Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC., and COX COMMUNICATIONS, INC.,
`Petitioner,
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`v.
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`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________________
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`Case IPR2015-006351
`Patent 5,563,883
`____________________
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`REDACTED PATENT OWNER’S RESPONSE
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`1
`Cox Communications, Inc., who filed a Petition in IPR2015-01796, has been
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`joined as a petitioner in this proceeding.
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`Table of Contents
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`INTRODUCTION ................................................................................................ 2
`I.
`TECNOLOGY BACKGROUND ........................................................................ 4
`II.
`III. THE ’883 PATENT .............................................................................................. 7
`IV. PROSECUTION HISTORY OF THE ’883 PATENT ...................................... 12
`V.
`THE ASSERTED PRIOR ART AND GROUNDS OF UNPATENTABILITY
` ............................................................................................................................ 17
`VI. CLAIM CONSTRUCTION ............................................................................... 19
`VII. MR. LIPOFF’S TESTIMONY IS UNRELIABLE IN MATERIAL RESPECTS
`AND SHOULD BE ACCORDED NO WEIGHT ............................................. 21
`VIII. PETITIONERS HAVE FAILED TO SHOW THAT THE MPT
`SPECIFICATIONS ARE PRIOR ART PUBLICATIONS ............................... 23
`IX. THE CONTENTS OF THE MPT SPECIFICATIONS ..................................... 26
`A. “Channel Hunt Sequence and Normal Operation on a Control Channel” . 28
`B. “Fall-Back Procedures” .............................................................................. 32
`THE PETITION FAILS TO SHOW THAT CLAIM 1 IS OBVIOUS .............. 34
`A. “Example 1: Channel Hunt Sequence and Normal Operation on a Control
`Channel” Does Not Render Claim 1 Obvious ............................................ 34
`1.
`“Channel hunt sequence and normal operation on a control channel”
`does not disclose step (c) of claim 1 because step (c) requires a
`determination be made about a remote terminal, not by a remote
`terminal ............................................................................................... 34
`“Channel hunt sequence and normal operation on a control channel”
`does not disclose step (e) of claim 1 because step (e) requires
`“reassigning by said central controller” .............................................. 37
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`2.
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`X.
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`2.
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`B. “Example 2: Fall-Back Procedures” Does Not Render Claim 1 Obvious . 48
`1.
`“Fall-back procedures” does not disclose step (c) of claim 1 because
`step (c) requires a determination based on a characteristic that was
`“monitored” in step (b) of claim 1 ...................................................... 48
`“Fall-back procedures” does not disclose step (e) of claim 1 because
`step (e) requires “reassigning by said central controller” ................... 50
`XI. THE PETITION FAILS TO SHOW THAT CLAIMS 3 AND 4 ARE
`OBVIOUS .......................................................................................................... 51
`A. Ground 1: Claim 4 ..................................................................................... 51
`B. Ground 2: Claim 3 ..................................................................................... 51
`XII. CONCLUSION AND RELIEF REQUESTED .............................................................. 52
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Table of Authorities
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`Cases
`Bruckelmyer v. Ground Heaters, Inc.,
` 445 F.3d 1374 (Fed. Cir. 2006) ................................................................................. 24
`Cisco Systems, Inc. v. Constellation Techs. L.L.C.,
` IPR2014-01085 (PTAB Jan. 9, 2015) (Paper 11) .................................................... 23
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`469 F.3d 1005 (Fed. Cir. 2006) ................................................................................. 20
`Groupon, Inc. v. Blue Calypso, LLC,
`CBM2013-00033 (PTAB Dec. 17, 2014) (Paper 51) ................................................ 25
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ........................................................................... 23, 24
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ..................................................................................... 20
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................... 14, 20, 23
`Samsung Elecs. Co. Ltd. et al. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514 (PTAB Sept. 9, 2014) (Paper 18) .............................................. 23, 26
`SRI Int’l, Inc. v. Internet Sec. Sys., Inc.,
` 511 F.3d 1186 (Fed. Cir. 2008) ................................................................................. 23
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00029 (PTAB Mar. 10, 2014) (Paper 49) .................................................. 22
`Zetec, Inc. v. Westinghouse Electric Co., LLC,
` IPR2014-00384 (PTAB July 23, 2014) (Paper 10) ................................................... 19
`Statutes
`35 U.S.C. § 102(b) ........................................................................................................ 26
`35 U.S.C. § 316 ............................................................................................................... 2
`Regulations
`37 C.F.R. §§ 42.22 ........................................................................................................ 19
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`Exhibit List
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`Exhibit #
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`C-Cation 2023
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`Exhibit Description
`Declaration of Dr. Chris Heegard, November 5, 2015, Arris
`Group, Inc. and Cox Communications, Inc. v. C-Cation
`Tech., LLC, IPR2015-00635
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`C-Cation 2024
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`Curriculum Vitae of Dr. Chris Heegard
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`C-Cation 2025
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`Certified File History, U.S. Patent Application No.
`08/276,534
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`C-Cation 2026
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`U.S. Patent No. 4,573,206 to Grauel et al.
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`C-Cation 2027
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`C-Cation 2028
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`Transcript of Deposition of Stuart J. Lipoff, October 20,
`2015, Arris Group, Inc. and Cox Communications, Inc. v.
`C-Cation Tech., LLC, IPR2015-00635
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`Expert Report of Stuart Lipoff Regarding Defendants’
`Non-Infringement of U.S. Patent No. 5,563,883 and
`Related Technical Matters, C-Cation Tech., LLC v.
`Comcast Corp., No. 2:11-cv-30 (E.D. Tex.), dated
`September 6, 2013 (Redacted)
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`Patent Owner C-Cation Technologies, LLC (“Patent Owner”) hereby
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`submits this Response to the Petition for Inter Partes Review (Paper 2, “Petition”)
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`filed by ARRIS Group, Inc. (“ARRIS”).2 This filing is timely in accordance with
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`the schedule set by the Patent Trial and Appeal Board (“the Board”) for this
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`proceeding. Paper 20 at 5.
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`The Board instituted a trial as to the following two grounds of alleged
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`unpatentability:
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`(1) Claims 1 and 4 under U.S.C. § 103(a) as obvious over
`MPT 1343, MPT 1347, and MPT 1327; and
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`2
`Patent Owner also submits this Response to the Petition for Inter Partes
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`review filed by Cox Communications, Inc. (“Cox”). See IPR2015-01796, Paper 1.
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`In seeking joinder with this proceeding, Cox represented that its petition includes
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`“identical” invalidity grounds to those raised by Arris in the instant proceeding.
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`See IPR2015-01796, Paper 3 at 6. The Board granted Cox’s request for joinder
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`and stated that Cox’s petition “asserts the same invalidity grounds and presents the
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`same arguments as the petition in the ARRIS IPR” and “does not present any
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`ground or matter not already at issue in the ARRIS IPR.” IPR2015-00635, Paper
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`26 at 5.
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`ARRIS and Cox are collectively referred to herein as “Petitioners.”
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`(2) Claim 3 under 35 U.S.C. § 103(a) as obvious over MPT
`1343, 1347, and 1327, Zdunek, and Dufresne.
`Paper 19 at 23.
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`“In an inter partes review instituted under this chapter, the petitioner shall
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`have the burden of proving a proposition of unpatentability by a preponderance of
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`the evidence.” 35 U.S.C. § 316(e). The Petition’s propositions of unpatentability
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`fail to meet that burden with respect to any of the claims of U.S. Patent No.
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`5,563,883 (“the ’883 patent”). Pursuant to 35 U.S.C. § 316, Patent Owner
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`respectfully requests that the Board find that originally issued claims 1, 3, and 4 of
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`the ’883 patent have not been proven unpatentable.
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`I.
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`INTRODUCTION
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`The ’883 patent describes and claims a novel method of effectively and
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`efficiently managing the use of signalling data channels in a multiple access
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`communications system that includes remote terminals and a central controller.
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`Key attributes of the method are that the central controller makes a
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`determination whether a remote terminal needs to be reassigned to a different
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`signalling data channel than the one it is currently on, and, if so, the central
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`controller performs the reassignment. Independent claim 1 recites the steps in
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`the method that culminate in a signalling data channel reassignment by the
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`central controller including monitoring the usability of the channels in use
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`(claim step (b)), determining whether any of the remote terminals needs to be
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`reassigned (claim step (c)), and reassigning a remote terminal from one channel
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`to another (claim step (e)).
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`Petitioners’ argument that claims 1, 3 and 4 are unpatentable over the
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`MPT Specifications is deficient in at least two fundamental respects: (1) rather
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`than pointing to disclosure of a central controller (or at least an element in the
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`system other than a remote terminal itself) making a determination that a remote
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`terminal “needs to be reassigned to a different signalling data channel,” as step
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`(c) of claim 1 requires, Petitioners rely on disclosure of a remote terminal
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`making a determination that it needs to reassign itself to a different channel; and
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`(2) rather than pointing to disclosure of a central controller reassigning a remote
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`terminal to a different channel, as step (e) of claim 1 requires, Petitioners point
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`to an alleged “controller” that, after the remote terminal reassigns itself to a
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`different channel, checks whether the remote terminal is authorized to be on the
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`system and records its location. That is, with respect to step (e), Petitioners
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`conflate channel reassignment with the distinct process of terminal registration.
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`The ’883 patent describes that distinct process of remote terminal registration,
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`and delineates between that registration process and the channel reassignment
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`process.
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`Therefore, the Petition relies not on disclosure in the MPT Specifications
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`of what steps (c) and (e) of claim 1 require, but rather applies an unreasonably
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`broad and unsupported interpretation of steps (c) and (e) in an effort to read
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`those steps on the MPT Specifications. The ordinary meaning of the language
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`of steps (c) and (e), by itself, refutes Petitioners' interpretation, and the
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`specification and prosecution history confirm that ordinary meaning.
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`Petitioners' reliance on the testimony of their expert, Stuart Lipoff, is
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`misplaced. Mr. Lipoffs testimony should be accorded no weight because,
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`among other reasons: ( 1) he failed to consider the prosecution history when
`forming his opinions concerning the scope of claim 1 of the patent; and (2) II
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`Accordingly, because the Petition is based on an erroneously broad
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`interpretation of at least steps (c) and (e) of claim 1, as further discussed herein,
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`Petitioners have failed to carry their burden of proving that claims 1, 3, and 4
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`are unpatentable.
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`II.
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`TECNOLOGY BACKGROUND
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`The '883 patent relates to multiple access two-way communication
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`systems. In such systems, terminals share communication pathways carried over
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`a medium such as copper wire, optical fiber, coaxial cabling, or wireless radio
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`bands. Ex. 2023, ,-r 29. Due to the use of a shared medium, a multiple access
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`communication system must further implement a protocol for managing access to
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`the medium by the many communication devices such as nodes or terminals. Id.
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`at ¶ 30.
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`One method for managing contending requests by terminals to access a
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`channel on a shared communication medium is called carrier sense multiple
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`access (CSMA). Id. at ¶ 31. In this method, terminals use a carrier sensing
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`scheme to detect whether other terminals are transmitting on the shared medium
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`before attempting to transmit themselves. Id. at ¶ 31. A means for managing
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`access to multiple shared channels involves the use of a shared signalling channel
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`for communications between a central controller and the terminals to initiate calls
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`on separate call-bearing channels at different frequencies. Id. at ¶ 32.
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`Multiple access two-way communication systems existed at the time of the
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`’883 patent and included, e.g., early cellular telephone networks and two-way
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`cable communication systems. Ex. 2023, ¶ 33. Cellular telephone networks at
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`the time utilized a limited number of control channels at defined frequencies to
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`facilitate communications. Id. at ¶ 33. Cellular phones wishing to enter the
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`network scanned for the control channels and, once acquired, used them to
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`register with the network. Id. After registration, cell phones and base stations
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`exchanged signalling over these control channels to set-up incoming and
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`outgoing calls on separate call-bearing channels at different frequencies. Id.
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`Two-way cable communications systems at the time evolved from
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`predecessor one-way cable networks. Ex. 2023, ¶ 34. For example, the industry
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`was exploring cable based communication networks in which a head-end
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`apparatus periodically polled remote terminals to retrieve data such as pay-per-
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`view purchasing records. Id. at ¶ 39. Also, as digital television was being
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`developed, the popularity of the internet was rising, and cable operators realized
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`that there was an opportunity to develop two-way cable systems to satisfy their
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`subscribers’ rising demand for internet service. Id. at ¶ 37. The existing cable
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`systems’ architecture and channelization led to the idea of providing
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`“downstream data” (i.e., from the cable headend to users via a cable modem)
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`using J.83b, a digital broadcasting standard, and various methods for sending
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`“upstream data” (i.e., from the users to the cable headend). Id.
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`Early two-way cable communication systems developed by Zenith and
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`LANcity, for example, used a “symmetric LAN over cable” architecture in which
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`separate channels were used for upstream and downstream transmissions of both
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`signalling and user data packets. Ex. 2023, ¶ 38. Access to the shared upstream
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`channels was governed using CSMA/CD (carrier sense multiple access with
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`collision detection). Id.
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`With the new and expanding services being offered on multiple access
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`communications systems at the time, and as the number of users attempting to
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`access shared system resources increased, delays associated with processing
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`competing requests for data rate were anticipated by the ’883 patent. Id. at ¶ 40.
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`III. THE ’883 PATENT
`The ’883 patent, which issued on October 8, 1996 from an application filed
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`on July 18, 1994, describes and claims a “dynamic and adaptable method and
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`apparatus to support two-way multi-media communication services on a multiple
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`access communication system, which comprises a central controller, a shared
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`transmission media and a plurality of remote terminals dispersed throughout the
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`network.” Ex. 1001, Abstract.
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`The ’883 patent provides an improvement over previous multiple access
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`communication systems, e.g., cellular and radio communication systems, which,
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`as noted in the specification, were susceptible to degraded communication quality
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`and responsiveness due to reliance on predetermined and fixed control channels
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`for carrying signalling data, i.e., information concerned with the control of
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`communications. See Ex. 1001, cols. 1:15-38, 8:32-39; Ex. 2023, ¶¶ 42, 44-45.
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`This degraded performance is caused by contention for access to the signallling
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`channel(s) and results in decreased transmission rates (e.g., slower downloads),
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`increased latency delays (e.g., lack of responsiveness), and dropped
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`communications altogether. See Ex. 1001, cols. 1:30-38, 1:60-2:8, 3:43-47, 7:32-
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`36; Ex. 2023, ¶¶ 45, 57. As recognized in the ’883 patent, channels capable of
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`carrying both signalling data and sporadic (e.g., packetized) user traffic, such as
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`the “signalling data channels” disclosed in the ’883 patent, are subject to
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`increased susceptibility to degraded performance. See Ex. 1001, cols. 3:52-55,
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`7:41-43; Ex. 2023, ¶¶ 43, 46.
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`To solve this problem, the ’883 patent presents efficient, flexible and
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`extensible methods wherein a central controller initiates and controls assignment
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`and reassignment of remote terminals to signalling data channels as needed. See
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`Ex. 1001, cols. 1:60-2:8, 3:36-39, 3:43-47, 7:32-36; Ex. 2023, ¶¶ 46, 51-52, 77.
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`Using these methods, the multiple access communication system of the ’883
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`patent can meet the requirements of varying traffic demand, channel quality, and
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`system growth. Ex. 1001, cols. 2:4-7, 2:35-52, 3:36-50, 4:1-11, 7:6-31, 8:32-34;
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`Ex. 2023, ¶ 46.
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`Figure 1 of the ’883 patent, below, shows an exemplary communication
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`system:
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`As shown in Figure 1, the central controller 10 is connected to the remote
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`terminals 14 via a shared transmissions means 12, e.g., a cable television
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`network. Ex. 1001, col. 5:21-30; Ex. 2023, ¶¶ 47-48. Communication between
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`the central controller and the remote terminals is bidirectional and, in one
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`embodiment, the forward and reverse communications are carried on discrete
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`frequency bands or channels. Ex. 1001, cols. 3:1-13, 6:57-60, Fig. 2; Ex. 2023, ¶
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`48. The central controller 10 acts as a bridge connecting remote terminals 14 on
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`the multiple access communication system to wide area networks 18. Ex. 1001,
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`col. 5:8-11, Fig. 1; Ex. 2023, ¶ 48.
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`The central controller communicates with the remote terminals using
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`forward (FD) and reverse (RD) signalling data channels to carry control signals
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`and user data traffic. See, e.g., Ex. 1001, cols. 5:31-36, 5:59-62, 7:41-43; Ex.
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`2023, ¶ 49. Because these signalling data channels are shared by multiple remote
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`terminals, rather than being dedicated for use by any particular remote terminal,
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`competing demands for access can lead to channel overloading. See Ex. 1001,
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`cols. 1:15-56, 7:6-20, 15:32-36; Ex. 2023, ¶ 49. To address this concern, the
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`central controller described in the ’883 patent manages communications with the
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`remote terminals over the shared signalling data channels by assessing channel
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`availability and controlling channel assignment. See Ex. 1001, Abstract, cols. 1:7-
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`12, 3:43-47, 7:32-36, 8:32-55, 13:4-18; Ex. 2023, ¶¶ 43, 51-53.
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`Specifically, the central controller of the ’883 patent decides whether a
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`remote terminal needs to be reassigned to a different signalling data channel, either
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`when joining the network or at any other time, and will “check for available
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`signalling data channels for remote terminals” in need of such reassignment by
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`evaluating factors that affect a channel’s availability or suitability, e.g., “the
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`number of remote terminals using the signalling data channel, the traffic
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`requirements, . . . and [the] bandwidth of the signalling data channel.” Ex. 1001,
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`col. 4:37-39, 8:16-55, Fig. 6; Ex. 2023, ¶¶ 54-55. The central controller also stores
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`this channel status information. Ex. 1001, cols. 8:16-34, 12:63-13:18; Ex. 2023, ¶
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`55.
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`Based on channel status and availability, the central controller can reassign
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`the remote terminals “if deemed appropriate for the varying traffic demand or other
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`system dynamics.” Ex. 1001, col. 8:32-34; see also id. at cols. 3:36-47, 6:35-60,
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`7:6-36, 8:16-50; Ex. 2023, ¶ 55. For example, the central controller can
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`dynamically reassign individual remote terminals to more suitable signalling data
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`channels at remote terminal startup, during failure recovery, or any other time the
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`central controller deems beneficial:
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`Prompted by the remote terminals at startup, or through
`the failure recovery procedure, or deemed necessary by
`the central controller, the channel allocation and terminal
`assignment process are initiated and controlled by the
`central controller.
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`Ex. 1001, col. 3:43-47; see also Ex. 2023, ¶ 51.
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`The methods described in the ’883 patent help ensure that the load is
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`efficiently balanced across the available channels so as to make optimum use of
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`available bandwidth and to reduce the likelihood that any one signalling data
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`channel will reach an overloaded state. See Ex. 1001, cols. 2:35-45, 3:36-47,
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`6:35-60, 6:60-7:5, 8:16-50, 15:32-36; Ex. 2023, ¶¶ 56-57. Claim 1 of the ’883
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`patent is representative and recites a method of channel allocation in a centrally
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`controlled multiple access system that provides the above stated benefits by:
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`assigning a forward and reverse signalling data channel to each remote terminal
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`(step (a)); managing the system by monitoring these initially assigned channels in
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`use for various quality parameters (step (b)); determining, based on the
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`monitoring of step (b) if any remote terminal is assigned to a channel that is
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`providing less than optimal performance (step (c)); if so, determining if a suitable
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`alternate channel exists (step (d)); and, if so, reassigning, by the central
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`controller, the remote terminal to the suitable alternate channel (step (e)). Ex.
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`2023, ¶ 58.
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`IV. PROSECUTION HISTORY OF THE ’883 PATENT
`The ’883 patent issued from U.S. Application No. 08/276,534, which was
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`filed by Dr. Alexander Cheng on July 18, 1994. Ex. 2025; Ex. 1001. As filed, the
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`application included 10 claims, of which independent claim 1 recited:
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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;
`(b) monitoring the status of a plurality of the signalling
`data channels between said central controller and said
`plurality of remote terminals;
`(c) determining whether one of said plurality of remote
`terminals needs to be assigned to a different signalling
`data channel;
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`(d) determining whether another and suitable signalling
`data channel is available; and
`(e) assigning said remote terminal to said another and
`suitable signalling data channel for communication
`henceforward.
`Ex. 2025 at 35.
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`In an office action dated August 4, 1994, the Examiner rejected claim 1
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`under 35 U.S.C. § 112, second paragraph, as being indefinite,3 and under 35 U.S.C.
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`§ 102(b) as being anticipated by U.S. Patent No. 4,573,206 to Grauel et al.
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`(“Grauel,” Ex. 2026). Ex. 2025 at 88-92, 95.
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`Grauel, the prior art patent pointed to by the Examiner, relates to cellular
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`radio systems in which mobile radio stations, e.g. cellular telephones, are serviced
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`in an area that is subdivided into radio zones, wherein the base station and the
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`radio stations communicate on control channels. Ex. 2023, ¶ 63; Ex. 2026, cols.
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`1:14-23, 1:34-38, 2:66-3:7, 3:25-28. Each mobile radio station is identified by a
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`group code number. Ex. 2023, ¶¶ 64-66; Ex. 2026, cols. 2:10-20, 3:67-4:24, 5:40-
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`43. The base station transmits group codes to allocate the radio stations among the
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`3
`In explaining the rejection under 35 U.S.C. § 112, the Examiner pointed to
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`aspects of the claim language in steps (b) and (d) of claim 1, but did not note any
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`issue with steps (c) or (e) of the claim. Ex. 2025 at 89.
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`control channels. Id. A radio station will find the appropriate channel based on the
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`transmitted group code. Id.
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`Grauel explains that the base station may change the control channel codes
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`to reallocate the radio units. Ex. 2023, ¶¶ 66-67; Ex. 2026, col. 4:54-61. Each
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`radio unit continually monitors the group codes of the control channel on which it
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`is currently assigned, and when a change is detected, the mobile radio unit finds
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`the correct channel associated with its group identify. Id.4
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`4 Mr. Lipoff testified that he believes Grauel’s use of group codes to relate
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`exclusively to “the initial assignment or population when a cell phone was turned
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`on for the first time” (Ex. 2027 at 104:14-17) and is limited to “spreading newly
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`registered mobile across control channels” (id. at 106:1-4). See also id. at 108:5-
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`9. However, as the cited passages establish, Grauel, and its use of control channel
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`group codes, is not limited to initial assignment of newly turned on cell phones, but
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`rather teaches the manipulation of group codes and mobile stations that continually
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`monitor these codes to dynamically adjust the communication system in the face of
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`channel failure. Ex. 2023, ¶ 66. Because Mr. Lipoff’s characterization of Grauel
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`is incorrect, his opinion regarding the scope of step (e) is legally flawed. See
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`Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (“The
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`In response to the August 4, 1995 office action, Dr. Cheng submitted
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`“Amendment ‘A’” on October 8, 1995. Ex. 2025 at 215-232. In this amendment,
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`Dr. Cheng amended claim 1 and argued in favor of its patentability over Grauel. In
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`particular, claim 1 was amended as follows:5
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`1. (Amended) 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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`prosecution history . . . consists of the complete record of the proceedings before
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`the PTO and includes the prior art cited during the examination of the patent.”).
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`5
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`In the claim amendment, underlined text depicts added claim language and
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`text in square brackets depicts deleted claim language.
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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 [assigned] reassigned to a different
`signalling data channel other than said predetermined
`signalling data channel;
`(d) determining whether a different [another] and suitable
`signalling data channel is available other than said
`predetermined channel; and
`(e) reassigning by said central controller [assigning] said
`remote terminal to a different [said another] and suitable
`signalling data channel for communication henceforward.
`Ex. 2025 at 215-216.
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`Notably, step (e) of claim 1 was amended by Dr. Cheng to expressly require
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`“reassigning by said central controller.” In arguing claim 1, as amended, was
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`patentable over Grauel, Dr. Cheng stated:
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`Finally, amended claim 1(e) recites “reassigning by said
`central controller said remote terminal to a different and
`suitable signalling data channel for communication
`henceforward.” Grauel does not disclose that step.
`Grauel does not allocate a signalling data channel and
`assign a remote cellular telephone to that channel. What
`Grauel teaches is a method of attaching group codes to
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`control channels, each of which covers a range of cellular
`telephones with qualifying identifiers. Grauel's mobile
`stations need to monitor the changes of group codes of
`control channels and to assign themselves to the
`appropriate control channel.
`Ex. 2025 at 228 (emphasis added).
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`Thus, Dr. Cheng distinguished amended step (e) of claim 1 on the basis that,
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`in Grauel, the radio stations monitor the group codes and reassign themselves to
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`the appropriate control channel rather than having the central controller
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`“reassigning” remote terminals, as recited in step (e). Ex. 2025 at 215-216, 228.
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`On November 27, 1995, the Patent Office issued a notice of allowance for
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`claim 1, as amended, among others. Ex. 2025 at 233-234. The ’883 patent issued
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`on October 8, 1996. Ex. 1001.
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`V. THE ASSERTED PRIOR ART AND GROUNDS OF
`UNPATENTABILITY
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`The Petitioners assert that claims 1 and 4 are unpatentable as obvious in
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`view of three documents they allege are prior art: MPT 1327 (Ex. 1005), MPT
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`1343 (Ex. 1006), and MPT 1347 (Ex. 1007) (collectively, “MPT Specifications”).
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`The Petitioners also assert that claim 3 is unpatentable as obvious based on the
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`MPT Specifications in further view of Zdunek (Ex. 1008) and Dufresne (Ex.
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`1009). E.g., Petition at 19-60; Paper 19 at 5-6. Claims 3 and 4 depend directly
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`from claim 1. See Ex. 1001.
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`With respect to independent claim 1, and particularly concerning recited
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`steps (a) through (e) of the claimed method, the Petition offers two alternate and
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`independent theories of unpatentability, each relying on distinct sets of procedures
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`disclosed in the MPT Specifications. The Petition refers to these separate theories
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`as: “Example 1: Channel Hunt Sequence and Normal Operation on Control
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`Channel” and “Example 2: Fall-Back Procedures.” Petition at 24-46; Paper 19 at
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`16. The Petition does not assert that, to the extent either separate set of