`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`Hytera Communications Corp. Ltd.,
`
`Petitioner,
`
`v.
`
`Motorola Solutions, Inc.
`
`Patent Owner.
`______________________
`
`Patent No. 7,369,869 B2
`Filing Date: July 26, 2004
`Issue Date: May 6, 2008
`
`Title: Method and System of Scanning a TDMA Channel
`
`______________________
`
`Case No. IPR2017-02179
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`I.
`II.
`
`CONTENTS
`INTRODUCTION ......................................................................................... 4
`BACKGROUND ............................................................................................ 6
`A.
`The ʼ869 Patent .................................................................................... 6
`B. Overview of the Claims of the ’869 Patent ....................................... 8
`C.
`The Petition Proposes One Anticipatory Challenge and Two
`Obviousness Challenges ...................................................................... 9
`III. LEVEL OF ORDINARY SKILL ................................................................. 9
`IV. CLAIM CONSTRUCTION ........................................................................10
`V.
`THE BOARD SHOULD DENY HYTERA’S PETITION IN ITS
`ENTIRETY BECAUSE HYTERA HAS NOT MET ITS BURDEN
`TO SHOW HOW IT CAN PREVAIL ON ANY OF ITS
`ASSERTED GROUNDS .............................................................................11
`A. Grounds 1 and 2: Petitions Fails To Show That WAN
`Anticipates Claims 1-3, 6-8, 17-18 And 21-22, And/Or
`Renders Obvious Claims 1-4, 6-9, 17-18, AND 21-22. ...................11
`1.
`Overview of Wan and its Inapplicability to the ʼ869
`Patent ........................................................................................11
`Petitioner fails to show that Wan discloses all of the
`elements of the challenged independent claims. ...................16
`Petitioner fails to show that Wan discloses claim 2. .............29
`Petitioner fails to show that Wan discloses claim 3. .............31
`Petitioner fails to show that Wan discloses claim 4. .............33
`Petitioner fails to show that Wan discloses claim 6. .............35
`Petitioner fails to show that Wan discloses claim 7. .............36
`
`2.
`
`3.
`4.
`5.
`6.
`7.
`
`
`
`1
`
`
`
`8.
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`Petitioner fails to show that Wan discloses claims 8, 18,
`22. ..............................................................................................37
`Petitioner fails to show that Wan discloses claim 9. .............37
`9.
`B. Ground 3: Petitioner Fails To Show That WAN In
`Combination With BRENNAN Renders Claims 1-4, 6-9, 17-
`18, AND 21-22 Obvious. ....................................................................39
`1.
`Overview of Brennan ..............................................................39
`2.
`Petitioner fails to show that the combination of Wan
`and Brennan renders “wherein a subset of the plurality
`of channels is preprogrammed” (1[a], 21[a]) obvious. ........40
`Petitioner fails to show that the combination of Wan
`and Brennan renders claim 2 Obvious. .................................43
`Petitioner fails to show that the combination of Wan
`and Brennan renders claim 6 and claim element 17[e]
`obvious. .....................................................................................45
`Petitioner fails to show that the combination of Wan
`and Brennan renders claims 3-4, 7-9, 18, and 22
`obvious. .....................................................................................47
`
`3.
`
`4.
`
`5.
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Gubelmann v. Gang,
`408 F.2d 758 (C.C.P.A. 1969) ...................................................................... 24, 28
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ........................................................ 25, 27, 29, 31
`LifeScan Scotland, Ltd. v. Shasta Techs., LLC,
`No. 11-CV-04494-WHO, 2016 WL 7732710 (N.D. Cal. Mar. 8,
`2016) ................................................................................................. 25, 27, 29, 31
`Microsoft Corp. v. Proxyconn, Inc.,
`289 F.3d 1292, 1298 (Fed. Cir. 2015) .................................................................. 7
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) ...................................................................... 24, 28
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ............................................................................ 7
`Statutes
`35 U.S.C. § 311(b) ..................................................................................................... 7
`Other Authorities
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`
`
`
`
`
`3
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`I.
`
`INTRODUCTION
`This petition was filed by Hytera Communication Co. Ltd. (“Hytera” or
`
`“Petitioner”) against Motorola Solutions, Inc. (“Motorola”)’s U.S. Patent 7,369,869
`
`(Ex. 1001, “the ʼ869 patent”) six months after Motorola sued Hytera in district court
`
`and the U.S. International Trade Commission for infringing this patent, and seven
`
`months after Motorola sued Hytera for misappropriating its trade secrets through
`
`hiring of multiple Motorola engineers who surreptitiously downloaded thousands of
`
`confidential Motorola documents to take with them to Hytera to build a competing
`
`digital mobile radio (“DMR”) product. Motorola’s ʼ869 patent generally involves
`
`scanning in a two-way radio system that uses a control message on the channel where
`
`activity is present. The Board should deny institution of Hytera’s petition because
`
`Hytera has not shown a reasonable likelihood that it would prevail with respect to
`
`any challenged claim of the ʼ869 patent.
`
`Hytera has raised three Grounds in its petition, based on two references: (1)
`
`Anticipation by Wan; (2) obviousness due to Wan, and (3) obviousness due to a
`
`combination of the Wan and Brennan references. There are significant differences
`
`between the prior art on which Hytera relies and the challenged claims of the ’869
`
`Patent. Wan is directed to improvements to a paging system, which is a wholly
`
`different type of system the technology of which is inapplicable to the scanning
`
`system inventions of the ʼ869 patent. Based on the manifest differences in these
`
`
`
`4
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`systems, Wan fails to disclose numerous claim elements—among other deficiencies,
`
`Wan completely lacks the foundational requirement of the ’869 Patent, that the
`
`claimed system be a “wireless communications landscape 100” directed to scanning.
`
`And that is only the first of Wan’s significant deficiencies: Wan also lacks any
`
`disclosure of a number of additional required elements, including (i) “a channel
`
`preprogrammed in a list,” (ii) “a control message” with “a first information” and “a
`
`second information” with “activity present on the channel,” (iii) “remaining on the
`
`channel,” (iv) “moving to the next channel,” (v) “determining whether the activity
`
`is a voice transmission or a data transmission,” and (vi) “the control message . . .
`
`transmitted as frequently as once every 120 milliseconds.” Wan’s failure to disclose
`
`any of these elements is unsurprising given the manifestly different purposes of the
`
`Wan paging system and the scanning system of the ʼ869 Patent. Hytera attempts to
`
`argue obviousness in an attempt to overcome the glaring deficiencies of Wan, but
`
`tellingly, Petitioner fails to show that a person of ordinary skill in the art would find
`
`it obvious to import distinct limitations from a separate prior art reference into Wan’s
`
`paging system.
`
`Brennan is even further afield from the challenged claims. Brennan is directed
`
`to using a dedicated control channel to monitor trunked radio communications, and
`
`directs the user to activity present on a different channel; that is in stark contrast to
`
`the ʼ869 Patent, which uses an opposite approach, scanning channels for activity of
`
`5
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`interest on the same channel that is being scanned. Brennan also fails to disclose
`
`numerous other elements including (i) “preprogrammed” channels, (ii) “rendering
`
`audio of the activity present on the channel,” and (iii) “tuning to the next channel.”
`
`Brennan therefore does not come close to curing Wan’s deficiencies and does not
`
`provide a basis for instituting an inter partes review proceeding for the challenged
`
`claims.
`
`II. BACKGROUND
`A. The ʼ869 Patent
`The ʼ869 Patent is entitled “Method and System of Scanning a TDMA
`
`Channel,” and lists Motorola engineers David G. Wiatrowski, Thomas B. Bohn,
`
`Satyanarayan R. Panpaliya, and Thomas J. Senese as inventors.
`
`The ʼ869 Patent generally involves scanning technology for two-way radio
`
`devices. See ʼ869 Patent at Abstract. “Scan” is a feature used by radio subscriber
`
`units (or “SUs”) in a two-way radio system that enables an SU to “lock on to specific
`
`RF frequencies in a preprogrammed list in the SU[]” and to quickly check those
`
`frequencies for information useful to the SU (“activity of interest”) before moving
`
`on to the next frequency. ʼ869 Patent at 1:26-28. To perform the quick check, an SU
`
`first assesses a “first information” within a control message to see if there is activity
`
`present on the channel. Id. at cls. 1, 17, 21, 4:59-62. If there is no activity, the SU
`
`resumes scanning. Id. at 5:4-5. If there is activity, the SU assesses a “second
`
`
`
`6
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`information” within the same control message to determine if there is “activity of
`
`interest” to the SU. Id. at cls. 1, 8, 16, 17, 21, 5:6-23, 47-65.
`
`The background of the ʼ869 Patent identifies problems in prior art scan
`
`operations. For example, “[i]f the preprogrammed scan list is very long and has many
`
`RF frequencies, then the scan feature takes a long time.” Id. at 1:34-36. As another
`
`example, if communications on a frequency are “of no interest to the scanning SU,
`
`the scanning SU spends a lot of time listening to communications that are of no
`
`interest to it.” Id. at 1:37-39. The ʼ869 Patent provides examples of such
`
`communications that are not “of interest,” including a communication “[that] is
`
`addressed to a SU or group of SUs that are of no interest to the scanning SU.” Id. at
`
`1:41-43.
`
`The technology claimed in the ʼ869 Patent is directed to improving scan
`
`operations, for example, by reducing the amount of time an SU spends scanning. Id.
`
`at 1:44-46. In one embodiment, the invention of the ʼ869 Patent provides a system
`
`and method for scanning a channel in which it is determined whether activity on a
`
`channel is of interest to a SU based on the contents of a single control message
`
`received from a base radio. See id. at Abstract. The single control message includes
`
`“a first information” that informs the SU whether there is activity present on the
`
`channel and, if there is, “a second information” “in the control message” can be used
`
`by the SU to determine whether the activity is of interest. Id.; id. at claims 1, 17, 20.
`
`7
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`The second information within the control message indicates a characteristic of the
`
`activity, and the SU determines if the activity is of interest by comparing this second
`
`information with preprogrammed information in the SU. See, e.g., id. at claims 1,
`
`17, 20. The second information may identify the type of transmission, such as voice,
`
`data, emergency, non-emergency, group, or individual call. Id. at 5:6-23. The second
`
`information may also identify a SU identifier or talkgroup identifier to determine
`
`whether the transmission is targeted to that SU. Id. at 5:46-49. If the comparison
`
`indicates the activity is of interest, then the SU remains on the channel to receive
`
`activity. Id. If not, the SU moves on to scanning the next channel preprogrammed in
`
`the scan list. See, e.g., id. at claims 6, 17.
`
`The patent explains activity can be “of interest,” for example, “if the control
`
`message indicates that the activity is targeted for the subscriber unit.” See, e.g., id.
`
`at claim 7. An SU may store its own identification information, as well identification
`
`information about talkgroups in which it is participating. See, e.g., id. at 3:2-10. “[A]
`
`match of the ID field[]” in a control message thus “indicates that the active
`
`transmission may be of interest to the scanning SU.” Id. at 7:27-29.
`
`B. Overview of the Claims of the ’869 Patent
`The ’869 patent claims fall into two groups that are analogous: (i) method
`
`claims (claims 1–20), claims 1 and 17 being the two independent claims in this
`
`group; and (ii) system claims (claims 21–24), claim 21 being the only independent
`
`
`
`8
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`claim of this group. The limitations of claim 1 are similar to those in independent
`
`claims 17 and 21.
`
`C. The Petition Proposes One Anticipatory Challenge and Two
`Obviousness Challenges
`Hytera proposes three grounds of unpatentability:
`
`Ground
`
`’869 Patent
`Claims
`
`Type Primary Reference
`
`1-3, 6-8, 17-18,
`21-22
`
`§ 102
`
`
`1-4, 6-9, 17-18,
`21-22
`
`§ 103
`
`
`1-4, 6-9, 17-18,
`21-22
`
`§ 103
`
`
`U.S. Patent 6,044,069
`(“Wan”)
`
`U.S. Patent 6,044,069
`(“Wan”)
`
`U.S. Patent 6,044,069
`(“Wan”)
`
`
`1
`
`2
`
`3
`
`
`
`Secondary
`Reference
`
`
`
`
`
`
`U.S. Patent
`6,519,472
`(“Brennan”)
`
`
`III. LEVEL OF ORDINARY SKILL
`
`
`
`The characteristics of a person of ordinary skill in the field of art of the
`
`Asserted Patents would be a person with a Bachelor’s degree in Electrical
`
`Engineering, Computer Engineering, or Computer Science, with at least two to
`
`three years of experience in telecommunications and networking, or an equivalent
`
`degree and/or experience.
`
`
`
`9
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`IV. CLAIM CONSTRUCTION
`While the claims terms in an IPR proceeding should be construed under the
`
`broadest reasonable construction (“BRI”) standard, 37 C.F.R. § 42.100(b), “[t]he
`
`protocol of giving claims their broadest reasonable interpretation . . . does not
`
`include giving claims a legally incorrect interpretation.” Microsoft Corp. v.
`
`Proxyconn, Inc., No. 2014-1542, 2015 WL 3747257 at *3 (Fed. Cir. June 16, 2015)
`
`(citing In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009)). This means that claims
`
`cannot be construed so broadly as to ignore the specification and understanding of a
`
`person of ordinary skill in the art. Id.
`
`Hytera identifies term [1] (“a wireless communications landscape 100”
`
`(claims 1 and 21)) that should be construed in the same way the parties did in the
`
`ITC. Pet. at 10. Patent Owner agrees with the proposed construction: “a network
`
`with communications resources of RF frequencies, one or more base radios, and one
`
`or more subscriber units.” This agreed-upon construction has been adopted by the
`
`ITC. Pet. at 10, citing to Ex. 1006 at 7, Ex. 1007 at 45-46, Ex. 1008 at 86
`
`(FN14). Hytera also argues that term [2] (“determining whether the activity is of
`
`interest to the subscriber unit” / “determine whether the activity is of interest to the
`
`system” (claims 1, 17, 21)) need not be construed. Patent Owner agrees that
`
`construction of term [2] is not necessary, including because Hytera’s (incorrect)
`
`indefiniteness challenge under § 112 is not available in an Inter Partes Review. 35
`
`
`
`10
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`U.S.C. § 311(b). Further, the claim language and the specification clearly show that
`
`“of interest” is not indefinite, and that it means “has utility.” See, e.g., ʼ869 Patent at
`
`cls. 1, 7, 22; id. at 3:38-41, 5:32-44, 6:44-56, 6:61-64, 7:27-29. As discussed in
`
`further detail below, the claims are not anticipated and/or obvious under the parties’
`
`agreed upon construction of term [1], or under the plain meaning or Patent Owner’s
`
`construction of term [2].
`
`V. THE BOARD SHOULD DENY HYTERA’S PETITION IN ITS
`ENTIRETY BECAUSE HYTERA HAS NOT MET ITS BURDEN TO
`SHOW HOW IT CAN PREVAIL ON ANY OF ITS ASSERTED
`GROUNDS
`A. Grounds 1 and 2: Petitions Fails To Show That WAN Anticipates
`Claims 1-3, 6-8, 17-18 And 21-22, And/Or Renders Obvious
`Claims 1-4, 6-9, 17-18, AND 21-22.
`1. Overview of Wan and its Inapplicability to the ʼ869 Patent
`a. Wan in General
`Wan is directed to a power management system for a mobile station that
`
`reduces standby mode processing during paging. Ex. 1003 at Abstract. The system
`
`relies on a mobile switching center in compliance with GSM (global system for
`
`mobile communications). Id. at 6:15-29. Specifically, to prepare for paging, a
`
`cellular telephone first scans certain frequencies used by GSM to synchronize
`
`communication with a base station. Id. at 6:46-56. The cellular telephone then
`
`registers with the mobile switching center to make itself known as an active user
`
`within the GSM network. Id. at 6:51-54.
`
`11
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`Upon registration, the cellular telephone enters a call detection mode, where
`
`it receives, stores and examines paging information. Id. at 6:54-60. Recognizing that
`
`conventional systems consume unnecessary power in processing a full paging
`
`message, Wan discloses using a short paging message, i.e., a short page channel
`
`(SPCH), and a full paging message, i.e., a paging channel (PCH), transmitted over a
`
`multiframe. Id. at 9:36-49. Multiframe is a time duration which contains many
`
`timeslots and messages. Id. The SPCH contains one-fourth the data of the PCH. Id.
`
`at 7:14-17.
`
`To save power, the cellular telephone first receives and processes the SPCH,
`
`which indicates whether a pending telephone call or paging message is directed to
`
`the mobile station. Id. at Abstract. If so, the mobile station receives and processes
`
`the PCH to determine whether the cellular telephone is the intended recipient of the
`
`telephone call or paging message. Id. If the cellular telephone determines that it is
`
`not the intended recipient, it enters an idle state before resuming to receive paging
`
`channel data. Id. at 6:62-65. If a match is detected, the cellular telephone engages in
`
`a call establishment conversation with the mobile switching center to switch
`
`channels. Id. at 6:60-62.
`
`b. Wan requires a Mobile Switching Center
`The Wan system requires a mobile switching center. See Ex, 1003 at 6:15-20,
`
`51-54; see also Id. at Fig. 1 (emphasis added).
`
`
`
`12
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`
`
`A mobile switching center is crucial to the GSM system in Wan, because it generates
`
`timeslots and paging channel information, manages base stations, assigns group
`
`numbers, etc. See id. at 3:21-34; 4:25-38. A person of ordinary skill in the art at the
`
`time of the invention of the ʼ869 patent would understand that importing a mobile
`
`switching center into a typical mobile radio system would add extra layers of
`
`complexity and conflict with the design and functionalities of base stations in a
`
`mobile radio system. Indeed, importing Wan’s mobile switching center-based
`
`system into a mobile radio system that uses no such system would require a complete
`
`redesign of the base stations, subscriber units, and indeed the entire communication
`
`protocol among the various network components. It would not only have been
`
`
`
`13
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`extremely difficult to do so, but also impractical and expensive to include a mobile
`
`switching center in the ’869 Patent’s two-way radio system.
`
`Wan’s reliance on a mobile switching center highlights that Wan discloses a
`
`completely different GSM system that would not have been applicable to the
`
`wireless communication landscape 100 as disclosed in the ʼ869 patent. Petitioner
`
`concedes that Wan describes its system as being for use with a GSM system. Pet. at
`
`11. A GSM system, however, requires the “cellular telephone[s]” in Wan to
`
`“register[] with the mobile switching center 102 to make itself known as an active
`
`user within the GSM network.” Ex. 1003 at 6:51-54. The GSM system further
`
`provides “eight time slots (or physical channels) in each 200 kHz radio channel.” Id.
`
`at 7:39-44. The GSM system of Wan thus requires mobile switching centers,
`
`different mobile station registration requirements, and extra bandwidth. It would
`
`have been unrealistic, impractical, expensive, and extremely difficult to implement
`
`a GSM solution like that described in Wan in a system like that described in the ʼ869
`
`patent.
`
`c. Wan is a paging system, distinct from the ʼ869 patent’s
`inventions of a system for scanning a channel for activity
`of interest
`Wan is directed to paging, which is entirely distinct from, and serves a
`
`different purpose than the ʼ869 patent’s scanning of a channel for activity of interest
`
`on that channel. ’869 Patent at Cls. 1, 17, 21. Wan discloses a “power management
`
`
`
`14
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`system for a mobile station” which “reduces standby mode processing by receiving
`
`and processing single time slots of a short paging channel.” Ex. 1003 at Abstract. It
`
`focuses on “call detection,” where a cellular telephone “scans data frames broadcast
`
`by the base station 104 to detect any telephone calls or pages directed to the cellular
`
`telephone.” Id. at 6:51-55. Specifically, the mobile station “receives, stores and
`
`examines paging channel data.” Id. at 6:56-58; 7:39-42.
`
`To prepare for paging, the mobile station in Wan first “scans certain
`
`frequencies (frequencies known to be used by GSM) to synchronize communication
`
`with the base station 104. The cellular telephone then registers with the mobile
`
`switching center 102 to make itself known as an active user within the GSM
`
`network.” Id. at 6:46-56. Only after frequency scanning and registration will the
`
`mobile station enter its “call detection mode” to “scan data frames broadcast by the
`
`base station 104 to detect any telephone calls or pages directed to the cellular
`
`telephone.” Id.
`
`Petitioner’s citations to Wan’s paging system should not be confused with the
`
`ʼ869 patent’s scanning for activity of interest on the channel being scanned. See ’869
`
`Patent at cls. 1, 17, 21. Petitioner alleges that Wan discloses that the mobile station
`
`106 scans certain frequencies known to be used by GSM for signals broadcast by the
`
`base station to the mobile station structured in data frames. Pet. at 12. But Wan’s
`
`
`
`15
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`mobile station scans certain frequencies for synchronization as a separate step from
`
`processing data frames broadcast by the base station. See Ex. 1003 at Figs. 9-11.
`
`While Wan does disclose frequency scanning, the disclosure is limited to
`
`scanning frequencies in order to synchronize and thereafter to register with the
`
`mobile switching center, instead of scanning for activity of interest. Petitioner cites
`
`to (Ex. 1003) at 6:46-56, 16:29-35, and 13:56-57 for Wan’s disclosure of frequency
`
`scanning, but all of the excerpts teach frequency scanning as a necessary step prior
`
`to registration with the mobile switching center. Ex. 1003 at at 16:29-35, 16:55-56,
`
`17:60-63, 13:56-14:20. The reason for such limited disclosure is self-evident: Wan
`
`is directed to paging. Scanning is only used in Wan to register the mobile station
`
`with the mobile switching center prior to paging, not to detect activity of interest.
`
`Therefore, Wan does not disclose scanning for activity of interest, as addressed
`
`below in sections V.A.2.b-V.A.2.c.
`
`2.
`
`Petitioner fails to show that Wan discloses all of the
`elements of the challenged independent claims.
`Petitioner fails to show that Wan discloses “wherein a
`a.
`subset of the plurality of channels is preprogrammed”
`(1[a], 21[a]), “a channel preprogrammed in a list”
`(17[a]), and “the next channel in the list” (17[e]).
`The Board should deny institution of proposed Grounds 1 and 2: Petitioner
`
`fails to show that Wan discloses “wherein a subset of the plurality of channels is
`
`preprogrammed” (1[a], 21[a]), “a channel preprogrammed in a list” (17[a]), and “the
`
`
`
`16
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`next channel in the list” (17[e]). Petitioner first contends that Wan’s “frequencies
`
`known to be used by GSM” disclose the claimed “preprogrammed” channel list. Pet.
`
`at 17. The foundation of Petitioner’s argument is flawed, however, because
`
`frequencies used by the claimed system of the ’869 patent require additional
`
`preprogramming to form a “preprogrammed” channel list. As the ʼ869 patent
`
`explains, an example of a preprogrammed scan list includes RF frequencies
`
`associated with a specific base radio, i.e., a subset of RF frequencies available to the
`
`system. ʼ869 Patent at 2:14-35.
`
`Essentially acknowledging that Wan does not disclose this claim element,
`
`Petitioner alleges that a person of ordinary skill would have found it obvious to have
`
`implemented Wan’s mobile station to scan a preprogrammed subset of frequencies.
`
`Pet. at 17. However, Petitioner’s argument presupposes that Wan is directed to, or
`
`can be applied to, scanning. As explained above, however, Wan is directed to the
`
`separate activity of paging, not scanning for activity of interest on the channel being
`
`scanned. See supra V.A.1.c. In Wan’s brief mention of scanning, Wan discloses
`
`performing synchronization for registration with the mobile switching center, not to
`
`determine activity of interest. See supra V.A.1.b, V.A.1.c. A person of ordinary skill
`
`in the art would find it unnecessary, and certainly not obvious, to use any channel
`
`list for the paging described in Wan because a preprogrammed channel list is only
`
`helpful for frequency scanning. Once a mobile station completes scanning and
`
`17
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`registration with the mobile switching center, it no longer needs a list of other
`
`frequencies for paging.
`
`Accordingly, Petitioner failed to show that Wan discloses “wherein a subset
`
`of the plurality of channels is preprogrammed” (1[a], 21[a]), “a channel
`
`preprogrammed in a list” (17[a]), and “the next channel in the list” (17[e]). The
`
`Board should deny Grounds 1 and 2 for all challenged claims.
`
`b.
`
`Petitioner fails to show that Wan discloses “a control
`message” or “an activity update message” that has “a first
`information” and “a second information” with “activity
`present on the channel” (1[b]-[e], 17[b]-[c], 21[b]-[d]).
`The Board should deny institution of proposed Grounds 1 and 2 for another
`
`
`
`reason: Petitioner fails to show that Wan discloses “a control message” or “an
`
`activity update message” that has “a first information” and “a second information”
`
`with “activity present on the channel” (1[b]-[e], 17[b]-[c], 21[b]-[d]).
`
`Petitioner contends that Wan’s multiframe discloses the claimed control
`
`message or activity update message, that Wan’s 6-bit mobile station identifier value
`
`within the short page channel (SPCH) discloses the claimed first information, and
`
`that Wan’s mobile identity value within the paging channel (PCH) discloses the
`
`claimed second information. Pet. at 19-25. Petitioner’s argument relies on the
`
`assumption the PCH and SPCH need not be in a single message in order to meet the
`
`claims. But as discussed in further detail below, contrary to Petitioner’s argument,
`
`
`
`18
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`the ʼ869 patent requires the first and second information to be within the same single
`
`control message or activity update message. See supra V.A.2.b. Moreover,
`
`Petitioner’s argument is fundamentally incorrect because it does not explain or
`
`provide any evidence of how Wan’s multiframe, SPCH, and PCH are transmitted on
`
`the channel where activity is present, as required by the ʼ869 patent. See, e.g., ’869
`
`Patent at limitation [1a] (“locking onto a channel of the plurality of channels by the
`
`subscriber unit wherein a subset of the plurality of channels is preprogrammed in a
`
`list in the subscriber unit”) (emphasis added); id. at limitation [1b] (“wherein the
`
`control message has a first information which informs the subscriber unit of activity
`
`present on the channel of the plurality of channels”) (emphasis added).
`
`The ʼ869 patent claims a control message or activity update message that is a
`
`single message that includes both a first and a second information. See limitation
`
`[1b] (“transmitting from at least one base radio a control message to the subscriber
`
`unit wherein the control message has a first information which informs the
`
`subscriber unit of activity present on the channel of the plurality of channels”); see
`
`also limitation [1e] (“determining whether the activity is of interest to the subscriber
`
`unit by comparing a second information in the control message with a third
`
`information preprogrammed in the subscriber unit”) (emphases added).
`
`
`
`19
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`Contrary to these requirements, Wan’s SPCH and PCH are described as
`
`separate messages. In Wan, a mobile station processes the SPCH message, and then
`
`possibly the (separate) PCH message, in two distinct steps:
`
`To reduce power consumption, the present invention provides a
`short page message (or call alert message) containing one-fourth
`the data of existing paging (call detection) messages. A mobile
`station thus receives and processes the short page message to
`detect telephone calls and page messages, rather than receiving
`and processing the existing, much longer paging messages. The
`short page message alerts the mobile station 106 that there may
`be a telephone call or paging message directed to the mobile
`station, in which case it then looks for and processes a longer
`paging message. Ex. 1003at 7:14-24 (emphasis added).
`
`The excerpt above clearly shows that Wan’s mobile station receives and processes
`
`the SPCH, and then possibly the PCH, as separate messages. Figure 11 in Wan
`
`further shows that the SPCH and PCH are distinct messages that are processed at
`
`different times. Specifically, a mobile station receives and processes the SPCH in
`
`steps 1108 through 1118. The mobile station only receives and processes the PCH
`
`message in step 1122, after processing the SPCH and determining that the mobile
`
`station identifier within the SPCH matches the mobile station ID code.
`
`Wan’s disclosure of a multiframe with the SPCH and PCH does not make up
`
`for this deficiency, or alter the distinction between the SPCH and PCH. A multiframe
`
`is merely a time duration which contains many timeslots. Specifically, a multiframe
`
`consists of “the first time slot of each of 51 successive [data] frames.” Ex. 1003at
`
`
`
`20
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`7:60-62. “[Each] data frame 202 has eight time slots.” Id. at 7:50-51. The timeslots
`
`within a multiframe contain distinct messages from different channels, such as
`
`frequency control channels (FCCH), synchronization channels (SCH), broadcast
`
`control channels (BCCH), paging channels (PCH), and short page channels (SPCH).
`
`Id. at 9:36-49.
`
`In fact, Petitioner’s own citations support that Wan’s SPCH and PCH
`
`messages transmitted via multiframe are not a single message, as required by the
`
`
`
`
`
`21
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`challenged claims of the ʼ869 patent. Petitioner first cites to Figure 6 for the SPCH
`
`and Figure 4 for the PCH. Pet. at 21, 24.
`
`
`
`
`
`22
`
`
`
`IPR2017-02179
`U.S. Patent No. 7,369,869
`
`As shown in Figures 6 and 4, the SPCH and PCH consist of completely different
`
`types of information, data structures, and amount of information. The two figures
`
`also show that the SPCH and PCH are decoded separately. Specifically, in Figure 6,
`
`the mobile station “decodes the 78 coded bits [614] to reverse the convolutional
`
`coding performed prior to transmission of the short page channel time slot to derive
`
`39 bits 616;” in Figure 4, the mobile station “decodes the 456 coded bits [404] to
`
`reverse the convolutional coding performed prior to transmission of the paging
`
`channel information to derive 228 bits 406.” Ex. 1003 at 10:28-33, 9:10-18
`
`(emphases added). Further, Pe
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
