Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 12
`Entered: August 29, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00454
`Patent 5,563,883
`
`
`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE,
`BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`DROESCH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Patent 5,563,883
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`I. INTRODUCTION
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`Cisco Systems, Inc., (“Petitioner”) filed a Petition1 (Paper 7,
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`“Petition” or “Pet.”) to institute an inter partes review of claims 1–20 (“the
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`challenged claims”) of U.S. Patent No. 5,563,883 (“the ’883 Patent”). See
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`35 U.S.C. §§ 311-19. C-Cation Technologies, LLC (“Patent Owner”) timely
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`filed a Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”) We
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`determine that, under 35 U.S.C. § 314(a), the information presented in the
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`Petition does not demonstrate a reasonable likelihood that Petitioner would
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`prevail with respect to at least one of the challenged claims.
`
`A. Related Proceedings
`
`Petitioner indicates the ’883 Patent is at issue in C-Cation
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`Technologies, LLC v. Time Warner Cable Inc., No 2:14-cv-0030 (E.D. Tex.
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`2014). Pet. 1. Petitioner is a named defendant in the aforementioned
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`proceeding. Claims 1, 3, 4, and 14 of the ’883 Patent are also the subject of
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`a petition for inter partes review filed by ARRIS Group (IPR2014-00746,
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`Paper 1). However, a decision on institution has not been made in that case.
`
`B. The ’883 Patent (Ex. 1002)
`
`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
`
`transmission media, and a plurality of remote terminals dispersed throughout
`
`the network.” Ex. 1002, Abs.; see id. at col. 2, l. 65–col. 3, l. 1.
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`
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`1 “Petition” and “Pet.” refer to the Corrected Petition filed March 12, 2014.
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`2
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`Figure 1 of the ’883 Patent, is reproduced below:
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`
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`Figure 1 illustrates multiple access communication system architecture with
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`interconnections between remote terminals 14, central controller 10, and
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`wide area networks 18. Id. at col. 4, ll. 21–25. Communication channels 16
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`are provided to wide area networks 18, and communication channels 20 are
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`provided for supporting remote terminals 14. Id. at col. 5, ll. 12–15. “All
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`communication signals between central controller 10 and remote terminals
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`14 are multiplexed onto shared transmission media 12.” Id. at col. 5, ll. 21–
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`23. Central controller 10 comprises switch and control mechanism 32;
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`transmitters, called forward signaling data channel (FD) 22 and forward
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`traffic bearer channel (FB) 24; and receivers, called reverse signalling data
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`channel (RD) 26 and reverse traffic bearer channel (RB) 28. Id. at col. 5, ll.
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`15–21, 31–36; see id. at col. 12, l. 36–col. 13, l. 1; see also id. at col. 5, ll. 1–
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`2; col. 12, l. 36–col. 13, l. 1; Fig. 16 (describing the components of central
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`controller 10).
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`Figure 17 of the ’883 Patent, is reproduced below:
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`
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`Figure 17 illustrates a diagram of remote terminal 14. Id. at col. 5, ll. 3–4.
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`Remote terminal 14 comprises transmitter 40 and receiver 36 for
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`communication on shared transmission media 12 (i.e., FB, RB), and radio
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`frequency (RF) data modulator 38 and RF data demodulator 34 for
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`signalling data channels (i.e., FD, RD). Id. at col. 13, ll. 40–45; see id. at
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`col. 5, ll. 46–52. Transmitter 40, receiver 36, data modulator 38, and data
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`demodulator 34 are capable of tuning to the assigned RF frequency. Id. at
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`col. 13, ll. 45–47. Duplexer 170 combines the communication signals to be
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`transmitted and duplicates the communication signals from shared
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`transmission media 12 to receivers 34, 36. Id. at col. 13, ll. 47–51. A micro-
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`processor communicates with Erasable Programmable Read Only Memory
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`(EPROM), Random Access Memory (RAM), RF data demodulator 34, and
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`RF data modulator 38 via a system bus. Id. at col. 13, ll. 51–53. Telephone
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`set 172 includes a keypad, speaker and microphone. Id. at col. 13, ll. 54–55.
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`
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`The ’883 Patent additionally discloses a polling and registration
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`process at central controller 10 (Ex. 1002, col. 4, ll. 33–34; col. 7, ll. 50–67;
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`Fig. 4); and a registration, channel allocation, terminal assignment, and
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`reassignment process at central controller 10 (id. at col. 4, ll. 37–39; col. 8,
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`ll. 16–55; Fig. 6).
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`C. Illustrative Claim
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`
`
`Claims 1, 6, 14, and 19 are independent claims. Claims 2–5 depend
`
`from claim 1, claims 7–13 depend from claim 6, claims 15–18 depend from
`
`claim 14, and claim 20 depends from claim 19. Claim 19, reproduced
`
`below, is illustrative.
`
`19. In a multiple access communication system having a
`central controller, a plurality of communication channels, and a
`plurality of remote terminals, each of said plurality of remote
`terminals comprising:
`(a) user traffic transmitting means for transmitting user
`traffic on an assigned communication channel;
`(b) user traffic receiving means for receiving user traffic on
`an assigned communication channel;
`(c) signalling data transmitting means for transmitting
`signalling data on an assigned communication channel;
`(d) signalling data receiving means for receiving signalling
`data on an assigned communication channel;
`(e) user interfacing means comprising a telephone with a
`keypad;
`(f) system controlling means for controlling the
`communication system comprising a micro-processor and
`associated EPROM and RAM and
`(g) communication controlling means for tuning said
`signalling data transmitting means and for tuning said
`signalling data receiving means under control of said
`central controller a pair of assigned communication
`channels via said micro-processor and associated
`EPROM and RAM.
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`II. ANALYSIS
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`A. Prior Art
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 4,533,948
`
`(“McNamara”) Ex. 1012
`
`U.S. Patent No. 4,742,512
`
`(“Akashi”)
`
`Ex. 1016
`
`U.S. Patent No. 5,355,374
`
`(“Hester”)
`
`Ex. 1013
`
`U.S. Patent No. 5,377,192
`
`(“Goodings”)
`
`Ex. 1015
`
`U.S. Patent No. 5,594,726
`
`(“Thompson”)
`
`Ex. 1009
`
`U.S. Patent No. 5,625,651
`
`(“Cioffi”)
`
`
`
`Ex. 1008
`
`“Multiaccess Protocols in Packet Communication Systems,”
`IEEE Transactions on Communications, vol. COM-28
`no. 4, 1980 (“Tobagi”)
`
`
`
`
`
`
`Ex. 1011
`
`“Modeling and Analysis of Computer Communication Networks,”
`1st ed., Jeremiah F. Hayes, 1984 (“Hayes”)
`
`Ex. 1010
`
`“A Demand-Adaptive Media Access Protocol for Metropolitan Area
`Networks,” by Semir Sirazi, 1986 (“Sirazi”)
`
`Ex. 1014
`
`MPT 1327 A Signalling Standard for Trunked Private Land Mobile
`Radio Systems 1988 (collectively “MPT”)
`
`
`Ex. 1005
`
`MPT 1343 Performance Specification 1988 (collectively “MPT”)
`
`
`
`
`
`
`
`
`
`Ex. 1006
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`B. Asserted Grounds of Unpatentability
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`
`
`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. §§ 102 and 103 based on the following grounds (Pet. 3–4):
`
`1
`
`Ground Claims
`Challenged
`1–4, 6, 7, 10, and
`11
`1, 6–8, 10, 11, and
`14–20
`14–20
`6, 7, 12, and 13
`
`2
`
`3
`4
`
`Basis Reference[s]
`
`§ 102 MPT
`
`§ 102 Cioffi
`
`§ 102 Thompson
`§ 102 Hayes
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`6
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`5
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`6
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`7
`8
`9
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`1–4, 6, 7, 10, and
`11
`1, 6–8, 10 ,11, and
`14–20
`14–20
`6, 7, 12, and 13
`1
`6 and 7
`
`2
`
`3
`
`4
`
`5
`
`8
`
`9
`
`9
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`18
`
`10 and 11
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`19
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`20
`
`12 and 13
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`14–20
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`§ 103 MPT
`
`§ 103 Cioffi
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103 Thompson
`§ 103 Hayes
`§ 103 MPT in view of Cioffi
`§ 103 Hayes and/or MPT
`MPT in view of Cioffi,
`Thompson, and Tobagi
`MPT in view of Thompson,
`McNamara, and Hester
`MPT in view of Thompson,
`and Sirazi
`MPT in view of Thompson,
`Hester, and Goodings
`Cioffi in view of Hayes
`and/or MPT
`§ 103 Cioffi in view of Akashi
`Cioffi in view of Akashi,
`Hayes, and MPT
`MPT in view of Hayes or
`Cioffi
`Hayes in view of MPT
`and/or Cioffi
`§ 103 Thompson in view of Cioffi
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`§ 103
`
`§ 103
`
`§ 103
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`C. Incorporation by Reference
`
`We first address the propriety of Petitioner’s use of footnotes listing
`
`certain paragraphs of the Declaration of Dr. Sumit Roy (Ex. 1001). See Pet.
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`17–19, 24–25, 27–34, 37, 39, 41–43. For example, section VII-A of the
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`Petition presents five asserted grounds that claim 1 is unpatentable, spanning
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`approximately seven pages, including a three-page claim chart. See id. at
`
`17–24 (section VII-A). Section VII-A, however, includes four footnotes
`
`citing Dr. Roy’s Declaration. See id. at 17 n.6, 18 nn.7–8, 19 n.9. The
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`footnotes cite a total of seventeen pages, including eleven pages of claim
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`charts, of Dr. Roy’s Declaration—substantially more pages than section VII-
`
`A in the Petition. See, e.g., id. at 18 n.8 (citing Ex. 1001 ¶¶ 257–64
`
`(referring to approximately seven pages of Dr. Roy’s Declaration, including
`
`a four-page claim chart)), id. at 19 n.9 (citing Ex. 1001 ¶¶ 265–70 (referring
`
`to approximately eight pages of Dr. Roy’s Declaration, including a seven-
`
`page claim chart)). The practice, here, of using footnotes to cite large
`
`portions of another document, without sufficient explanation of those
`
`portions, amounts to incorporation by reference.2
`
`Moreover, the claim charts in the Petition cite to other claim charts
`
`included in Dr. Roy’s Declaration. Using claim 1 as an example, the claim
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`chart indicates the prior art descriptions that purportedly correspond to the
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`limitation “(a) establishing communications between said central controller
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`and said plurality of remote terminals via a plurality of signalling data
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`channels, each of said remote terminals being initially assigned to a pair of
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`predetermined signalling data channels.” Pet. 21. For this limitation, the
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`claim chart cites ¶ 264 of Dr. Roy’s Declaration for two of the grounds
`
`asserted against claim 1 (i.e., Grounds 1 and 5). Paragraph 264 consists of
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`nearly five pages, four pages of which is a claim chart. For two other
`
`grounds asserted against claim 1 (i.e., Grounds 2 and 6), the claim chart cites
`
`¶ 270 of Dr. Roy’s Declaration, which consists of another six-page claim
`
`chart, to explain how the asserted prior art discloses limitation (a). Id. The
`
`
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`2 BLACK’S LAW DICTIONARY 766-67 (6th ed. 1990) (defining incorporation
`by reference as “[t]he method of making one document of any kind become
`a part of another separate document by reference to the former in the latter,
`and declaring that the former shall be taken and considered as a part of the
`latter the same as if it were fully set out therein”).
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`practice, here, of citing to other claim charts in another document also
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`amounts to incorporation by reference.
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`Further, the Petition includes citations to the Declaration to support
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`conclusory statements for which the Petition does not otherwise provide an
`
`argument or explanation. For example, concerning limitation (a) in claim 1,
`
`the claim chart indicates, concerning “Grounds 1 and 5” identified by
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`Petitioner: “MPT Spec. discloses limitation (a) of claim 1. Roy Dec. at
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`¶¶ 54, 67, 261, and 264” and provides a one sentence quotation from the
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`reference and several citations to the reference. Pet. 21. In another example
`
`concerning claim 1, the Petition asserts:
`
`Each of MPT Specification and Cioffi also discloses dynamic
`signal allocation in a multi-access system, including each and
`every feature of claim 1, arranged in the same manner as
`claim 1 requires, and thus anticipates the claim. In the
`alternative, it would have been obvious for a person of ordinary
`skill in the art to modify the teachings of each of MPT
`Specification and Cioffi or to combine the teachings of MPT
`Specification and Cioffi to practice claim 1. The prior art
`references are in the same field of endeavor and the
`combination allows the extension of services from one system
`to another.
`
`Id. at 17–18. This conclusory paragraph is followed by a footnote, citing to
`
`¶¶ 271–273 of Dr. Roy’s Declaration—one and a half pages indicating the
`
`combinations would have been “well within the ordinary creativity of a
`
`person of ordinary skill in the art” and providing reasons why one would
`
`have combined the teachings of the references. This practice of citing the
`
`Declaration to support conclusory statements that are not otherwise
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`supported in the Petition also amounts to incorporation by reference.
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`It is improper to incorporate by reference arguments from one
`
`document into another document. 37 C.F.R. § 42.6(a)(3). One purpose of
`
`the prohibition against incorporation by reference is to eliminate abuses that
`
`arise from incorporation. Rules of Practice for Trials Before The Patent
`
`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal
`
`Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012);
`
`see also DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999)
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`(Incorporation “by reference amounts to a self-help increase in the length of
`
`the [] brief[,]” and “is a pointless imposition on the court’s time. A brief
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`must make all arguments accessible to the judges, rather than ask them to
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`play archeologist with the record.”). In the Petition before us, incorporation
`
`by reference of numerous arguments from Dr. Roy’s 250-page Declaration
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`into the Petition serves to circumvent the page limits imposed on petitions
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`for inter partes review, while imposing on our time by asking us to sift
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`through over 250 pages of Dr. Roy’s Declaration (including numerous pages
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`of claim charts) to locate the specific arguments corresponding to the
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`numerous paragraphs cited to support Petitioner’s assertions.
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`Accordingly, we will not consider arguments that are not made in the
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`Petition, but are instead incorporated by reference to the cited paragraphs
`
`and claims charts of Dr. Roy’s Declaration.
`
`D. Unpatentability Grounds Based on Anticipation
`
`The Petition provides characterizations of the claimed subject matter,
`
`brief summaries of the applied references, and general assertions that the
`
`applied references disclose the claimed subject matter. See Pet. 17–21, 24–
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`30, 32–34, 37–40, 42–43, 45–50. The Petition further includes claim charts
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`providing quotations and citations from each of the applied references. See
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`id. at 21–24, 26–31, 34–41, 44–47, 50–59.
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`
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`A petition for inter partes review must identify how the construed
`
`claim is unpatentable under the statutory grounds on which the petitioner
`
`challenges the claims, and must specify where each element of the claim is
`
`found in the prior art patents or printed publications relied upon. 37 C.F.R.
`
`§ 42.104(b)(4). Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition
`
`must include “a detailed explanation of the significance of the evidence
`
`including material facts, and the governing law, rules, and precedent.” The
`
`Office Patent Trial Practice Guide suggests parties requesting inter partes
`
`review should “avoid submitting a repository of all the information that a
`
`judge could possibly consider, and instead focus on concise, well organized,
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`easy-to-follow arguments supported by readily identifiable evidence of
`
`record.” 77 Fed. Reg. at 48,763 (Aug. 14, 2012). The Petition before us
`
`does not: (1) specify sufficiently where each element of the claims is found
`
`in the applied references, and (2) include a detailed explanation of the
`
`significance of the quotations and citations from the applied references. See
`
`37 C.F.R. §§ 42.104(b)(4), 42.22(a)(2).
`
`
`
`For example, independent claim 19 recites “system controlling means
`
`for controlling the communication system comprising a micro-processor and
`
`associated EPROM and RAM.” Petitioner asserts that claim 19 is
`
`anticipated by Cioffi and by Thompson. Pet. 3, 47–50, 56–59.
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`A portion of the claim chart from the Petition addressing the
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`aforementioned limitation of claim 19 is reproduced below (Pet. 58–59):
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`
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`Petitioner asserts in the claim chart that Thompson and Cioffi disclose
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`limitation (f) and provides quotes and citations from Thompson and Cioffi
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`that allegedly support the assertions. The quotations provided in the claim
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`chart do not specify expressly where the associated EPROM and RAM are
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`disclosed by either Cioffi or Thompson. We also are not persuaded the
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`quotations provided in the claim chart show sufficiently that a person of
`
`ordinary skill in the art in the relevant time period would have understood
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`those quotations to describe an associated EPROM and RAM, as recited in
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`the claim. Furthermore, the Petition does not provide a detailed explanation
`
`of the significance of the quotations and citations from Cioffi and
`
`Thompson, and does not otherwise specify sufficiently where the EPROM
`
`and RAM are disclosed by Cioffi and Thompson. See id. at 47–50, 56–59;
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`37 C.F.R. §§ 42.104(b)(4), 42.22(a)(2).
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`We have reviewed the Petition as to the remaining claims and grounds
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`of unpatentability based on anticipation, and have determined that the
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`Petition provides similarly deficient analyses of the remaining grounds.
`
`Specifically, the remaining grounds also do not (1) specify sufficiently
`
`where each element of the claims is found in the applied references, and (2)
`
`include a detailed explanation of the significance of the quotations and
`
`citations from the applied references. Accordingly, on the record before us,
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`the information presented in the Petition does not demonstrate a reasonable
`
`likelihood that Petitioner would prevail with respect to its assertions of
`
`unpatentability based on anticipation (i.e., Grounds 1 through 4).
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`E. Unpatentability Grounds Based on Obviousness
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`
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`The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art,
`
`(2) any differences between the claimed subject matter and the prior art,
`
`(3) the level of skill in the art, and (4) where in evidence, so-called
`
`secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966). Against this background, the obviousness of the claimed subject
`
`matter is determined. Id. “[R]ejections on obviousness grounds cannot be
`
`sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`418 (2007) (quoting In re Khan, 441 F.3d 977, 998 (Fed. Cir. 2006)).
`
`
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`In addition to the deficiencies discussed above addressing Petitioner’s
`
`assertions based on anticipation, the Petition does not address meaningfully
`
`the scope and content of the prior art, and any differences between the
`
`claimed subject matter and the prior art. See Pet. 17–59. The Petition also
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`does not provide sufficient articulated reasoning with rational underpinning
`
`explaining why one with ordinary skill in the art would modify the teachings
`
`of the applied references to address those differences. The Petition merely
`
`provides conclusory statements to support the assertions of obviousness. See
`
`id. at 17–18, 24–25, 28, 30–33, 37, 39, 41–43, 45–48.
`
`
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`For example, Petitioner asserts that claim 19 would have been obvious
`
`over Cioffi and Thompson. Pet. 4, 47–50, 56–59. Petitioner asserts in the
`
`claim chart that a combination of Thompson and Cioffi discloses each of the
`
`limitations of claim 19, with citations to certain paragraphs of Dr. Roy’s
`
`Declaration. Id. at 56–59. Petitioner provides the following conclusions
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`regarding the combined teachings of Thompson and Cioffi:
`
`[i]t would have been obvious for a person of ordinary skill in
`the art . . . to combine the teachings of Thompson and Cioffi.
`The motivation to combine is in the prior art references: to
`implement different architectures that extend various services to
`users. The prior art references are in the same field of endeavor:
`multi-access communication protocols in multi-access
`communication systems and proposed solutions to common
`problems of multi-access communication protocols.
`
`Id. at 47–48 (footnotes omitted). For exemplary claim 19, the Petition does
`
`not provide sufficient articulated reasoning with rational underpinning
`
`explaining which elements of Thompson would be combined with those of
`
`Cioffi, and why one with ordinary skill in the art would modify the teachings
`
`of Thompson in view of Cioffi’s teachings to arrive at the claimed invention.
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`
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`We have reviewed the Petition as to the remaining claims and grounds
`
`of unpatentability based on obviousness, and have determined that the
`
`Petition provides similarly deficient analyses of the remaining grounds.
`
`Specifically, the remaining grounds also do not provide sufficient articulated
`
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`Patent 5,563,883
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`reasoning with rational underpinning explaining why one with ordinary skill
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`in the art would modify the teachings of the applied references to arrive at
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`the claimed invention. See Pet. 17–59. Therefore, on the record before us,
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`the information presented in the Petition does not demonstrate a reasonable
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`likelihood that Petitioner would prevail with respect to its assertions of
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`unpatentability based on obviousness (i.e., Grounds 5 through 20).
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`F. Time Bar Under 35 U.S.C. § 315(b) Based on Privity
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`
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`Patent Owner argues that Petitioner is a privy of at least one party that
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`was served with a complaint for infringement of the ’883 Patent more than
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`one year prior to the date on which this Petition was filed, and therefore the
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`Petition is barred under 35 U.S.C. § 315(b). Prelim. Resp. 57–60. Because
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`the information presented in the Petition does not demonstrate a reasonable
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`likelihood that Petitioner would prevail with respect to at least one of the
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`challenged claims, we need not address Patent Owner’s assertions that the
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`Petition is barred under 35 U.S.C. § 315(b) based on privity.
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`III. CONCLUSION
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`Based on the record before us, the information presented in the
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`Petition does not demonstrate a reasonable likelihood that Petitioner would
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`prevail in showing that claims 1–20 are unpatentable.
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`IV. ORDER
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`
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`Accordingly, it is ORDERED that the Petition for inter partes review
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`is DENIED.
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`15
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`Exhibit 2002
`IPR2015-00221
`Page 15 of 16
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`

`

`IPR2014-00454
`Patent 5,563,883
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`PETITIONER:
`
`Mitchell G. Stockwell
`Michael S. Pavento
`Vaibhav P. Kadaba
`Russell A. Korn
`KILPATRICK TOWNSEND & STOCKTON LLP
`MStockwell@kilpatricktownsend.com
`MPavento@kilpatricktownsend.com
`WKadaba@kilpatricktownsend.com
`RKorn@kilpatricktownsend.com
`
`
`
`
`
`
`PATENT OWNER:
`
`Lewis V. Popovski
`Jeffrey S. Ginsberg
`David J. Kaplan
`David J. Cooperberg
`KENYON & KENYON LLP
`lpopovski@kenyon.com
`jginsberg@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
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`16
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`Exhibit 2002
`IPR2015-00221
`Page 16 of 16
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`