IPR2014-00746
`U.S. Patent No. 5,563,883
`
`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
`U.S. Patent 5,563,883
`
`Before the Honorable KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`PETITIONER’S REQUEST FOR REHEARING
`
`Pursuant to 37 C.F.R. § 42.71(d), the undersigned, on behalf of and acting in
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`a representative capacity for Petitioner ARRIS Group, Inc., hereby requests
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`rehearing of the Board’s denial of Petitioner’s request for institution of trial of
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`claims 1, 3, and 4.
`
`Petitioner respectfully submits that the Institution Decision overlooked or
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`misapprehended the precise nature of the teachings of the McNamara Patent as
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`would have been understood by a person of ordinary skill in the art as they pertain
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`1
`
`
`U.S. Patent No. 5,563,883
`
`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
`U.S. Patent 5,563,883
`
`Before the Honorable KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
`MIRIAM L. QUINN Administrative Patent Judges.
`
`PETITIONER’S REQUEST FOR REHEARING
`
`Pursuant to 37 C.F.R. § 42.71(d), the undersigned, on behalf of and acting in
`
`a representative capacity for Petitioner ARRIS Group, Inc., hereby requests
`
`rehearing of the Board’s denial of Petitioner’s request for institution of trial of
`
`claims 1, 3, and 4.
`
`Petitioner respectfully submits that the Institution Decision overlooked or
`
`misapprehended the precise nature of the teachings of the McNamara Patent as
`
`would have been understood by a person of ordinary skill in the art as they pertain
`
`1
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`
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`to decentralization of service provider equipment—as opposed to decentralization
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`of network control modules, such McNamara’s NRM, which McNamara expressly
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`states can be located “anywhere within the CATV system.” Ex. 1007 at 6:35-38.
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`The teachings that were relied on to find a “teaching away” were addressed in the
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`Petition and in the supporting declaration. Aspects of McNamara’s disclosure of
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`an embodiment were shown to relate to decentralization of certain types of
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`equipment—namely service provider equipment—not network equipment like the
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`NRM, the functions of which are at issue in this matter. As demonstrated below,
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`rehearing should be granted, and trial on grounds 1 and 2, addressing claims 1, 3,
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`and 4, should be instituted.
`
`
`I.
`
`INTRODUCTION
`A. The Petition, Evidence, and Proposed Grounds for Trial
`The Petition challenged claims 1, 3, 4, and 14 of U.S. Patent No. 5,563,883
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`based on three grounds. Pet. at 5. Ground 1 challenged claims 1 and 4 under 35
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`U.S.C. § 103(a) as being unpatentable over the McNamara Patent (Ex. 1007) in
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`view of the Rocci Patent (Ex. 1016) and the MetroNet Paper (Ex. 1008). Pet. at 5.
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`Ground 2 challenged claim 3 over the McNamara Patent, the Rocci Patent, the
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`MetroNet Paper, and further in view of the Zudnek Patent (Ex. 1013), the Dufresne
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`Patent (Ex. 1014), and the Nagasawa Patent (Ex. 1015). Pet. at 5. The Petition
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`was supported by exhibits and the testimony of Mr. Stuart Lipoff, who opined on
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`2
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`invalidity from the perspective of a person of ordinary skill in the art. See, e.g.,
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`Ex. 1002, ¶¶ 4, 17, 21-24.
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`With respect to limitation [E] of claim 1—the limitation relevant to the
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`denial of trial on grounds 1 and 2—the Petition described how McNamara
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`discloses a network resource manager or “NRM”. See Pet. at 33. The NRM
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`“provides instructions to the user node modems to change their frequency ‘for
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`purposes of traffic management in allocating CATV bandwidth . . . .’ Ex. 1007 at
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`7:2-7.” Pet. at 33. “[A] person having ordinary skill in the art would have
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`understood that the NRM reassigns the remote terminals to a different and suitable
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`signalling data channel for communication henceforward.” Id. (citing Ex. 1002, ¶
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`160). Since the McNamara Patent discloses that the NRM can be located
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`anywhere in the network (Ex. 1007 at 6:35-38), “a person of ordinary skill in the
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`art would have read McNamara as disclosing that the NRM can be located at the
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`headend.” Pet. at 33-34 (citing Ex. 1002, ¶ 161). In the alternative, the Petition
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`explained that a person of ordinary skill in the art would have understood the
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`disclosure of placing the NRM “anywhere in the CATV system,” and thus
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`placement of the NRM in the headend would have been obvious to a person of
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`ordinary skill in the art. Id. at 34 (citing Ex. 1002, ¶¶ 162-164). Various
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`motivations regarding why a person of ordinary skill in the art would have been
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`motivated to make such a modification to the McNamara patent were provided. Id.
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`3
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`The Petition acknowledges that the McNamara Patent “addresses many
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`issues relating to centralizing service provider equipment at the headend.” Pet. at
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`35 n.1. However, the Petition explains that the McNamara Patent does not
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`disparage “co-location of network control.” Id. Mr. Lipoff’s testimony supported
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`this interpretation of the McNamara Patent. See Ex. 1002, ¶ 164.
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`The Institution Decision
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`B.
`The Institution Decision noted that Patent Owner argued that centralization
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`of components such as the NRM “would frustrate the entire stated purpose of
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`McNamara.” Inst. Dec. at 20 (citing Pat. Owner Prelim. Resp. at 36). “Patent
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`Owner argues that instated of considering McNamara as a whole, Petitioner relies
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`improperly on a single sentence taken out of context as the sole justification for
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`ignoring the entire premise of McNamara.” Id. (citing Pat. Owner Prelim. Resp. at
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`36-38).
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`The Institution Decision credited these arguments and found that McNamara
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`disparages “centralized intelligence at the headend.” Inst. Dec. at 20. The
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`Institution Decision further explained that “a person of ordinary skill, upon reading
`
`McNamara, would be discouraged from following the path of using centralized
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`intelligence at the headend due to the disadvantage discussed in McNamara.” Id.
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`at 20-21. Based on this, the Board denied institution on ground 1 (obviousness of
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`4
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`claim 1 and dependent claim 4); and denied institution of ground 2 (obviousness of
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`dependent claim 2).
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` ARGUMENT
`II.
`A. The Institution Decision Misapprehended or Overlooked the Fact
`that McNamara’s Criticisms of Centralization Relate to Service
`Provider Equipment, Not Network Control Equipment
`
`Contrary to the suggestion that placing the NRM in the headend “would
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`frustrate the entire stated purpose of McNamara,” Inst. Dec. at 20, the Petition
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`explained that McNamara “addresses many issues related to centralizing service
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`provider equipment at the headend and does not specifically address co-location of
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`network control.” Pet. at 35 n.1 (citing Ex. 1007 at 1:33-37; 1:37-38, 1:38-40; 3:1-
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`7; Ex. 1002, ¶ 164). Thus, the stated purpose of decentralization relates to service
`
`provider equipment, not network control equipment. The Institution Decision
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`overlooked or misapprehended this argument and supporting evidence in
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`concluding that “[b]ecause McNamara discusses in detail the disadvantages of a
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`CATV system with centralized intelligence at the headend . . . and seeks to address
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`these disadvantages with a system having decentralized system intelligence . . . ,
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`we determined that a person of ordinary skill, upon reading McNamara, would be
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`discouraged from following the path of using centralized intelligence at the
`
`headend due to the disadvantages discussed in McNamara.” Inst. Dec. at 20-21.
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`5
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`This conclusion overlooks the evidence and argument showing that McNamara’s
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`criticisms were directed to centralization of service provider equipment.
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`Far from failing to consider McNamara as a whole, and far from “ignoring
`
`the entire premise of McNamara,” as the Board paraphrased Patent Owner’s
`
`argument, Mr. Lipoff’s testimony buttresses the explanation in the Petition and
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`demonstrates that one of McNamara’s goals was to decentralize service provider
`
`equipment. As Mr. Lipoff explains:
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`[C]o-locating the NRM at the headend with the DCAM is consistent
`with the purposes of the invention, which was to decentralize the
`system as to the provision of services over the network (and not
`necessarily decentralizing the control of the network itself). This
`conclusion is supported by numerous passages in the McNamara
`Patent itself, which make clear that the problems being addressed
`related to the need to interact with service providers and add their
`services to the network. See, e.g., Ex. 1007 at 1:33-37 (describing
`“cumbersome headend equipment” that must “process different data
`services simultaneously”); id. [at] 1:38:40 (“As entirely new services
`are added to the system, the capability of a centralized system may be
`exceeded . . . .”); id. at 1:46-50 (“Finally, in a centralized system, the
`cable system operator is closely involved with the service providers
`and is burden[ed] with such problems as information privacy, data
`integrity and disputes over rights of access to consumers by
`competing service providers.”). Thus, one of the key advances touted
`by
`the McNamara Patent
`is a “decentralized
`intelligence
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`6
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`communication system” that “tends to dissociate the CATV operator
`from the service provider,” such that “[t]he CATV operator simply
`offers transparent data transport service to be used as desired by the
`service provider. Id. at 3:1-7.
`
`Ex. 1002, ¶ 164 (emphasis added). This evidence, cited in the Petition, stands
`
`unrebutted at this stage of the proceeding. Thus, the arguments presented in the
`
`Petition, and the supporting evidence show that even if McNamara taught away
`
`from some instances of centralization, it taught away from centralizing service
`
`provider equipment, but it does not teach away from “co-location of network
`
`control.” Pet. at 35 n.1.
`
`Given this, McNamara’s disclosure that the NRM could be placed
`
`“anywhere within the CATV system,” was not contradicted by any alleged
`
`“teaching away” of decentralization since the evidence of record establishes that a
`
`person of ordinary skill in the art would have understood McNamara’s preferred
`
`embodiment to decentralize service provider equipment, not equipment like the
`
`NRM.
`
`Therefore, Petitioner respectfully submits that the Board misapprehended the
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`import that one of ordinary skill in the art would have given to McNamara’s
`
`criticisms of centralized service provider equipment at the head end. Thus,
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`rehearing should be granted and trial on claims 1, 3, and 4 should be instituted.
`
`7
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`
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`B.
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`The Institution Decision Overlooked Evidence About How a
`Person of Ordinary Skill in the Art Would have Viewed
`McNamara’s Teachings
`
`The institution decision states that “a person of ordinary skill, upon reading
`
`McNamara, would be discouraged from following the path of using centralized
`
`intelligence at the headend due to the disadvantages discussed in McNamara.”
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`Inst. Dec. 20-21. This conclusion is contradicted by the only testimony in the
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`record about how a person of ordinary skill in the art would read McNamara.
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`Indeed, the very passages cited in the Institution Decision as the reason for
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`concluding that a person of ordinary skill in the art would have concluded that
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`centralizing the NRM would not have been obvious, were addressed by Mr. Lipoff.
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`See Ex. 1002, ¶ 164. They are also cited in the Petition, and support the conclusion
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`that while certain components may not be centralized, some components, like the
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`NRM which can be placed “anywhere in the CATV system,” need not be
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`decentralized. See Pet. at 35 n.1. Instead, just as McNamara suggests, the NRM
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`can be located anywhere in the system. See Ex. 1002, ¶¶ 164-65.
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`C. The Institution Decision Overlooks the Fact that Teaching Away
`is a Question of Fact to be Weighed in an Obviousness Analysis
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`The Institution Decision appears to overlook or misapprehend the fact that
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`whether a reference “teaches away” from a particular claimed combination is a
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`question of fact. See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). As the
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`Federal Circuit explained in In re Gurley:
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`8
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`A reference may be said to teach away 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
`different direction divergent from the path that was taken by the
`applicant. The degree of teaching away will of course depend on the
`particular facts . . . .
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`27 F.3d 551, 553 (Fed. Cir. 1994). Teaching away is not a hard and fast rule and
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`“may not be applicable in all factual circumstances;” while teaching away “is a
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`significant factor to be considered in determining unobviousness, the nature of the
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`teaching is highly relevant, and must be weighed in substance.” Id.
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`Mr. Lipoff examined “the nature of the teachings” in McNamara and
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`“weighed [them] in substance.” Whether the passages cited in the Institution
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`Decision taught away from placing the NRM in the headend—which they do not—
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`institution of a trial and the taking of evidence was necessary to evaluate the
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`evidence of invalidity. Even if Patent Owner could present facts in the form of
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`expert opinion regarding an alleged teaching away, any such fact question should
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`be resolved by way of trial. Thus, rehearing should be granted to institute trial on
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`claims 1, 3, and 4.
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` CONCLUSION
`III.
`In conclusion, the Board misapprehended or overlooked the evidence and
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`argument concerning the teachings of the McNamara Patent as they relate to
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`decentralization and substituted a view of “a person of ordinary skill in the art” that
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`9
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`IPR2014-00746
`U.S. Patent No. 5,563,883
`is not supported by any evidence of record since Mr. Lipoff’s testimony explaining
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`the relevant passages of the McNamara Patent in context from the perspective of a
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`person of ordinary skill in the art stands unrebutted.
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`
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`Dated: December 8, 2014
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`
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`
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`Respectfully submitted:
`
`/s/ Andrew R. Sommer
`
`Andrew R. Sommer (Reg. No. 53,932)
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`T: (202) 282-5000
`
`Jonathan E. Retsky (Reg. No. 34,415)
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601-9703
`T: (312) 558-5600
`
`Attorneys for Petitioner
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`
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`10
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`IPR2014-00746
`U.S. Patent No. 5,563,883
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`§ 42.6(e)—CERTIFICATION OF SERVICE
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`In accordance with § 42.6(e)(1), the undersigned certifies that on the 8th
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`day of December, 2014, the above PETITIONER’S REQUEST FOR
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`REHEARING was served, via electronic mail upon the following counsel for
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`Patent Owner,
`
`Lewis V. Popoviski
`lpopovski@kenyon.com
`
`Jeffrey S. Ginsberg
`jginsberg@kenyon.com
`
`David J. Kaplan
`djkaplan@kenyon.com
`
`David J. Cooperberg
`dcooperberg@kenyon.com
`
`Dated: December 8, 2014
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`
`
`
`
`
`
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`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`
`
`11
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`Respectfully submitted,
`
`/Andrew R. Sommer/
`Andrew R. Sommer
`(Reg. No. 53,932)
`Counsel for Petitioner ARRIS Group,
`Inc.
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