Trials@uspto.gov
`571-272-7822
`
`Paper 55
`Entered: July 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC. and COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-006351
`Patent 5,563,883
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has
`been joined as a petitioner in this proceeding.
`
`
`571-272-7822
`
`Paper 55
`Entered: July 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC. and COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-006351
`Patent 5,563,883
`____________
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has
`been joined as a petitioner in this proceeding.
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`ARRIS Group, Inc. and Cox Communications, Inc. challenge the
`patentability of certain claims of U.S. Patent No. 5,563,883 (Ex. 1001, “the
`’883 patent”), owned by C-Cation Technologies, LLC (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, Petitioner has shown by a preponderance of the
`evidence that claims 1, 3, and 4 of the ’883 patent are unpatentable.
`
`A. Procedural History
`ARRIS Group, Inc. filed a Petition for inter partes review of claims 1,
`3, and 4 of the ’883 patent. Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response in both unredacted (confidential) form (Paper 16) and
`redacted form (Paper 18), along with a Motion to Seal its Preliminary
`Response and Certain Associated Exhibits (Paper 17). On July 31, 2015, we
`instituted an inter partes review of claims 1, 3, and 4 of the ’883 patent on
`asserted grounds of unpatentability and granted Patent Owner’s Motion to
`Seal. Paper 19 (“Institution Decision” or “Dec.”).
`Subsequent to institution, Cox Communications, Inc. filed a Petition
`and a Motion for Joinder with the instant proceeding. Cox Commc’ns, Inc.
`v. C-Cation Techs., LLC, Case IPR2015-01796, Papers 1, 3. We instituted
`an inter partes review and granted the Motion, joining Cox
`Communications, Inc. with ARRIS Group, Inc. (collectively, “Petitioner”) in
`this inter partes review. Paper 26.
`Patent Owner filed a Patent Owner Response to the Petition in both
`unredacted (confidential) form (Paper 28, “PO Resp.”) and redacted form
`
`2
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`(Paper 30), along with a Motion to Seal the Patent Owner Response and
`Exhibit 2028 (Paper 29). Petitioner filed a Reply to the Patent Owner
`Response. Paper 38 (“Pet. Reply”).
`Petitioner filed a Motion to Exclude Exhibit 2028 (Paper 41), Patent
`Owner filed an Opposition to the Motion to Exclude (Paper 47), and
`Petitioner filed a Reply (Paper 48). Patent Owner filed a Motion to Exclude
`Exhibits 1005–07, 1014, 1015, 1018, 1019, and 1026–34 (Paper 43),
`Petitioner filed an Opposition to the Motion to Exclude (Paper 46), and
`Patent Owner filed a Reply (Paper 49). Patent Owner also filed objections
`to Exhibits 1035–1038. Paper 50.
`An oral hearing was held on April 26, 2016. A transcript of the
`hearing has been entered into the record. Paper 54 (“Tr.”).
`
`B. Related Matters
`The parties indicate that Patent Owner has asserted the ’883 patent
`against Petitioner ARRIS Group, Inc. and other defendants in C-Cation
`Technologies, LLC v. Time Warner Cable Inc., No. 2:14-cv-00059 (E.D.
`Tex.), and against Petitioner Cox Communications, Inc. and other
`defendants in C-Cation Technologies, LLC v. Atlantic Broadband Group
`LLC, No. 1:15-cv-00295 (D. Del.). Pet. 2; Paper 40, 1.
`The ’883 patent has been the subject of other petitions for inter partes
`review. In Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case
`IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12), and Unified Patents Inc.
`v. C-Cation Technologies, LLC, Case IPR2015-01045 (PTAB Oct. 7, 2015)
`(Paper 15), the Board denied institution of inter partes review. In ARRIS
`Group, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00746 (PTAB
`Nov. 24, 2014) (Paper 22), the Board instituted inter partes review of
`
`3
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`claim 14 of the ’883 patent, and subsequently granted Patent Owner’s
`request for adverse judgment (Paper 28).
`
`C. The ’883 Patent
`The ’883 patent “pertains generally to methods and apparatus for
`facilitating the two-way multi-media communication based on a shared
`transmission media such as coaxial cable-TV network, and more specifically
`to methods and apparatus for signalling channel management and protocol.”
`Ex. 1001, 1:7–12.
`Figure 1 of the ’883 patent is reproduced below:
`
`
`Figure 1 illustrates a multiple access communication system architecture
`comprising central controller 10, shared transmission media 12, and a
`plurality of remote terminals 14. Id. at 5:8–11. Central controller 10
`interfaces with wide area networks 18 via a pool of communication
`channels 16. Id. at 5:12–14. A pool of communication channels 20—
`including forward signalling channels 22, forward traffic bearer channels 24,
`reverse signalling channels 26, and reverse traffic bearer channels 28—
`support communications between central controller 10 and remote
`terminals 14. Id. at 5:15–21.
`
`4
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`The ’883 patent describes a method for dynamic signalling channel
`allocation, assignment of remote terminals to signalling channels, and
`terminal reassignment. Id. at 2:38–51. Figure 6 of the ’883 patent, as
`annotated by Petitioner to include reference numbers (see Ex. 1023), is
`reproduced below.
`
`
`Figure 6 is a logic flow diagram illustrating a process for terminal
`registration, channel allocation, terminal assignment, and terminal
`reassignment. Id. at 8:16–18. In a preferred embodiment, the central
`controller receives a registration message from a remote terminal and, if the
`remote terminal is newly registering and authorized, checks for available
`
`5
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`signalling channels for the remote terminal. Id. at 8:18–23. Some factors
`for determining signalling channel availability include “the number of
`remote terminals using the signalling data channel, the traffic requirements,
`past collision count, channel error status, and bandwidth of the signalling
`data channel.” Id. at 8:35–39. If there are available signalling data channels
`in the forward and reverse directions, either from among signalling data
`channels already in use or newly allocated signalling data channels from the
`pool, the registering remote terminal will be assigned to those channels.
`Id. at 8:41–50. The central controller will complete the registration process
`by commanding the remote terminal to tune to the assigned channels.
`Id. at 8:50–53. “At any time, the central controller can initiate the terminal
`re-assignment process if deemed appropriate for the varying traffic demand
`or other system dynamics.” Id. at 8:32–34.
`
`D. Illustrative Claim
`Independent claim 1 of the ’883 patent is illustrative of the subject
`matter of the challenged claims:
`1. In a multiple access communication system
`comprising a central controller, a shared transmission means for
`signalling data and user information, and a plurality of remote
`terminals, a method of allocating signalling data channels
`between said central controller and said plurality of remote
`terminals from a plurality of communication channels and of
`assigning remote terminals comprising the steps of:
`(a) establishing communications between said central
`controller and said plurality of remote terminals via a plurality
`of signalling data channels, each of said remote terminals being
`initially assigned to a pair of predetermined signalling data
`channels;
`(b) monitoring the status of a plurality of the signalling
`data channels in use between said central controller and said
`
`6
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`plurality of remote terminals for the usability of said signalling
`data channels;
`(c) determining whether one of said plurality of remote
`terminals needs to be reassigned to a different signalling data
`channel other than said predetermined signalling data channel;
`(d) determining whether a different and suitable
`signalling data channel is available other than said
`predetermined channel; and
`(e) reassigning by said central controller said remote
`terminal to a different and suitable signalling data channel for
`communication henceforward.
`
`Ex. 1001, 14:27–53.
`
`E. Asserted Grounds of Unpatentability
`We instituted an inter partes review of claims 1, 3, and 4 on the
`following grounds of unpatentability (Dec. 23):
`
`References
`
`Basis
`
`MPT 1343,2 MPT 1347,3 and
`MPT 13274
`MPT 1343, MPT 1347, MPT 1327,
`Zdunek,5 and Dufresne6
`
`
`
`Challenged
`Claim(s)
`1 and 4
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`3
`
`
`2 MPT 1343 PERFORMANCE SPECIFICATION: SYSTEM INTERFACE
`SPECIFICATION FOR RADIO UNITS TO BE USED WITH COMMERCIAL TRUNKED
`NETWORKS OPERATING IN BAND III SUB-BANDS 1 AND 2 (1991) (Ex. 1006,
`“MPT 1343”).
`3 MPT 1347 RADIO INTERFACE SPECIFICATION FOR COMMERCIAL TRUNKED
`NETWORKS OPERATING IN BAND III, SUB-BANDS 1 AND 2 (1991) (Ex. 1007,
`“MPT 1347”).
`4 MPT 1327 A SIGNALLING STANDARD FOR TRUNKED PRIVATE LAND MOBILE
`RADIO SYSTEMS (1991) (Ex. 1005, “MPT 1327”).
`5 U.S. Patent No. 4,870,408, issued Sept. 26, 1989 (Ex. 1008, “Zdunek”).
`6 U.S. Patent No. 4,920,533, issued Apr. 24, 1990 (Ex. 1009, “Dufresne”).
`
`7
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`II. DISCUSSION
`A. Claim Construction
`The ’883 patent has expired. Pet. 6; PO Resp. 19; Dec. 13. For
`claims of an expired patent, the Board’s claim construction analysis is
`similar to that of a district court. See In re Rambus, Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012). In this context, claim terms “are generally given their
`ordinary and customary meaning” as understood by a person of ordinary
`skill in the art in question at the time of the invention. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant
`than the intrinsic record in determining the legally operative meaning of
`claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks
`omitted).
`In our Institution Decision, we determined that no claim terms
`required express construction for purposes of deciding whether to institute
`trial. Dec. 13. Petitioner asserts in the Petition that all claim terms should
`have their ordinary and customary meaning. Pet. 6. Patent Owner submits
`that no claim terms require express construction, but complains that the
`Petition fails to apply the ordinary and customary meaning of the claims.
`PO Resp. 20. In its Reply, Petitioner contends that Patent Owner, despite
`urging that no express construction is necessary, nevertheless engages in
`claim construction by reading limitations into the claim and resorting to
`
`8
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`extrinsic evidence to rewrite the claims. Pet. Reply 6. To the extent it is
`necessary for us to construe claim terms in this decision, we do so below in
`the context of analyzing whether the prior art renders the claims
`unpatentable.
`
`B. Principles of Law
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A 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 of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is 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).
`
`C. Asserted Obviousness Grounds Based on the MPT Specifications
`Petitioner contends that claims 1 and 4 are unpatentable under
`35 U.S.C. § 103(a) as obvious over MPT 1343, MPT 1347, and MPT 1327
`(collectively, “the MPT Specifications”). Pet. 19–51. Petitioner also
`contends that claim 3 is unpatentable under 35 U.S.C. § 103(a) as obvious
`over the MPT Specifications, as applied to claim 1, and further in view of
`
`9
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`Zdunek and Dufresne. Id. at 51–60. In support of these asserted grounds of
`unpatentability, Petitioner explains how the references teach all of the
`limitations of the challenged claims and provides a rationale for combining
`the teachings of the MPT Specifications with each other and also with
`Zdunek and Dufresne. Id. at 17–19, 54, 56–57. Petitioner also relies on the
`testimony of Mr. Stuart Lipoff. Ex. 1002 ¶¶ 85–211.
`In response, Patent Owner argues that the MPT Specifications are not
`“printed publication[s]” under 35 U.S.C. § 102(b) and therefore not eligible
`as prior art in an inter partes review under 35 U.S.C. § 311(b). PO
`Resp. 23–26. Patent Owner also argues that the MPT Specifications fail to
`disclose certain limitations of claim 1, the only independent claim at issue in
`this proceeding. Id. at 34–51. For support, Patent Owner relies on the
`testimony of Dr. Chris Heegard. Ex. 2023 ¶¶ 91–127.
`Having reviewed the parties’ arguments and supporting evidence, we
`determine that Petitioner has shown by a preponderance of the evidence that
`(i) the MPT Specifications are printed publications within the meaning of
`35 U.S.C. § 102(b), (ii) claims 1 and 4 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the MPT Specifications, and (iii) claim 3 is
`unpatentable under § 103(a) as obvious over the MPT Specifications,
`Zdunek, and Dufresne.
`
`1. Summary of the MPT Specifications
`The MPT Specifications (MPT 1343, MPT 1347, and MPT 1327),
`documents published by the United Kingdom Department of Trade and
`Industry, Radiocommunications Agency, provide standards for
`communications in trunked radio networks. See Ex. 1005, 1 (cover), 4
`(Foreword); Ex. 1006, 1 (cover), 4 (Foreword); Ex. 1007, 1 (cover), 5
`
`10
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`(Foreword). The MPT Specifications define interrelated aspects of a trunked
`radio system, and the three documents reference one another explicitly. See,
`e.g., Ex. 1006 § 1.1 (“MPT 1343 is designed to be read in association with
`MPT 1327.”); id. § 2 (MPT 1343 referring to MPT 1327 and MPT 1347 as
`“associated documents”); Ex. 1005, 4 (MPT 1327 Foreword referring to
`MPT 1343 and MPT 1347); Ex. 1007, 5 (MPT 1347 Foreword stating that
`“[a] companion specification, MPT 1343, contains the requirement to be met
`by radio units to be used with these networks”).
`MPT 1343 provides definitions of various terms used in the MPT
`Specifications. Ex. 1006 § 3.1. For example, a “radio unit” is “[a] mobile or
`other user station contacting a system by normal land mobile radio in
`accordance with the specification.” Id. A “trunking system controller,” or
`“TSC,” is defined as “[t]he central control intelligence necessary to enable
`the trunking system to function according to MPT 1327.” Id. A “control
`channel” is defined as “[a] forward channel and return channel being used
`for the transmission of messages conforming to MPT 1327 with the primary
`purpose of enabling the [TSC] to control radio units.” Id.
`Together, the MPT Specifications describe processes for establishing
`and maintaining communications in a standards-compliant MPT-based
`network. The following figure from the Petition illustrates how certain
`sections of the MPT Specifications interrelate to one another to define
`specific system use cases:
`
`11
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`
`
`Flowchart illustrating functionality defined by
`MPT Specifications (Pet. 10)
`
`When a radio unit in an MPT-compliant system is switched on or is
`initially selecting a network for connection, the radio unit attempts to
`“acquire a control channel emanated by the selected network.” Ex. 1006
`§ 9.3.3.1. Depending on various circumstances, such as the way the radio
`unit is configured and the information retained in its memory, the radio unit
`executes one or more control channel hunting procedures to locate an
`“appropriate control channel.” Id. For instance, when a radio unit is
`switched on and has valid registration information stored in memory from a
`prior use on a network, the radio unit executes a “single channel hunt
`sequence” and tunes to the control channel indicated in the previous record.
`Id. § 9.3.3.2.2. The radio then attempts to confirm the control channel by
`testing the channel in accordance with MPT 1343 § 9.3.4 before any
`
`12
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`transmissions on the control channel are allowed. Id. § 9.3.3.2.2. For
`example, during control channel confirmation, the radio unit compares the
`LAB sub-field of the control channel’s system identification code (indicating
`the category of radio units allowed on that control channel) with the radio
`unit’s own categorization stored in its read only memory. Id. § 9.3.4.2.5.
`The radio unit also monitors the codeword error rate of the control channel
`and compares it against threshold requirements. Id. § 9.3.4.3. If the error
`check fails, the radio unit returns to the control channel hunting procedures.
`Id. § 9.4.1. If the testing succeeds, the hunt sequence is considered complete
`and the control channel is confirmed. Id. § 9.3.4.4.
`Once the control channel is confirmed, the radio determines whether it
`is required to register before it is able to transmit freely. Id. § 10.2.3. The
`radio unit makes this determination based on the current system mode as
`well as on data retained in memory and broadcast on control channels. Id.
`If the radio unit determines registration is not required, the radio is free to
`initiate calls, and normal operation proceeds. Id. If registration is required,
`however, the radio unit checks to see if it holds a successful registration. Id.
`If it does not hold a successful registration record, the radio unit executes the
`registration procedures of MPT 1343 § 10.2.4. Id. The TSC accepts, denies,
`or fails the registration attempt. Id. § 10.2.4; Ex. 1005 § 8.2.1.2. If
`registration is denied or failed, the radio unit defaults back to the control
`channel hunting procedures. Ex. 1006 §§ 10.2.4.1.2, 10.2.4.1.3. If
`registration is accepted, the radio unit enters normal operation on the
`network and is free to transmit. Id. § 10.2.3. During normal operation, a
`radio unit monitors its control channel for a variety of conditions to
`
`13
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`determine whether it must leave that control channel and return to control
`channel hunting procedures. Id. § 9.4.1.
`In the event of network failure, the network may implement a fall-
`back procedure to provide reduced network capability until normal function
`is restored. Id. § 13. When fall-back operation is signaled, each radio unit
`relapses to a pre-programmed channel. Id. § 13.1. Modified procedures and
`limited call procedures are utilized while in fall-back mode. Id. § 13.4. A
`radio unit will exit from fall-back mode and enter the control channel
`acquisition procedures upon receiving a message from the network signaling
`exit from fall-back operation or a user initiating selection of a different
`network. Id. § 13.5.
`
`2. The MPT Specifications are Printed Publications
`The parties dispute whether the MPT Specifications qualify as prior
`art “printed publications” under 35 U.S.C. §§ 102(b) and 311(b). Pet. 16–
`17; PO Resp. 23–26; Pet. Reply 3–5. The determination whether a
`document is a “printed publication” involves a case-by-case inquiry into the
`facts and circumstances surrounding its disclosure to members of the public.
`In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is
`whether the reference was made “sufficiently accessible to the public
`interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158,
`1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a
`satisfactory showing that such document has been disseminated or otherwise
`made available to the extent that persons interested and ordinarily skilled in
`the subject matter or art[,] exercising reasonable diligence, can locate it.”
`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014)
`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`
`14
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`Cir. 2006)). “[O]nce accessibility is shown, it is unnecessary to show that
`anyone actually inspected the reference.” In re Lister, 583 F.3d 1307, 1314
`(Fed. Cir. 2009).
`The MPT Specifications cited in the Petition were published in 1991.
`The version of MPT 1327 relied on in the Petition indicates on its cover
`page that the document was first published in January 1988 and reprinted
`and revised in November 1991. Ex. 1005, 1. Similarly, the cover pages of
`the versions of MPT 1343 and MPT 1347 cited in the Petition indicate they
`were first published in January 1988 and August 1988, respectively, and
`revised and reprinted in September 1991. Ex. 1006, 1; Ex. 1007, 1. Each
`document also bears a UK copyright notice showing the same publication
`dates as the cover pages. Ex. 1005, 3; Ex. 1006, 3; Ex. 1007, 3.
`Petitioner contends that the MPT Specifications were publicly
`accessible well before July 18, 1993, the § 102(b) critical date of the
`’883 patent. Pet. 16–17. In support of its position, Petitioner provides the
`1991–92 Annual Report of the Radiocommunications Agency (“RA”), the
`UK agency that published the MPT Specifications. Ex. 1010. According to
`the Annual Report, the RA published eleven new or revised MPT standards,
`including MPT 1327, MPT 1343, and MPT 1347, between April 1, 1991,
`and March 31, 1992. Id. at 24, 35. The specific publication dates set forth
`in the Report accord with the dates on the cover pages of the MPT
`Specifications relied on by Petitioner. Id. at 35. Moreover, the Report states
`that the MPT standards “continue to be available free of charge from [the
`RA’s] Library.” Id. at 24. The Report also provides a mailing address and
`telephone number for the RA’s Information and Library Service to allow
`
`15
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`requests for free copies of various publications, including the MPT
`Specifications. Id. at 33.
`Patent Owner contends the MPT Specifications were not sufficiently
`accessible to the public as of the critical date. PO Resp. 24. According to
`Patent Owner, Petitioner has provided no evidence that the MPT
`Specifications were ever disseminated to anyone. Id. But proof of actual
`dissemination or viewing of a reference is not required in order to establish
`public accessibility. See Lister, 583 F.3d at 1314.
`Patent Owner also asserts that Petitioner has failed to provide
`evidence of the availability of the MPT Specifications to individuals other
`than those who already knew of their existence, or how interested persons of
`ordinary skill could have located the MPT Specifications or the Annual
`Report. PO Resp. 24. We are not persuaded by Patent Owner’s argument.
`Rather, we agree with Petitioner that the record is replete with evidence
`showing those working in the field were aware of the RA’s development of
`the MPT standards and how to obtain copies of them. See Pet. Reply 4–5.
`For example, a PCT application published in 1993 identifies MPT 1327,
`MPT 1343, and MPT 1347 as describing a “trunking technique” for mobile
`radio systems. Ex. 1018, 2. Another PCT application published in 1993
`refers to MPT 1327 and MPT 1343 as “de facto standards in Europe for
`private mobile radio networks.” Ex. 1019, 2.
`Further, as Petitioner points out, the MPT Specifications were cited in
`United States patents and a published EPO application, and mentioned in
`books as well. See Ex. 1026 (listing MPT 1327 among the Other
`Publications on the face of the patent); Ex. 1027, 2:47–54 (citing
`MPT 1327); Ex. 1028, 4:36–42 (citing MPT 1327); Ex. 1029, 3:9–27
`
`16
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`(discussing MPT 1327); Ex. 1030, 297, 300 (discussing MPT
`Specifications); Ex. 1031 (mentioning MPT 1327 and MPT 1343).
`Although these references either refer to the 1988 version of the MPT
`Specifications, or do not specifically identify the 1991 version, they
`nevertheless support Petitioner’s assertion that persons of ordinary skill in
`the art were aware of the RA’s work in publishing and maintaining the MPT
`standards and knew how to obtain them. An order from the Federal
`Communications Commission explaining comments from Motorola,
`Ericsson, and Philips, among others, regarding the suggested use of
`MPT 1327 in the United States further supports Petitioner’s position.
`Ex. 1032, 3876.
`We also are not persuaded by Patent Owner’s contention that the
`Board in other cases has found similar evidence insufficient to establish
`public accessibility. See PO Resp. 25–26. Unlike the asserted reference in
`Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP, Case
`IPR2014-00514, slip op. at 7–9 (PTAB Sept. 9, 2014) (Paper 18), the MPT
`Specifications are not draft standards, and there is no evidence that the MPT
`Specifications, available for free from the RA’s library, were password
`protected. The circumstances here are also unlike those in Groupon Inc. v.
`Blue Calypso, LLC, Case CBM2013-00033, slip op. at 25–30 (PTAB
`Dec. 17, 2014) (Paper 51), aff’d in relevant part, 815 F.3d 1331, 1349–51
`(Fed. Cir. 2016), which involved an undated, undistributed university
`departmental technical report mentioned publicly on a professor’s list of
`publications. In contrast, the evidence in the instant proceeding establishes
`that ordinarily skilled artisans working in the field knew the RA had set
`standards regarding trunked radio and made them freely available.
`
`17
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`For the foregoing reasons, we determine Petitioner has demonstrated
`by a preponderance of the evidence that the MPT Specifications were
`publicly accessible as of the critical date. Therefore, the MPT Specifications
`qualify as prior art printed publications within the meaning 35 U.S.C.
`§§ 102(b) and 311(b).
`
`3. Obviousness of Claim 1
`As an initial matter, we adopt Petitioner’s proposed level of ordinary
`skill in the art as a person with an undergraduate degree in electrical
`engineering, or an equivalent education experience, and three or more years
`working in a relevant field employing digital communications technology to
`deliver telecommunication services, or alternatively a relevant field
`involving the manufacture of telecommunication products. See Pet. 9 (citing
`Ex. 1002 ¶ 31). Patent Owner’s proposed level of ordinary skill in the art,
`see Ex. 2023 ¶ 25, is, according to Patent Owner’s expert, “essentially the
`same” as Petitioner’s proposal, id. ¶ 27.
`We also agree with Petitioner that a person of ordinary skill in the art
`at the time of the alleged invention of the ’883 patent would have understood
`that the MPT Specifications define portions of an interrelated trunked radio
`system, such that their teachings naturally would have been combined to
`form an MPT-compliant network. See Pet. 17. The three documents relied
`on by Petitioner—MPT 1327, MPT 1343, and MPT 1347—explicitly
`reference one another. See, e.g., Ex. 1006 §§ 1.1, 2; Ex. 1005, 4 (Foreword);
`Ex. 1007, 5 (Foreword). In addition, those skilled in the art before the
`critical date of the ’883 patent referred to MPT 1327, MPT 1343, and
`MPT 1347 as “associated documents.” Ex. 1018, 2. Patent Owner does not
`challenge Petitioner’s assertion that a person of ordinary skill in the art
`
`18
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`would have been motivated to combine the teachings of the MPT
`Specifications. Based on our review of the record, we agree with and adopt
`the rationale presented in the Petition for combining the MPT Specifications
`in the manner asserted. See Pet. 17–18; Ex. 1002 ¶¶ 170–72.
`We now turn to Petitioner’s contentions regarding how the MPT
`Specifications disclose all of the limitations of claim 1. Petitioner relies on
`two separate modes of operation described in the MPT Specifications to
`demonstrate that the MPT Specifications render the challenged claims
`obvious. See Pet. 24. The first is the single channel hunt sequence followed
`by normal operation on a control channel, which Petitioner contends
`describes all the limitations of claim 1. Id. at 26–29, 32–33, 35–36, 38–41,
`43–45. Patent Owner argues the Petition fails to show that this process
`includes steps (c) and (e) of claim 1. PO Resp. 34–48. As will be explained
`in detail below, we agree with Petitioner that the single channel hunt
`sequence followed by normal operation, as described in the MPT
`Specifications, meets all the limitations of claim 1.
`Petitioner also contends that the second mode of operation—the fall-
`back procedure described in the MPT Specifications—includes all the steps
`recited in claim 1. Pet. 29–31, 33–34, 36–37, 42–43, 45–46. In response,
`Patent Owner submits that its arguments regarding the single channel hunt
`sequence followed by normal operation apply equally to Petitioner’s
`mapping of the fall-back procedure to steps (c) and (e) of claim 1. PO
`Resp. 50 n.18 (asserting that Petitioner’s argument regarding the fall-back
`procedure is deficient as to step (c) for the same reasons the single channel
`hunt sequence does not perform step (c)); id. at 50–51 (asserting that
`Petitioner’s position concerning the fall-back procedure’s disclosure of
`
`19
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`step (e) is deficient for the same reasons its position concerning the single
`channel hunt sequence is deficient because Petitioner relies on the same
`disclosures in the MPT Specifications for both modes of operation).
`Additionally, Patent Owner presents another argument directed only to
`Petitioner’s contentions regarding the fall-back procedure, based on an
`alleged relationship between steps (b) and (c). Id. at 48–50. Because we
`find that the first mode of operation relied on by Petitioner meets all the
`limitations of claim 1, we need not consider Petitioner’s contentions
`regarding the fall-back procedure or Patent Owner’s arguments in response.
`Accordingly, the discussion that follows focuses on the parties’ contentions
`with respect to the single channel hunt sequence followed by normal
`operation.
`
`a. Preamble and steps (a) and (b)
`Petitioner asserts that the MPT Specifications describe a “multiple
`access communication system” (based on a slotted Aloha random access
`protocol) comprising a “central controller” (TSC in the MPT Specifications),
`a “shared transmission means” (airwaves), and a “plurality of remote
`terminals” (radio units), as recited in the preamble of claim 1.7 Pet. 20–23
`(citing, e.g., Ex. 1005, §§ 1.3.2, 1.3.3.1, 7.2.2, 8.1, 8.2; Ex. 1006, §§ 3.1, 4.1,
`4.1.1, 4.1.2, 5.1.1, 5.1.2, 8.2.2.2). Petitioner also asserts that the MPT
`Specifications describe a “method of allocating signalling data channels”
`(MPT control channels) “from a plurality of communication channels”
`(channels in the MPT system which may be flexibly allocated as control
`
`
`7 Petitioner contends that the preamble is non-limiting. We need not decide
`whether the preamble is limiting because Petitioner demonstrates that the
`MPT Specifications disclose all the features in the pream
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
