`571-272-7822 Entered: July 31, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00635
`Patent 5,563,883
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
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`Petitioner, ARRIS Group, Inc., filed a Petition for inter partes review
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`of claims 1, 3, and 4 of U.S. Patent No. 5,563,883 (Ex. 1001, “the ’883
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`patent”). Paper 2 (“Pet.”). Patent Owner, C-Cation Technologies, LLC,
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`Patent 5,563,883
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`filed a Preliminary Response. Paper 16 (“Prelim. Resp.”).1 Institution of an
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`inter partes review is authorized by statute when “the information presented
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`in the petition . . . and any response . . . shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R.
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`§ 42.108. Upon consideration of the Petition and the Preliminary Response,
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`we conclude the information presented shows there is a reasonable
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`likelihood that Petitioner would prevail in establishing the unpatentability of
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`claims 1, 3, and 4 of the ’883 patent.
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`A. Related Matters
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`The parties indicate that Patent Owner has asserted the ’883 patent
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`against Petitioner and other defendants in C-Cation Technologies, LLC v.
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`Time Warner Cable Inc., No. 2:14-cv-00059 (E.D. Tex.) (filed Feb. 4,
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`2014). Pet. 2; Paper 5, 1. The ’883 patent also was asserted in C-Cation
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`Technologies, LLC v. Cable One, Inc., No. 2:11-cv-00030 (E.D. Tex.) (filed
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`Jan. 25, 2011; terminated Jan. 21, 2014). Pet. 2; Prelim. Resp. 6.
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`The ’883 patent has been the subject of other petitions for inter partes
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`review. In Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case
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`IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12), the Board denied
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`institution of inter partes review. In ARRIS Group, Inc. v. C-Cation
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`Technologies, LLC, Case IPR2014-00746 (PTAB Nov. 24, 2014) (Paper 22),
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`the Board instituted inter partes review, and subsequently granted Patent
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`
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`1 Patent Owner filed a Motion to Seal its Preliminary Response and Certain
`Associated Exhibits. Paper 17. Along with the Motion to Seal, Patent
`Owner filed a redacted version of the Preliminary Response to be available
`to the public. Paper 18.
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`2
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`Patent 5,563,883
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`Owner’s request for adverse judgment (Paper 28). Another petition, filed on
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`April 13, 2015, is pending. See Unified Patents Inc. v. C-Cation Techs.,
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`LLC, Case IPR2015-01045 (Paper 2).
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`B. The ’883 Patent
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`The ’883 patent “pertains generally to methods and apparatus for
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`facilitating the two-way multi-media communication based on a shared
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`transmission media such as coaxial cable-TV network, and more specifically
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`to methods and apparatus for signalling channel management and protocol.”
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`Ex. 1001, 1:7–12.
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`Figure 1 of the ’883 patent is reproduced below:
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`
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`Figure 1 illustrates a multiple access communication system
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`architecture comprising central controller 10, shared transmission media 12,
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`and a plurality of remote terminals 14. Id. at 5:8–11. Central controller 10
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`interfaces with wide area networks 18 via a pool of communication
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`channels 16. Id. at 5:12–14. Communication channels 20—including
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`forward signalling channels 22, forward traffic bearer channels 24, reverse
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`signalling channels 26, and reverse traffic bearer channels 28—support
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`communications between central controller 10 and remote terminals 14.
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`Id. at 5:15–21.
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`3
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`Patent 5,563,883
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`The ’883 patent describes a method for dynamic signalling channel
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`allocation, assignment of remote terminals to signalling channels, and
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`terminal reassignment. Id. at 2:38–51. Figure 6 is a logic flow diagram
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`illustrating terminal registration, channel allocation, terminal assignment,
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`and reassignment processes. Id. at 8:16–18. In a preferred embodiment, the
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`central controller receives a registration message from a remote terminal
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`and, if the remote terminal is newly registering and authorized, checks for
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`available signalling channels. Id. at 8:18–23. Some factors for determining
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`signalling channel availability include “the number of remote terminals
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`using the signalling data channel, the traffic requirements, past collision
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`count, channel error status, and bandwidth of the signalling data channel.”
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`Id. at 8:35–39. “At any time, the central controller can initiate the terminal
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`re-assignment process if deemed appropriate for the varying traffic demand
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`or other system dynamics.” Id. at 8:32–34.
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`C. Illustrative Claim
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`Independent claim 1 of the ’883 patent is illustrative of the subject
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`matter of the challenged claims:
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`1. In a multiple access communication system
`comprising a central controller, a shared transmission means for
`signalling data and user information, and a plurality of remote
`terminals, a method of allocating signalling data channels
`between said central controller and said plurality of remote
`terminals from a plurality of communication channels and of
`assigning remote terminals comprising the steps of:
`
`(a) establishing communications between said central
`controller and said plurality of remote terminals via a plurality
`of signalling data channels, each of said remote terminals being
`initially assigned to a pair of predetermined signalling data
`channels;
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`4
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`(b) monitoring the status of a plurality of the signalling
`data channels in use between said central controller and said
`plurality of remote terminals for the usability of said signalling
`data channels;
`
`(c) determining whether one of said plurality of remote
`terminals needs to be reassigned to a different signalling data
`channel other than said predetermined signalling data channel;
`
`(d) determining whether a different and suitable
`signalling data channel is available other than said
`predetermined channel; and
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`(e) reassigning by said central controller said remote
`terminal to a different and suitable signalling data channel for
`communication henceforward.
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`Ex. 1001, 14:27–53.
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`D. Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1, 3, and 4 of the ’883 patent are
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`unpatentable based on the following specific grounds (Pet. 19–60):
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`5
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`References
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`Basis
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`Challenged
`Claim(s)
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`MPT 1343,2 MPT 1347,3 and
`MPT 13274
`MPT 1343, MPT 1347, MPT
`1327, Zdunek,5 and Dufresne6
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`35 U.S.C. § 103(a)
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`1 and 4
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`35 U.S.C. § 103(a)
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`3
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`In its analysis, Petitioner relies on the declaration testimony of Mr. Stuart
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`Lipoff. See Ex. 1002.
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`II. DISCUSSION
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`A. 35 U.S.C. § 325(d)
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`As an initial matter, we address Patent Owner’s argument that we
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`should exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.
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`Prelim. Resp. 6–14. Under that provision, in determining whether to
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`institute, “the Director may take into account whether, and reject a
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`petition . . . because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.” 35 U.S.C. § 325(d)
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`(emphasis added). Patent Owner urges us to exercise our discretion under
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`§ 325(d) in order to preclude “serial challenges” to the ’883 patent. Prelim.
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`Resp. 11–12.
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`2 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 (1991) (Ex. 1006,
`“MPT 1343”).
`3 MPT 1347 RADIO INTERFACE SPECIFICATION FOR COMMERCIAL TRUNKED
`NETWORKS OPERATION IN BAND III, SUB-BANDS 1 AND 2 (1991) (Ex. 1007,
`“MPT 1347”).
`4 MPT 1327 A SIGNALLING STANDARD FOR TRUNKED PRIVATE LAND MOBILE
`RADIO SYSTEMS (1991) (Ex. 1005, “MPT 1327”).
`5 U.S. Patent No. 4,870,408, issued Sept. 26, 1989 (Ex. 1008, “Zdunek”).
`6 U.S. Patent No. 4,920,533, issued Apr. 24, 1990 (Ex. 1009, “Dufresne”).
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`6
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`This is the third petition requesting inter partes review of the
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`’883 patent. In the first petition, filed in February 2014, Cisco Systems, Inc.
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`challenged claims 1–20 of the ’883 patent. See Cisco Sys., Inc. v. C-Cation
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`Techs., LLC, Case IPR2014-00454, slip op. at 2 (PTAB Aug. 29, 2014)
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`(Decision Denying Institution, Paper 12) (“Cisco”). Among numerous other
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`grounds, the Cisco petition asserted that claims 1, 3, and 4 were anticipated
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`and rendered obvious by MPT 1343 and MPT 1327. Id. at 6–7. In August
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`2014, the Board denied institution of inter partes review in IPR2014-00454.
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`Id. at 15.
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`In May 2014, while the Cisco petition was pending, Petitioner ARRIS
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`Group filed a petition challenging claims 1, 3, 4, and 14 of the ’883 patent.
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`See ARRIS Group, Inc. v. C-Cation Techs., LLC, Case IPR2014-00746, slip
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`op. at 2 (PTAB Nov. 24, 2014) (Institution Decision, Paper 22) (“ARRIS I”).
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`In ARRIS I, Petitioner asserted grounds based primarily on two prior art
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`references, McNamara and MetroNet. Id. at 14. In November 2014, the
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`Board instituted inter partes review in ARRIS I, but only as to claim 14 of
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`the ’883 patent. Id. at 28. In February 2015, Petitioner filed the Petition in
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`this case, which is Petitioner’s second petition challenging the ’883 patent,
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`and the third overall.
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`Patent Owner asserts that in IPR2014-00454, substantially the same
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`prior art and arguments in the instant Petition were presented to and
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`considered by the Board, and the Board declined to institute inter partes
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`review. Prelim. Resp. 13. Patent Owner also argues that we should exercise
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`our discretion to deny the Petition because Petitioner has not explained why
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`it did not assert the prior art on which it now relies earlier than February
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`2015, when it filed the present Petition. Id. at 12. In particular, Patent
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`7
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`Owner faults Petitioner for electing to request an inter partes review based
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`on an alternative theory in ARRIS I, and pursuing its present course only
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`after the Board denied institution on the alternative theory with respect to
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`claims 1, 3, and 4. Id. Furthermore, Patent Owner complains that Petitioner
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`did not attempt to join Cisco’s petition in IPR2014-00454. Id.
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`Under the circumstances presented by this case, we decline to exercise
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`our discretion under § 325(d) to deny the Petition. The same combination of
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`prior art (MPT 1343, MPT 1347, and MPT 1327) has not been presented
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`previously to the Office. Moreover, although Cisco’s petition in IPR2014-
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`00454 did present grounds based on MPT 1343 and MPT 1327, the Board
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`found the petition to be deficient in several respects. Cisco, slip op. at 7–15.
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`As a result, the decision denying institution in IPR2014-00454 did not
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`address the substance of MPT 1343 and MPT 1327 or their applicability to
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`claims 1, 3, and 4. Id. at 11–15. Based on a comparison of the instant
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`Petition with the petition in IPR2014-00454, we agree with Petitioner that
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`the arguments proffered in this case as a whole have not been presented
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`previously to the Office. See Pet. 2–3 n.1 (citing 35 U.S.C. § 325(d)).
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`Furthermore, we are not persuaded by Patent Owner’s argument that
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`we should deny the Petition because it is the second one filed by Petitioner.
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`Unlike several cases cited by Patent Owner, see Prelim. Resp. 13–14, this is
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`not a case in which Petitioner is seeking a “second chance” to assert similar
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`art or arguments as it did in a previous petition. We also note that Petitioner
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`could not have sought to join IPR2014-00454 because no inter partes review
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`was instituted in that case. See 35 U.S.C. § 315(c) (providing for joinder
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`“[i]f the Director institutes an inter partes review”). Under these
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`8
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`circumstances, we decline to exercise our discretion to deny institution in
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`this case.
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`B. 35 U.S.C. § 315(b) Time Bar Based on Privity
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`Patent Owner asserts that the Petition is barred under 35 U.S.C.
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`§ 315(b) because Petitioner is a privy of Comcast, who was served with a
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`complaint for infringement of the ’883 patent more than four years before
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`the date on which the Petition was filed. Prelim. Resp. 15. In the
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`infringement proceeding, C-Cation Technologies, LLC v. Cable One, Inc.,
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`No. 2:11-cv-00030 (E.D. Tex.) (“the 2011 district court proceeding”), Patent
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`Owner filed a complaint on January 25, 2011, and filed an amended
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`complaint adding Comcast as a defendant on April 5, 2011. Prelim. Resp. 6
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`& n.3 (citing Exs. 2002, 2010). Pursuant to a settlement agreement, Patent
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`Owner and Comcast stipulated to the dismissal of the 2011 district court
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`proceeding on January 21, 2014. Id. at 7 (citing Ex. 2011).
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`Under 35 U.S.C. § 315(b), an inter partes review may not be
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`instituted if the petition requesting the review is filed more than one year
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`after the date on which a privy of the petitioner is served with a complaint.
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`“Whether a party who is not a named participant in a given proceeding
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`nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-
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`dependent question.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,759 (Aug. 14, 2012) (citing Taylor v. Sturgell, 553 U.S. 880
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`(2008)). “Privity is essentially a shorthand statement that collateral estoppel
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`is to be applied in a given case . . . . The concept refers to a relationship
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`between the party to be estopped and the unsuccessful party in the prior
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`litigation which is sufficiently close so as to justify application of the
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`doctrine of collateral estoppel.” Id. (quoting 154 Cong. Rec. S9987 (daily
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`9
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`ed. Sept. 27, 2008) (statement of Sen. Kyl)). A “common consideration” in
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`determining whether a non-party is in privity with a litigant is “whether the
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`non-party exercised or could have exercised control over a party’s
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`participation in a proceeding.” Id. (citing Taylor, 553 U.S. at 895).
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`In support of its assertion that Comcast is a privy of Petitioner, Patent
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`Owner directs our attention to indemnification clauses in a first purchase
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`agreement (Ex. 2013) and a second purchase agreement (Ex. 2015) between
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`Petitioner and Comcast (collectively, “the Agreements”). Prelim. Resp. 15–
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`18. Specifically, Patent Owner points to certain language contained in the
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`Agreements directed to Comcast providing prompt notice to Petitioner of
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`any infringement claims and Petitioner having sole control or full authority
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`over any claim giving rise to indemnification obligations. Id. (citing
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`Ex. 2013, 6; Ex. 2015, 22).7
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`Patent Owner alleges that Comcast made indemnification claims
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`against Petitioner pursuant to the Agreements in connection with the 2011
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`district court proceeding. Id. at 18–19. To support its allegation, Patent
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`Owner cites Petitioner’s 2013 annual report, filed with the Securities and
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`Exchange Commission, which states: “The Company and Comcast reached
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`a settlement agreement related to Comcast’s litigation with C-Cation,
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`whereby the Company agreed to pay Comcast to settle indemnification
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`claims against the Company in the quarter ended December 31, 2013.” Id.
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`(quoting Ex. 2003, 125) (emphasis and alteration omitted). Patent Owner
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`contends that because indemnification claims were made according to the
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`
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`7 For Exhibits 2003, 2013, and 2015, we cite the page numbers of the
`exhibits as submitted in this proceeding, rather than other page numbers
`appearing on the documents.
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`10
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`provisions of the Agreements, Petitioner had, at the very least, the
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`contractual ability to control the 2011 district court proceeding, and had
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`actual notice of that proceeding nearly four years before it filed the Petition.
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`Id. at 19.
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`As evidence that Petitioner did, in fact, exercise control over
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`Comcast’s participation in the 2011 district court proceeding, Patent Owner
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`submits a privilege log provided to Patent Owner in connection with a later
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`district court action in which Petitioner was a defendant, C-Cation
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`Technologies, LLC v. Time Warner Cable Inc., No. 2:14-cv-00059 (E.D.
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`Tex.). See Ex. 2019. Patent Owner cites entries in the log indicating that
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`during the 2011 district court proceeding, between January 2013 and January
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`2014, Petitioner’s in-house counsel sent more than twenty emails reflecting
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`“legal advice” to Comcast’s in-house counsel or outside litigation counsel,
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`and received more than twenty emails or documents reflecting “legal
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`advice” from Comcast’s outside litigation counsel. Prelim. Resp. 19–20
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`(citing Ex. 2019). Patent Owner also points out that the privilege log refers
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`to Comcast’s in-house counsel as “co-counsel.” Id. at 19. In Patent
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`Owner’s view, this evidence demonstrates “Petitioner’s constant
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`involvement and control of Comcast’s participation in” the 2011 district
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`court proceedings. Id. at 20.
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`In ARRIS I, the Board addressed a similar privity argument presented
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`by Patent Owner, based on all the evidence currently before us, with the
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`exception of the privilege log (Ex. 2019). ARRIS I, slip op. at 8–10. In the
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`earlier case, the Board determined Patent Owner had not provided evidence
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`sufficient to demonstrate that Petitioner exercised or could have exercised
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`control over Comcast’s participation in the 2011 district court proceeding.
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`11
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`Id. at 9. With regard to the Agreements, the Board determined the evidence
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`showed, at best, that Comcast made indemnification claims, and that
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`Petitioner settled those claims with Comcast. Id. at 10; see Ex. 2003, 125.
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`In particular, the Board found the evidence was insufficient to show that
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`Comcast provided prompt notification to Petitioner under the Agreements or
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`that Petitioner exercised sole control or full authority as provided for in the
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`Agreements. ARRIS I, slip op. at 10.
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`We reach a similar conclusion based on the present record in this case.
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`Contrary to Patent Owner’s argument, the existence of written
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`communications between Petitioner’s in-house counsel and Comcast’s
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`counsel, even if characterized as “legal advice,” does not establish that
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`Petitioner controlled Comcast’s participation in the 2011 district court
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`proceeding. Moreover, the present record does not demonstrate sufficiently
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`that Comcast made claims under the Agreements that would have triggered
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`Petitioner’s right to exercise control over the 2011 district court proceeding.
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`As in ARRIS I, Patent Owner has not pointed to evidence in the record from
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`which we could infer that Petitioner exercised control or could have
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`exercised control as provided for in the Agreements. See ARRIS I, slip op.
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`at 10.
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`Accordingly, based on the record at this preliminary stage, we
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`determine that Patent Owner has not shown sufficiently that Petitioner and
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`Comcast were in privity with respect to the 2011 district court proceeding.
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`Thus, 35 U.S.C. § 315(b) does not bar institution of inter partes review. Our
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`determination is without prejudice to Patent Owner presenting additional
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`arguments or evidence regarding privity in a Patent Owner Response.
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`12
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`C. Claim Construction
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`As acknowledged by the parties, the ’883 patent has expired. Pet. 6;
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`Prelim. Resp. 25. For claims of an expired patent, the Board’s claim
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`construction analysis is similar to that of a district court. See In re Rambus,
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`Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In this context, claim terms “are
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`generally given their ordinary and customary meaning” as understood by a
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`person of ordinary skill in the art in question at the time of the invention.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
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`“In determining the meaning of the disputed claim limitation, we look
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`principally to the intrinsic evidence of record, examining the claim language
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`itself, the written description, and the prosecution history, if in evidence.”
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
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`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
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`Petitioner asserts that for purposes of this proceeding, all claim terms
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`should have their ordinary and customary meaning. Pet. 6. Patent Owner
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`states that its arguments “are not predicated on any particular claim
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`constructions being accepted by the Board.” Prelim. Resp. 25–30. For
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`purposes of this decision, we determine that no claim terms require express
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`construction.
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`D. Asserted Obviousness Grounds
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`Petitioner contends that claims 1 and 4 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over MPT 1343, MPT 1347, and MPT 1327.
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`Pet. 19–51. Petitioner also contends that claim 3 is unpatentable under
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`35 U.S.C. § 103(a) as obvious over MPT 1343, MPT 1347, and MPT 1327,
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`as applied to claim 1, and further in view of Zdunek and Dufresne. Pet. 51–
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`60.
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`1. The MPT References
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`MPT 1343, MPT 1347, and MPT 1327 (collectively, the “MPT
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`Specifications”) are documents promulgated by the British Ministry of Post
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`and Telecommunications providing standards for communications in trunked
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`radio networks. See generally Exs. 1005, 1006, 1007. The MPT
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`Specifications define interrelated aspects of a trunked radio system, and the
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`three documents reference one another explicitly. See, e.g., Ex. 1006 § 1.1
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`(“MPT 1343 is designed to be read in association with MPT 1327.”); id. § 2
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`(MPT 1343 referring to MPT 1327 and MPT 1343 as “associated
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`documents”); Ex. 1005, Foreword (MPT 1327 referring to MPT 1343 and
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`MPT 1347); Ex. 1007, Foreword (MPT 1347 stating that “[a] companion
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`specification, MPT 1343, contains the requirement to be met by radio units
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`to be used with these networks”).
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`MPT 1343 provides definitions of various terms used in the MPT
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`Specifications. Ex. 1006 § 3.1. For example, a “radio unit” is “[a] mobile or
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`other user station contacting a system by normal land mobile radio in
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`accordance with the specification.” Id. A “trunking system controller,” or
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`“TSC,” is defined as “[t]he central intelligence necessary to enable the
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`trunking system to function according to MPT 1327.” Id. A “control
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`channel” is defined as “[a] forward channel and return channel being used
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`for the transmission of messages conforming to MPT 1327 with the primary
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`purpose of enabling the [TSC] to control radio units.” Id.
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`Together, the MPT Specifications describe processes for establishing
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`and maintaining communications in a standard-compliant MPT-based
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`network. For instance, when a radio unit is switched on and has valid
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`registration information stored in memory from a prior use on a network, the
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`radio unit executes a “single channel hunt sequence” and tunes to the control
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`channel indicated in the previous record. Ex. 1006 § 9.3.3.2.2. The radio
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`then attempts to confirm the control channel by testing the channel in
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`accordance with MPT 1343 § 9.3.4 before any transmissions on the control
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`channel are allowed. Id. § 9.3.3.2.2. Once the control channel is confirmed,
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`and the radio determines that registration is not required, the radio is free to
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`initiate calls, and normal operation proceeds. Id. § 10.2.3. If registration is
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`required, and the radio does not hold a successful registration, the radio
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`executes the registration procedures of MPT 1343, which are allowed,
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`denied, or failed by the TSC. Id. § 10.2.3; Ex. 1005 § 8.2.1.2. Once
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`registered, the radio unit enters normal operations on the network. During
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`normal operation, a radio unit monitors its control channel for a variety of
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`conditions to determine whether it must leave that control channel and return
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`to control channel hunting procedures. Ex. 1006 § 9.4.1.
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`In the event of network failure, the network may implement a fall-
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`back procedure to provide reduced network capability until normal function
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`is restored. Id. § 13. When fall-back operation is signaled, each radio unit
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`relapses to a pre-programmed channel. Id. § 13.1. Fall-back procedures
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`may be terminated through either the network signaling to exit from fall-
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`back, or the user selecting to transfer to a different network. Id. § 13.5.
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`2. Claims 1 and 4
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`Petitioner contends that the MPT Specifications teach all of the
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`limitations of independent claim 1. Pet. 19–46. First, Petitioner contends
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`that if the preamble of claim 1 is construed as a limitation, the MPT
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`Specifications disclose all features set forth in the preamble.8 Id. at 19. For
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`example, Petitioner asserts that the MPT Specifications define a frequency
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`divided “multiple access communication system.” Id. at 20 (citing Ex. 1006
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`§§ 4.1, 4.1.1, 4.1.2, 5.1.1, 5.1.2; Ex. 1005 § 1.3.3.1 (describing use of a
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`random access protocol based on slotted Aloha, which is used in multiple
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`access communication systems); Ex. 1002 ¶¶ 87–88). Petitioner also
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`submits that the TSC in the MPT Specifications, which is described as the
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`“central control intelligence” and controls a number of processes, including
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`registration, corresponds to the recited “central controller.” Id. at 21 (citing
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`Ex. 1006 § 3.1; Ex. 1005 §§ 8.1, 8.2). Further, according to Petitioner, the
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`MPT “radio units” are a “plurality of remote terminals,” and airwaves
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`carrying user communications and signalling data on radio frequency
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`channels are “a shared transmission means for signalling data and user
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`information.” Id. at 21–23 (citing Ex. 1006 §§ 4.1.1, 4.1.2, 5.1.1, 5.1.2;
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`Ex. 1005 § 1.3.2).
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`Turning to the method recited in claim 1, Petitioner asserts that the
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`MPT Specifications describe a “method of allocating signalling data
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`channels” (i.e., MPT control channels) “from a plurality of communication
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`channels” (channels in the MPT system which may be flexibly allocated as
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`control channels or traffic channels). Id. at 23 (citing Ex. 1006 § 3.1). For
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`limitations (a)–(e) in the body of claim 1, Petitioner details how the MPT
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`Specifications describe two separate procedures that allegedly perform the
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`recited steps—(i) the single channel hunt sequence, followed by normal
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`operation, and (ii) the fall-back procedure. Id. at 24–46. In Petitioner’s
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`
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`8 For purposes of this decision, we need not decide whether the preamble of
`claim 1 is limiting.
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`analysis of both procedures, each MPT control channel corresponds to a
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`“pair” of “signalling data channels,” as recited in the claim, because each
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`control channel carries signalling messages and comprises both a forward
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`channel and a return channel. Id. at 24–25 (citing Ex. 1006 § 3.1 (definition
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`of “control channel”)).
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`Petitioner contends that the MPT single channel hunt sequence and
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`subsequent normal system operation meet the requirements of steps (a)–(e)
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`in the following manner. Pet. 26–29, 32–33, 35–36, 38–41, 43–45.9 When
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`an MPT radio unit switches on, and the radio holds a valid record of a
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`channel number on which the radio unit most recently was confirmed, the
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`radio tunes to that control channel. Ex. 1006 § 9.3.3.2.2. Thus, according to
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`Petitioner, remote terminals are “initially assigned to a pair of predetermined
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`signalling data channels,” as recited in step (a). Pet. 29. Petitioner asserts
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`that after control channel confirmation and successful registration, normal
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`operation ensues, so that communications between the central controller
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`(i.e., TSC) and remote terminals (i.e., radio units) via a plurality of
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`signalling data channels (i.e., MPT control channels) have been established,
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`as required by step (a). Id. at 27–28.
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`Step (b) of claim 1 recites “monitoring the status of a plurality of the
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`signalling data channels in use between said central controller and said
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`plurality of remote terminals for the usability of said signalling data
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`channels.” Petitioner submits that the disclosed MPT system in normal
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`
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`9 For purposes of this decision, we focus on Petitioner’s contentions
`regarding the single channel hunt sequence and normal operation procedure.
`The Petition provides a similarly detailed analysis for its contention that the
`fall-back procedure also satisfies the limitations of claim 1. See Pet. 29–31,
`33–34, 36–37, 42–43, 45–46.
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`operation meets this limitation because a radio unit monitors its current
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`control channel, e.g., by carrying out error checking measurements, and
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`must leave the channel when a certain error condition occurs. Id. at 32–33
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`(citing Ex. 1006 §§ 9.3.4.3, 9.4.1; Ex. 1007 § 9.4.4). Because the radio unit
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`leaves the current control channel when this condition occurs, Petitioner
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`contends that a determination has been made that the radio unit needs to be
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`reassigned to a different control channel, satisfying step (c) (“determining
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`whether one of said plurality of remote terminals needs to be reassigned to a
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`different signalling data channel other than said predetermined signalling
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`data channel”). Id. at 35 (citing Ex. 1006 § 9.4.1).
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`Step (d) of claim 1 recites “determining whether a different and
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`suitable signalling data channel is available other than said predetermined
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`channel.” Petitioner submits that the system described in the MPT
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`Specifications meets this limitation when a radio unit leaves the current
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`control channel upon occurrence of an error condition and enters the
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`“preferential hunt sequence.” Id. at 38 (citing Ex. 1006 § 9.4.1). In the
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`mandatory “preferential area hunt stage” of that sequence, the radio unit
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`samples control channels identified in its read/write memory. Id. at 39
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`(citing Ex. 1006 § 9.3.3.3). Before communicating on a new (i.e., different)
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`control channel, the radio must confirm the channel and perform error
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`checking, a process that, according to Petitioner, determines whether the
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`channel is available and suitable for use, as required by the claim. Id. at 40
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`(citing Ex. 1002 ¶¶ 154–55).
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`Finally, step (e) of claim 1 recites “reassigning by said central
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`controller said remote terminal to a different and suitable signalling data
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`channel for communication henceforward.” Once a new (i.e., “different and
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`suitable”) control channel has been confirmed, the radio unit initiates a
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`process to register with the network. Ex. 1006 § 10.2.3. Petitioner contends
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`that MPT 1327 describes various registration acknowledgement messages
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`sent by the TSC (i.e., the claimed “central controller”) and demonstrates that
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`the TSC controls the registration process and updates and maintains
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`registration records. Pet. 44–45 (citing Ex. 1005 § 8.2.1.2; Ex. 1006
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`§§ 10.1.1, 10.2.1; Ex. 1002 ¶¶ 166–67). Based on these disclosures,
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`Petitioner contends that a person of ordinary skill in the art would
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`understand that when the TSC grants a new registration, it reassigns the
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`radio unit to the new control channel. Id. at 45 (citing Ex. 1002 ¶ 167).
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`Patent Owner contends that the MPT Specifications do not teach the
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`steps recited in claim 1. Prelim. Resp. 31–44. According to Patent Owner,
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`information obtained from “monitoring” step (b) must be used in step (c) to
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`determine whether a remote terminal needs to be reassigned to a different
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`signalling channel. Id. at 38. Then, contends Patent Owner, step (d)
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`requires determining whether another channel exists that will resolve the
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`problem on the original control channel determined previously. Id. at 33,
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`38. Only then in step (e), Patent Owner continues, does the central
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`controller reassign a remote terminal to the alternative, more suitable
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`channel determined in step (d). Id. a