UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS GROUP, INC.
`AND
`COX COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`
`Case: IPR2015-00635
`U.S. PATENT NO. 5,563,883
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`
`TABLE OF CONTENTS
`
`I. Preliminary Statement ......................................................................................... 1
`
`II. The MPT Specifications are “Printed Publications” ........................................... 3
`
`III. The MPT Specifications Render the Involved Claims Obvious ......................... 6
`
`A.
`
`Single Channel Hunt Sequence Followed by Normal Operation on a
`Control Channel Renders Claims 1, 3, and 4 Obvious............................... 6
`
`1.
`
`Patent Owner’s Interpretation of Limitation 1(c) as Requiring the Step
`to Be Performed by a Central Controller or Something Other than the
`Remote Terminal Is Flawed and Should Again Be Rejected by the
`Board ..................................................................................................... 7
`
`a.
`
`b.
`
`c.
`
`The Claims Show that Where the Inventor Wanted to Limit the
`Performance of Method Steps to Specific Network Equipment, He
`Knew How to Do So ........................................................................ 8
`
`The Specification Does Not Limit Step 1(c) In the Manner C-
`Cation Proposes and Supports Petitioners’ Understanding of the
`Claim .............................................................................................. 10
`
`The Extrinsic Evidence Fails to Justify Injecting a Limitation Into
`the Claim ........................................................................................ 13
`
`2.
`
`The ’883 Patent, the Language of Claim 1, and the Prior Art All Belie
`C-Cation’s Position on Step 1(e) ......................................................... 16
`
`a.
`
`b.
`
`c.
`
`Dr. Heegard’s Admissions Under Oath Show that the TSC
`Performs a Reassignment ............................................................... 16
`
`C-Cation Misinterprets the “Registration” Process of the ’883
`Patent, Leading It to Incorrect Conclusions About the MPT
`Specifications ................................................................................. 17
`
`The Grant of a Registration Request by the TSC Is a Reassignment
`of the Radio Unit to “A Different and Suitable Signalling Data
`Channel For Communications Henceforward” .............................. 19
`
`i
`
`

`
`d. When an MPT-Compliant Radio Unit Needs to Register, It Cannot
`Reassign Itself, a Critical Distinction Between the MPT
`Specifications and Grauel .............................................................. 20
`
`e.
`
`f.
`
`The Claims Do Not Require a “Retune” Command ...................... 22
`
`That Radio Units Do Not Always Need to Register Is of No
`Consequence................................................................................... 23
`
`B.
`
`Fall-Back Mode Also Renders Claims 1, 3, and 4 Obvious .................... 23
`
`C.
`
`The Credibility of the Expert Witnesses .................................................. 25
`
`IV. Conclusion ......................................................................................................... 25
`
`ii
`
`

`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) .............................................................................. 9
`
`Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
`796 F.3d 1312 (Fed. Cir. 2015) .......................................................................... 11
`
`Hill-Tom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) .......................................................................... 11
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) ............................................................................ 3
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ............................................................................ 3
`
`In re NTP,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 3
`
`In re Papst Licensing Digital Camera Litig.,
`778 F.3d 1255 (Fed. Cir. 2015) .......................................................................... 24
`
`In re Tenney,
`254 F.2d 619 (CCPA 1958) .................................................................................. 3
`
`In re Wyer,
`655 F.2d 221 (CCPA 1981) .................................................................................. 3
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) aff’d 517 U.S. 370 (1996) .................................... 25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 24
`
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) .......................................................................... 13
`
`Yoon Ja Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006) .......................................................................... 14
`
`iii
`
`

`
`OTHER AUTHORITIES
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.11 ..................................................................................................... 17
`37 C.F.R. §42.11 ................................................................................................... ..17
`
`iv
`iv
`
`

`
`Abbreviation
`
`’883 patent
`
`Inst. Dec.
`
`Pet.
`
`Prelim. Resp.
`
`Resp.
`
`Tr.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF ABBREVIATIONS
`
`Meaning
`
`U.S. Patent No. 5,563,883
`
`Institution Decision
`
`Petition
`
`Patent Owner Preliminary Response
`
`Patent Owner Response
`
`Transcript
`
`
`
`
`
`v
`
`

`
`PETITIONERS’ UPDATED EXHIBIT LIST
`
`Ex. No.
`
`Brief Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 5,563,883 to Cheng
`
`Declaration of Stuart Lipoff
`
`Curriculum Vitae of Stuart Lipoff
`
`Claim Construction Memorandum and Order from C-
`Cation Techs., LLC v. Comcast Corp., et. al., 2:11-CV-
`30-JRG-RSP, Dkt. 222 (Jul. 3, 2013)
`
`MPT 1327: A Signalling Standard for Trunked Private
`Land Mobile Radio Systems (Revised and reprinted
`November 1991) (“MPT 1327”)
`
`MPT 1343: Performance Specification; System Interface
`Specification for radio units to be used with commercial
`trunked networks operating in Band III sub-bands 1 and
`2 (Revised and Reprinted September 1991) (“MPT
`1343”)
`
`MPT 1347: Radio interface specification; For
`commercial trunked networks operating in Band III, sub-
`bands 1 and 2 (Revised and Reprinted September 1991).
`
`U.S. Patent No. 4,870,408 to Zudnek
`
`U.S. Patent No. 4,920,533 to Dufresne et al.
`
`Radiocommunications Agency: 91-92 Annual Report
`
`William Stallings, Local and Metropolitan Area
`Networks (4th Ed. MacMillan Publishing Co. (1993))
`
`John Graham, The Facts on File Dictionary of
`Telecommunications (1983)
`
`C-Cation Technologies, LLC’s Opening Claim
`Construction Brief in C-Cation Techs., LLC v. Comcast
`
`vi
`
`

`
`Ex. No.
`
`Brief Description
`
`Corp., et al., No. 2:11-cv-00030-JRG-RSP, Dkt. 187
`(filed Mar. 22, 2013)
`
`Robert I. Desourdis, Jr., et al., EMERGING PUBLIC SAFETY
`WIRELESS COMMUNICATIONS SYSTEMS (Artech House,
`2001) (excerpts)
`
`Radiocommunications Agency Home Page (last visited
`1/28/2015)
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 5,117,501 to Childress et al.
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`Thomas Farrell, “A Computer Simulation Analysis of
`Convention and Trunked Land Mobile Radio Systems at
`Wright Patterson Air Force Base” (Jan. 19, 1989).
`
`International Application Publication No. WO 93/16566
`(Aug. 19, 1993)
`
`International Application Publication No. WO 93/16530
`(Aug. 19, 1993)
`
`Standing Protective Order
`
`Declaration of Troy Van Aacken
`
`Transcript of the January 19, 2016 Deposition of Chris
`Heegard, Ph.D.
`
`Exhibit 1 to the January 19, 2016 Deposition of Chris
`Heegard, Ph.D. (annotated copy of ’883 patent, FIG. 6)
`
`Exhibit 2 to the January 19, 2016 Deposition of Chris
`Heegard, Ph.D. (Sept. 2013 Dep. Tr. of C. Heegard,
`Ph.D.)
`
`Exhibit 3 January 19, 2016 Deposition of Chris Heegard,
`Ph.D. (errata and signature to the Sept. 2013 Dep. Tr. of
`C. Heegard)
`
`vii
`
`

`
`Ex. No.
`
`Brief Description
`
`1026
`
`1027
`
`1028
`
`U.S. Patent No. 5,586,150 to Balasubramaniam (filed
`Nov. 24, 1993; issued Dec. 17, 1996)
`
`U.S. Patent No. 5,276,905 to Hurst et al. (filed Feb. 7,
`1990; issued Jan. 4, 1994)
`
`U.S. Patent No. 5,175,870 to Mabey et al. (filed Nov. 30,
`1989; issued Dec. 29, 1992)
`
`1029
`
`EP 0 382 309 A1 (published Aug. 16, 1990)
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Michael Paetsch, Mobile Communications in the US and
`Europe: Regulation, Technology and Markets, 277-324
`(1993)
`
`E.A. Edis & J.E. Varrall, Newnes Telecommunications
`Pocket Book, 142-155 (1992)
`
`In the Matter of Technical Compatibility Protocol
`Standards for Equipment Operating in the 800 MHz
`Public Safety Bands, 4 FCC Rcd. 3874 (F.C.C. May 1,
`1989)
`
`Plaintiff C-Cation Technologies, LLC’s Disclosure of
`Asserted Claims and Infringement Contentions Against
`Cisco Systems, Inc. as served in C-Cation Technologies,
`LLC v. Time Warner Cable, Inc., et al., No. 2:14-cv-59-
`JRG-RSP (E.D. Tex.) on March 31, 2014.
`
`Cisco Systems, Inc., Load Balancing, Dynamic Channel
`Change, and Dynamic Bonding Change in the Cisco
`CMTS Routers (First Published: February 14, 2008; Last
`Updated: October 15, 2012).
`
`viii
`
`

`
`“[T]he name of the game is the claim.”1
`
`I.
`
`PRELIMINARY STATEMENT
`
`C-Cation’s response raises few issues. Besides attempting to smear Mr.
`
`Lipoff’s credibility and cloud the issue of whether the MPT Specifications are
`
`“printed publications” despite unassailable evidence showing that they were
`
`“available free of charge from” the Radiocommunications Agency’s (“RA”) library
`
`by 1993, see Ex. 1010 at 27, C-Cation’s arguments focus largely on rewriting steps
`
`1(c) and 1(e) of claim 1—a tactic the Board rejected in its Institution Decision.
`
`Once again, considering the claims in the context of the ’883 patent, the evidence
`
`supports only one conclusion: claims 1, 3, and 4 are invalid under § 103(a).
`
`It is best to start with what C-Cation does not dispute. Through its silence,
`
`C-Cation concedes that the MPT Specifications disclose the preamble and steps
`
`1(a), 1(b), and 1(d) of claim 1. And, apart from its protestations about steps 1(c)
`
`and 1(e), C-Cation provides no evidence or argument about the patentability of
`
`claims 3 and 4. C-Cation also does not dispute that either of the use cases
`
`presented in the Petition—i.e., single channel hunt or fall-back mode—operate as
`
`1 Giles S. Rich, Extent of Protection and Interpretation of Claims—American
`
`Perspectives, INT’L REV. INDUS. PROP. & COPYRIGHT L. 497, 499 (1990). Judge
`
`Rich’s poetic take on this fundamental truth of patent law has been quoted by the
`
`Federal Circuit. See, e.g., In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
`
`1
`
`

`
`Petitioner has proven they do. Petitioners’ proofs in these respects stand
`
`uncontested. C-Cation’s expert also agrees that despite slight differences in the
`
`characterization of who a person of ordinary skill in the art would have been in
`
`July 1994, any differences between his opinion and Mr. Lipoff’s is immaterial to
`
`the obviousness inquiry. See Ex. 2023, ¶ 27. The disputes, therefore, are quite
`
`narrow, and relate exclusively to steps 1(c) and 1(e).
`
`While C-Cation argues that the MPT Specifications are not “printed
`
`publications,” C-Cation provides no evidence to rebut Petitioners’ proof that those
`
`standards were available without restriction in the RA’s library by 1993. Again,
`
`Petitioners’ proofs stand unrebutted, notwithstanding C-Cation’s premature (and
`
`misplaced) arguments about the admissibility of the MPT Specifications.
`
`C-Cation’s argument that neither the channel hunt sequence nor fall-back
`
`mode disclose step 1(c) of claim 1 is based on its attempt to rewrite step 1(c) of
`
`claim 1 to: (1) add a requirement that step 1(c) be performed by anything other
`
`than what Petitioners point to, and (2) add an unclaimed ordering requirement
`
`based wholly on extrinsic evidence. C-Cation reads purely self-serving limitations
`
`into the claims, and its ordering of steps argument excludes embodiments without
`
`justification. It is improper to rely on extrinsic evidence to rewrite the claims.
`
`Turning to step 1(e), C-Cation argues that MPT’s registration process is not
`
`a reassignment by the central controller. But, C-Cation’s and Dr. Heegard’s
`
`2
`
`

`
`understanding of step 1(e)
`
`is
`
`inconsistent with
`
`the ’883 patent, which
`
`unequivocally calls
`
`the channel assignment/reassignment process part of
`
`registration. See, e.g., Ex. 1001 at 8:50-53. And it is inconsistent with the position
`
`C-Cation has taken in litigation. See Ex. 1033 at B-51. Thus, C-Cation’s new
`
`litigation-inspired position is betrayed by the patent and its own prior position.
`
`As shown in the Petition and as explained below, the evidence establishes
`
`that claims 1, 3, and 4 are invalid as obvious under § 103(a).
`
`II.
`
`THE MPT SPECIFICATIONS ARE “PRINTED PUBLICATIONS”
`
`The evidence shows that the MPT Specifications are “printed publications.”
`
`To qualify as a printed publication, a reference must have been “disseminated or
`
`otherwise made available to the extent that persons interested and ordinarily skilled
`
`in the subject matter or art exercising reasonable diligence can locate” them. In re
`
`NTP, 654 F.3d 1279, 1296 (Fed. Cir. 2011) (internal quotations omitted). This
`
`requires “a case-by-case inquiry.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.
`
`Cir. 2004). While public accessibility is “the criterion by which a prior art
`
`reference” is judged to determine if it is a “printed publication,” id., proof of actual
`
`viewing or dissemination of the reference is not required, see, e.g., In re Lister, 583
`
`F.3d 1307, 1313 (Fed. Cir. 2009) (“[O]nce accessibility is shown, it is unnecessary
`
`to show that anyone actually inspected the reference.”); In re Wyer, 655 F.2d 221,
`
`226 (CCPA 1981); In re Tenney, 254 F.2d 619, 626-27 (CCPA 1958).
`
`3
`
`

`
`As shown in the Petition, see Pet. at 16-17, between 1991 and 1992, the RA,
`
`an agency of the United Kingdom government, published “eleven new or revised
`
`MPT standards,” Ex. 1010 at 24. These standards “continue to be available free of
`
`charge” from the RA’s library. Id. The RA provided a mailing address and a
`
`phone number to allow the public to obtain copies of the standards, including the
`
`MPT Specifications relied on in the Petition. Id. at 33; see also id. at 35 (listing
`
`MPT 1327, MPT 1343, and MPT 1347).
`
`Contrary to C-Cation’s suggestion, these specifications were not a well-kept
`
`secret unknown to those working in the field. The evidence shows that those
`
`skilled in the art were (1) aware of the RA’s work developing the MPT Standards
`
`and (2) knew how to get those standards. For example, a 1993 PCT Publication
`
`identifies the MPT 1327, 1343, and 1347 as describing a “trunking technique.”
`
`See Ex. 1018 at 2. These MPT standards “issued by the British Ministry of Trade
`
`and Industry,” were understood to be “de facto standards in Europe for private
`
`mobile radio networks.” Pet. at 18 (quoting Ex. 1019 at 2). The MPT
`
`Specifications were not only cited in patents by those working in the field, Ex.
`
`1026 (citing MPT 1327 (1988)), Ex. 1027 at 2:47-54 (discussing MPT 1327
`
`(1988)); Ex. 1028 at 4:36-42 (discussing MPT 1327); Ex. 1029 at 3:9-27
`
`(discussing MPT 1327), they were also mentioned in books, Ex. 1030 at 297, 300
`
`(discussing MPT Specifications); Ex. 1031 at 145 (book stamped by Library of
`
`4
`
`

`
`Congress on Oct. 19, 1992 mentioning MPT 1327 and 1343). Further showing that
`
`those skilled in the art knew of the MPT Specifications and how to obtain them
`
`from the RA’s library, the Federal Communication Commission issued an order in
`
`1989 explaining comments from telecommunications stalwarts Motorola, Ericsson,
`
`and Philips relating to the MPT specifications. See Ex. 1032 at 3876 (FCC Order).
`
`Thus, those skilled in the art were aware of MPT’s standardization and did in fact
`
`look to the RA as a source of documentation about the standard. Finally, the very
`
`purpose of an industry standard gives rise to an inference of public accessibility
`
`since the purpose of standards is to have them adopted by those skilled in the art;
`
`they would be academic exercises consuming substantial resources without benefit
`
`otherwise.2 Thus, the evidence shows the MPT Specifications were publicly
`
`available and were known to those skilled in the art.
`
`2 Unlike the Samsung IPR cited by C-Cation, Petitioners are not relying on draft
`
`standards, and there is no evidence that the MPT Specifications were password-
`
`protected; they were available free of charge from the RA’s library. See Ex. 1010
`
`at 24. And, unlike Groupon, which addressed an undated, undistributed university
`
`departmental technical report mentioned publicly on a professor’s list of
`
`publications, in this case, the RA was widely known to have set standards
`
`regarding trunked radio and made them freely available so they could be adopted.
`
`5
`
`

`
`III. THE MPT SPECIFICATIONS RENDER THE INVOLVED CLAIMS
`OBVIOUS
`
`The Petition relies on two modes of operation described by the MPT
`
`Specifications to prove the claims obvious. See, e.g., Pet. at 24, 32. First is the
`
`single channel hunt sequence followed by normal operation on a control channel.
`
`Id. Second is MPT’s fall back procedure. Id. The teachings of the MPT
`
`Specifications are undisputed. Indeed, C-Cation and Dr. Heegard rely heavily on
`
`the Petition and Mr. Lipoff’s testimony to explain the relevant methods. See, e.g.,
`
`Resp. at 28-34; Ex. 2023, ¶¶ 89-90. Despite stating that no “express” claim
`
`construction is necessary, see, e.g., Resp. at 20, C-Cation reads limitations into
`
`steps 1(c) and 1(e) of claim 1. These limitations are not required by the claims, the
`
`’883 patent’s written description, or the file history. C-Cation instead relies
`
`heavily on extrinsic “evidence” to rewrite the claims. This attempt to circumvent
`
`the MPT Specifications misses the mark.
`
`A.
`
`Single Channel Hunt Sequence Followed by Normal Operation on
`a Control Channel Renders Claims 1, 3, and 4 Obvious
`
`Even though C-Cation argues that the single channel hunt and normal
`
`operation mode use case does not practice step 1(c) of claim 1, C-Cation does not
`
`dispute Petitioner’s description of the methods taught by the MPT Specifications
`
`related to single channel hunt sequence. See Resp. at 34-37; see also Pet. at 35-36,
`
`Ex. 1002, ¶¶ 140-141; Ex. 1006, §§ 9.3.3.7 & 9.4.1. Instead of disputing how a
`
`6
`
`

`
`MPT-compliant system operates, C-Cation engages in claim construction to recast
`
`step 1(c) by reading embodiments into the claims and resorting to extrinsic
`
`evidence. Patent Owner’s claim interpretation should again be rejected.
`
`With respect to 1(e), C-Cation does not dispute that the MPT Specifications
`
`describe a reassignment. Instead, it contends that Petitioners identify a registration
`
`process, but, according to C-Cation, the ’883 patent describes registration as a
`
`“separate and distinct step from channel reassignment.” Resp. at 41-44. C-Cation
`
`then tries to distinguish examples from the specification of the ’883 patent from
`
`the MPT Specifications, while suggesting that the MPT Specifications are like
`
`prior art distinguished during prosecution of the ’883 patent. But, the evidence
`
`shows C-Cation incorrectly interprets the ’883 patent and its intrinsic record.
`
`1.
`
`Patent Owner’s Interpretation of Limitation 1(c) as
`Requiring the Step to Be Performed by a Central Controller
`or Something Other than the Remote Terminal Is Flawed
`and Should Again Be Rejected by the Board
`
`C-Cation’s argument regarding step 1(c) is a claim construction argument
`
`and is not even the first time C-Cation has urged the Board to improperly read an
`
`additional structural limitation into step 1(c). C-Cation argued in its Preliminary
`
`Response that steps (b)-(d) needed to be performed by the central controller. See
`
`Prelim. Resp. at 33, 38-39. The Board rejected that argument because “claim 1
`
`does not explicitly require a central controller to perform the recited steps,” thus,
`
`“Patent Owner appears to read limitations into the claim.” Inst. Dec. at 20. C-
`
`7
`
`

`
`Cation now limits its argument to step 1(c).
`
` See Resp. at 3, 34-37.
`
`Notwithstanding a clear dichotomy between method steps where the inventor
`
`limited the performance of a step to a specific aspect of the system and those where
`
`it did not, Patent Owner urges the Board to construe the “determining whether one
`
`of said plurality of remote terminals . . .” limitation to read either (1) “determining
`
`[by said central controller] whether one of said plurality of remote terminals . . .”
`
`or (2) “determining [by something other than a remote terminal] whether one of
`
`said plurality of remote terminals . . . .” See Resp. at 35-36.
`
`C-Cation’s position was flawed then, and is still flawed now. C-Cation
`
`misreads the claims, imports embodiments from the specification, and relies on
`
`unreliable, litigation-inspired, extrinsic evidence in the form of its expert’s
`
`testimony. Resp. at 35-37. None of these provide a basis to read the claim as
`
`Patent Owner proposes.
`
`a.
`
`The Claims Show that Where the Inventor Wanted to
`Limit the Performance of Method Steps to Specific
`Network Equipment, He Knew How to Do So
`
`Starting with the language of the claims, claim 1 defines a method that is
`
`performed in a “multiple access communication system.” Ex. 1001 at 14:27-28.
`
`The multiple access communication system in which the method is performed
`
`includes three components: (1) “a central controller,” (2) a “shared transmission
`
`8
`
`

`
`means,” and (3) a plurality of remote terminals.”3 Id. at 14:27-33. The method has
`
`five steps, of which only one states that it needs to be performed by any specific
`
`equipment: step 1(e). Id. at 14:51-53 (“reassigning by said central controller”).
`
`Where the inventor wanted to limit the method to being performed by a specific
`
`aspect of the system, he knew how to do so. Thus, reading structural requirements
`
`or limits into step 1(c) is contrary to the language the inventor himself chose. Cf.
`
`Acumed LLC v. Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (“The intrinsic
`
`evidence of the specification therefore suggests that the patentees knew how to
`
`restrict their claim coverage to holes passing through at right angles.”).
`
`Other claims also support this conclusion. Claim 2, for example, states
`
`“polling by said central controller,” “sensing by an activated remote terminal,” and
`
`“transmitting . . . from said activated remote terminal to said central controller . . .
`
`.” Ex. 1001 at 14:59, 63, 15:3. Claims 6-12 have similar limitations requiring that
`
`method steps be performed by the central controller or one or more remote
`
`terminals. Ex. 1001 at 15:64-65, 16:1-2, 28-29, 35-62. The language and structure
`
`of the claims are inconsistent with reading a structural limitation into step 1(c).
`
`3 While C-Cation argues that if the central controller does not perform step 1(c),
`
`something other than the remote terminal must do so, e.g., Resp. at 3, the only
`
`other claimed element in the system besides the remote terminal is the
`
`“transmission means” which certainly cannot make the determination of step 1(c).
`
`9
`
`

`
`Even accepting C-Cation’s contention that “the words of step (c) plainly
`
`require a determination about a remote terminal,” Resp. at 35, nothing in the claim
`
`prevents the remote terminal from making the determination about itself. The
`
`determination of limitation 1(c) only needs to apply to “one” remote terminal. Ex.
`
`1001 at 14:43-44. A person of ordinary skill in the art would have understood that
`
`determinations are software-based decisions, see, e.g., Ex. 1002, ¶¶ 83, 142, 146
`
`(describing how a “determination” would have been understood as “a decision that
`
`a pre-specified condition written into computer code has been satisfied”). A
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`remote terminal executing software in accordance with the MPT Specifications,
`
`can make a determination about its behavior. Id. C-Cation’s assertion that “the
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`plain language of step (c) requires a determination whether action directed to a
`
`remote terminal needs to be taken,” even if true, does not preclude a remote
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`terminal that requests reassignment from a central controller as it does in the MPT
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`Specifications. As explained in the next section, Patent Owner’s proffered expert,
`
`Dr. Heegard, agrees that the ’883 patent contemplates such an example. See infra §
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`III.A.1.b.
`
`b.
`
`The Specification Does Not Limit Step 1(c) In the
`Manner C-Cation Proposes and Supports Petitioners’
`Understanding of the Claim
`
`C-Cation does not identify any disclaimer or definition in the specification
`
`for step 1(c). Yet it urges the Board to interpret step 1(c) as being performed by a
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`10
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`

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`central controller, “or at least an element in the system other than the remote
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`terminal itself.” Resp. at 3. C-Cation’s position is contrary to law. Although
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`claim terms “are generally given their ordinary and customary meaning,” Ethicon
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`Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1323 (Fed. Cir. 2015), there
`
`are two exceptions to that general rule: (1) “when a patentee sets out a definition
`
`and acts as his own lexicographer,” and (2) “when the patentee disavows the full
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`scope of the claim term either in the specification or during prosecution,” Hill-Tom
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (internal
`
`quotations omitted). Here, C-Cation points to no definition relevant to step 1(c),
`
`and Dr. Heegard agrees that there are none. See Ex. 1022 at 21:22-22:17. Nor
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`does C-Cation contend that the specification or prosecution history includes a
`
`disclaimer germane to step 1(c). It instead focuses on statements in the
`
`specification that “channel reassignment is ‘initiated’ and ‘controlled’ by the
`
`central controller,” to infer that the remote terminals are not involved in step 1(c).
`
`Resp. at 36. However, nothing in limitation 1(c) or the specification precludes the
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`determination of whether one remote terminal needs to be reassigned from being
`
`carried out by the remote terminal itself.
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`The evidence shows that a person of ordinary skill in the art would have
`
`understood that the ’883 patent describes situations in which remote terminals
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`request reassignment themselves, as C-Cation’s Dr. Heegard explained during his
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`11
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`

`
`deposition. Specifically, in discussing Figure 6, Dr. Heegard admitted that the
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`central controller can receive “a request for reassignment,” Ex. 1022, 63:13-65:4;
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`Ex. 1023 (FIG. 6, annotated), which, as shown in Figure 6, can cause the central
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`controller to issue a command to the remote terminal, Ex. 1001 at FIG. 6.
`
`Figure 7 further shows an example in which a remote terminal can make a
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`decision that it needs to change the channel for communications.4 Ex. 1001 at FIG.
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`7. When a remote terminal is activated or has previously failed while
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`communicating, see Ex. 1001 at 6:41-41-47, the remote terminal awaits a polling
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`message on a forward signalling data channel, FD-x, and if it is not received after a
`
`certain amount of time, the remote terminal will toggle between FD-1 and FD-2,
`
`where FD-2 is a second forward signalling data channel. See id. at 8:61-65; FIG.
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`7. By determining that a timeout has expired, the remote terminal changes the
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`forward signalling data channel it is listening to and/or the reverse signalling data
`
`channel it is transmitting on. Id. at FIG. 7, 8:65-9:2. Thus, the ’883 patent
`
`describes examples
`
`in which a
`
`remote
`
`terminal makes channel-related
`
`determinations about itself, contrary to C-Cation’s claim interpretation argument.
`
`4 This process relates to an example of how “establishing communications” might
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`work, and is recited in claim 2. See Ex. 1001 at 14:54-15:12. It shows, however,
`
`that a determination to change channels can be made by the remote terminal.
`
`12
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`

`
`c.
`
`The Extrinsic Evidence Fails to Justify Injecting a
`Limitation Into the Claim
`
`C-Cation’s reliance on Dr. Heegard’s testimony is at odds with the intrinsic
`
`record.
`
`See Resp. at 36. C-Cation even resorts to misquoting Mr. Lipoff’s
`
`opinion. But, none of this extrinsic evidence can rewrite the claims. “Expert
`
`testimony . . . is less reliable [than the intrinsic record] because it ‘is generated at
`
`the time of and for the purpose of litigation and thus can suffer from bias that is not
`
`present in intrinsic evidence.’” SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187,
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`1195 (Fed. Cir. 2013) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
`
`Cir. 2005) (en banc)).
`
`Turning first to Dr. Heegard’s testimony, he testified in his declaration that
`
`“a person of ordinary skill in the art reading step (c) in light of the specification
`
`would conclude that the central controller performs step (c).” Ex. 2023, ¶ 79. But,
`
`while Dr. Heegard has testified about the ’883 patent numerous times, Ex. 1022 at
`
`6:20-7:4, and purports to be an expert in the ’883 patent, id. at 9:1-5, his testimony
`
`has been inconsistent. While now he says that a person of ordinary skill in the art
`
`would have read limitation 1(c) to be performed by the central controller, he
`
`previously testified that “[t]he only thing that definitely the central controller
`
`does is reassigning because it explicitly says that.” Ex. 1022 at 109:10-12
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`(emphasis added); Ex. 1024 at 67:16-68:16. Further contradicting his declaration
`
`13
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`

`
`testimony, Dr. Heegard admitted in deposition that he had previously testified as
`
`follows:
`
`Q: You were then asked:
`
`“Question: So what – for purposes of your opinions, what
`
`understanding did you use with regard to whether any other claim
`
`steps, apart from 1E, require being performed by the central
`
`controller?
`
`“Answer: I guess I didn’t assume that limitation, that the central
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`controller was doing those. It does the reassignment and it needs
`
`to know the monitoring.”
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`That was your testimony, correct?
`
`A: Yes.
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`Id. at 110:6-17. Dr. Heegard did not change that testimony when he was given the
`
`opportunity before signing his transcript back in 2013. Id. at 110:18-23; see also
`
`Exs. 1024-1025 (Dr. Heegard’s signed errata and deposition). And, while Dr.
`
`Heegard contends that his testimony needed further context, id., his excuse was
`
`that he was applying his understanding of the claims for the purposes of
`
`infringement, not validity, id. at 144:6-147:19. That excuse does not justify his
`
`changed testimony. See, e.g., Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d
`
`1312, 1324 (Fed. Cir. 2006). Dr. Heegard’s contradicting views on the meaning of
`
`step 1(c) is precisely why expert opinion regarding claim construction is entitled to
`
`less weight in the claim construction process than the intrinsic record.
`
`14
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`

`
`With respect to C-Cation’s mischaracterization of Mr. Lipoff’s opinion—
`
`assuming the heavily-redacted expert report is admissible—Patent Owner resorts to
`
`misquoting Mr. Lipoff. See Resp. at 21 (allegedly quoting Ex. 2028, ¶ 365). A
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`side-by side comparison of what Mr. Lipoff’s report said, and the words C-Cation
`
`attributes to him appears below (emphasis added to demonstrate the differences):
`
`Patent Owner’s “Quotation”
`
`Mr. Lipoff’s Expert Report
`
`The ’883 Patent makes clear that the
`
`The ’883 Patent makes clear that the
`
`claimed method of claim 1, including
`
`claimed method is initiated and carried
`
`steps (a) to (e) is initiated and carried
`
`out by an apparatus—the central
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`out by an apparatus—the central
`
`controller.
`
`controller.
`
`And, it bears noting that Dr. Heegard disagrees that “steps (a) to (e) [are] initiated
`
`and carried out by an apparatus—the central controller.” See, e.g., Ex. 1022 at
`
`88:7-90:2 (explaining how step 1(a) could be performed by the remote terminal or
`
`central controller since claim 1(a) does not specify what performs the step). Mr.
`
`Lipoff’s ambiguous statement from an expert report (even as misquoted by Patent
`
`Owner) cannot change the plain language of claim 1.5
`
`5 Statements made to the Court by district court counsel also cannot change the
`
`claim language since counsel’s statement that the “central controller plays