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`
`
`Inter Partes Review
`United States Patent No. 7,369,869
`
`
`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
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
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`

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`
`
`I.
`II.
`
`PRELIMINARY STATEMENT ................................................................... 1
`STATEMENT OF PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED ................................................................. 5
`A.
`Prior Art Patents and Printed Publications ............................................ 5
`B.
`Statutory Grounds of Challenge ............................................................ 5
`III. THE ’869 PATENT ........................................................................................ 6
`A.
`Background ........................................................................................... 6
`B. Disclosure .............................................................................................. 6
`C.
`Prosecution History ............................................................................... 8
`IV. LEVEL OF ORDINARY SKILL ................................................................. 9
`V. CLAIM CONSTRUCTION .......................................................................... 9
`A.
`Constructions Proposed in Co-Pending Litigation .............................. 10
`B.
`Proposed constructions for this proceeding ........................................ 10
`VI. CLAIMS 1-4, 6-9, 17-18, and 21-22 OF THE ’869 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART ......................................... 11
`A. Ground 1: Wan Anticipates Claims 1-3, 6-8, 17-18, and 21-22;
`Ground 2: Wan Renders Obvious Claims 1-4, 6-9, 17-18, and
`21-22 .................................................................................................... 11
`1.
`Claim 1 ...................................................................................... 11
`2.
`Claim 2 ...................................................................................... 27
`3.
`Claim 3 ...................................................................................... 28
`4.
`Claim 4 ...................................................................................... 29
`5.
`Claim 6 ...................................................................................... 32
`6.
`Claim 7 ...................................................................................... 34
`7.
`Claim 8 ...................................................................................... 35
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`8.
`Claim 9 ...................................................................................... 35
`Claim 17 .................................................................................... 37
`9.
`10. Claim 18 .................................................................................... 42
`11. Claim 21 .................................................................................... 43
`12. Claim 22 .................................................................................... 47
`B. Ground 3: Wan in Combination with Brennan Renders Claims
`1-4, 6-9, 17-18, and 21-22 Obvious .................................................... 47
`1. Wan in Combination with Brennan Renders Claim
`Elements 1[a] and 21[a] Obvious ............................................. 48
`2. Wan in Combination with Brennan Renders Claim 2
`Obvious ..................................................................................... 50
`3. Wan in Combination with Brennan Renders Claim 6 and
`Claim Elements 17[d]-[e] Obvious ........................................... 51
`4. Wan in Combination with Brennan Renders Claims 3-4,
`7-9, 18, and 22 Obvious ............................................................ 54
`VII. MANDATORY NOTICES ......................................................................... 55
`A.
`Real Party-in-Interest .......................................................................... 55
`B.
`Related Matters .................................................................................... 55
`C.
`Lead and Back-Up Counsel, and Service Information ....................... 55
`VIII. GROUNDS FOR STANDING .................................................................... 56
`IX. CONCLUSION ............................................................................................ 56
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`LIST OF EXHIBITS
`
`
`Ex. 1001 U.S. Patent No. 7,369,869 to David G. Wiatrowski et al.
`Ex. 1002 Patent Prosecution History of U.S. Patent No. 7,369,869.
`Ex. 1003 U.S. Patent No. 6,044,069 to Yongbing Wan (“Wan”).
`Ex. 1004 Declaration of Dr. Robert Akl. D.Sc.
`Ex. 1005 U.S. Patent No. 6,519,472 to Terence Brennan et al. (“Brennan”).
`Ex. 1006 Corrected Joint Claim Construction Chart, Investigation No. 337-TA-
`1053 (ITC Aug. 25, 2017).
`Ex. 1007 Hytera Respondents’ Initial Claim Construction Brief, Investigation
`No. 337-TA-1053 (ITC Sept. 6, 2017).
`Ex. 1008 Complainant Motorola Solutions Inc.’s Opening Claim Construction
`Brief, Investigation No. 337-TA-1053 (ITC Sept. 6, 2017).
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`Petitioner Hytera Communications Corp. Ltd. requests inter partes review of
`
`claims 1-4, 6-9, 17-18, and 21-22 of the ’869 patent (Ex. 1001), currently assigned
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`to Motorola Solutions, Inc.
`
`I.
`
`PRELIMINARY STATEMENT
`The ’869 patent is directed to a method and system in which a subscriber
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`unit (“SU”) in a wireless communications landscape scans a time division multiple
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`access (“TDMA”) channel. Ex. 1001, Abstract, 8:9-10; 9:30-31; 10:10-12. The
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`’869 patent acknowledges that a subscriber unit scanning specific preprogrammed
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`RF frequencies, or channels, for voice and data communications of interest was
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`well known before its effective filing date. Ex. 1001, 1:27-29. As the ’869 patent
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`further acknowledges, “the scanning SU spends a lot of time listening to
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`communications that are of no interest to it” because “the preprogramed scan list is
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`very long and has many frequencies” and “many of the RF communications are
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`normally of no interest to the scanning SU.” Ex. 1001, 1:34-39.
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`The ’869 patent purports to solve this alleged problem by reducing the
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`amount of time a subscriber unit spends scanning a TDMA channel. Ex. 1001,
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`1:44-46. In particular, the ’869 patent claims a subscriber unit operatively
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`connected a base radio over a plurality channels, the subscriber unit locking onto a
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`channel of the plurality of channels, and transmitting from the base radio to the
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`subscriber unit a control message including first information which informs the
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`subscriber unit of activity present on the channel. Ex. 1001, 8:9-24. If the first
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`information indicates activity is present on the channel, the subscriber unit then
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`compares second information in the control message to third information
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`preprogrammed in the subscriber unit, to determine whether the activity is “of
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`interest” to the subscriber unit. Ex. 1001, 8:25-30. If the activity is “of interest” to
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`the subscriber unit, it remains on the channel to receive the activity. Ex. 1001,
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`8:31-33.
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`But the first, second, and third information, and the steps performed with
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`and based on such information, as well as the other features claimed in the ’869
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`patent were known before July 26, 2004, the filing date of the ’869 patent. As this
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`petition demonstrates, prior art references not considered by the PTO, including
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`Wan (Ex. 1003), taught the information, steps, and other features of the claims for
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`the same purpose as the ’869 patent—to “substantially reduce[] the power
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`consumed by a cellular telephone (or other mobile station) to detect telephone calls
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`or paging messages and consequently increase[] battery lifetime.” Ex. 1003, 7:11-
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`14. See also id., 7:24-27 (“The invention substantially reduces call detection
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`processing . . . thus substantially extending the lifetime of a single battery
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`charge.”).
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`Wan, for example, discloses a “power management system,” including a
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`mobile station 106 operatively connected to a base station 104 over a plurality of
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`radio frequency channels. Ex. 1003, Title, Abstract, 6:15-60; 7:30-34; 14:63-64.
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`The mobile station 106 locks onto a radio frequency channel, and the base station
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`104 transmits to the mobile station 106, via “time-division multiple access
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`(TDMA) frames,” a control multiframe which, as shown below in annotated Fig.
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`15, includes a “short page channel [] SPCH” (red) and “paging channel [] PCH”
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`(blue) (collectively, green). Ex. 1003, 7:39-42; 8:17-20; 23:39-57; 14:63-64
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`(“multiframe 1510 includes one short page channel 1514 SPCH and one paging
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`channel 1508 PCH); and id., 23:57-59 (“base station 104 transmits the multiframe
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`to the cell 108 containing the target mobile station 106.”).
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`
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`Wan explains that, to “reduce[] the power consumed by” the mobile station
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`
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`106 “to detect telephone calls or paging messages,” the mobile station 106
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`“decodes” the SPCH for “[a 6-bit] mobile station identity value 624”—a first
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`information—to “determine whether” the mobile station identity value provides an
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`“alert” “that there may be a telephone call or paging message directed to the
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`mobile station” on the channel. Ex. 1003, 7:11-13, 21-24; 9:43-48; 21:18-22;
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`10:22-54.
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`
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`Wan further explains that, if there is an “alert” that “a telephone call or
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`paging message [may be] directed to the mobile station,” the “alerted mobile
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`station 106 then” decodes the “paging channel (PCH) information” to access a
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`“mobile identity value”—a second information. Ex. 1003, 10:43-54; 9:19-35;
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`15:40-47. The mobile station 106 “compar[es]” the PCH mobile identity value “to
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`an internally stored identification code” of the mobile station 106—a
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`preprogrammed third information—to “determine whether the telephone call or
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`paging message is intended for the respective mobile station 106.” Ex. 1003, 9:7-
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`36; 10:4-54; 15:40-47. If so, mobile station 106 “initiat[es] call establishment
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`procedures . . . for initiating the telephone call or paging message.” Ex. 1003, 4:49-
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`53; 15:47-49.
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`
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`As detailed below, Wan, alone or in combination with another reference,
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`Brennan, discussed herein, thus anticipates and/or renders obvious claims 1-4, 6-9,
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`17-18, and 21-22 of the ’869 patent. Accordingly, the Board should cancel these
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`claims.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`Hytera requests inter partes review and cancellation of claims 1-4, 6-9, 17-
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`18, and 21-22 of the ’869 patent based on the following prior art and grounds and
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`the Declaration of Dr. Robert Akl D.Sc. (Ex. 1004).
`
`Prior Art Patents and Printed Publications
`A.
`Ex. 1003 – U.S. Patent No. 6,044,069 to Yongbing Wan (“Wan”), issued
`
`March 28, 2000, is available as prior art under 35 U.S.C. § 102(b).
`
`Ex. 1005 – U.S. Patent No. 6,519,472 to Terence Brennan et al.
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`(“Brennan”), issued February 11, 2003, is available as prior art under 35 U.S.C.
`
`§ 102(b).
`
`Statutory Grounds of Challenge
`B.
`1. Claims 1-3, 6-8, 17-18, and 21-22 are unpatentable under 35 U.S.C. § 102
`
`as anticipated by Wan.
`
`2. Claims 1-4, 6-9, 17-18, and 21-22 are unpatentable under 35 U.S.C. § 103
`
`as obvious over Wan.
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`3. Claims 1-4, 6-9, 17-18, and 21-22 are unpatentable under 35 U.S.C. § 103
`
`as obvious over Wan in combination with Brennan.
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`III. THE ’869 PATENT
`A. Background
`The ’869 patent acknowledges that it was well known before the claimed
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`invention for a subscriber unit of a wireless communications system to use a
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`“scan” feature to lock onto specific RF frequencies in a preprogrammed list of the
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`subscriber unit. Ex. 1001, 1:27-29. If the preprogrammed scan list had many RF
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`frequencies, then the scanning feature took a long time. Ex. 1001, 1:34-36. The
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`scanning subscriber unit also spent a lot of time listening to communications “of no
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`interest,” which was problematic when dealing with large numbers of RF
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`frequencies. Ex. 1001, 1:36-39. The ’869 patent purports to reduce the amount of
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`time a subscriber unit spends scanning a TDMA channel for communications “of
`
`interest.” Ex. 1001, 1:44-46.
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`B. Disclosure
`The ’869 patent provides a “method and system for scanning a TDMA
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`channel by a subscriber unit in a wireless communications landscape.” Ex. 1001,
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`Abstract. The specification describes “a typical wireless communications
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`landscape 100 having system 110, system 120, and system 130.” Ex. 1001, 2:5-7,
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`Fig. 1. Each system has RF frequency communication resources, base radios, and
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`subscriber units that can be managed by system controllers. Ex. 1001, 2:8-13. The
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`subscriber units send and receive communications with base radios. Ex. 1001,
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`2:11-13.
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`The specification also describes a method for providing channel access for
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`active transmissions by scanning control, or activity update, messages. Ex. 1001,
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`4:49-52, Fig. 2A. As shown below in Fig. 3, the ’869 patent explains that the
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`activity update message 300 includes activity fields 304, 306 that indicate whether
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`an active transmission is present on the channel. Ex. 1001, 4:59-62, Fig. 3.
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`
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`If the activity fields 304, 306 indicate that an active transmission is present,
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`the scanning subscriber unit determines whether the active transmission is “of
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`interest” to the scanning subscriber unit. Ex. 1001, 5:1-4. As one example of the
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`scanning subscriber determining whether an active transmission is “of interest” to
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`the scanning subscriber unit, identification fields 308, 310 of the message 300 are
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`compared to a subscriber unit identifier (“SUID”) or talkgroup identifier (“TGID”)
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`of the scanning subscriber unit. Ex. 1001, 5:47-59. If the identification fields 308,
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`310 of the activity update message 300 match the SUID or TGID of the scanning
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`subscriber unit, the scanning subscriber unit remains on the channel to receive the
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`active transmission. Ex. 1001, 8:31-33.
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`Prosecution History
`C.
`During prosecution, the Examiner allowed claims 1-16 in the first office
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`
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`action because of their first, second, and third information. Ex. 1002, 62. The
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`Examiner also rejected claims 17-24 under 35 U.S.C. § 103(a) in this office action.
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`Id., 60-61. In response, the applicant amended independent claim 17 to recite “the
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`activity update message indicates in a first information the activity on the channel
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`and indicates in a second information at least one characteristic of the activity on
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`the channel” and “determining whether the activity is of interest to the subscriber
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`unit by comparing the at least one characteristic with preprogrammed third
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`information in the subscriber unit.” Id., 69-79 (amendment emphasis in the
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`original). The applicant similarly amended independent claim 21. Id. The
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`Examiner then allowed the remaining claims without explanation. Id., 86-91. In
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`allowing the claims, the Examiner never considered Wan, which teaches the
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`claimed first, second, and third information. As explained below, Wan, alone or in
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`combination with another reference, Brennan, renders claims 1-4, 6-9, 17-18, and
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`21-22 of the ’869 patent obvious.
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`IV. LEVEL OF ORDINARY SKILL
`The level of skill in the art is apparent from the cited art. See In re GPAC
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`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Hytera submits that a person of ordinary
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`skill in the art (“POSITA”) for the ’869 patent would have had a bachelor’s degree
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`in electrical engineering, computer engineering, computer science, or a related
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`field, along with two to three years of experience with telecommunications
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`networks, such as experience with two-way radio mobile networks, or the
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`equivalent. Ex.1004, ¶¶21-22. Additional education might substitute for some of
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`the experience, and substantial experience might substitute for some of the
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`educational background. Id.
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`V. CLAIM CONSTRUCTION
`A claim in an unexpired patent subject to inter partes review receives the
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`“broadest reasonable construction in light of the specification of the patent in
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`which it appears.” 37 C.F.R. § 42.100(b). Although the broadest reasonable
`
`construction (“BRC”) should be applied to all claim terms in the ’869 patent, only
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`the following terms require construction in this proceeding.1
`
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`1 Because the IPR procedure does not permit challenges under 35 U.S.C. § 112,
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`Hytera has not included any such arguments herein. Hytera reserves the right,
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`however, to raise such arguments in other proceedings.
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`A. Constructions Proposed in Co-Pending Litigation
`In the related ITC litigation, see Section VII.B., the parties proposed the
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`following claim constructions (Ex. 1006, 7; Exhibit 1007, 45-46; Exhibit 1008, 86
`
`(FN 14)):
`
`Term (Claims)
`
`Petitioner’s Proposal
`
`Patent Owner’s
`Proposal
`“a network with communications resources of RF
`frequencies, one or more base radios, and one or
`more subscriber units”
`“of interest” means “has
`Indefinite
`utility”
`
`[1] “a wireless
`communications landscape
`100” (Cl. 1 and 21)
`[2] “determining whether
`the activity is of interest to
`the subscriber unit”/
`“determine whether the
`activity is of interest to the
`system” (Cl. 1, 17, 21)
`
`Proposed constructions for this proceeding
`B.
`The Board should construe term [1] in the same way the parties did in the
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`ITC. For the purposes of this proceeding, the Board need not construe the
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`remaining term because the claims are anticipated by and/or obvious even under
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`Patent Owner’s proposed construction. Infra, Section VI.
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`VI. CLAIMS 1-4, 6-9, 17-18, AND 21-22 OF THE ’869 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART
`A. Ground 1: Wan Anticipates Claims 1-3, 6-8, 17-18, and 21-22;
`Ground 2: Wan Renders Obvious Claims 1-4, 6-9, 17-18, and 21-
`22
`For the reasons explained below, Wan anticipates claims 1-3, 6-8, 17-18, and
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`21-22 and/or renders obvious claims 1-4, 6-9, 17-18, and 21-22.
`
`1.
`
`Claim 1
`Claim 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:”
`As shown below in annotated Fig. 1., Wan discloses mobile stations 106
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`(red) “capable of receiving data from and transmitting data” to a base station 104
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`(green) “in compliance with GSM (global system for mobile communications). . . .
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`[which] is a communication standard permitting mobile users of wireless
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`communication devices to exchange data over a telephone system wherein radio
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`signals2 carry data to and from the wireless devices.” Ex. 1003, 6:15-28. See also
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`id., 6:17-19 (“base station 104 broadcasts data to and receives data from mobile
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`stations 106 within a cell 108.”).
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`2 All emphasis added unless otherwise noted.
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`Wan explains that, in accordance with the GSM system, base stations 104
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`“transmit” to the mobile stations 106 “in [a] . . . 25-MHz range [] divided into 125
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`radio frequency channels, each having a width of 200 kHz.” Ex. 1003, 7:29-35.
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`Wan further explains that the mobile station 106 “scans” “certain frequencies . . .
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`known to be used by GSM,” for signals broadcast by the base station 104 to the
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`mobile station 106 “structured in data frames, sometimes called time-division
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`multiple access (TDMA) frames” to “synchronize communication with the base
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`station 104” and to “detect any telephone calls or pages directed to the cellular
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`telephone.” Ex. 1003, 6:46-56; 7:39-42. In this “call detection mode, the cellular
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`telephone receives, stores, and examines paging channel data.” Ex. 1003, 6:56-58.
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`See also id., 16:29-35 (“the mobile station 106 scans radio broadcast frequencies
`
`used by a GSM-based wireless communication system. In a further step 906, the
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`mobile station 106 synchronizes to the GSM network. Using known
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`synchronization steps, the mobile station 106 first synchronizes to a frequency by
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`scanning for a physical channel having the highest apparent power level.”) and id.,
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`13:56-57 (“The mobile station 106 scans GSM frequencies to synchronize with the
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`transmission from a base station 104.”).
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`Accordingly, Wan discloses a method for scanning a TDMA channel by a
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`mobile station 106 (the claimed “subscriber unit”) in a wireless communications
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`system (the claimed “wireless communications landscape 100”), as recited by
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`claim element 1[preamble]. As discussed in Section V, the parties have construed
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`the phrase “wireless communications landscape 100” to mean “a network with
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`communications resources of RF frequencies, one or more base radios, and one or
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`more subscriber units.” Wan’s wireless communications system is “a wireless
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`communications landscape” because it includes a network with communications
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`resources of “radio frequenc[ies],” one or more base stations 104 (the claimed “one
`
`or more base radios”), and one or more mobile stations 106 (the claimed “one or
`
`more subscriber units”).
`
`Wan also discloses that the mobile station 106 is “operationally connected”
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`to at least one base station 104 over a plurality of radio frequency channels (the
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`claimed “plurality of channels”), further recited by claim element 1[preamble]. As
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`discussed above, Wan discloses that the mobile station 106 and base station 104
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`receive and transmit data using “radio signals” over different “radio frequency
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`channels.” Ex. 1003, 6:15-29, 49-57; 7:29-38.
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`Moreover, Wan’s description of “radio frequency channels” is similar to the
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`’869 patent’s description of its “plurality of channels.” The ’869 patent discloses
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`that, “[a]s known in the art, a channel is also known as a ‘personality’ where a
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`personality is typically a radio frequency (RF) with additional qualifying
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`information. The scanning SU pauses on the selected personality for a specified
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`time period and test wherein RF carrier is detected.” Ex. 1001, 3:66-4:4. See also
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`Ex. 1001, 2:8-10 (“system is comprised of a multiplicity of communication
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`resources of RF frequencies.”) and Ex. 1001, 1:26-28 (“SUs of the wireless
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`communications system utilize a feature termed ‘scan’ where an SU locks onto
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`specific RF frequencies in a preprogrammed list in the SU.”). The ’869 patent
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`describes an “illustrative embodiment,” in which “a scan is performed in at least
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`one of three situations: 1) when the SU powers on where the receiver automatically
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`changes “channels” in a set order with a list preprogrammed in the SU, 2) when a
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`user of the SU manually taps a button or turns a dial to manually step through
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`frequencies preprogrammed in the SU, and 3) when a user of the SU sets the SU to
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`scan mode where the receiver automatically changes frequencies in a set order with
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`a list preprogrammed in the SU.” Ex. 1001, 3:28-36.
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`This is similar to Wan’s disclosure of “radio frequency channels.” Ex. 1003,
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`7:33-34. As discussed above, Wan explains that base stations 104 “transmit” to the
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`mobile stations 106 “in [a] . . . 25-MHz range [] divided into 125 radio frequency
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`channels, each having a width of 200 kHz.” Ex. 1003, 7:29-35. Wan further
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`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, to “synchronize communication with the base station 104” and to “detect any
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`telephone calls or pages directed to the cellular telephone.” Ex. 1003, 6:49-56. See
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`also Ex. 1003, 16:29-35 (“the mobile station 106 scans radio broadcast
`
`frequencies used by a GSM-based wireless communication system. In a further
`
`step 906, the mobile station 106 synchronizes to the GSM network. Using known
`
`synchronization steps, the mobile station 106 first synchronizes to a frequency by
`
`scanning for a physical channel having the highest apparent power level.”) and Ex.
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`1003, 13:56-57 (“The mobile station 106 scans GSM frequencies to synchronize
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`with the transmission from a base station 104.”).
`
`Thus, like how the subscriber unit of the ’869 patent scans through RF
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`frequencies, or channels, Wan’s mobile station 106 “scans” through “radio
`
`frequency channels.” See id. Based on these disclosures, one of ordinary skill
`
`would understand Wan’s “radio frequency channels” as embodying the claimed
`
`plurality of channels of the ’869 patent. Ex. 1004, ¶¶42-43.
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`Wan thus discloses claim element 1[preamble]. Ex. 1004, ¶43.
`
`Claim 1[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;”
`As explained above for claim element 1[preamble], Wan discloses that base
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`stations 104 “transmit” to the mobile stations 106 “in the [] 935-960-MHz range”
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`and that “[e]ach 25-MHz range is divided into 125 radio frequency channels, each
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`having a width of 200 kHz.” Ex. 1003, 7:29-35. One of ordinary skill would
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`recognize and appreciate that Wan discloses “locking onto a channel of the
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`plurality of channels,” as recited by claim element 1[a], because Wan explains that
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`the mobile station 106 “scans” the “certain frequencies . . . known to be used by
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`GSM,” for signals broadcast by the base station 104 to the mobile station 106 to
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`“synchronize communication with the base station 104” and to “detect any
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`telephone calls or pages directed to the cellular telephone.” Ex. 1003, 6:49-56. See
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`also id., 16:29-35 (“Using known synchronization steps, the mobile station 106
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`first synchronizes to a frequency by scanning for a physical channel having the
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`highest apparent power level.”) and id., 13:56-57 (“The mobile station 106 scans
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`GSM frequencies to synchronize with the transmission from a base station 104.”)
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`Wan further discloses that, in “this call detection mode, the cellular telephone
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`receives, stores, and examines paging channel data.” Ex. 1003, 6:56-58. Ex. 1004,
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`¶44.
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`In addition, one of ordinary skill would recognize and appreciate that “a
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`subset” of a plurality of radio frequency channels can constitute the full set of
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`channels. Ex. 1004, ¶45. Thus, the radio frequency channels Wan scans to
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`“synchronize communication” and “detect any telephone calls or pages” represent
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`“a subset” of radio frequency channels “preprogrammed in a list” in the mobile
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`station 106, as also recited by claim element 1[a], because Wan discloses that the
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`mobile station 106 “scans certain [radio] frequencies (frequencies known to be
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`used by GSM).” Ex. 1003, 6:49-51. See also id., 16:29-31 (“the mobile station 106
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`scans radio broadcast frequencies used by a GSM-based wireless communication
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`system.) Ex. 1004, ¶45.
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`To the extent that the Board finds that Wan does not disclose “a subset of the
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`plurality of channels [being] preprogrammed in a list in the subscriber unit,” it
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`would have been obvious to one of ordinary skill the art at the relevant time to
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`have implemented the Wan’s mobile station 106 to scan a preprogrammed subset
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`of the frequencies used by the GSM-based wireless communication system. Ex.
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`1004, ¶46.
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`Implementing a mobile station to scan a preprogrammed subset of
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`frequencies was well-known in the art at the relevant time. Ex. 1004, ¶46. As
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`explained in Dr. Akl’s declaration, it would have been obvious to one having
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`ordinary skill in the art at the relevant time to implement Wan’s mobile station 106
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`to scan known frequencies associated with the particular carrier of the mobile
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`station, and/or associated with its geographic region. Ex. 1004, ¶46.
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`In addition, as the ’869 patent acknowledges in the background of the
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`invention section of its disclosure, “SUs of the wireless communications system
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`utilize a feature term ‘scan’ where an SU locks onto specific RF frequencies in a
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`preprogrammed list in the SU.” Ex. 1001, 1:26-29. The ’869 explains, for example,
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`that “an SU may have RF frequencies from the Schaumburg fire department and
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`the Rolling Meadows fire department in its scan list.” Ex. 1001, 1:31-34. Ex. 1004,
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`¶47.
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`Therefore, in further light of the ’869 patent’s own teaching of subscriber
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`units scanning a subset of known frequencies, it would have been obvious to a
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`person of ordinary skill in the art, at the relevant time, to implement Wan’s mobile
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`station 106 to scan a preprogrammed subset of frequencies associated with the
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`particular carrier of the mobile station, and/or associated with its geographic
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`region, yielding the predictable advantage of the mobile station spending less time
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`(and thus battery power) scanning extraneous frequencies that are not associated
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`with the relevant carrier and/or its geographic location. Ex. 1004, ¶48.
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`¶48.
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`Wan thus discloses and/or renders obvious claim element 1[a]. Ex. 1004,
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`Claim 1[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;”
`As shown below in annotated Fig. 15, Wan discloses transmitting from at
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`least one base station 104 (“the claimed at least one base radio”) a multiframe to
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`the mobile station 106 including “a short page channel [] SPCH” (red) and “a
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`paging channel [] PCH” (blue) (collectively, green, the claimed “control message”)
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`Ex. 1003, 8:17-20; 23:39-57; 14:63-64 (“multiframe 1510 includes one short page
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`channel 1514 SPCH and one paging channel 1508 PCH); and id., 23:57-59 (“base
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`station 104 transmits the multiframe to the cell 108 containing the target mobile
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`station 106.”).
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`Wan explains that, to “reduce[] the power consumed by” the mobile station
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`106 “to detect telephone calls or paging messages,” the mobile station 106
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`processes the SPCH to “alert[] the mobile station 106 that there may be a telephone
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`call or paging message directed to the mobile station.” Ex. 1003, 7:11-13, 21-24;
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`9:43-48; 21:18-36; 10:41-49.
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`Particularly, as shown below in annotated Figures 5 and 6, Wan explains
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`“process[ing] [] bit data in a single [SPCH 504 (red)] time slot 628 [light blue]” to
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`access and determine whether “[a 6-bit] mobile station identity value 624” (fuscia)
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`(the claimed “first information”) matches “an internally stored SPI value
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`preprogrammed” in the mobile station 106, “to determine whether there may be a
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`telephone call or paging message directed to the mobile station 106” (the claimed
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`“informs the subscriber unit of activity”) on the radio frequency channel of the
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`plurality of radio frequency channels. Ex. 1003, 9:36-10:54 (referring to SPCH
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`time slot 628 as an example of time slot 506, which is part of short page channel
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`504); 21:18-36. Ex. 1004, ¶51.
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`Accordingly, Wan discloses claim element 1[b]. Ex. 1004, ¶52.
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`Claim 1[c]: “receiving and decoding the control
`message for the first information by the subscriber
`unit; and”
`As explained above for claim element 1[b], Wan discloses that the mobile
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`station 106 “processes” a short page channel timeslot for a 6-bit mobile station
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`identifier value 624 to “alert[] the mobile station 106 that there may be a telephone
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`call or paging message directed to the mobile station.” Ex. 1003, 7:11-13, 21-24;
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`9:36-10:49; 21:18-36. To do so, as shown above in annotated Figures 5 and 6, Wan
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`explains that the mobile station 106 “process[es] the bit data in a single [SPCH
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`(red)] time slot 628 [light blue]” for the “25 bits [which] include four 6-bit fields
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`that may contain mobile station identity values 624 [green] and one reserved bit
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`626,” in part by, “reoder[ing] [] coded bits,” “decod[ing] [] coded bits,” and
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`verify[ing] [] correct receipt of 25 bits of identity information 622.” Ex. 1003,
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`10:22-49; 21:18-36, Figs. 5-6. Ex. 1004, ¶53.
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`Accordingly, Wan discloses claim element 1[c]. Ex. 1004, ¶53.
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`Claim 1[d]: “if the first information indicates that
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