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` Paper No. 7
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` Entered: May 11, 2018
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYTERA COMMUNICATIONS CO. LTD.,
`Petitioner,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-02179
`Patent 7,369,869 B2
`____________
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`PATRICK M. BOUCHER, and Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2017-02179
`Patent 7,369,869 B2
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`
`I.
`
`INTRODUCTION
`A. Background
`Hytera Communications Corp. Ltd. (“Petitioner”)1 filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1–4, 6–9, 17, 18,
`21, and 22 of U.S. Patent No. 7,369,869 B2 (Ex. 1001, “the ’869 patent”).
`Motorola Solutions, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” For the reasons that follow, we do not institute an inter partes
`review of the challenged claims of the ’869 patent.
`
`B. Related Proceeding
`The parties identify two related matters: In the Matter of Certain
`Two-Way Radio Equipment And Systems, Related Software and Components
`Thereof, ITC No. 337-TA-1053; and Motorola Solutions, Inc. v. Hytera
`Communications Corporation Ltd., Hytera America, Inc., and Hytera
`Communications America (West), Inc., Case No. 1:17-cv-01972 (N.D. Ill.).
`Pet. 55; Paper 5, 2.
`
`C. The ʼ869 Patent (Ex. 1001)
`The ’869 patent is directed to “method and system for scanning a
`TDMA channel by a subscriber unit in a wireless communications
`
`
`1 Petitioner identifies Hytera Communications Corp. Ltd., Hytera America,
`Inc., and Hytera Communications America (West), Inc. as real parties in
`interest.
`
`2
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`Patent 7,369,869 B2
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`landscape.” Ex. 1001, Abstract. The ’869 patent states that in a typical
`wireless communications landscape of varied systems, each system has radio
`frequency (RF) communication resources, base radios, and subscriber units
`that are managed by system controllers. Id. at 2:8–13. The subscriber units
`send and receive communications with base radios. Id. at 2:11–13. The
`specification describes a method for providing channel access for active
`transmissions by scanning control, or activity update messages. Id. at 4:49–
`52, Fig. 2A. Figure 2A, below, shows a flow diagram for providing channel
`access for voice transmission. Id. at 1:56–57.
`
`Figure 2A illustrates a subscriber unit (SU) in operation performs the
`function of scanning by tuning to a specified channel from a scan list
`preprogrammed in the scanning SU (Block 202). Id. at 3:63–66. Figure 2A
`shows that “[i]f there is a match of the color code for the active transmission
`
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`on the channel, then the scanning SU remains on the channel and decodes a
`specific [Common Announcement Channel (CACH)] message termed an
`‘activity update’ message 300 (Block 210).” Id. at 4:49–52. The ’869
`patent further discloses that “[i]n an illustrative embodiment, the activity
`update message 300 is a 4-burst CACH message used to assist in identifying
`whether there is an active transmission (also termed ‘activity’) on the
`channel” for the SU to either “dwell on the channel or [] resume scanning.”
`Id. at 4:52–58.
`Figure 3, shown below, is an example of a specific Common
`Announcement Channel message referred to as an activity update. Id. at
`1:58–59.
`
`
`As shown above in Figure 3, activity update message 300 includes activity
`fields 304, 306 that indicate whether an active transmission is present on the
`channel. Id. at 4:59–62, Fig. 3. If activity fields 304, 306 indicate that an
`active transmission is present, the scanning SU determines whether the
`active transmission is “of interest” to the scanning subscriber unit. Id. at
`5:1–4. The scanning SU determines whether an active transmission is “of
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`Patent 7,369,869 B2
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`interest” to the scanning subscriber unit by comparing identification fields
`308, 310 of the message 300 to a subscriber unit identifier (“SUID”) or
`talkgroup identifier (“TGID”) of the scanning subscriber unit. Id. at 5:47–
`59. When the identification fields 308, 310 of the activity update message
`300 match the SUID or TGID of the scanning subscriber unit, the scanning
`subscriber unit remains on the channel to receive the active transmission. Id.
`at 8:31–33.
`
`D. Illustrative Claim
`Petitioner challenges claims 1–4, 6–8, 17, 18, 21, and 22, of which
`claims 1, 17, and 21 are independent. Independent claim 1 is illustrative and
`reproduced below:
`1.
`[preamble] A method for scanning a TDMA channel by a
`subscriber unit in a wireless communications landscape 100,
`wherein the subscriber unit is operationally connected to at least
`one base radio over a plurality of channels, the method
`comprising the steps of:
`[a]
`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;
`[b]
`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;
`[c]
`receiving and decoding the control message for the first
`information by the subscriber unit; and
`[d]
`if the first information indicates that activity is present on
`the channel of the plurality of channels, then
`[e]
`determining whether the activity is of interest to the
`subscriber unit by comparing a second information in the control
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`message with a third information preprogrammed in the
`subscriber unit and
`[f]
`if the activity is of interest to the subscriber unit, then
`remaining on the channel of the plurality of channels to receive
`the activity present on the channel.
`Ex. 1001, 8:9–33 (bracketed notation added).
`
`E. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth the grounds of
`unpatentability of claims 1–4, 6–9, 17, 18, 21, and 22 of the ’869 patent as
`follows (see Pet. 5):
`
`Reference[s]
`Wan,2
`Wan
`Wan and Brennan3
`
`Basis
`§ 102
`§ 103
`§ 103
`
`Claims Challenged
`1–3, 6–8, 17, 18, 21, and 22
`1–4, 6–9, 17, 18, 21, and 22
`1–4, 6–9, 17, 18, 21, and 22
`
`
`Petitioner relies on the declaration testimony of Dr. Robert Akl. (Ex. 1004,
`“Akl Decl.”) in support of its contentions.
`
`II. ANALYSIS
`A. Level of Skill in the Art
`Petitioner argues that a person of ordinary skill in the art is apparent
`from the cited art and
`would have had a bachelor’s degree in electrical engineering,
`computer engineering, computer science, or a related field, along
`with two to three years of experience with telecommunications
`networks, such as experience with two-way radio mobile
`
`2 U.S. Pat. No. 6,044,069 to Wan issued March 28, 2000 (Ex. 1003, “Wan”).
`3 U.S. Pat. No. 6,519,472 to Brennan et al. issued February 11, 2003 (Ex.
`1005, “Brennan”).
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`networks, or the equivalent. Ex.1004, ¶¶21-22. Additional
`education might substitute for some of the experience, and
`substantial experience might substitute for some of the
`educational background. Id.
`Pet. 9. Patent Owner’s recites similar characteristics for a person of ordinary
`skill in the art. Prelim. Resp. 9. On the record before us, we adopt
`Petitioner’s proposed level of skill.
`B. Claim Interpretation
`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); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). 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). Only those terms that are in controversy,
`however, need to be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Both parties agree that the terms of the ’869 should be construed in
`accordance with the agreed-upon proposed and adopted constructions in the
`ITC proceeding. Pet. 10; Prelim. Resp. 10. The parties agreed to construe
`“a wireless communications landscape 100” (claims 1 and 21) as “a network
`with communications resources of RF frequencies, one or more base radios,
`and one or more subscriber units.” Pet. 10 (citing Ex. 1006, 7, Ex. 1007,
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`45–46). For purposes of this Decision, we agree with the parties and adopt
`this construction.
`We agree with Patent Owner (Prelim. Resp. 10), that “determining
`whether the activity is of interest to the subscriber unit” and “determine
`whether the activity is of interest to the system” (claims 1, 17, 21) need not
`be construed. This term shall have its plain and ordinary meaning, and does
`not require express interpretation.
`
`C. Legal Standard
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`discloses each and every limitation of the claimed invention, either explicitly
`or inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995).4
`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 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 resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`
`
`4 See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed.
`Cir. 1999) (“To anticipate, a claim a prior art reference must disclose every
`limitation of the claimed invention . . .;” any limitation not explicitly taught
`must be inherently taught and would be so understood by a person
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`would reasonably understand or infer” that a reference teaches or discloses
`all of the limitations of the claimed invention).
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`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). In that regard, an
`obviousness analysis “need not seek out precise teachings directed to the
`specific subject matter of the challenged claim, for a court can take account
`of the inferences and creative steps that a person of ordinary skill in the art
`would employ.” KSR, 550 U.S. at 418; see also Translogic, 504 F.3d at
`1259, 1262 (quoting KSR, 550 U.S. at 418).
`
`D. Grounds based on Wan
`Each of Petitioner’s grounds for unpatentability rely on Wan to
`disclose or teach the limitations of the challenged claims. Pet. 11–56. For
`the reasons discussed below we find that the petition does not demonstrate a
`likelihood of showing that Wan teaches a limitation of the independent
`challenged claims.
`
`1. Wan (Ex. 1003)
`Wan describes “[a] power management system for a mobile station
`[that] reduces standby mode processing by receiving and processing single
`time slots of a short paging channel.” Ex. 1003, Abstract. In the GSM
`(global system for mobile communications) system, Wan discloses mobile
`stations, base stations and mobile switching centers where base stations
`broadcast data and receive data from mobile stations within cells. Id. at
`6:15–29. Figure 1, below depicts a wireless system.
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`In the wireless system shown in Figure 1 above, mobile stations 106 may
`move within cells while communicating either voice or data to other users.
`Id. at 6:39–45. “Mobile stations not in active communication with other
`telephone system users may, nevertheless, scan base station 104
`transmissions in the cell 108 to detect any telephone calls or pages directed
`to the mobile station 106.” Id.
`Wan further explains that the mobile station 106 “scans” “certain
`frequencies . . . known to be used by GSM,” for signals broadcast by the
`base station 104 to the mobile station 106 “structured in data frames,
`sometimes called time-division multiple access (TDMA) frames” to
`“synchronize communication with the base station 104” and to “detect any
`telephone calls or pages directed to the cellular telephone.” Id. at 6:46–56;
`7:39–42. In this “call detection mode, the cellular telephone receives, stores,
`and examines paging channel data.” Id. at 6:56–58; 16:29–35 (“the mobile
`station 106 scans radio broadcast frequencies used by a GSM-based wireless
`communication system”). Wan further explains:
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`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.
`Id. at 7:14–24.
`
`2. Analysis
`Petitioner contends that Wan anticipates 1–3, 6–8, 17, 18, 21, and 22
`and renders claims 1–4, 6–9, 17, 18, 21, and 22 obvious. Pet. 11–47 (citing
`Ex. 1003; Ex. 1004). For these two grounds, Petitioner argues that Wan
`discloses or teaches a control message or activity message that has “a first
`information” and “a second information” as recited in independent claim 1
`(elements 1[b]-[e]) and in claims 17 and 21. Pet. 19–25 (claim 1), 40–42
`(claim 17), 43 (claim 21); see Prelim. Resp. 18–24. Specifically, Petitioner
`relies on the SPCH (short page channel) and PCH (paging channel) as
`disclosed in Wan to teach the first and second information of the challenged
`claims. Pet. 19–25 (claim 1), 40–42 (claim 17), 43 (claim 21).
`Patent Owner contends that the ʼ869 patent requires the first and
`second information to be within the same single control message or activity
`update message. Prelim. Resp. 19. Reading limitations 1[b] and 1[e]
`together, Patent Owner asserts that the language of the claim requires that
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`the control message have a first and second information in the same message
`transmitted from the base radio to the subscriber unit. Id. at 19–20.
`To meet this limitation, Petitioner contends that a multiframe from the
`base station to the mobile station, which includes both PCH and SPCH, are
`collectively the control message. Pet 19 (citing Ex. 1003 8:17–20; 23:38–
`57; 14:63–64). Specifically, Petitioner argues that Wan discloses that a
`multiframe (as depicted in Figure 15) shows that “multiframe 1510 includes
`one short page channel 1514 SPCH and one paging channel 1508 PCH” and
`that the base station transmits this multiframe to the mobile station. Pet. 19;
`Ex. 1003, 14:63–64.
`Patent Owner argues that Wan’s PCH and SPCH are distinct separate
`messages useful in Wan’s power saving techniques and are not a single
`message. Prelim. Resp. 20–24. Patent Owner further argues that the
`multiframe contains numerous separate messages, namely that “[t]he
`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).” Prelim. Resp. 21 (citing Ex.
`1003, 9:36–49). Patent Owner also contends that Wan teaches that the
`mobile station first receives and reads the SPCH and then, at a different
`time, looks for and processes the longer PCH message. Prelim. Resp. 20
`(citing Ex 1003, 7:14–24). Indeed Figure 11 of Wan, Patent Owner argues,
`shows that the SPCH and PCH are received and processed at different times.
`Ex. 1003, Fig. 11 (steps 1108–1118, step 1122). Thus, the Wan
`specification indicates that the SPCH and PCH are distinct messages,
`separately processed by the subscriber unit and not a single control message.
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`We agree with Patent Owner that the claims recite a single control
`message containing a first and second information. Based on the record
`before us, we also find that Petitioner has not shown persuasively that a
`person of ordinary skill in the art would consider the multiframe
`transmission in Wan as a single control message or activity update message
`in accordance with claims 1, 17, and 21. See Pet. 19–20. Although
`Petitioner identifies the PCH and SPCH within a single multiframe, we
`agree with Patent Owner that Wan teaches that the SPCH and PCH are not a
`single transmitted message but are received and decoded separately. Prelim.
`Resp. 21, 22. Indeed, Petitioner’s arguments for the first and second
`information cite separate figures showing different messages for the SPCH
`and PCH, which support Wan’s disclosure of power savings at the mobile
`station by detecting and processing the reduced data of the SPCH instead of
`the PCH. Ex. 1003, 7:11–28; 1:67–2:2.
`Petitioner’s argument assumes, but does not sufficiently explain, that
`a person of ordinary skill in the art would identify the multiframe, which
`contains multiple control messages along with the PCH and SPCH, as a
`single control message in accordance with the challenged claims. See Pet.
`19 (identifying control message as equivalent to a portion of multiframe
`1510 shown in Figure 15), 21–22 (discussing other messages such as the
`BCCH); see Ex. 1003, 9:36–49 (discussing other message channels in a
`multiframe). Petitioner’s argument and evidence also do not establish
`sufficiently that Wan discloses that the subsequent PCH message that is
`processed as the second information in claim limitation 1[e] is the same
`PCH received in the multiframe with the original PCH. Pet. 23–25. Figure
`11 in Wan teaches that the mobile station reads the SPCH and then looks for
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`and processes the longer PCH message. Prelim. Resp. 20; Ex 1003, 7:14–
`24, Fig. 11 (step 1122). Petitioner’s argument and evidence do not explain
`persuasively how one of ordinary skill in the art would understand the PCH
`and SPCH of Wan as a single control message in accordance with the
`challenged claims.
`In sum, we are not persuaded by Petitioner’s argument and evidence
`that a person of ordinary skill in the art at the time of patenting would
`understand the SPCH and PCH in multiframe 1510 of Figure 15 in Wan as a
`single control message in the challenged claims. See Pet. 19. Because
`Petitioner relies on this SPCH and PCH analysis for both anticipation and
`obviousness based on Wan for independent claims 1, 17, and 21, we find
`that Petitioner has failed to demonstrate a reasonable likelihood that it would
`prevail in demonstrating the unpatentability of independent claims 1, 17, and
`21 and their related dependent claims over Wan.
`3. Wan and Brennan
`Petitioner’s argument and evidence with respect to the combination of
`Wan and Brennan, rely on Brennan to teach or suggest certain limitations of
`the challenged claims, but does not contend that Brennan teaches the control
`message or activity update message of claims 1, 17, and 21. Pet. 47–55.
`Because we find above that Petitioner has not shown persuasively that Wan
`teaches the control message of claim 1 and related limitations in claims 17
`and 21, we find that Petitioner has failed to demonstrate a reasonable
`likelihood that it would prevail in showing the unpatentability of
`independent claims 1, 17, and 21 over Wan and Brennan.
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`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not shown
`a reasonable likelihood of prevailing in demonstrating that claims 1–4, 6–9,
`17, 18, 21, and 22 of the ’869 patent are unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby denied as to all grounds raised in the Petition for the reasons stated
`above and no trial is instituted.
`
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`PETITIONER:
`
`Joshua L. Goldberg
`E. Robert Yoches
`Rachel L. Emsley
`David C. Reese
`Yanbin Xu, Ph.D.
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`joshua.goldberg@finnegan.com
`bob.yoches@finnegan.com
`rachel.emsley@finnegan.com
`david.reese@finnegan.com
`yanbin.xu@finnegan.com
`
`PATENT OWNER:
`Jon R. Carter
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`jon.carter@kirkland.com
`eugene.goryunov@kirkland.com
`
`2
`
`
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