trials@uspto.gov
`
`571-272-7822
`
`
`
`
`
`
`IPR2014-01412, Paper No. 35
`IPR2014-01471, Paper No. 32
`February 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM
`ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01412
`Patent 5,963,557
`Case IPR2014-01471
`Patent 6,370,153 B11
`____________
`
`Held: December 15, 2015
`____________
`
`
`
`
`
`BEFORE: BRIAN J. McNAMARA, JUSTIN BUSCH, MIRIAM
`L. QUINN, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`December 15, 2015, commencing at 1:32 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`IPR2014-01412, Paper No. 35
`IPR2014-01471, Paper No. 32
`February 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM
`ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01412
`Patent 5,963,557
`Case IPR2014-01471
`Patent 6,370,153 B11
`____________
`
`Held: December 15, 2015
`____________
`
`
`
`
`
`BEFORE: BRIAN J. McNAMARA, JUSTIN BUSCH, MIRIAM
`L. QUINN, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`December 15, 2015, commencing at 1:32 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`STEVEN G. SPEARS, ESQUIRE
`G. MATTHEW McCLOSKEY, ESQUIRE
`McDermott Will & Emery LLP
`1000 Louisiana Street
`Suite 3900
`Houston, Texas 77002-5005
`(713) 653-1784
`sspears@mwe.com
`
`
`
`
`
`
`
`
`
`
`
`LORI A. GORDON, ESQUIRE
`STEVEN W. PETERS, Ph.D.
`Sterne Kessler Goldstein Fox
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 772-8862
`lgordon@skgf.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`P R O C E E D I N G S
`- - - - -
`JUDGE McNAMARA: Good afternoon. This is the
`oral hearing in Case IPR2014-01412 and -01471. We'll have a
`consolidated hearing. I am Judge McNamara. Judge Quinn and
`Judge Busch are participating remotely and so I remind the
`parties to identify which demonstratives they're referring to at all
`times so that the remote judges can see them as well.
`Beginning with the Petitioner, would the parties please
`introduce themselves.
`MR. SPEARS: Your Honor, Steven Spears
`representing the Petitioner Ericsson and with me is Matt
`McCloskey.
`MS. GORDON: Thank you, Your Honor. Lori Gordon
`from the law firm of Sterne Kessler Goldstein Fox. I'm
`representing Patent Owner Intellectual Ventures II and with me
`today is Steve Peters.
`JUDGE McNAMARA: Thank you very much.
`All right. We have allocated 60 minutes of total
`argument time to each party. We'll hear from the Petitioner first
`with respect to the challenged claims on which we instituted.
`After that, we'll hear from the Patent Owner and then the
`Petitioner will have any time it reserved to offer rebuttal.
`Is everybody ready to begin?
`MS. GORDON: Yes, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`MR. SPEARS: Yes, Your Honor.
`JUDGE McNAMARA: Okay. Well, let's begin with
`the Petitioner then. Is there some amount of time you'd like me to
`reserve for rebuttal?
`MR. SPEARS: Yes, Your Honor, 20 minutes for
`rebuttal, please.
`May it please the Board, I would add another IPR that's
`at issue here. We have the 2015-1077 related to Claims 11 and
`25 of the '557 patent, which was joined with the 1412 and so that
`is at issue here as well.
`Turning to slide 2, this is an outline of my presentation.
`We're going to start with the background information, take the
`'557 patent first and then proceed to the '153 patent where there's
`some duplication between the arguments.
`Going to slide 3, an overview of the two patents. The
`'153 patent is a CIP of the '557 patent. The added material is not
`alleged by either party to be of any significance to what's at issue
`here and both patents deal with multiple access communication
`networks.
`What was allegedly new about these two patents is
`stated in the abstract and you have in a multiple access network
`using three types of communication channels, namely one or
`more upstream payload channels, one or more upstream control
`channels and one or more downstream channels. So you have
`this two-up, one-down configuration.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`The distinction with the prior art is best shown in the
`comparison between Figures 2 and 7 on slide 4 now. So Figure 2
`shows the prior art. Multiple access networks have been known
`for decades before this. You have a head end number 12, which
`is the controller. You have multiple stations, these SSs,
`communicating with each other using shared resources, the
`upstream control channel -- I'm sorry, the upstream channel and
`the downstream channel. And then in the upstream channel you
`have both control and payload data being transmitted.
`Figure 7 shows what's allegedly new and the only real
`distinction here is that the upstream channel has been split into
`two separate channels, an upstream control channel and an
`upstream payload channel. Again, the --
`JUDGE McNAMARA: And those two channels are
`different frequencies; is that right?
`MR. SPEARS: Yes, Your Honor. It has two separate
`frequencies and that's what's allegedly new here.
`This argument was made during prosecution to the '557
`patent as the bases for distinguishing prior art. You see, I'm
`sorry, in the second paragraph on slide 5 the claimed invention
`uses a separate upstream channel for contention reservation
`request and another upstream channel for payload transmission.
`Going to slide 6, with respect to the '153 patent, the
`same argument made here stated the claimed invention uses a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`separate upstream channel for contention reservation request and
`another upstream channel for payload transmissions.
`So proceeding to slide 7, we'll go now to talk about the
`grounds instituted for review.
`With respect to the -- going to slide 8, the '557 patent
`we have these Representative Claims A and B because of the
`duplicative language. So this is A, which is in Claims 1 through
`14 and also 15 through 28. 15 through 28 going to slide 9 has
`these added elements which are B and then you have the
`concluding wherein clauses.
`Turning to slide 10, I've tried to outline here the
`grounds instituted for review in a conveniently accessible chart.
`The triangles show where there's been an instituted claim and the
`light triangles show where the Patent Owner is only arguing that
`Representative Claim A and/or B is not disclosed.
`Slide 11 has a similar chart for the '153 patent and here
`the light triangles show where the Patent Owner argues only that
`the independent claim elements are not disclosed.
`So with this in mind, we can head to slide 12, an
`overview of the prior art. Slide 13, recall the alleged novelty as
`having the split upstream channel. Slide 14, the '557 -- both
`patents have an extensive discussion of what is admitted prior art
`in columns 1 through 7 and this slide is an excerpt from the
`expert declaration of Petitioner's expert, Dr. Stark.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 6
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`And after going through a description of what is in the
`APA, he concludes with a summary, the APA includes separate
`frequency upstream and downstream channels with detection of
`collisions, collision resolution algorithms, assignment of time
`slots for transmissions and modulations and bandwidth for
`reservations would be different from modulation and bandwidth
`used for payload or user data. That this was in the APA I don't
`think is disputed by Dr. Wells.
`JUDGE McNAMARA: The assignment of the
`time-slots for upstream transmissions, is that assignment for
`time-slots for both control and payload information or what?
`MR. SPEARS: I think this is talking about upstream
`transmissions of payload.
`JUDGE McNAMARA: Payload. Okay.
`MR. SPEARS: So with respect to what was allegedly
`new, the two-up, one-down configuration, all three instituted
`pieces of prior art, the '450, '219 and the '398 patents show this
`and it's not disputed by the Patent Owner that it's shown.
`Here we have in slide 15 Figure 3 of the '450 patent.
`We have the upstream control channel 25-2 and the upstream
`payload channel 25-3 on separate frequencies.
`Figure 13 -- in slide 16 Figure 13 of the '219 patent,
`again, we have the different upstream payload and control
`channels shown.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 7
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`JUDGE McNAMARA: Let me ask you to go back to
`slide 15 again for just a minute.
`MR. SPEARS: Yes, Your Honor.
`JUDGE McNAMARA: So that we're all on the same
`page, could you explain what's going on in the upstream control
`channel 25-2?
`MR. SPEARS: Yeah. The upstream control channel,
`it's showing how it's divided in time and how you will have
`multiple reservation requests. These are the CROWs of -- for a
`slot to transmit data on the upstream return channel.
`JUDGE McNAMARA: And CROW stands for?
`MR. SPEARS: Contention return orderwire.
`JUDGE McNAMARA: Contention return.
`MR. SPEARS: So this is how you're making your
`reservation request and this is showing a series of -- and if you
`look in the bottom, there's a frequency time graph. So the
`frequency is on the on the X access -- frequency on the Y access,
`time is on the X access and so it's showing over time this is what's
`being transmitted on both channels and these transmissions are
`going on simultaneously. So -- and slide 17 of the '398 patent
`shows the split channel configuration as well.
`So what was allegedly new about the '557 and '153
`patents is disclosed in the three instituted pieces of prior art and
`the Patent Owner really doesn't dispute this. Instead, what we see
`in the briefing is resorting back to the known implementation
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 8
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`details for how you go about sending up multiple access
`networks, for example, do you assign one slot, two slots, multiple
`slots?
`
`This was -- these elements were never relied upon for
`patentability. Most were in the admitted prior art. All is in the
`instituted prior art and all would have been obvious to a person of
`ordinary skill in the art and significantly no secondary
`considerations of nonobviousness were alleged for any of these.
`So let's go to the claim construction for the '557 patent,
`slide 18 and slide 19. The first issue transmission path I think is
`covered well by the briefing.
`I'll go to the next slide, slide 20, which is the or. This
`comes up in the context of element B.2 shown at the bottom left
`relating to how you detect a collision. There's two ways, failure
`to receive a grant message, the first way, or a collision status
`message. Or as properly construed means if you have either one
`that satisfies the claim limitation.
`The Federal Circuit decision in Schumer makes this
`clear at the top of slide 20. The Federal Circuit has consistently
`interpreted the word or to mean that the items in the sequence are
`alternatives to each other and I think what we have in seeing in
`the Wells declaration, Patent Owner is trying to change or to and,
`which isn't proper.
`JUDGE BUSCH: Counsel, before you keep going, the
`previous slide, the transmission path, I know there's a dispute
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 9
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`with respect to the proper construction. Does that dispute affect
`any of the issues of patentability that still need to be resolved?
`MR. SPEARS: I don't think that they do. I'm not aware
`of the Patent Owner alleging that they do. It's just the term
`transmission path appears in all of the claimed elements, so it's
`appropriate to construe it and I don't think there's a dispute as to
`what that construction is.
`Let me phrase that better. While the Patent Owner says
`that it doesn't need to be construed, they don't take issue with how
`the Board has construed it.
`JUDGE BUSCH: Okay. Thank you.
`MR. SPEARS: I think that puts us on slide 21.
`Optionally, very similar issues to the word or here. The Board
`properly construed it as left to choice, not compulsory. Again,
`we have Federal Circuit guidance, In re Johnson. As a matter of
`linguistic precision, optional elements do not narrow the claims
`because they can always be omitted.
`Now, I'll jump to the last -- this is -- the last bullet point
`is a more recent Federal Circuit decision decided after all the
`briefing came in. This would be the Straight Path case. When a
`claim language has a plain meaning on an issue as the language
`does here, leaving no genuine uncertainties on interpretive
`questions relevant to the case, it is particularly difficult to
`conclude that the specification reasonably supports a different
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 10
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`meaning. And I submit that's precisely the case with the words
`optionally and or.
`JUDGE McNAMARA: How would the -- how would
`the outcome be different if we construed optionally differently
`from the way we construed it?
`MR. SPEARS: I think if you construe optionally to
`mean mandatory, as I think the Patent Owner is suggesting, I
`think the outcome is the same. The claims are invalid. How you
`get there is different. What this talks about, the optionally is this
`element B.3, again an affirmative collision status message.
`So if you have to have both silence or an affirmative
`collision status message, silence is taught by the '450 patent.
`Collision status message is taught by the APA and the '219 patent
`and Dr. Stark's explanation as to why it would be obvious to use
`-- to combine the two goes unchallenged, but these are really the
`only two ways you can detect a collision. People knew both of
`them and would know that you could use either or both in setting
`up your system.
`So we'll go to now the claims themselves. I've divided
`for ease of reference. We're going to approach it two ways. The
`first, the '450 patent-based grounds referring to slide 22 and,
`second, the '219 patent-based grounds.
`So starting with the first series, the '450 patent-based
`grounds, disputes for the Representative Claims A and B, the first
`issue is this slots distinction and I think it's conceded the '450
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 11
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`patent at least teaches that you assign a slot in response to a
`reservation request. Patent Owner suggests you have to assign
`multiple slots for a reservation request.
`And I'll step back before getting into the slide. This is
`slide 23 sort of at a high level. This is just a design detail. The
`Reply Brief at page 7 sets forth assigning multiple slots in
`response to a reservation request that was known. Obviously if
`you have multiple slots worth of data to send, you're going to
`need to be assigned multiple slots to send that data.
`In re Harza, the old CCPA decision gives guidance.
`Mere duplication of parts has no patentable significance, unless a
`new and unexpected result is produced and no new and
`unexpected results are alleged to be produced by assigning
`multiple slots.
`In fact, the specification says the whole point of this is
`to conserve resources. And if you have one slot of data worth to
`send, why would you assign multiple slots if you just have one
`slot worth of data to send? But if you have multiple slots, you
`know to assign multiple slots.
`But even if assignment of multiple slots is required and
`isn't obvious, it's taught by the '450 patent and that's what's shown
`in slide 23. You have in the diagram slide this part 32, which is
`the reservation request coming in. The part 34 on the top
`channel, the grant message, and then the data to the NCT being
`transmitted in the return channel.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 12
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`And all the experts agree this data is more than one slot
`based on how the '450 patent designs the size of a slot, so you
`have a multi-slot assignment.
`JUDGE McNAMARA: What's a slot in that Figure 5
`
`there?
`
`MR. SPEARS: Well, a slot is defined in the patent as
`45 milliseconds, which is what's shown at the text at the bottom.
`So it's a -- the Board has construed a slot to be a duration of time.
`The '450 patent says we're going to say a 45-millisecond duration
`of time is a slot.
`JUDGE McNAMARA: All right. And so as I read that
`annotation that you have there in red, the data, then, is in two
`slots? It's 90 milliseconds?
`MR. SPEARS: Well, the spec --
`JUDGE QUINN: Judge McNamara, we were having
`trouble hearing your questions.
`JUDGE McNAMARA: Oh, my apologies.
`JUDGE QUINN: Can you check your mic?
`JUDGE McNAMARA: It looks like it might have been
`turned off. My apologies.
`JUDGE QUINN: Okay. Now I can hear you. Thank
`
`you.
`
`JUDGE McNAMARA: Of course, I'm not the most
`important one speaking here, so.
`MR. SPEARS: I disagree.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 13
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`JUDGE McNAMARA: All right. Anyway, with
`respect to those -- to the slots, that's what I was asking, the data in
`that box there that you're pointing to, that is more than two slots;
`is that what you're saying?
`MR. SPEARS: Yes, Your Honor, and I have to step
`aside this because I have to see around the corner. So the
`specification defines that the sync is two slots and that's at I think
`column 5, line 4 and, therefore, if that sync is two slots and you
`see this is a frequency time graph, so the data has to be more than
`two slots.
`JUDGE McNAMARA: Just basically because of the
`size that you see on that drawing; is that right?
`MR. SPEARS: And Dr. Wells agrees to this, the
`excerpt. In this illustration it's shown as being more than two
`slots. So the issue, which Patent Owner raises, is, well, is this
`necessarily assigned by the controller? Is the controller assigned
`these slots?
`And, again, stepping back, the whole purpose of these
`multiple access networks is that the stations can only send data
`when they're authorized to do so by the controller. Otherwise,
`you're going to have stations transmitting on top of each other.
`So by definition it has to be assigned.
`Here the controller assigns the slots by saying, start
`sending your data transmissions here, so that's how it's assigned.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 14
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`JUDGE McNAMARA: But that's a start time. Is it
`assigning it a specific number of slots or is it just saying, go
`ahead and when you're done you're done?
`MR. SPEARS: It assigns -- it says use the slots starting
`here, which is an assignment, and it knows how many slots it's
`been assigned by doing that.
`If you look at the bottom right corner, the specification
`at column 8, line 45 to 51, the CROW message is 32. It tells the
`controller how much data it has to send. And so when it assigns
`the slot, it knows this is how much data is going to come after
`that slot, so -- and it has to, otherwise, it wouldn't know when it
`can assign another slot to another station that needs to use the
`resource.
`So, yeah, it assigns it by saying start here, it knows
`exactly how long the data transmission is going to be and it has to
`control access to the resource so it knows who's using these slots.
`Now going to slide 24, the Petitioner contends,
`however, that you don't need to have a multi-slot assignment for
`every reservation request to satisfy the claim. Base level it
`doesn't make sense. If you have just one slot of data to send, why
`do you need the multi-slot assignment?
`And the claim language in the top left quadrant of this
`slide shows this. It's talking to time-slots allocated are at the
`bottom highlighted, but it's referring back up to response to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 15
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`reservation request data. So this is talking about multiple
`reservation requests getting multiple time-slots allocated.
`To the extent that there's ambiguity, the specification
`makes clear repeatedly saying when it's talking about what's
`being assigned, it's calling it one or more slots in these excerpts
`from the top right corner of slide 24.
`Moreover, the -- in a couple of instances, the
`specification actually equates one or more slots with slots and
`uses the word slots basically as shorthand to refer back to one or
`more slots.
`One excerpt is the bottom left where Dr. Wells is asked
`about column 4, line 50 to 55. He agrees this is the case.
`Another excerpt on the right, column 18, lines 8 to 11, it's talking
`about in response to receiving a grant control packet that assigns
`one or more slots to the SS and that's happening in step S15 in the
`figure. But when you look at step S15 in Figure 13, it says slots
`and so slots is basically a shorthand for referring to one or more
`slots.
`
`But retreating back to a high level, assigning multiple
`slots was known, there's no unexpected results alleged from doing
`-- from having this. So at a minimum it would be obvious.
`The next issue is the predetermined time delay. So you
`send a reservation request. If you don't hear anything back, you
`wait a predetermined time delay before sending another
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 16
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`reservation request. The '450 patent teaches this at column 7, line
`59, again, on slide 25, I'm sorry.
`A PT sending a request and not receiving
`acknowledgment within several frames will assume that the
`request of the PT was not heard and will then send another
`CROW 40. That's the reservation request. It doesn't say exactly
`how many frames, but both experts agree this is just what you
`would put in as part of setting up the system.
`The '557 patent, likewise, doesn't say a specific time
`delay and Dr. Wells agrees it's just what you would do as part of
`setting up the system. Dr. Stark says the same thing. And in
`Figure 5, again, we have -- it shows that the predetermined time
`delay is set here as being three frames.
`Going to slide 26, the collision status elements in B.2
`and B.3, here it's not disputed that the '450 patent teaches the first
`part of the or. That's indicated in a collision by failure to receive
`a grant message under B.2. What's argued is that it doesn't teach
`the second part of the or, an affirmative collision status message
`or B.3, again, an affirmative collision status message, but under
`proper construction neither of these are both optional elements
`not required for anticipation.
`I explained earlier in response to Judge McNamara's
`question, if they were required, they're taught by the '219 patent
`and the APA and would be obvious to combine.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 17
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`This moves us to the concluding wherein clauses, slide
`27, on the '450 patent-based grounds and we'll just go through the
`ones challenged by the Patent Owner in the response.
`The first one, Claims 7 and 21, wherein said centralized
`controller is a base station. First, this was instituted on the '219
`patent 103. It's not separately disputed by the Patent Owner
`response, so at least it's covered by the '219 patent-based ground.
`I'm sorry, we're on slide 28 if it's not clear.
`With respect to the combination of the '450 and the '398
`patent, it's not disputed that the '398 patent discloses use in the
`context of a base station. What Dr. Wells says in response to the
`obviousness the combination is, is base stations are different than
`satellites.
`Well, that's true, but does any of these differences mean
`that you wouldn't know how to translate between the two and I
`think at this level he's missing the point that the test is not
`whether the references can be physically combined, just what
`would be obvious to a person of skill in the art.
`And the '557 patent makes clear that a person skilled in
`the art would know that you could use these systems
`interchangeably. The '557 patent is a fiber -- gives an example of
`a hybrid fiber coax network. It's not an example of a base station.
`And then it concludes by saying -- sorry, on 28 -- as
`noted, the implementation of the invention in a cable network was
`merely illustrative. The invention may, for instance, be employed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 18
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`in a wireless network. In this case, the central controller is a base
`station, basically agreeing that persons of skill in the art would
`know how to readily translate between different multiple access
`communication systems.
`Turning to the '557 patent alone based ground, the issue
`here is, is the NCT in the '450 patent, is it properly considered a
`base station or would a base station be obvious from it? Dr.
`Wells says a base station must be cellular. That's not supported
`by the specification.
`When the specification -- the only place where it
`defines a base station in slide 29 is by reference to the '833 patent
`and the '833 patent gives a very simplistic diagram of a base
`station that's not in the cellular network. It's basically facilitating
`communication between different devices.
`In the right-hand column, we walked Dr. Wells through
`what the '833 patent chose to be a base station. He agreed that all
`the elements were present in the '450 patent's NCT. So the '450
`patent alone also renders this element obvious.
`This brings us to Claims 11 and 25, which were --
`JUDGE McNAMARA: We're on slide 30 now?
`MR. SPEARS: Thank you, Your Honor.
`JUDGE McNAMARA: I know it's hard to remember.
`MR. SPEARS: Thank you, Your Honor. Yes, slide 30.
`And this is the other -- the 1077 IPR. I'll address these. And the
`claim element wherein said first path is a broadcast downstream
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 19
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`channel carrying MPEG2 transport packets. So we'll take the first
`part of that, a broadcast downstream channel.
`It's not disputed that the downstream channel looking at
`Figure 3 from the NCT to the PTs has this FOW, the forward
`orderwire, which is broadcast to all the stations. That makes this
`a downstream broadcast channel. There's no requirement in the
`claim that the MPEG2 data has to be broadcast, just that it be on a
`downstream broadcast channel.
`Here Patent Owner says this is a new argument that
`wasn't in the petition. I think there's a number of instances where
`they do this, trying to make arguments or follow formula to
`suggest that the petition was deficient. I'll just address this one
`time here. It was in the petition at page 29 as citing all of this and
`so this was plainly in the petition.
`I think our last slide tries to cover other areas where
`they say something is new. I will stick for the rest of my
`argument just talking about substance, unless there's any time the
`Board wants to address support.
`And I think the other point, the Belden decision, the
`recent Belden decision makes clear it doesn't -- it's fine to have
`new material, even if it's responsive to what's in the response, and
`so that's another factor to consider.
`Going to slide 31, the second part of the element,
`carrying MPEG2 transport packets. As set out here, MPEG2
`transport packets are just a data format and it's been shown in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 20
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`petition it would have been understood by a person of skill in the
`art that this would be another type of data you can send on a
`network. And, in fact, there are instances of satellites
`transmitting MPEG2 data.
`Dr. Wells takes issue with this talking about a high data
`rate and latency requirements for MPEG2. But if you look at his
`support, and that's the discussion in the deposition testimony, the
`support that he's relying upon is data rates at three megahertz --
`megabits per second data rate, basically for live streaming
`MPEG2 data. And he agrees that's not what this claim is about.
`It's basically sending MPEG2 transport packets, not live
`streaming MPEG2 data.
`And the fourth bullet point, there's no dispute that the
`data rates in the '450 patent, you can transmit MPEG2 transport
`packets. There's a dispute about what the data rate is. But even
`accepting the low one that Dr. Wells says, you can get 10
`MPEG2 transport packets a second. But if you want faster
`satellites to live stream MPEG2 data, by 1997 satellites capable
`of doing that were known and would be obvious to use a faster
`satellite if you needed a faster satellite.
`Going to slide 32, Bungum has such a faster satellite.
`The claims were instituted on the combination of the '450 patent,
`plus Bungum. It has the higher data rate. It talks about sending
`MPEG2 data.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 21
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`Here, Patent Owner says it wouldn't be clear that you
`could just take the satellite out of Bungum and plug it into the
`'450 patent network. The Etters decision shows clear that's not
`the test. Etters' assertions that Azure cannot be incorporated in
`Ambrosio are basically irrelevant, the criterion being not whether
`the references could be physically combined, but whether the
`claimed inventions are rendered obvious by the teachings of the
`prior art as a whole, and that's the case here.
`Turning to Claims 12 and 26, this without degrading
`element. This is really a straightforward issue. There's no
`dispute that both the '450 patent and the '219 patent teach having
`separate modulation schemes on the two upstream channels and
`both experts agree by definition a modulation scheme on one
`channel is not going to impact the robustness on a completely
`separate channel.
`That's all the '557 patent teaches and so this teaching
`that you have different modulation schemes would be understood
`by a person of skill in the art to mean that you're not going to be
`degrading a completely separate channel.
`Turning to Claims 13 and 27 relating to a plurality of
`upstream control channels, slide 34, the first point is that this
`ground was instituted on the -- these claims were instituted on the
`ground of the '219 patent alone, fully addressed in the petition, no
`response from the Patent Owner other than the representative
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 22
`
`
`
`
`
`
`
`Case IPR2014-01412 & IPR2014-01471
`Patent 5,963,557 & 6,370,153 B11
`claims and, therefore, these claims are at least covered by the '219
`patent.
`
`For the same claims, slide 35, the '450 patent alone, so
`the '450 patent teac
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
