`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`C-CATION TECHNOLOGIES, LLC,
`
`Plaintiff,
`
`v.
`
`COMCAST CORPORATION, CHARTER
`COMMUNICATIONS, INC., CEQUEL
`COMMUNICATIONS, LLC dba SUDDENLINK
`COMMUNICATIONS, CABLE ONE, INC.,
`ALMEGA CABLE INC., LONGVIEW CABLE
`TELEVISION COMPANY, INC., and KILGORE
`VIDEO, INC.,
`
`
`
`Case No. 2:11-CV-00030-JRG-RSP
`
`
`
`
`
`Defendants.
`
`
`EXPERT REPORT OF STUART LIPOFF REGARDING
`THE INVALIDITY OF U.S. PATENT NO. 5,563,883 AND
`THE MATERIALITY OF UNDISCLOSED PRIOR ART
`
`
`
`
`
`AUGUST 16, 2013
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`APPENDICES AND EXHIBITS ............................................................................1
`
`INTRODUCTION ...................................................................................................3
`
`BACKGROUND AND QUALIFICATIONS .........................................................4
`
`MATERIALS & INFORMATION CONSIDERED ...............................................7
`
`COMPENSATION ..................................................................................................8
`
`ASSERTED CLAIMS .............................................................................................8
`
`SUMMARY OF OPINIONS ...................................................................................8
`
`Relevant Features in the Prior Art .......................................................................9
`
`Cable Television (“CATV”) and Related Prior Art .......................................10
`
`Trunked Radio System Prior Art – MPT 1327 & MPT 1343 ........................12
`
`Combinations of Prior Art .............................................................................13
`
`Lack of Written Description Under Section 112 ...............................................14
`
`Materiality of Prior Art Not Disclosed to the Patent Office ..............................14
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII.
`
`A.
`
`1.
`
`2.
`
`3.
`
`B.
`
`C.
`
`VIII.
`
`UNDERSTANDING OF THE LAW ....................................................................15
`
`Anticipation........................................................................................................15
`
`Obviousness .......................................................................................................16
`
`Written Description Requirement ......................................................................20
`
`Priority Date .......................................................................................................21
`
`CLAIM CONSTRUCTION ...................................................................................21
`
`SKILL LEVEL OF ONE OF ORDINARY SKILL IN THE ART ........................23
`
`THE FIELD OF ART FOR THE ’883 PATENT ..................................................24
`
`Signalling Data vs. Bearer Traffic in Multiple Access Systems ........................24
`
`Managing Resources in Communications Systems ...........................................28
`- i -
`
`A.
`
`B.
`
`C.
`
`D.
`
`IX.
`
`X.
`
`XI.
`
`A.
`
`B.
`
`
`
`
`
`

`

`Approaches to System Monitoring ....................................................................29
`
`Trunked Radio Systems .....................................................................................32
`
`Integrated Services Digital Networks (ISDN) ...................................................34
`
`Pre-DOCSIS Non-Video Telecommunications Services over Cable ................36
`
`History of Development of DOCSIS .................................................................40
`
`THE ’883 PATENT ...............................................................................................44
`
`CLAIM LIMITATIONS OF THE ’883 PATENT IN THE PRIOR ART.............50
`
`Cable Television (“CATV”) and Related Prior Art ...........................................50
`
`U.S. Patent 5,355,374 (“Hester”) ...................................................................50
`
`U.S. Patent 4,533,948 (“McNamara”) and “MetroNet: An Overview of a
`CATV Regional Data Network” (“MetroNet”) .............................................66
`
`U.S. Patent 5,225,902 (“McMullan”) ............................................................80
`
`Trunked Mobile Radio Prior Art........................................................................87
`
`MPT 1327 & MPT 1343 ................................................................................88
`
`Obviousness Combinations of Prior Art ..........................................................107
`
`Response to C-Cation Tech’s Assertions Regarding Secondary Indicia of Non-
`Obviousness .....................................................................................................111
`
`Long-Felt Need ............................................................................................112
`
`Industry Recognition & Praise .....................................................................113
`
`Commercial Success ....................................................................................114
`
`THE ASSERTED CLAIMS ARE INVALID FOR FAILING TO SATISFY THE
`WRITTEN DESCRIPTION REQUIREMENT ...................................................115
`
`The ’883 patent lacks written-description support for “predetermined signaling
`data channels” that are not fixed. .....................................................................115
`
`The ’883 patent lacks written-description support for “signaling data” and
`“traffic bearer” channels that are one and the same. ........................................118
`
`- ii -
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`XII.
`
`XIII.
`
`A.
`
`1.
`
`2.
`
`3.
`
`B.
`
`1.
`
`C.
`
`D.
`
`1.
`
`2.
`
`3.
`
`XIV.
`
`A.
`
`B.
`
`
`
`
`
`

`

`INEQUITABLE CONDUCT...............................................................................121
`
`CONCLUSION ....................................................................................................124
`
`XV.
`
`XVI.
`
`
`
`- iii -
`
`
`
`
`
`

`

`I.
`
`APPENDICES AND EXHIBITS
`
`Appendix No.
`Appendix 1
`Appendix 2
`Appendix 3
`
`Appendix 4
`
`Appendix 5
`
`Appendix 6
`
`
`
`Exhibit No.
`Exhibit 1
`Exhibit 2
`Exhibit 3
`Exhibit 4
`
`Exhibit 5
`Exhibit 6
`Exhibit 7
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`Exhibit 11
`
`Description
`
`Stuart Lipoff Curriculum Vitae
`Materials Reviewed & Information Considered
`Features of the ’883 Patent described in U.S. Patent No. 5,355,374
`(“Hester”)
`Features of the ’883 Patent described in U.S. Patent No. 4,533,948
`(“McNamara”) and “MetroNet: An Overview of a CATV Regional Data
`Network” (“MetroNet” or “the MetroNet paper”)
`Features of the ’883 Patent described in U.S. Patent No. 5,225,902
`(“McMullan”)
`Features of the ’883 Patent described in MPT 1327 – A Signalling Standard
`for Trunked Private Land Mobile Radio Systems (“MPT 1327”) and MPT
`1343 – Performance Specification (“MPT 1343”) (collectively, “MPT
`Specification”)
`
`Description
`U.S. Patent No. 5,563,883 (“the ’883 Patent”)
`U.S. Patent No. 5,355,374 (“Hester”)
`U.S. Patent No. 4,533,948 (“McNamara”)
`“MetroNet: An Overview of a CATV Regional Data Network” (“MetroNet”
`or “the MetroNet paper”)
`U.S. Patent No. 5,225,902 (“McMullan”)
`U.S. Patent No. 4,573,206A (“Grauel”)
`AT&T Website, “History of Network Management”
`Excerpts from R.J. Holbeche, “Land Mobile Radio Systems,” ISBN 0-
`863341-049-9 (1985).
`Excerpts from Joseph A. Pecar, et al., “Telecommunications Factbook,”
`ISBN 0—0-049183-6 (1993).
`“Building the business case for cable telephony,” Business Communications
`Review, Larry Yokell, March 1, 1996.
`Paul Kirvan,“It’s finally happened: cable TV company provides phone
`service,” Communications News, November 1, 1991.
`
`1
`
`

`

`Exhibit 12
`Exhibit 13
`
`Exhibit 14
`
`Exhibit 15
`Exhibit 16
`Exhibit 17
`
`Exhibit 18
`
`Exhibit 19
`
`
`
`
`U.S. Patent No. 5,421,030 (“Baran”)
`“Com21 Unveils Integrated Cable-Modem, Toll-Quality Telephony,”
`Modem User News, January 1, 1999.
`“Continental Cablevision Launches High-Speed Internet
`Service.(Originated from The Florida Times-Union, Jacksonville)”,
`September 23, 1996 , Stansel, Ed, Jr., Knight Ridder/Tribune Business
`News
`U.S. Patent No. 4,210,780 (“Hopkins”)
`U.S. Patent No. 4,868,811 (“Suzuki”)
`RFC 1065 - Structure and Identification of Management Information
`for TCP/IP-based internets (Aug. 1988)
`RFC 1066 - Management Information Base for Network Management
`of TCP/IP-based internets (Aug. 1988)
`RFC 1067 - A Simple Network Management Protocol (Aug. 1988)
`
`
`
`2
`
`

`

`II.
`
`INTRODUCTION
`
`1.
`
`My name is Stuart Lipoff. I am currently the president of IP Action Partners Inc.
`
`and have over 40 years of experience in a wide variety of technologies and industries relating to
`
`data communications, including data communications over cable system networks.
`
`2.
`
`I have been retained by Comcast Cable Communications, LLC, Comcast of
`
`Houston, LLC, Charter Communications, Inc., Cable One, Inc., and Cequel Communications,
`
`LLC (collectively, “Defendants”) in the above-captioned action to examine and provide my
`
`expert opinion of the validity of U.S. Patent No. 5,563,883 (“the ’883 Patent”). A copy of the
`
`’883 Patent is attached to this Report as Exhibit 1.
`
`3.
`
`I have also been retained by Defendants to provide my expert opinion regarding
`
`the materiality of certain prior art references to the ’883 Patent that I understand were not
`
`disclosed to or considered by the United States Patent and Trademark Office (“PTO”) during the
`
`prosecution of the ’883 Patent, including whether—in my opinion—the PTO would not have
`
`allowed the ’883 Patent to issue had it been aware of such prior art.
`
`4.
`
`This Report includes a detailed discussion of my background and qualifications,
`
`the background of the technologies involved in and related to this lawsuit, including the accused
`
`cable system technologies and the technology of the ’883 Patent, various prior art references that
`
`disclose—either alone or in combination with each other—all of the relevant features of the ’883
`
`Patent and the asserted claims, my opinions regarding the validity of the asserted claims of the
`
`’883 Patent, and my opinions regarding the materiality of prior art references that I understand
`
`were not disclosed to or considered by the PTO during the prosecution of the ’883 Patent. The
`
`bases and reasons for my opinions are also set forth in this Report.
`
`3
`
`

`

`5.
`
`As explained below, it is my opinion that the asserted claims of the ’883 Patent
`
`are invalid in view of several prior art references and for failing to satisfy certain requirements of
`
`35 U.S.C. § 112. See infra at Sections VII, XIII, and XIV.
`
`6.
`
`It is also my opinion that the PTO would not have allowed the ’883 Patent to issue
`
`if the patentee had disclosed—and the PTO had considered—the prior art references discussed in
`
`Section XV of this Report.
`
`7.
`
`I reserve all rights to amend and/or supplement my opinions, as well as the bases
`
`and reasons for them, based on the nature and content of statements, documentation, data,
`
`evidence, opinions, and/or testimony that Plaintiff C-Cation Technologies, LLC (“C-Cation
`
`Tech”) or its expert(s) may present in this lawsuit, any Court order or guidance that impacts the
`
`scope and nature of C-Cation Tech’s infringement theory and/or the meaning of disputed claim
`
`terms, or based on any additional discovery or information provided to me or found by me in this
`
`matter. This includes, without limitation, any additional or amended claim constructions from
`
`the Court, and any further details C-Cation Tech may provide regarding its infringement
`
`contentions and theories against any of the Defendants for any of the asserted claims.
`
`III. BACKGROUND AND QUALIFICATIONS
`
`8.
`
`I am currently the president of IP Action Partners Inc., which is a consulting
`
`practice serving the telecommunications, information technology, media, electronics, and e-
`
`business industries.
`
`9.
`
`I earned a B.S. degree in Electrical Engineering in 1968 from Lehigh University
`
`and a second B.S. degree in Engineering Physics in 1968, also from Lehigh University. I also
`
`earned a M.S. degree in Electrical Engineering from Northeastern University in 1974 and a MBA
`
`degree from Suffolk University in 1983.
`
`4
`
`

`

`10.
`
`I hold a Federal Communications Commission (“FCC”) General Radiotelephone
`
`License and a Certificate in Data Processing (“CDP”) from the Association for Computing
`
`Machinery (“ACM”)-supported Institute for the Certification of Computing Professionals
`
`(“ICCP”), and I am a registered professional engineer (by examination) in The Commonwealth
`
`of Massachusetts.
`
`11.
`
`I am a fellow of the IEEE Consumer Electronics, Communications, Computer,
`
`Circuits, and Vehicular Technology groups. I am also a member of the IEEE Consumer
`
`Electronics Society National Administration Committee, and was the Boston Chapter Chairman
`
`of the IEEE Vehicular Technology Society. I previously served as 1996-97 President of the
`
`IEEE Consumer Electronics Society, have served as Chairman of the Society’s Technical
`
`Activities and Standards Committee, and am now VP of Publications for the Society. I have also
`
`chaired the search committee for the IEEE Mazura Ibuka Award in consumer electronics and
`
`served as an Ibuka committee member.
`
`12.
`
`I have also presented papers at many IEEE and other meetings. In Fall 2000, I
`
`served as general program chair for The IEEE Vehicular Technology Conference on advanced
`
`wireless communications technology, and I have organized sessions at The International
`
`Conference on Consumer Electronics and was the 1984 program chairman. I also conducted an
`
`eight week IEEE sponsored short course on Fiber Optics Systems Design. In 1984, I was
`
`awarded IEEE’s Centennial Medal and in 2000, I was awarded the IEEE’s Millennium Medal.
`
`13.
`
`As Vice President and Standards Group Chairman of the Association of Computer
`
`Users (“ACU”), I served as the ACU representative to The ANSI X3 Standards group. For the
`
`FCC’s Citizens advisory committee on Citizen’s Band (“CB”) radio (“PURAC”), I served as
`
`Chairman of the task group on user rule compliance. I have been elected to membership in the
`
`5
`
`

`

`Society of Cable Television Engineers (“SCTE”), the ACM, and The Society of Motion Picture
`
`and Television Engineers (“SMPTE”). I also served as a member of the USA advisory board to
`
`the National Science Museum of Israel, presented a short course on international product
`
`development strategies as a faculty member of Technion Institute of Management in Israel, and
`
`served as a member of the board of directors of The Massachusetts Future Problem Solving
`
`Program.
`
`14.
`
`I am a named inventor on seven United States patents and have several
`
`publications on data communications topics in Electronics Design, Microwaves, EDN, The
`
`Proceedings of the Frequency Control Symposium, Optical Spectra, and IEEE publications.
`
`15.
`
`For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I became Vice
`
`President and Director of Communications, Information Technology, and Electronics (“CIE”).
`
`Prior to my time at ADL, I served as a Section Manager for Bell & Howell Communications
`
`Company for four years, and prior to that, as a Project Engineer for Motorola’s Communications
`
`Division for three years.
`
`16.
`
`At ADL, I was responsible for the firm’s global CIE practice in laboratory-based
`
`contract engineering, product development, and technology-based consulting. At both Bell &
`
`Howell and Motorola, I had project design responsibility for wireless communications and
`
`paging products.
`
`17. While employed at ADL, I served as the leader of a project that developed a series
`
`of specifications for residential cable modems known as Data Over Cable Service Interface
`
`Specification, or DOCSIS. The scope of work for this project included developing a roadmap
`
`and strategic framework for evolving the business from internet services to broadband services
`
`combining voice, data, and secure electronic content delivery. This project was performed by
`
`6
`
`

`

`ADL under contract to the Multimedia Cable Network System (“MCNS”) consortium and the
`
`specifications resulting from that project have since been adopted by the United Nations as a
`
`global telecommunications specification. Further details regarding my involvement in this
`
`DOCSIS-related project and the development of the DOCSIS specifications are provided in the
`
`Section XI.G of this Report.
`
`18.
`
`Following my time at ADL, I managed a project (through IP Action Partners) for
`
`Next Generation Network Architecture, LLC (“NGNA”) that produced a five-year planning
`
`horizon vision for services and technology in the cable industry. The services and vision were
`
`then mapped to overall architectures impacting network elements in the back office, head-end,
`
`outside plant, and customer premises, and documented in next generation network
`
`recommendations. The project involved coordination with senior technical staff of several
`
`multiple service operators (“MSOs”) as well as interactions with over one hundred suppliers and
`
`vendors of systems, software, and products to the cable industry.
`
`19.
`
`Additional information regarding my background, qualifications, publications,
`
`and presentations is provided in my curriculum vitae (“CV”), which is attached to this Report as
`
`Appendix 1.
`
`IV. MATERIALS & INFORMATION CONSIDERED
`
`20.
`
`To render the opinions in this Report, I relied upon my extensive experience in
`
`and knowledge of the relevant fields of art, including my knowledge of data communications
`
`technologies in the cable television and related industries, particularly in the time frame leading
`
`up to and as of the priority date of the ’883 Patent.1 I also reviewed and considered the various
`
`documents and information referred to in this Report, as well as the documents and information
`
`listed in Appendix 2 of this Report.
`
`1 The priority date of the ’883 Patent is discussed in Section VIII.D of this Report.
`
`7
`
`

`

`V.
`
`COMPENSATION
`
`21.
`
`I am being compensated for my work in this litigation at a rate of $375 per hour,
`
`plus reasonable expenses. I have received no additional compensation of any kind for my work
`
`on this case. No part of my compensation is dependent on my opinions, the conclusions that I
`
`reach, or the outcome of this case.
`
`VI. ASSERTED CLAIMS
`
`22.
`
`I understand that C-Cation Tech currently asserts claims 1, 3, and 4 of the ’883
`
`Patent against all Defendants (collectively the “Asserted Claims”).
`
`23.
`
`I also understand that C-Cation Tech previously asserted claims 6, 7, 10, and 12
`
`of the ’883 Patent against all Defendants, but am informed and understand that C-Cation Tech
`
`withdrew those claims with prejudice and notified Defendants of that withdrawal on August 1,
`
`2013. I have also been informed and understand that C-Cation Tech previously asserted claim 5
`
`of the ’883 Patent against all Defendants, but that C-Cation Tech informed all Defendants by
`
`email on August 16, 2013, that it is withdrawing its claims of infringement for claim 5 with
`
`prejudice. I therefore do not address the invalidity of claim 5 in this Report.
`
`24. My analysis and opinions regarding the invalidity of the ’883 Patent is therefore
`
`limited to claims 1, 3, and 4 (i.e., the Asserted Claims).
`
`VII. SUMMARY OF OPINIONS
`
`25.
`
`For the reasons stated in this Report, it is my opinion that the Asserted Claims of
`
`the ’883 Patent are invalid in light of the prior art that predates the earliest priority date claimed
`
`by C-Cation Tech for the ’883 Patent. My opinions—and the bases and rationale for them—are
`
`summarized below and explained in further detail Section XIII of this Report.
`
`26.
`
`At trial, I will explain my opinions and conclusions regarding the invalidity of the
`
`Asserted Claims and the bases for my opinions and conclusions. I also expect at trial to provide
`
`8
`
`

`

`a background tutorial on the technology at issue in this case, including the technology of the
`
`prior art cited in my Report, the state of the art at the time of the purported ’883 Patent invention,
`
`the technology to which the ’883 Patent pertains and related technology, and the accused cable
`
`systems and equipment, including the DOCSIS specifications.
`
`27.
`
`I also expect that I will testify regarding the ’883 Patent and what it discloses to a
`
`person of ordinary skill in the art at the time, the technical import of the ’883 Patent file history,
`
`the Asserted Claims, and any relevant rebuttal points to any expert report served by C-Cation
`
`Tech in response to this Report. I will also explain my opinions and conclusions regarding the
`
`prior art references that were not disclosed to or considered by the PTO during prosecution of the
`
`’883 Patent, and whether—in my opinion—the PTO would not have issued the ’883 Patent if it
`
`had given consideration to the undisclosed prior art.
`
`28.
`
`I reserve all rights to supplement or otherwise amend my opinions in this Report
`
`in response to any rulings by the Court or any new contentions, evidence, or other information
`
`presented by the parties in this case.
`
`A.
`
`29.
`
`Relevant Features in the Prior Art
`
`As described in additional detail in Section XII of my Report, the ’883 Patent
`
`describes an approach to dynamically reassign remote terminals to different “signalling data
`
`channels” in a multiple-access system. This approach requires the establishment of
`
`communications between a central controller and remote user terminals over a pair of
`
`predetermined signalling data channels that are initially assigned to the remote terminals, the
`
`monitoring of such signalling data channels for usability, the determination of whether a remote
`
`terminal needs to be reassigned from one of its predetermined signalling data channels to a
`
`different signalling data channel, the determination of whether a different and suitable signalling
`
`data channel (other than the predetermined channel) is available, and the reassignment of the
`
`9
`
`

`

`terminal by the central controller to a suitable and available signalling data channel that is
`
`different from the predetermined signalling data channel.
`
`30.
`
`The prior art listed below (and discussed in my Report) similarly involved
`
`methods for the initial assignment and subsequent reassignment of signalling data channels,
`
`including concepts and technologies that address the same or similar problems as that
`
`purportedly addressed by the ’883 Patent.
`
`1.
`
`Cable Television (“CATV”) and Related Prior Art
`
`31.
`
`The features recited in the Asserted Claims were well-known in the field of cable
`
`system networks at the time of the purported ’883 Patent invention. As discussed in this Report,
`
`several different methods of initially assigning remote terminals to predetermined signalling data
`
`channels, monitoring signalling data channels, and reassigning signalling data channels in the
`
`manner described in and required by the Asserted Claims of the ’883 Patent were well-known
`
`and described in patents and publications before the priority date of the ’883 Patent.
`
`a.
`
`U.S. Patent No. 5,355,374 (“Hester”)
`
`32.
`
`U.S. Patent No. 5,355,374 (“Hester”), entitled “Communication Network With
`
`Divisible Auxilliary Channel Allocation,” describes a communications network with multiple
`
`remotes managed by a central controller called a “Network Control Computer.” The remotes are
`
`initially assigned to a pair of predetermined channels called “Home Frequencies,” and the central
`
`controller keeps track of frequency channels in use and also unused and available in a “Network
`
`Pool Table.”
`
`33.
`
`As discussed in Section XIII of this Report, Hester discloses a number of different
`
`mechanisms for sensing a remote terminal’s need for more bandwidth resources than can be
`
`accommodated on (and hence would overload) the home frequency channel. When remote
`
`terminals require more bandwidth than is available, Hester discloses assigning “spillover”
`
`10
`
`

`

`frequency channels from the pool of available channels. These features of Hester, either alone or
`
`in combination with other prior art discussed in this report, meet every limitation of the Asserted
`
`Claims of the ’883 Patent. A copy of Hester is attached to this Report as Exhibit 2.
`
`b.
`
`U.S. Patent No. 4,533,948 (“McNamara”) and “MetroNet: An
`Overview of a CATV Regional Data Network” (“MetroNet”)
`
`34.
`
`U.S. Patent No. 4,533,948 (“McNamara”), entitled “CATV Communication
`
`System,” describes a two-way data communication architecture for a cable television network
`
`that accommodates data transport between multiple remote terminals. In order to manage this
`
`data on the cable network, McNamara provides a system for managing transmissions via a
`
`central controller at a headend that consists of four subsystems: (1) the “Data Channel Access
`
`Monitor” (DCAM); (2) the “Network Traffic Monitor” (NTM); (3) the “Network Access
`
`Controller” (NAC); and (4) the “Network Resource Monitor” (NRM). This system is also
`
`disclosed in an accompanying article by the lead inventor, Robert McNamara, describing the
`
`MetroNet network, entitled “MetroNet: An Overview of a CATV Regional Data Network”
`
`(“MetroNet”).
`
`35.
`
`In addition, McNamara and MetroNet disclose using multiple remote terminals
`
`called “Network Access Units” (NAUs) that are located at the subscribers’ premises. The
`
`foregoing subsystems monitor the usability of network channels and determine whether any
`
`remote terminals (NAUs) need to be reassigned to different channels. A copy of McNamara and
`
`MetroNet are attached to this Report as, respectively, Exhibits 3 and 4.
`
`c.
`
`U.S. Patent No. 5,225,902 (“McMullan”)
`
`36.
`
`U.S. Patent No. 5,225,902 (“McMullan”), entitled “Automatic Frequency
`
`Selection in a Bi-Directional Cable Television Television System,” describes a method and
`
`system for transmitting data over a cable television channel where a headend controller monitors
`
`11
`
`

`

`parameters including upstream channel throughput and error rates, determines if subscriber
`
`terminals should be reassigned, determines whether better channels are available from a pool of
`
`channels, and reassigns the terminals to the better channel or channels. A copy of McMullan is
`
`attached to this Report as Exhibit 5.
`
`2.
`
`Trunked Radio System Prior Art – MPT 1327 & MPT 1343
`
`37.
`
`As discussed in Sections XI.D and XIII.B of this Report, RF-based systems called
`
`“trunked radio systems” pre-dated the cable television systems discussed herein, including the
`
`cable systems described in the ’883 Patent and accused by C-Cation Tech in this lawsuit. The
`
`primary difference between these cable systems and trunked radio systems was that the latter
`
`systems send radio frequency signals via antennae (e.g., over the airwaves) while the former
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`systems send radio frequency signals via cables (e.g., fiber optic cables and coaxial cables). I
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`note that there is nothing in the Asserted Claims of the ’883 Patent that excludes those claims
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`from covering over-the-air communications systems.
`
`38.
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`Given this fundamental similarity between trunked radio systems and cable
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`systems, much of what had been learned in the design and development of trunked radio systems
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`was applied to design of cable systems, including the design of non-video (e.g., data and voice)
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`services over cable systems.
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`39. MPT 1327 – A Signalling Standard for Trunked Private Land Mobile Radio
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`Systems (“MPT 1327”) and MPT 1343 – Performance Specification (“MPT 1343”) are portions
`
`of a published industry specification for trunked radio systems. Trunked radio systems are
`
`commonly used for public safety communications, such as the radio communication systems
`
`used by the military, police departments, and emergency services (e.g., fire departments). The
`
`foregoing MPT specifications are one of several specifications for trunked radio systems.
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`40.
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`The “radio units” in the MPT system are user terminals (either portable or at a
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`fixed location) that can transmit and receive voice and data from a central controller via “over
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`the air” channels instead of wires. Both MPT 1327 and MPT 1343 describe “control” channels
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`for signalling and data, and “traffic” channels for signalling, data, and voice.
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`41.
`
`In the MPT system, the trunked system controller (“TSC”) and radio unit
`
`terminals establish communications over the system’s control channels, which consist of a pair
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`of predetermined forward and reverse channel frequencies. The control channel pairs are also
`
`used to set up voice and data communications on the traffic channels. The channels in the MPT
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`system are monitored for conditions including load, interference, collisions, and transmission
`
`errors. If necessary, the TSC can—at any time—re-assign a radio terminal from its initial
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`control (or traffic) channels to different control (or traffic) channels. I understand that copies of
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`MPT 1327 and MPT 1343 were provided to C-Cation Tech during the course of this litigation.
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`Given the size of the MPT Specification, I have not attached MPT 1327 and MPT 1343 to this
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`Report.
`
`3.
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`Combinations of Prior Art
`
`42.
`
`As discussed in Section XIII.C of this Report, and as explained in the detailed
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`discussions of the prior art in Section XIII, it is my opinion that each of the Asserted Claims—to
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`the extent that such claim is not anticipated—consists of obvious and predictable combinations
`
`of features that were known and described in patents and publications before to the priority date
`
`of the ’883 Patent. It is also my opinion that a person of ordinary skill in the art at the time of the
`
`purported ’883 Patent invention would have found such prior art combinations obvious in view
`
`of the state of the technology in the cable industry and related fields.
`
`43.
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`I also respond to and rebut C-Cation Tech’s assertions—set forth in its discovery
`
`responses—pertaining to so-called “Secondary Indicia of Non-Obviousness” in Section XIII.D
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`of this Report, each of which fails at least for lack of evidentiary support or any coherent
`
`rationale to show a nexus between the purported invention of the ’883 Patent and what C-Cation
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`Tech contends is long-felt need, industry praise and recognition, and Defendants’ commercial
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`success.
`
`B.
`
`44.
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`Lack of Written Description Under Section 112
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`As explained in Section XIV of this Report, it is also my opinion that the Asserted
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`Claims lack sufficient written description under 35 U.S.C. § 112, and are therefore invalid. The
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`specification does not convey with reasonable clarity to a person having ordinary skill in the art
`
`that the patentee, as of the filing date of the ’883 Patent, was in possession of an invention that
`
`covered a multi-channel system having only one type of channel (e.g., one without signalling
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`data channels and separate dedicated traffic bearer channels), or that the patentee was in
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`possession of an invention where “predetermined channels” were not preset and fixed channels.
`
`C. Materiality of Prior Art Not Disclosed to the Patent Office
`
`45.
`
`It is also my opinion, as explained in Section XV of this Report, that certain prior
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`art references—which I am informed and understand were known to Dr. Alexander L. Cheng
`
`(the named inventor of the ’883 Patent) but not disclosed to or considered by the Patent Office
`
`Examiner—would have resulted in PTO’s rejection of least Claim 1 of the ’883 Patent had it
`
`been cited to and considered by the PTO during prosecution of the patent. In particular, a
`
`reasonable Patent Office Examiner would not have allowed at least Claim 1 of the ’883 Patent to
`
`issue had he been cited either the McMullan reference or the McNamara reference by Dr. Cheng
`
`during the prosecution of the ’883 patent.
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`VIII. UNDERSTANDING OF THE LAW
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`46.
`
`I am not an attorney and will offer no opinions on the law. I have relied on
`
`instructions from counsel as to the applicable legal standards to use in arriving at my opinions in
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`this Report.
`
`A.
`
`47.
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`Anticipation
`
`I have been informed and understand that a party challenging the validity of an
`
`issued United States patent bears the burden of proving invalidity by clear and convincing
`
`evidence. I understand that the “clear and convincing” standard is higher than a preponderance
`
`of the evidence but lower than beyond a reasonable doubt, and that clear and convincing
`
`evidence is evidence that produces an abiding co