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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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`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`
`v.
`
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`Case: Not Yet Assigned
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,563,883
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`
`
`
`
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`
`
`
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`
`
`

`

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`
`I.
`
`TABLE OF CONTENTS
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`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8 ..................................................... 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................... 2
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ............................................. 2
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ......................... 3
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ...................................... 4
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103 .......................................................... 4
`
`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104.............................................. 4
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................... 4
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and
`Relief Requested .............................................................................................. 4
`
`C.
`
`Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3) .............. 5
`
`D. How the Construed Claims are Unpatentable under 37 C.F.R. §
`42.104(b)(4) ...................................................................................................... 7
`
`E.
`
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5) ................................. 7
`
`V.
`
`SUMMARY AND TECHNICAL BACKGROUND OF THE ’883
`PATENT ..................................................................................................................... 7
`
`A.
`
`The Alleged Invention of the ’883 Patent .................................................... 7
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART.................................................. 8
`
`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B) ....................... 9
`
`A. Overview of the MPT Specifications ............................................................ 9
`
`1.
`
`2.
`
`Technical Overview of the MPT Specifications .............................. 9
`
`The MPT Specifications Are Printed Publications ........................ 15
`
`i
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`

`

`
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`3.
`
`The Functionalities Defined By the MPT Specifications
`Were Intended to be Combined ...................................................... 16
`
`B. Ground 1: Claims 1 and 4 are Invalid Under 35 U.S.C. § 103(a) As
`Obvious Over MPT 1343 In View of MPT 1347 and MPT 1327 .......... 17
`
`1.
`
`2.
`
`Claim 1 ................................................................................................ 18
`
`Claim 4 ................................................................................................ 42
`
`C. Ground 2: Claim 3 is Invalid Under 35 U.S.C. § 103(a) As
`Obvious Over MPT 1343 In View of MPT 1347 and MPT 1327
`as Applied to Claim 1, and Further In View of Zdunek and
`Dufresne ......................................................................................................... 47
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`1.
`
`Claim 3 ................................................................................................ 47
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`VIII. CONCLUSION ........................................................................................................ 56
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`
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`
`
`ii
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`

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

`

`
`
`Ex. No.
`1013
`
`Brief Description
`C-Cation Technologies, LLC’s Opening Claim Construction Brief in C-
`
`Cation Techs., LLC v. Comcast Corp., et al., No. 2:11-cv-00030-JRG-RSP, Dkt.
`
`187 (filed Mar. 22, 2013)
`
`1014
`
`Robert I. Desourdis, Jr., et al., EMERGING PUBLIC SAFETY
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`WIRELESS COMMUNICATIONS SYSTEMS (Artech House, 2001)
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`(excerpts)
`
`1015
`
`Radiocommunications Agency Home Page (last visited 1/28/2015)
`
`1016
`
`U.S. Patent No. 5,117,501 to Childress et al.
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`1017
`
`Thomas Farrell, “A Computer Simulation Analysis of Convention and Trunked
`
`Land Mobile Radio Systems at Wright Patterson Air Force Base” (Jan. 19, 1989)
`
`1018
`
`International Application Publication No. WO 93/16566 (Aug. 19, 1993)
`
`1019
`
`International Application Publication No. WO 93/16530 (Aug. 19, 1993)
`
`1020
`
`Petitioner’s Voluntary Interrogatory Responses
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`
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`
`

`

`
`
`I.
`
`
`INTRODUCTION
`Unified Patents Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”)
`
`under 35 U.S.C. §§ 311-319 and 37 C.F.R., Part 42 of claims 1, 3, and 4 of U.S. Patent
`
`No. 5,563,883 (“the ’883 Patent”) and shows herein that there is a reasonable
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`likelihood that it will prevail by proving those claims are invalid.
`
`
`
`The methods of “allocating signalling data channels,” Ex. 1001 at 14:30-32,
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`based on various channel conditions recited in claim 1, 3, and 4 were well known to
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`those having ordinary skill in the art by the July 18, 1994 filing date of the ’883 Patent.
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`The combination of features relating to channel allocation over a shared transmission
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`medium recited in the challenged claims of the ’883 Patent have been combined in
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`only predictable manners according to their known functionalities as would have been
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`understood by a person of ordinary skill in the art. See Ex. 1002, ¶ 30; see also KSR Int’l
`
`Co. v. Teleflex Inc., 550 U.S. 395, 417 (2007) (“[A] court must ask whether the
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`improvement is more than the predictable use of prior art elements according to their
`
`established functions.”). Thus, the challenged claims are invalid and should be
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`cancelled.
`
`
`
`As demonstrated below, the challenged claims are invalid under § 103(a) as
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`being obvious over a collection of related technical specifications promulgated by the
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`British Ministry of Post and Telecommunications (“MPT”) relating to trunked radio
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`communications. See generally Exs. 1005-1007 (collectively “the MPT Specifications”).
`
`The MPT Specifications define characteristics for a trunked radio network and utilize
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`
`
`1
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`

`

`
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`many aspects of the challenged claims for the very same purpose that the ’883 Patent
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`uses those limitations: allocation of channels carrying signalling data based on channel
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`conditions. See, e.g., Ex. 1002, ¶ 99. Since there was nothing inventive about the
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`subject matter of claims 1, 3, and 4 of the ’883 Patent, those claims should be
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`cancelled.
`
`II. MANDATORY NOTICES – 37 C.F.R. § 42.8
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
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`party-in-interest, and further certifies that no other party exercised control or could
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`exercise control over Unified’s participation in this proceeding, the filing of this
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`petition, or the conduct of any ensuing trial. See Ex. 1020.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’883 Patent is asserted in C-Cation Techs., LLC v. Time Warner Cable Inc., et
`
`
`
`al., No. 2:14-cv-00059 (E.D. Tex.), and C-Cation Techs., LLC v. Atlantic Broadband
`
`Group LLC, et al., No. 1:15-CV-00295 (D. Del.). The ’883 Patent was previously
`
`asserted in C-Cation Techs., LLC v. Comcast Corporation, et al., No. 2:11-cv-00030 (E.D.
`
`Tex.) and Comcast Technologies, LLC v. C-Cation, Inc. et al., No. 1-11-CV-01922 (S.D.
`
`NY). The ’883 Patent is also involved in pending inter partes review Nos. IPR2014-
`
`00746 and IPR2014-00 filed by ARRIS Group, Inc., and IPR2014-00454 filed by
`
`Cisco Systems, Inc.
`
`
`
`2
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`

`

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`
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`The ’883 Patent was asserted in the following actions: C-Cation Techs., LLC v.
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`Cable One, Inc., No. 2:11-cv-00030 (E.D. Tex.) (filed Jan. 25, 2011; terminated Jan. 21,
`
`2014); Comcast Cable Commc’ns, LLC v. C-Cation, Inc., No. 1:11-cv-01922 (S.D.N.Y.)
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`(filed Mar. 18, 2011; terminated Jan. 21, 2014). It was also the subject of IPR2014-
`
`00454 filed by Cisco Systems, Inc..1
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`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Lead Counsel - Linda J. Thayer; Reg. No. 45,681; Phone: (617) 646-1680;
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`
`
`linda.thayer@finnegan.com. Back-up Counsel - Rachel L. Emsley; Reg. No. 63,558;
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`
`1 The Board denied institution in IPR2014-00454. The petition in that proceeding was
`based in part on the MPT Specifications relied on herein. The board found that the
`petition failed to “provide sufficient articulated reasoning with rational underpinning
`explaining why one with ordinary skill in the art would modify the teachings of the
`applied references to arrive at the claimed invention.” See Cisco Systems, Inc. v. C-Cation
`Technologies, LLC, IPR2014-00454, Paper 12 at 14-15 (Aug. 29, 2014). ARRIS’s prior
`petition in IPR2014-00746 was based on a U.S. Patent to McNamara and institution
`against claims 1, 3, and 4 was denied because McNamara allegedly taught away from
`the claimed invention. Because: (1) the MPT Specifications are materially different
`from McNamara in that they do not include any alleged teaching away of a central
`controller as claimed; and (2) this petition focuses on details of the MPT
`Specifications (alone or in combination with other references) that have never been
`addressed on the merits by the Office, the same, or substantially the same, prior art
`and arguments have not been presented to the Office before. Cf. 35 U.S.C. § 325(d)
`(2012).
`
`
`
`3
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`

`

`
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`Phone: (617) 646-1624; rachel.emsley@finnegan.com. Both of Finnegan, Henderson,
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`Farabow, Garrett & Dunner, LLP, Two Seaport Lane, Boston, MA, 02210-2001.
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`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`Service via hand-delivery may be made at the postal mailing address of either
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`
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`lead or back-up counsel. Petitioner consents to service by e-mail.
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`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
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`The required fee is being paid through the Patent Review Processing System.
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`Petitioner authorizes the Patent and Trademark Office to charge any additional fees to
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`Deposit Account No. 22,852.
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`IV. REQUIREMENTS FOR IPR – 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’883 Patent is available for IPR. Petitioner is not
`
`
`
`barred or estopped from requesting this review.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Petitioner requests cancellation of claims 1, 3, and 4 of the ’883 Patent in view
`
`
`
`of the following prior art references: (1) MPT 1327: A Signalling Standard for Trunked
`
`Private Land Mobile Radio Systems (“MPT 1327,” Ex. 1005); (2) MPT 1343: Performance
`
`Specification (“MPT 1343,” Ex. 1006); (3) MPT 1347: Radio Interface Specification (“MPT
`
`1347,” Ex. 1007); (3) U.S. Patent No. 4,870,408 to Zdunek (Ex. 1008) (“Zdunek”);
`
`and (4) U.S. Patent No. 4,920,533 to Dufresne et al. (Ex. 1009) (“Dufresne”).
`
`
`
`4
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`

`

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`
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`Each of these prior art references constitutes prior art under § 102 (pre-AIA) as
`
`demonstrated below.2 Based on these references, and as explained in detail below,
`
`Petitioner presents the following grounds for trial:
`
`Ground
`
`’883 Patent
`Claims
`Ground 1 1 and 4
`
`Basis for Rejection
`
`Obvious under § 103(a) over MPT 1343 in view of
`
`MPT 1327, and MPT 1347
`
`Ground 2 3
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`Obvious under § 103(a) over MPT 1343 in view of
`
`MPT 1327, and MPT 1347, and further in view of
`
`Zdunek and Dufresne
`
`
`
`
`
`C.
`Claim Construction Under 37 C.F.R. §§ 42.100(b), 42.104(b)(3)
`The ’883 Patent has expired. The claims of an expired patent are construed
`
`according to the methodology set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`
`Cir. 2005) (en banc).
`
`
`
`For the purposes of this proceeding, all terms should have their ordinary and
`
`customary meaning read in light of the ’883 Patent’s specification, as would have been
`
`understood by a person of ordinary skill in the art, except as otherwise discussed
`
`
`2 Statutory citations are to Title 35 of the United States Code unless otherwise
`noted.
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`
`
`5
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`

`
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`below.3 See, e.g., Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir.
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`2014) (“Claim terms are generally given their plain and ordinary meanings to one of
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`ordinary skill in the art when read in the context of the specification and the
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`prosecution history.”).
`
`
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`In prior litigation, Magistrate Judge Payne construed certain terms of the ’883
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`Patent. As relevant to this proceeding, Magistrate Judge Payne construed the phrases
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`“said predetermined signalling data channel” and “said predetermined channel,”
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`present in claims 1 and 4, to mean “one of the pair of predetermined signalling data
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`channels,” Ex. 1004 at 41-44, which the Court found supported by Exhibit 1001 at
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`8:44-50. Therefore, to the extent that the scope of the claims using these phrases are
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`reasonably certain despite a lack of antecedent basis, Petitioner proposes using
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`Magistrate Judge Payne’s construction for the purposes of this proceeding.
`
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`3 Claims may be held obvious under § 103(a) even where the scope of a claim is not
`reasonably certain as required by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120,
`2124 (2014). In evaluating obviousness, what matters is whether a claim’s scope
`encompasses that which is obvious—not whether the full reach of the claim is
`reasonably certain, the latter requirement being one of definiteness. “If [a] claim
`extends to what is obvious, it is invalid under § 103” and thus a showing that a claim
`extends at least as far as to cover “an obvious solution” to a recognized problem in
`the art may prove that claim obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20
`(2007).
`
`
`
`6
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`

`

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`
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`D. How the Construed Claims are Unpatentable under 37 C.F.R. §
`42.104(b)(4)
`An explanation of how construed claims 1, 3, and 4 are unpatentable under the
`
`grounds identified above, including the identification of where each element of the
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`claim is found in the prior art patents and printed publications, is provided infra, §
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`VII.
`
`
`
`E.
`Supporting Evidence under 37 C.F.R. § 42.104(b)(5)
`Each of the grounds for trial is supported by the Declaration of Mr. Stuart
`
`Lipoff, Ex. 1002 and the other exhibits filed herewith. Mr. Lipoff’s Declaration
`
`explains: the relevant level of ordinary skill in the art, how a person of ordinary skill in
`
`the art would have understood scope and content of the prior art, and the conclusions
`
`that such a person would have made regarding the obviousness of the subject matter
`
`claimed.
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`V.
`
`
`
`SUMMARY AND TECHNICAL BACKGROUND OF THE ’883
`PATENT
`The ’883 Patent relates to systems and methods for “facilitating the two-way
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`multi-media communication based on a shared transmission media . . . .” See, e.g., Ex.
`
`1001 at 1:7-12; Ex. 1002, ¶¶ 36-37. This section summarizes some relevant aspects of
`
`the ’883 Patent.
`
`A. The Alleged Invention of the ’883 Patent
`The ’883 Patent “pertains generally to methods and apparatus for facilitating
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`
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`two-way multi-media communication based on a shared transmission media such as
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`
`
`7
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`

`

`
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`coaxial cable-TV network, and more specifically to methods and apparatus for
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`signalling channel management and protocol.” Ex. 1001 at 1:7-12. After conceding
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`that “[t]here are many proposals of means for dynamically adjusting the number of
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`traffic-bearing channels according to varying traffic demands or the transmission
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`quality in the radio telephony environment,” Ex. 1001 at 1:60-64, the ’883 Patent
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`claims that its novelty relates to “a dynamic process . . . to adjust the number of
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`signalling channels to meet the requirements of varying traffic demand and the system
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`growth,” id. at 2:44-46. As had already been recognized in the prior art, this “aids in . .
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`. redundancy for anomalies such as interference and component failure.” Id. at 2:49-
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`52. In addition to signalling data, the signalling channels can carry “sporadic user
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`data.” Id. at 3:52-55; 7:41-43.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`As of July 18, 1994, a person having ordinary skill in the art relevant to the ’883
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`Patent would have had an undergraduate degree in electrical engineering, or have had
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`an equivalent educational experience, and three or more years working in a relevant
`
`field employing digital communications technology to deliver telecommunication
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`services, or alternatively a relevant field involving the manufacture of
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`telecommunication products. See Ex. 1002, ¶ 31; Ex. 1003; Ex. 1011 at viii; Ex. 1012
`
`at 7 (discussing how telecommunications was being taught at the undergraduate level
`
`as of 1983). In this Petition, reference to a person having ordinary skill in the art
`
`refers to a person with these qualifications.
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`
`
`8
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`

`

`
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`VII. DETAILED EXPLANATION UNDER 37 C.F.R. § 42.104(B)
`A. Overview of the MPT Specifications
`1.
`Technical Overview of the MPT Specifications
`The MPT Specifications are encyclopedic documents that describe system
`
`
`
`operations for the initiation and maintenance of communications in a standards-
`
`compliant trunked radio network. See, e.g., Ex. 1006, Foreword; Ex. 1002, ¶65. The
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`procedures used for establishing communications and maintaining those
`
`communications, as well as processes used during communication are described in
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`various, interrelated sections. Each of the Specifications heavily references the others,
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`and they are intended to be read together, as discussed in further detail below. The
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`flowchart below illustrates how certain sections of the various MPT Specifications
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`interrelate to one another to define specific system use cases.
`
`
`
`9
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`

`

`
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`Starting with a user initially turning on a radio unit or selecting a trunking network to
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`connect to, the radio unit attempts to “acquire a control channel emanated by the
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`selected network.” Ex. 1006, § 9.3.3.1; Ex. 1002, ¶ 114. Depending on the
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`information retained in memory, the way the radio unit is configured, and the
`
`available control channels, the radio unit executes one or more control channel
`
`hunting procedure to “locate” an “appropriate control channel.” Id.
`
`
`
`For instance, when a radio that does not implement certain optional hunt
`
`stages is turned on and has a valid registration stored in memory from a prior use on
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`the network, the radio unit executes the Single Channel Hunt Sequence and tunes to
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`the channel indicated in the previous record. Id. at § 9.3.3.2.2; Ex. 1002, ¶ 71. If the
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`Single Channel Hunt Sequence fails, the radio unit moves on to the Preferential Hunt
`
`Sequence, and so forth, until an appropriate control channel is located. See, e.g., Ex.
`
`1006, § 9.3.3.2.2. (“Upon unsuccessful completion of the ‘single channel hunt
`
`sequence’ the radio unit shall enter the ‘preferential hunt sequence’.”).
`
`
`
`Once a proper control channel has been located, the radio unit attempts to
`
`confirm that control channel by testing the channel in accordance with the procedures
`
`of MPT 1343 § 9.3.4 before any transmissions on the control channel are allowed. See,
`
`e.g., Ex. 1006, § 9.3.3.2.2. (“The radio unit shall not make any transmissions on a
`
`control channel until it has confirmed the channel in accordance with the procedure
`
`specified in 9.3.4 (including the error checking procedure specified in 9.3.4.4).”); Ex.
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`1002, ¶ 71. Control channel confirmation includes several tests. Ex. 1002, ¶ 72. The
`10
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`
`
`

`

`
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`radio unit determines that the control channel is appropriate to acquire by comparing
`
`the allowed category of radio units on that control channel (as contained in the LAB
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`sub-field of the control channel’s system identification code) to its own categorization
`
`retained in the radio units read only memory. Ex. 1006, § 9.3.4.2.5. The radio unit also
`
`determines if the control channel will be suitable by monitoring the error rate of that
`
`control channel and comparing that against threshold requirements. Id. at § 9.3.4.3
`
`(“Whilst receiving a control channel a radio unit shall monitor the codeword error rate
`
`and count the codewords received with errors . . . .”). If this error check fails then the
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`radio unit leaves the control channel and returns to the control channel hunting
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`procedures. Id. at § 9.4.1 (“Whilst active on a control channel, either prior to
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`acquisition being confirmed or during activity subsequent to control channel
`
`confirmation, the radio unit shall monitor conditions on that channel and be prepared
`
`to leave the control channel and return to the control channel hunting procedures.”).
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`If the testing succeeds then the hunt sequence is considered complete and the control
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`channel confirmed. Id. at § 9.3.4.4; Ex. 1002, ¶ 72.
`
`
`
`Once a control channel is confirmed, the radio unit determines whether it is
`
`required to register before it is able to transmit freely. Ex. 1006, § 10.2.3; Ex. 1002,
`
`¶ 73. Registration is “a method of recording the area or group of areas where a radio
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`unit is likely to be located within a network.” Ex. 1006, § 10.1.1. Registration also
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`“provides a means of restricting the service of individual radio units by allowing the
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`network to deny registration requests.” Id.
`11
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`

`

`
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`
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`For basic registration, the radio unit determines if it is required to register based
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`on the mode of the system (e.g., fall-back where registration is not required or normal
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`operations where it may be), as well as based on the data retained in memory and
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`broadcast on control channels. Id. at § 10.2.3 (“If the verified AREA code is zero, or
`
`the radio unit is personalised with a zero length AREA field, or the radio unit is in
`
`fall-back mode, the radio unit shall not seek to register by random access nor shall it
`
`create or alter any registration record.”); Ex. 1002, ¶ 72. If the radio unit determines
`
`registration is not required, it is free to transmit on the confirmed control channel. Ex.
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`1006, § 10.2.3 (“The radio unit shall note that registration is not required and that it is
`
`free to initiate calls.”).
`
`
`
`If registration is required, however, the radio unit checks to see if it holds a
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`successful registration. Id. If not, the radio unit proceeds to execute the registration
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`procedures of MPT 1343 § 10.2.4, which are either allowed, denied, or failed by the
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`TSC. See, e.g., Ex. 1006, § 10.2.3; Ex. 1005, § 8.2.1.2; Ex. 1002, ¶ 74. If the registration
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`is denied or failed, the radio unit defaults back to the control channel hunting
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`procedures. See, e.g., Ex. 1006, §§ 10.2.4.1.2 & 10.2.4.1.3; Ex. 1002, ¶ 74. If the
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`registration is accepted the radio unit records a local copy of the registration record,
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`Ex. 1006, § 10.2.4.1.1, and is free to transmit, id. at § 10.2.3 (“At any time that the
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`radio unit holds a successful registration record relating to the verified AREA code, it
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`is free to transmit . . . .”).
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`Once registered, the radio unit enters normal operations on the network. This
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`consists of making and receiving calls, Ex. 1006, § 11, sending and receiving data
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`messages, id. at § 14, responding to subsequent registration demands by the TSC, id. at
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`§ 10.3.4.2, and monitoring of the control channels for inter alia errors, id. at § 11.3.2.3
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`& App’x A. Additionally, radio units may perform background searches for alternative
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`control channels which “may offer greater spectral efficiency” or result in “improved
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`quality of service to the user” while confirmed on a control channel. Id. at § 9.3.3.7;
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`Ex. 1002, ¶ 156. The radio unit also monitors for a variety of conditions and receipt
`
`of specific messages that prompt the radio unit to re-enter the control channel
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`hunting procedures as dictated by MPT 1343 § 9.4.1. Ex. 1002, ¶¶ 140-141.
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`
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`In the event of a network failure, the network may implement a fall-back
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`procedure to provide a reduced network capability until normal function is restored.
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`See Ex. 1006, § 13; Ex. 1002, ¶ 80. This is a standard option for radio units and for
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`standards-compliant MPT-based systems. Ex. 1006, § 13.1. When fall-back operation
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`is signaled, “[e]ach radio unit . . . [relapses] to a preprogrammed channel” where “all
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`members of a fleet [are] programmed with the same channel number.” Id. Modified
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`procedures and limited call procedures are utilized while in fall-back mode. Id. at §
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`13.4; Ex. 1002, ¶ 81. However, at least simple call messaging and data transfer
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`messaging are allowed. Ex. 1006, § 13.4.1 (“ALHF invites the following types of call
`
`request: RQS, RQX, RQT, RQE, RQQ and RQC” where “RQS” is a request for a
`
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`13
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`simple call message and “RQC” is a request to transmit a short data message.); Ex.
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`1002, ¶ 135.
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`
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`Fall-back procedures may be terminated through either: (1) the network
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`signalling the exit from fall-back, or (2) the user selecting to transfer to a different
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`network. Ex. 1006, § 13.5. Additionally, the MPT Specifications recommend that “the
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`radio unit hunts occasionally for a normal operation mode control channel, regardless
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`of the quality of the channel and whether or not the radio unit is active.” Id.; Ex. 1002,
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`¶ 158. In each case the radio unit re-enters the control channel hunt sequence specific
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`to the method through which the termination of fall-back procedures was achieved.
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`Ex. 1006, § 13.5 (“Under any of the following conditions the radio unit shall exit from
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`fall-back mode, abandon any call set-up or transaction in progress, and enter the
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`control channel acquisition procedures . . . .”). For example, upon receiving a MOVE
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`message where the control channel is specified through a non-zero value in the
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`CONT field of the message, the radio unit enters the Single Channel Hunt Sequence.
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`Ex. 1006, § 9.3.3.2.2 (“The receiver shall be tuned to receive the nominated channel
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`within 35ms of the following instants . . . the end of any MOVE message that is
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`applicable to the radio unit and in which the value of the CONT field is not 0.”); Ex.
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`1002, ¶ 160. The radio unit will then progress normally through the control channel
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`hunting procedures, confirmation, and registration until re-entering normal operations
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`and able to transmit freely. Ex. 1002, ¶¶ 158, 161.
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`
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`14
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`
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`Thus, the MPT Specifications describe various processes for establishing and
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`maintaining communications in a standard-compliant MPT-based network. As shown
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`below, these standards disclose all features of claims 1 and 4, and, at the very least,
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`render claim 3 obvious when taken in view of additional prior art.
`
`2.
`The MPT Specifications Are Printed Publications
`Before the July 18, 1993 § 102(b) critical date of the ’883 Patent, each of the
`
`
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`MPT Specifications had been “made available to the extent that persons interested
`
`and ordinarily skilled in the subject matter or art, exercising reasonable diligence
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`[could] locate” these documents. In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981).
`
`“‘[P]ublic accessibility’ has been called the touchstone in determining whether a
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`reference constitutes a ‘printed publication’” under the Patent Act. In re Hall, 781 F.2d
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`897, 899 (Fed. Cir. 1986). The evidence shows that the MPT Specifications were
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`publicly accessible to members of the interested public.
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`
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`First published in 1988 by the U.K. Department of Trade and Industry
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`(“DTI”), the MPT Specifications would come to be administered by The
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`Radiocommunications Agency (“The RA”) by 1992. See Ex. 1014 at 317. The RA is an
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`Executive Agency of DTI. Ex. 1015; Ex. 1010 at Front Cover. The MPT
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`Specifications relied upon in this petition bear publication dates of September or
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`November 1991, as reflected on the first page of each Exhibit. See Exs. 1005-1007.
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`The 1991-1992 Annual Report of The RA indicates (referring to Part 10 of the
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`Annual Report), between 1991 and 1992, “[t]he Agency published eleven new or
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`revised MPT standards during the year.” Ex. 1010 at 24. These MPT standards
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`“continue to be available free of charge” from The RA’s Library. Id. Part 10 of the
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`1991-1992 Annual Report lists MPT Specifications published between April 1, 1991
`
`and March 31, 1992, refers to MPT 1327, MPT 1343, and MPT 1347, see Ex. 1010 at
`
`35, and provides a mailing address and telephone number to allow requests for copies
`
`of the MPT Specifications, id. at 33. Therefore, the MPT Specifications were publicly
`
`accessible well before the July 18, 1993 critical date and are thus printed publications.
`
`3.
`
`The Functionalities Defined By the MPT Specifications
`Were Intended to be Combined
`The MPT Specifications are so interrelated, and cross-reference one another so
`
`
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`extensively in relevant respects, that it is clear they are intended to be used together.
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`See Ex. 1014 at 317. At the very least, a person of ordinary skill in the art at the time
`
`of the alleged invention would have understood that the MPT Specifications define
`
`portions of an interrelated trunked radio system, such that their teachings would have
`
`been naturally combined to form an MPT-compliant network having stationary
`
`network equipment and radio units, thereby rendering the claimed subject matter
`
`obvious. See Ex. 1002, ¶¶ 169-70. Additionally, the various MPT Specifications
`
`reference one another explicitly. See, e.g., Ex. 1005 at Foreword (referring to inter alia
`
`MPT 1343 and MPT 1347); Ex. 1006 at ii (“[a] companion specification, MPT 1347,
`
`contains the additional minimum performance requirements to be met by network
`
`fixed equipment.”); id. at § 1.1 (“MPT 1343 is designed to be read in association with
`
`
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`16
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`MPT 1327”); id. at § 2 (referring to MPT1327 and MPT 1347 as “associated
`
`documents”); Ex. 1007 at i (“MPT 1343[]contains the requirement to be met by radio
`
`units to be used with these networks.”); id. at § 2 (listing inter alia MPT 1327 and MPT
`
`1343 as “associated documents”). Before the ’883 Patent’s critical date, those skilled in
`
`the art referred to MPT 1327, 1343, and 1347 as “associated documents” as well. See,
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`e.g., Ex. 1018 at 2 (“A trunking technique, as described in MPT 1327 (and associated
`
`documents MPT 1343 and MPT 1347) . . . .”); see also Ex. 1019 at 2 (describing MPT
`
`1327 and 1343 as kind of de facto standards in Europe for private mobile radio
`
`networks). Therefore, a person of ordinary skill in the art would have been motivated
`
`to look to each of these documents for teachings regarding design of a network
`
`compliant with the MPT Specifications. See Ex. 1002, ¶ 171. This rationale applies to
`
`all combinations of the teachings of the various MPT Specifications as discussed
`
`below. Additional modifications to the teachings of the MPT Specifications based on
`
`the Zdunek and Dufresne references are discussed in detail below in Ground 2, as
`
`applicable.
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`B. Ground 1: Claims 1 and 4 are Invalid Under 35 U.S.C. § 103(a) As
`Obvious Over MPT 1343 In View of MPT 1347 and MPT 1327
`As shown below, claims 1 and 4 claim subject matter that was described by
`
`
`
`MPT 1343, MPT 1327, and 1347 in a manner that would have led a person of
`
`ordinary skill in the art to the claimed subject matter through the exercise of only
`
`routine sk