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