Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 36
`
`Date Entered: March 17, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. AND
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC AND
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case No. IPR2014-01412
`Case No. IPR2015-01077
`Patent 5,963,557
` ____________
`
`
`
`Before BRIAN J. McNAMARA, JUSTIN BUSCH, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and
` 37 C.F.R. § 42.73
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`BACKGROUND
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) for inter partes review of claims 1, 2,
`4–7, 10, 12–16, 18–21, 24, 26–28, and 32 of U.S. Patent No. 5,963,557 (Ex. 1001,
`“the ’557 Patent”). On March 18, 2015 we entered a Decision to Institute a trial
`(Paper 8, “Dec. to Inst.”) on the following challenges to patentability of the claims:
`Claims 7 and 21 of the ’557 Patent as anticipated under 35 U.S.C. § 102 by
`U.S. Patent No. 5,392,450 (“the ’450 Patent”);
`Claims 1, 4, 5, 7, 12, 13, 15, 18, 19, 21, 26, and 27 of the ’557 Patent as
`obvious under 35 U.S.C. § 103(a) over the ’450 Patent;
`Claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18–21, 24, 26, 27, and 32 of the ’557
`Patent as obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 6,334,219 (“the
`’219 Patent”);
`Claim 32 of the ’557 Patent as anticipated under 35 U.S.C. § 102 by the ’219
`Patent;
`Claims 15, 18, and 20 of the ’557 Patent as obvious under 35 U.S.C.
`§ 103(a) over the combination of the ’450 Patent and the admitted prior art;
`Claims 5, 10, 12, and 13 of the ’557 Patent as obvious under 35 U.S.C.
`§ 103(a) over the combination of the ’450 Patent and the ’219 Patent;
`Claims 19, 24, 26, 27, and 32 of the ’557 Patent as obvious under 35 U.S.C.
`§ 103(a) over the combination of the ’450 Patent, the ’219 Patent, and the admitted
`prior art;
`Claims 7 and 14 of the ’557 Patent as obvious under 35 U.S.C. § 103(a) over
`the combination of the ’450 Patent and U.S. Patent No. 5,680,398 (“the ’398
`Patent”); and
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`Claims 21 and 28 of the ’557 Patent as obvious under 35 U.S.C. § 103(a)
`over the combination of the ’450 Patent, the ’398 Patent, and the admitted prior art.
`On July 10, 2015, we joined IPR2015-01077 to this proceeding and
`instituted trial on the following grounds:
`Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
`over the ’450 patent;
`Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
`over the combination of the ’450 patent and the ’219 patent; and
`Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
`over the combination of the ’450 patent and Bungum.
`In the joined proceeding Intellectual Ventures I LLC and Intellectual
`Ventures II LLC (collectively, “Patent Owner”) filed a Patent Owner Response
`(Paper 17, “PO Resp.”) and Petitioner filed a Reply (Paper 22, “Reply). Oral
`argument was consolidated with the oral argument in IPR2014-01471, which
`concerns a continuation-in-part of the ’557 Patent, and heard on December 15,
`2015. A transcript of the consolidated hearing (Paper 35, “Tr.”) was entered in this
`proceeding.
`We have jurisdiction under 35 U.S.C. § 311 and base our decision on the
`preponderance of the evidence. 37 C.F.R. § 42.1(d). Having reviewed the
`arguments of the parties and the supporting evidence, we conclude that claims 1, 2,
`4–7, 10–16, 18–21, 24–28, and 32 have been shown to be unpatentable.
`
`
`THE ’557 PATENT
`The ’557 Patent relates to a method and system for enabling point-to-point
`and multicast communication in a network using three types of communication
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`channels—namely, upstream payload channels, upstream control channels, and
`downstream channels. Ex. 1001, Abstract. Figure 7 of the ’557 Patent is
`reproduced below.
`
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`
`
`Figure 7 illustrates the three types of communication channels allocated by the
`network of the invention.
`The ’557 Patent discloses that a central controller at the head end of the
`network is connected to the subscriber stations via a shared medium. Ex. 1001,
`col. 8, ll. 2–5. An upstream payload channel carries payload data from the stations
`to the central controller, and an upstream control channel is used to transmit
`upstream control data. Downstream channels carry data from the central controller
`to the stations. Id. at col. 8, ll. 34–48. To allow “contention free transmission” on
`an upstream payload channel (id. at col. 11, ll. 33–34), stations send reservation
`requests on the upstream control channel to the central controller, which responds
`by assigning specific upstream transmission slots to each station and indicates the
`slot assignment by transmitting a control message (“reservation grant”) to the
`stations on the downstream channel (id. at col. 8, ll. 51–55; col. 13, ll. 39–48).
`Each station then transmits payload data only in the assigned slots of the upstream
`payload channel. Id. at col. 8, ll. 56–58.
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`ILLUSTRATIVE CLAIMS
`Of the challenged claims, claims 1, 6, 7, 10, 11, 12, 13, 15, 20, 21, 24, 26,
`27, 28, and 32 are independent. Claims 1 and 15 are illustrative and are reproduced
`below:
`1. A network comprising:
`a centralized controller,
`a station connected to said centralized controller over a shared
`medium,
`a first distinct shared unidirectional transmission path being
`established between said centralized controller and said station for
`transmitting data from said centralized controller to said station,
`wherein the first path being a downstream channel, and
`at least a second and third distinct shared unidirectional
`transmission paths being established between said centralized
`controller and said station for transmitting data from said station to said
`centralized controller, wherein the second and third paths each being an
`upstream channel,
`wherein said station transmitting reservation requests data on
`said second path and receiving a payload data transmission grant from
`said centralized controller on said first path to transmit payload data on
`said third path from said station to said centralized controller on time-
`slots allocated by said centralized controller, and
`wherein said centralized controller receiving said reservation
`request data on said second path from said station and transmitting on
`said first path a payload data transmission grant to said station for
`transmitting payload data on said third path on said time-slots allocated
`by said centralized controller and
`wherein each of said transmission paths comprises a channel
`having a unique carrier frequency and bandwidth, and a modulation
`scheme.
`
`
`
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`
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`15. A multiple access method via a shared medium of a network, said
`network comprising a centralized controller and a plurality of stations
`connected to said centralized controller over a shared medium, wherein
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`a first distinct shared unidirectional transmission path is established
`between said centralized controller and said stations for broadcasting
`data from said centralized controller to said stations, at least second and
`third distinct shared unidirectional transmission paths for transmitting
`data from said stations to said centralized controller, wherein the first
`path being a downstream channel and said second and third paths each
`being an upstream channel, said multiple access method comprising the
`steps of:
`transmitting from a particular station reservation request data on
`said second path and receiving a payload data transmission grant
`message from said centralized controller on said first path to transmit
`payload data packets on said third path from said particular station to
`said centralized controller on payload time-slots allocated by said
`centralized controller,
`transmitting from said particular station said reservation request
`data on said second path if said particular station fails to receive a grant
`message from said centralized controller within a predetermined time
`delay or if said particular station receives a collision status message
`from said centralized controller on said first path to retransmit said
`reservation request according to a collision resolution algorithm,
`receiving by said centralized controller said reservation request
`data on said second path from said particular station, and transmitting
`on said first path said payload data transmission grant data to said
`particular station for transmission on said third path of payload data on
`said payload time-slots allocated by said centralized controller, and
`optionally detecting by said centralized controller a collision due
`to simultaneous transmission of said reservation requests by two or
`more stations on the same reservation timeslot of said second path, and
`then transmitting said collision statuses of said reservation requests on
`said first path to said stations, which will retransmit their reservation
`requests according to said collision resolution algorithm,
`wherein each of said transmission paths comprises a channel
`having a unique carrier frequency and bandwidth, and a modulation
`scheme.
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`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the broadest reasonable
`construction in light of the specification of the patent in which they appear. See 37
`C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed.
`Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). In applying a broadest reasonable construction, claim terms
`generally are given their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Transmission Path
`In our Decision to Institute, we construed the term “transmission path” to
`have its plain and ordinary meaning as “a communications path in a
`communications network.” Dec. to Inst. 8. Patent Owner contends that we should
`not construe this term at all because its plain and ordinary meaning is clear. PO
`Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to
`establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a
`standard, but a functional requirements document generated to assist a working
`group and is subject to change. Id. at 7–8. However, Patent Owner does not
`propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the
`scope of the term would be different if we rely on other evidence of the plain and
`ordinary meaning. Id.
`Although our Decision to Institute notes that the construction of
`“transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it
`is helpful to establish a baseline definition of the meaning as understood by those
`of ordinary skill in the art. Patent Owner’s assertion that the definition we applied
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`was used by an IEEE working group supports our determination that our
`construction in the Decision to Institute applies the plain and ordinary meaning to
`those of ordinary skill in the art. Accordingly, we adopt the construction of
`“transmission path” as “a communication path in a communications network.”
`Optionally
`Consistent with its ordinary meaning, we construed the term “optionally” to
`mean “left to choice, not mandatory.” Id. at 8–9. Patent Owner contends that our
`construction is inconsistent with the use of “optionally” in the specification. Id. at
`10. Patent Owner contends that in the context of the claim as a whole, optionally
`reflects that a construction of “optionally detecting” consistent with its use in the
`specification is that the capability of detecting a collision be present at the
`centralized controller and that a collision may, on occasion, be encountered. Id. at
`12. We discuss the use of the term “optionally” in the context of the claims in our
`analysis of Representative Claim B and the ’450 patent.
`Or
`In our Decision to Institute, although we discuss the use of “or” in the claims
`as part of our construction of “optionally” (Dec. to Inst. 8–9), we did not construe
`specifically the term “or,” which is used in Representative Claim B. We address
`the use of the term “or” in the context of the claims in our analysis of
`Representative Claim B and the ’450 Patent.
`Time-Slot
`In this proceeding, neither party proposed a construction for the term “time-
`slot,” and we did not construe it in our Decision to Institute. However, in related
`case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it
`became clear that a construction of the term “slot” was in dispute, and it was
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`discussed extensively at the consolidated oral hearing. In this proceeding, Patent
`Owner argues that the ’450 Patent does not disclose transmitting payload data on
`time slots allocated by the network control terminal (NCT), because the NCT in
`the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT)
`transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we
`construed “slot” to mean “a duration of time.” Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014-
`01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision).
`We address the implications of this issue in our analysis of Representative Claim A
`and the ’450 patent.
`ANALYSIS OF PRIOR ART CHALLENGES
`Introduction
`To establish anticipation, each and every element in a claim, arranged as
`recited in the claim, must be found in a single prior art reference. Net MoneyIN,
`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “A reference
`anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan
`could take its teachings in combination with his own knowledge of the particular
`art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed.
`Cir. 1995) (emphasis omitted) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA
`1962)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
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`resolved on the basis of underlying factual determinations including: (1) the scope
`and content of the prior art; (2) any differences between the claimed subject matter
`and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of record.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
`57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`Representative Claims A and B
`The Patent Owner Response addresses “Representative Claims A and B,”
`which are not actual issued claims, but exemplary claims proposed in the Petition
`that include elements common to other claims and are addressed in our Decision to
`Institute.1 Dec. to Inst. 10–11, PO Resp. 14–41. The common limitations in
`Representative Claim A, which is drawn to a network, as recited in claims 1–14,
`are recited identically in challenged independent claims 1, 6, 7, 10, 12, and 13. Id.
`The common elements in Representative Claim B, which is drawn to a multiple
`access method via a shared medium, are recited identically in challenged
`independent claims 15, 20, 21, 24, 26, and 27. Id. For purposes of our analysis the
`relevant elements of Representative Claim A recite:
`(a) three distinct shared unidirectional transmission paths
`between a station and a centralized controller, a first path for
`downstream transmission and a second and a third path for upstream
`transmission;
`(b) the station transmitting reservation requests to the
`centralized controller on the second path and receiving from the
`centralized controller on the first path a payload transmission grant to
`
`
`1 As noted in the Decision to Institute, Patent Owner did not object to Petitioner’s
`use of Representative Claims A and B. Dec. to Inst. 11.
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`transmit payload data on the third path to the centralized controller on
`time-slots allocated by the centralized controller; and
`(c) operation of the centralized controller that mirrors the
`operation of the station described in (b).
`Id. at 12 (citing Pet. 15–16). Representative Claim B includes all of the limitations
`of Representative Claim A and further recites:
`(1) a plurality of stations;
`(2) the station transmitting (i.e., retransmitting) the reservation
`request if a grant message is not received within a predetermined time
`delay, or if a collision status message is received from the centralized
`controller to retransmit the reservation request according to a collision
`resolution algorithm; and
`(3) the centralized controller optionally detecting a collision of
`reservation requests and transmitting the collision statuses on the first
`path to the stations, which will retransmit the reservation requests
`according to the collision resolution algorithm.
`Id. (citing Pet. 16–17).
`Grounds Based on the ’450 Patent
`Representative Claim A
`Most of the instituted grounds cite the ’450 patent. Patent Owner contends
`that the ’450 patent does not disclose each and every element of representative
`claims A and B and that nothing in the remaining references (the ’398 patent, the
`admitted prior art (APA), the ’219 patent, or Bungum) cures the deficiencies in the
`’450 patent.
`The ’450 Patent discloses a satellite communications system in which a
`satellite relays information between small-aperture terminals (SAT), which may be
`portable terminals (PT), and a hub network control terminal (NCT). Ex. 1005,
`Abstract. The NCT receives requests from the PTs, allocates channel resources,
`and broadcasts housekeeping messages. Id. Three separate data channels, each on
`a different frequency, are used to effect reservation and basic data transfer. Ex.
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`1005, col. 4, ll. 51–53. As shown in Fig. 3, these are a forward channel 25-1 from
`the NCT (outbound [from the NCT]), a reservation channel 25-2 from PT (inbound
`[to the NCT]), and a return channel 25-3 from PT (inbound [to the NCT]). Id. at
`col. 4, ll. 53–57.
`Petitioner explains that Figure 3 of the ’450 patent shows a forward channel
`25-1, a reservation channel 25-2, a return channel 25-3 (Pet. 13 (citing Ex. 1005,
`col. 4, ll. 53–56)), and that Figure 5 of the ’450 Patent describes “the operation of
`these channels . . . through which the centralized controller processes reservation
`requests” (Id. (citing Ex. 1005, col. 7, l. 59–col. 8, l. 2)). Further, Petitioner’s claim
`chart quotes the disclosure in the ’450 patent that an SAT wishing to transmit
`information sends a “request 32” during a frame (frame 1) on reservation channel
`25-2, and that “[t]he NCT response 34 appears in some later frame (e.g. frame 3)”
`on forward channel 25-1, shown in Fig. 5 as 25-1b, which “acknowledges receipt
`of the request and assigns a future frame and slot . . . .” Pet. 16 (emphases added)
`(quoting Ex. 1005, col. 7, ll. 16–46) (internal quotation marks omitted). The claim
`chart also quotes the next paragraph in the ’450 patent, which states “[d]ata
`intended for another SAT will be transmitted in channel 25-3 to the NCT.” Id.
`(citing Ex. 1005, col. 8, ll. 3–5). In addition, Figure 5 of the ’450 patent cited in the
`claim chart and discussed in the Petition shows a transmission 36 labelled “DATA
`TO NCT” in a slot along the time axis following the NCT response 34. Thus,
`Petitioner has cited disclosure supporting its contention that the ’450 Patent
`discloses “receiving a payload data transmission grant . . . to transmit payload data
`on said third path . . . on time-slots allocated by said centralized controller,” as
`recited in Representative Claim A.
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`Patent Owner’s primary contention concerning Representative Claim A is
`that the ’450 patent does not disclose the feature recited in Representative Claims
`A and B, and referenced in the Petition as claim element A.5, that recites: “wherein
`said station transmitting reservation requests data on said second path and
`receiving a payload data transmission grant from said centralized controller on
`said first path to transmit payload data on said third path from said station to said
`centralized controller on time slots allocated by said centralized controller.” PO
`Resp. 15–16, 18–19. Patent Owner contends that the claims of the ’557 Patent
`explicitly require that the centralized controller allocate plural time-slots for
`transmission of payload data, as contrasted with the ’450 patent, in which the NCT
`only specifies the start of the transmission time and in which the SAT transmits its
`entire message without regard to the length of time required for such transmission.
`Id. at 16, 19. Patent Owner highlights the unframed structure of the return channel
`in the ’450 patent as evidence that the ’450 patent does not disclose a central
`controller allocating time-slots to payload data transmission. Id. at 16–18.
`Petitioner notes that the claims put no limitation on how the allocation of
`slots is to be made and that in the ’450 patent, the transmission timing and length
`are not arbitrary, but known and controlled by the NCT. Reply 6–7. Petitioner
`argues that Figure 5 of the ’450 patent discloses a station responding to receipt of a
`grant by transmitting to the NCT an upstream sync portion that is two 45 msec
`slots long, followed by payload data for a time period that is longer than the two
`slot sync and would be understood by a person of ordinary skill to comprise
`multiple slots. Id. at 6. Citing the testimony of Patent Owner’s witness, Dr.
`Jonathan Wells, Petitioner also argues that, even if the ’450 patent is read to assign
`only one slot corresponding to the duration of the payload, assigning multiple slots
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`was well known in the prior art, and using multi-slot allocations in a separate
`upstream channel would have been obvious. Id. at 7. Petitioner further disputes
`Patent Owner’s assertion that the claims require a multi-slot assignment for a
`single request because the specification uses the terms “slot” and “slots”
`interchangeably, the claims “would make no sense” when only one slot of data
`needs to be transmitted, and because Patent Owner’s witness, Dr. Wells, testified
`that “slots” encompasses “one or more slots” as used in the ’557 Patent. Id. at 8
`(citing Transcript of Deposition of Dr. Jonathan Wells, Ex. 1023 (“Wells Tr.”),
`54:17–56:9).
`Claim element A.5 concerns actions taken by the station. As noted above,
`the elements of Representative Claim A, including element A.5, are common to
`independent claims 1 and 15. Patent Owner’s argument does not consider other
`language in claim 1 that provides context for limitation A.5 concerning the central
`controller that provides the grant to which the station responds. Apparatus claim 1
`recites that, upon receiving a reservation request, the central controller responds by
`“transmitting on said first path a payload data transmission grant to said station
`for transmitting payload data on said third path on said time-slots allocated by
`said centralized controller.” Almost identical language appears in method claim
`15. Claims 1 and 15 do not limit the form of the grant, nor do claims 1 and 15
`limit the time-slots allocated by the central controller. For example, there is no
`requirement in the claims that the grant authorize a specific number of time-slots or
`that the time slots be of any particular duration. Claims 1 and 15 recite that, in
`response to receiving a request on the second path, the centralized controller
`transmits on the first path a “grant” authorizing payload data transmission on the
`third path at allocated time-slots. Claims 1 and 15 do not limit the allocated time
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`slots to any particular frame or time. Nor do claims 1 and 15 preclude allocating
`sufficient time slots for the terminal to transmit its entire message.
`Given the language of the claims, we conclude that Petitioner has shown by
`a preponderance of the evidence that the ’450 patent discloses the recited features
`in element A.5, which appears in the challenged claims illustrated by
`Representative Claim A (independent claims 1, 4, 5, 7, and 10–14, as well as
`corresponding dependent claims 2–4) and Representative Claim B (independent
`claims 15, 21, and 25–27, as well as corresponding dependent claims 16–19).
`Representative Claim B
`As discussed above, Representative Claim B has three elements. There is no
`dispute that the ’450 patent discloses the first element, i.e., a plurality of stations.
`We turn our attention to elements B.2 and B.3
`Elements B.2 and B.3
`As discussed below, Elements B.2 and B.3 are analyzed together. Element
`B.2 recites in part “transmitting from said particular station said reservation
`request data on said second path if said particular station fails to receive a grant
`message from said centralized controller within a predetermined time delay. . .”
`Id. The Petition cited to column 7, line 59 through column 8, line 2, as disclosing
`this limitation. Pet. 16–17. The disclosure the Petition cites states that if two
`different PTs attempt to send requests in the contention return order wire (CROW)
`portion, the NCT will detect the collision and not send an acknowledgement, and
`that in the absence of an acknowledgement the PT will assume that it was not
`heard and send another CROW in a randomly selected time unit. Ex. 1005, col. 7,
`ll. 59–65. The disclosure cited by Petitioner also states that a PT receiving an
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`acknowledgement but no transmission assignment continues listening for another
`timeout interval. Id. at col. 7, ll. 66–68.
`Patent Owner first contends that the ’450 patent does not disclose the
`“predetermined time delay” element (identified as element B.2) that is common to
`all the claims corresponding to Representative Claim B. PO Resp. 20. Patent
`Owner argues that the disclosure cited by Petitioner is not sufficient because it fails
`to disclose the claimed feature that the grant message must be received within a
`time delay that is predetermined. PO Resp. 20–21. According to Patent Owner, in
`the ’450 patent, the time delay is not predetermined because the timeout interval
`begins at the receipt of the acknowledgement, which can occur at any time. Id. at
`21. Petitioner notes that there is no dispute that the ’450 patent discloses waiting
`several frames before retransmitting a reservation request. Reply 9. Petitioner
`argues that in Figure 5, the ’450 patent shows waiting three frames between the
`reservation request and the repeated reservation request, and cites the testimony of
`Petitioner’s witness, Dr. Wayne Stark, and Patent Owner’s witness, Dr. Wells, that
`the several-frame delay is a matter of system design and that the system would be
`programmed to know precisely how long to wait for a reservation request. Id.; Pet.
`Opp. to Mot. for Observations on Cross Examination 4–5. Dr. Stark notes that the
`’557 Patent does not provide any explicit definition of the term “predetermined
`time delay” (Ex. 1024, Reply Decl. of Dr. Wayne Stark (“Stark Reply Decl.”) ¶ 38)
`and contests the assumption by Dr. Wells that “predetermined” means a static or
`fixed time delay, as opposed to a time delay determined in advance. Id. ¶ 40. Dr.
`Stark notes Dr. Wells testified that receipt of the acknowledgment has the effect of
`resetting a timer. Id. ¶ 39. We agree with Dr. Stark’s observation that this
`testimony by Dr. Wells is a tacit admission that the delay in the ’450 patent is
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`predetermined, as in the expiration of a timer. Id. Thus, we find that the ’450
`patent discloses the predetermined time delay recited in element B.2 of
`Representative Claim B.
`Patent Owner also contends that the ’450 patent does not disclose the
`collision status elements recited in element B.2 and element B.3 of Representative
`Claim B. PO Resp. 21–24. In addition to the subject matter discussed above, i.e.,
`“transmitting . . . said reservation request data . . . if said particular station fails to
`receive a grant message from said centralized controller within a predetermined
`time delay,” element B.2 also recites “or if said particular station receives a
`collision status message from said centralized controller on said first path to
`retransmit said reservation request according to a collision resolution algorithm.”
`Id. at 21–22. Patent Owner argues that, in addition to transmitting reservation
`request data within a “predetermined time delay” as discussed above, element B.2
`requires transmitting reservation request data if the particular station receives a
`collision status message. Id. at 21. According to Patent Owner, the Petition does
`not establish that the ’450 patent discloses both capabilities and does not mention
`the acknowledgement message corresponding to a collision status message because
`one of ordinary skill would not consider an acknowledgement message to be a
`collision status message. Id. at 23. Petitioner responds that the claim is written in
`the alternative using the disjunctive term “or” and that the recited collision status
`message is not necessary for anticipation. Reply 9–10.
`Patent Owner also argues that Petitioner has not established that the ’450
`patent discloses element B.3, i.e., “optionally detecting by said centralized
`controller a collision due to simultaneous transmission of said reservation requests
`by two or more stations on the same reservation time-slot of said second path, and
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`then transmitting said collision statuses of said reservation requests on said first
`path to said stations, which will retransmit their reservation requests according to
`said collision algorithm.” PO Resp. 23–24. The claim chart in the Petition notes
`that this feature is “optional” and refers the reader to the analysis of claim element
`B.2. Pet. 17. Patent Owner argues that “optionally detecting” would have been
`understood by those of ordinary skill to require that the capability of detecting a
`collision be present at the centralized controller. Id. at 24.
`The claim language recites “optionally detecting . . . a collision . . . and then
`transmitting said collision statuses.” Patent Owner’s position appears to be that in
`order to be able to choose whether to exercise the option of detecting a collision
`and transmitting collision statuses, the central controller must have that capability.
`However, instead of a structure having the capability to perform both actions, the
`“optionally dete