–35, Fig. 16).
`Patent Owner argues that Petitioner’s construction is incomplete because it
`does not specify that the modulator is configured to receive signalling
`information or user data from the microprocessor, as described in the
`’883 Patent Specification. Id. at 24 (citing Frank’s Casing Crew & Rental
`Tools, Inc. v. Weatherford Int’l, Inc., 389 F.3d 1370, 1377–78 (Fed. Cir.
`2004)). In conclusion, Patent Owner asserts that the corresponding structure
`for the “modulating means” is a “modulator configured to receive signalling
`information from the microprocessor.” Id. at 25.
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`We are not persuaded by Patent Owner’s assertions that Petitioner’s
`construction is incomplete. Claim 14 recites: “modulating means for
`modulating signalling data.” Thus, the function recited in means-plus-
`function format is “modulating signalling data.” Patent Owner’s
`construction is improper because it attempts to import functional limitations
`into the claim from the ’883 Patent Specification based on the disclosure of
`the modulator receiving signalling information or user data from micro-
`processor. See Prelim. Resp. 23–24 (citing Ex. 1001, col. 13, ll. 7–10, 32–
`35, Fig. 16); Wenger, 239 F.3d at 1233.
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`For these reasons, and consistent with Petitioner’s construction, the
`corresponding structure for the “modulating means for modulating signalling
`data” is the modulator described in the ’883 Patent Specification, and
`equivalents thereof.
`2. Additional Proposed Claim Constructions
`Petitioner proposes constructions for “transmitting means,” “receiving
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`means,” “demodulating means,” “interfacing means,” “switching means,”
`and “forward communication controlling means,” recited in independent
`claim 14. Pet. 7–10. Patent Owner disputes Petitioner’s analysis for
`“transmitting means,” “receiving means,” and “demodulating means,”
`providing its own constructions for these terms. Prelim. Resp. 17–22, 25.
`We determine that, for purposes of this Decision, none of the
`aforementioned disputed claim terms require an explicit construction.
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`In addition, Petitioner asserts that we should apply the claim
`constructions set forth in the claim construction order (Ex. 1004) of the 2011
`district court proceeding. Pet. 6. Specifically, Petitioner requests that we
`apply the district court’s constructions to the following claim terms and
`phrases: “signalling data,” signalling data channels,” “remote terminals,”
`“pair of predetermined signalling channels,” “said predetermined signalling
`data channel,” “said predetermined channel,” and “monitoring the status of a
`plurality of signalling data channels in use . . . for the usability of said
`signalling data channels.” Id. at 6–7 (citing Ex. 1004, 6–12, 17–28, 41–44).
`We determine that, for purposes of this Decision, none of the
`aforementioned claim terms or phrases require an explicit construction.
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`C. Asserted Grounds of Unpatentability
`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. § 103(a) based on the following references (Pet. 3–5):
`Claim(s) References2
`1 and 4 McNamara, Rocci, and MetroNet
`3
`McNamara, Rocci, MetroNet, Zdunek, Dufresne, and Nagasawa
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`Thompson, Motorola MC 68360, and Fultz
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`1. Unpatentability of Claims 1, 3, and 4
`Petitioner contends that claims 1 and 4 are unpatentable under
`35 U.S.C. § 103(a) as obvious over McNamara, Rocci, and MetroNet, and
`that claim 3 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`McNamara, Rocci, MetroNet, Zdunek, Dufresne, and Nagasawa. Pet. 5, 18–
`48.
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`a. McNamara (Ex.1007)
`McNamara discloses a two way digital cable television (CATV)
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`communication system to provide bidirectional data transport service
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`2 The Petitioner relies on the following references: U.S. Patent No.
`4,533,948 (Ex. 1007) (“McNamara”); R. P. McNamara and P. E. Morse,
`MetroNet: An Overview of a CATV Regional Data Network, NCTA 31st
`Annual Convention & Exposition, 2231 (1982) (Ex. 1008) (“MetroNet”);
`U.S. Patent No. 4,870,408 (Ex. 1013) (“Zdunek”); U.S. Patent No.
`4,920,533 (Ex. 1014) (“Dufresne”); U.S. Patent No. 4,584,684 (Ex. 1015)
`(“Nagasawa”); U.S. Patent No. 4,494,111 (Ex. 1016) (“Rocci”); U.S. Patent
`No. 5,594,726 (Ex. 1017) (“Thompson”); Motorola Semiconductor Product
`Information, Product Brief: MC68360 QUad Integrated Communication
`Controller (QUICCTM) (1993)(Ex. 1021) (“Motorola MC68360”); and K. E.
`Fultz and D. B. Penick, The T1 Carrier System, Bell Systems T.J., 140551
`(1965) (Ex. 1022) (“Fultz”). The Petitioner also relies on the Declaration of
`Stuart Lipoff (Ex. 1002).
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`between any two points within the CATV system. Ex. 1007, Abs.
`McNamara explains that two-way CATV systems are well known, but
`systems developed previously have failed to achieve widespread use because
`the prior art systems centralize digital communication at the headend of the
`CATV system. Id. at col. 1, ll. 9–22. McNamara further explains that
`concentration of network intelligence at the headend has the following
`disadvantages: (1) it requires the cable operator, service provider, and
`equipment manufacturer to undertake coordinated activities simultaneously
`to assure compatible data formats; (2) a centralized network architecture
`results in complex and cumbersome headend equipment; (3) system
`reliability is compromised when system intelligence is centralized; and (4) in
`a centralized system, the cable operator is involved closely with the service
`provider and is burdened with problems, such as information privacy, data
`integrity, and disputes over rights of access to consumers by competing
`service providers. Id. at col. 1, ll. 22–50; see id. at col. 2, ll. 21–24.
`
`McNamara discloses a decentralized communication arrangement
`wherein nodes originating a message (a source node) and nodes receiving a
`message (a destination node) can be located at any respective points in the
`CATV system. Ex. 1007, col. 1, ll. 53–57. The source node transmits a
`message toward the headend, and the headend rebroadcasts the message
`selectively, thereby providing an arrangement where a source node is able to
`transmit a message to a destination node, wherever located. Id. at col. 1,
`ll. 58–65; see id. at col. 4, ll. 9–20, col. 5, ll. 1–12. McNamara explains that
`providing decentralized system intelligence offers the following advantages:
`(1) continuation of further development of consumer services and
`information appliances at node interfaces without further architectural
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`changes at the headend; (2) less complex headend equipment; (3) new
`services are accommodated readily by adding equipment at the server nodes
`which may be located anywhere in the network; (4) enhanced system
`reliability; and (5) disassociation of the CATV operator from the service
`provider. Id. at col. 2, l. 20–col. 3, l. 7.
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`Figure 2 of McNamara is reproduced below:
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`Figure 2 illustrates headend comprising data channel access monitor
`(DCAM) 10, network access controller interface processor 18, and modem
`20. Ex. 1007, col. 3, ll. 14–16, col. 4, ll. 30–34.
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`Figure 3 of McNamara is reproduced below:
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`Figure 3 illustrates CATV system including server nodes 40, 46, subscriber
`nodes 48, link node 50, gateway node 52, and headend including DCAM 10.
`Ex. 1007, col. 3, ll. 17–18, col. 5, l. 55–col. 6, l. 7. CATV system includes
`control nodes, where control over the CATV communications system is
`provided. Id. at col. 5, l. 67–col. 6, l. 3. System control nodes comprise
`DCAM 10 at headend, network access controller (NAC) 34, network
`resource monitor (NRM) 36, and network traffic monitor (NTM) 32. Id. at
`col. 6, ll. 25–28. Two way out of band data channel 30 between NAC 34
`and DCAM 10 is also provided. Id. at col. 6, ll. 31–32. Messages on out of
`band channel 30 between NAC 34 and DCAM 10 are not broadcast
`generally on the CATV network. Id. at col. 6, ll. 33–35. McNamara further
`discloses “system control nodes 3[2], 34, and 36 may be located anywhere
`within the CATV system, except for the DCAM 10 which is located at the
`headend.” Id. at col. 6, ll. 35–38.
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`b. Claim 1
`Petitioner asserts that “McNamara discloses, or in the alternative,
`
`renders obvious a method including the step of ‘reassigning by said central
`controller said remote terminal to a different and suitable signalling data
`channel for communication henceforward,’” as recited in claim 1. Pet. 33
`(citing Ex. 1002 ¶¶ 155–165). Petitioner also asserts that “McNamara
`discloses a headend, which is a central controller.” Id. at 19–20 (citing Ex.
`1002 ¶¶ 128–129; Ex. 1007, Abstract, col. 1, ll. 58–65, Figs. 2, 3; Ex. 1009,
`504); see also id. at 22 (citing Ex. 1007, col. 5, ll. 21–31) (equating the
`claimed central controller with McNamara’s headend). Petitioner contends
`that because McNamara’s network resource manager (NRM) 36 performs
`load leveling, a person having ordinary skill in the art would have
`understood that the NRM reassigns the remote terminals to a different and
`suitable signalling data channel for communication henceforward. Id. at 33
`(citing Ex. 1002 ¶ 160). Petitioner also contends that because
`“McNamara . . . discloses that the NRM ‘may be located anywhere within
`the CATV system,’” “a person of ordinary skill in the art would have read
`McNamara as disclosing that the NRM can be located at the headend.” Id.
`at 33–34 (citing Ex. 1007, col. 6, ll. 35–38; Ex.1002 ¶ 161).
`
`We agree with Patent Owner that McNamara’s headend (i.e., DCAM
`10) does not reassign one or more remote terminals to a different and
`suitable signalling data channel, but instead serves only to determine
`whether a transmission from one node to another node is authorized. Prelim.
`Resp. 28–29 (citing Pet. 19–20). We further agree with Patent Owner that
`Figure 3 of McNamara shows that the NRM is not located at the headend,
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`IPR2014-00746
`Patent 5,563,883
`and shows no direct communication link between DCAM 10 and NRM 36.
`Id. at 34–35.
`
`Petitioner further argues “[t]o the extent that placing the NRM
`‘anywhere within the CATV system’ is inadequate to disclose placing the
`NRM at the headend, a person of ordinary skill in the art would have found
`it obvious to locate the NRM at the headend based on McNamara’s
`teachings.” Pet. 34. To support its argument, Petitioner contends that
`because the NRM performs the important function of allocating CATV
`resources, co-locating the NRM at the place where other network control
`equipment is located would be efficient both from a network traffic
`perspective, as well as a maintenance perspective. Id. at 34 (citing Ex. 1007,
`col. 6, ll. 49–50; Ex. 1002 ¶¶ 162–164). In regard to efficiency, Petitioner
`asserts that co-locating NRM 36 and DCAM 10 at the headend would:
`(1) decrease time to set up a communication session between a source and
`destination node (citing Ex. 1002 ¶ 161, Fig. 34; Ex. 1014, col. 6, ll. 22–26);
`and (2) allow the CATV network operator to service network control
`equipment more easily because the service technician would only need to
`perform service at one location (citing Ex. 1002 ¶ 163). Id. at 34–35.
`
`Patent Owner argues that McNamara teaches away from a centralized
`system, as proposed by Petitioner’s combination. Prelim. Resp. 28–40.
`Patent Owner argues that instead of implementing a centralized system,
`McNamara explains explicitly the disadvantages of a system with an
`intelligent central controller, citing McNamara’s explanation that two-way
`CATV systems were already well-known, but had failed to achieve
`widespread use due to centralization of network intelligence at the headend.
`Id. at 30 (citing Ex. 1007, col. 1, ll. 9–24). Patent Owner also directs our
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`Patent 5,563,883
`attention to McNamara’s description of several flaws of a centralized
`architecture (citing Ex. 1007, col. 1, ll. 25–42) and McNamara’s criticism of
`centralized systems as lacking reliability and security, and for fostering
`unnecessary disputes over access rights (citing Ex. 1007, col. 1, ll. 43–50).
`Id. at 30–31. Patent Owner contends that to solve the problems associated
`with a centralized system, McNamara proposes a decentralized
`communication arrangement with less complex headend equipment. Id. at
`31–32 (citing Ex. 1007, col. 1, ll. 53–65, col. 2, ll. 46–48, col. 4, ll. 31–53,
`col. 6, ll. 25–26). Patent Owner further contends that the entire premise of
`McNamara is the desirability of decentralization over centralization, and
`asserts that NRM 36 and NTM 32 are disassociated intentionally from the
`headend, in accordance with McNamara’s decentralization philosophy. Id.
`at 33–34 (citing Ex. 1007, col. 6, ll. 25–38, Fig. 3). Patent Owner further
`argues that Petitioner’s attempt to centralize DCAM 10, NTM 32, NAC 34
`and NRM 36 would frustrate the entire stated purpose of McNamara. Id. at
`36. Last, Patent Owner argues that instead of considering McNamara as a
`whole, Petitioner relies improperly on a single sentence taken out of context
`as the sole justification for ignoring the entire premise of McNamara. Id. at
`36–38 (citing Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796
`F.2d 443, 447–448 (Fed. Cir. 1996)).
`
`Because McNamara discusses in detail the disadvantages of a CATV
`system with centralized intelligence at the headend (see Ex. 1007, col. 1,
`ll. 9–50, col. 2, ll. 21–25) and seeks to address these disadvantages with a
`system having decentralized system intelligence (see Ex. 1007, col. 2, l. 21–
`col. 3, l. 7, Fig. 3), we determine that a person of ordinary skill, upon
`reading McNamara, would be discouraged from following the path of using
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`centralized intelligence at the headend due to the disadvantages discussed in
`McNamara. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314, 1327 (Fed. Cir. 2009) (citations omitted).
`
`Upon consideration of, and giving appropriate weight to, the teachings
`of McNamara, Petitioner’s arguments, supported by Declarant testimony,
`and Patent Owner’s arguments that McNamara teaches away from
`Petitioner’s proposed modification, we determine that, on the record before
`us, there is insufficient evidence to support a reasonable likelihood that
`Petitioner would prevail in showing that claim 1 is unpatentable.
`
`c. Claims 3 and 4
`Claims 3 and 4 depend from claim 1. As applied by the Petitioner, the
`
`teachings of Rocci and MetroNet, and the teachings of Rocci, MetroNet,
`Zdunek, Dufresne, and Nagasawa do not remedy the deficiencies of
`McNamara discussed in the preceding section regarding claim 1. See Pet.
`35–48. Accordingly, for the same reasons as claim 1, we determine that, on
`the record before us, there is insufficient evidence to support a reasonable
`likelihood that Petitioner would prevail in showing that claims 3 and 4 are
`unpatentable.
`
`2. Unpatentability of Claim 14
`Petitioner contends that independent claim 14 is unpatentable under
`35 U.S.C. § 103(a) as obvious over Thompson, Motorola MC68360, and
`F
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