Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 47
`Entered: May 13, 2019
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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 IPR2017-02183
`Patent 8,279,991 B2
`____________
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`Paper No. 47
`Entered: May 13, 2019
`
`
`
`
`
`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 IPR2017-02183
`Patent 8,279,991 B2
`____________
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2017-02183
`Patent 8,279,991 B2
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`I.
`
`INTRODUCTION
`A. Background
`We instituted an inter partes review of claims 7 and 8 of U.S. Patent
`No. 8,279,991 B2 (Ex. 1001, “the ’991 patent”) in response to a petition
`(Paper 1, “Pet.”) filed by Hytera Communications Corp. Ltd. (“Petitioner”)1.
`Paper 7 (“Dec.”). Motorola Solutions, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”) prior to institution.
`Following institution, Patent Owner filed a Response (Paper 22, “PO Resp.”)
`to which Petitioner filed a Reply (Paper 33, “Reply”) and Patent Owner filed
`an authorized Sur-Reply (Paper 42, “PO Sur-Reply”). Petitioner filed a
`Motion to Exclude evidence filed by Patent Owner, which Patent Owner
`opposed, and to which Petitioner replied. Papers 40, 43, 45. An oral hearing
`was held with the parties, and a copy of the transcript was entered into the
`record. Paper 46 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has not shown, by a preponderance of the evidence, that claims 7 and 8 of
`the ’991 patent are unpatentable.
`
`B. Related Proceeding
`Both parties identify In the Matter of Certain Two-Way Radio
`Equipment and Systems, Related Software and Components Thereof, 337-
`TA-1053 (ITC), and Motorola Solutions, Inc. v. Hytera Communications
`
`
`1 Petitioner identifies Hytera America, Inc., and Hytera Communications
`America (West), Inc. as additional real parties in interest. Pet. 48.
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`2
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`Corp. Ltd., No. 1:17-cv-01972 (N.D. Ill.), as related proceedings. Pet. 48;
`Paper 5, 1.
`
`C. The ʼ991 Patent (Ex. 1001)
`The ’991 patent, entitled “Method of Efficiently Synchronizing to a
`Desired Timeslot in a Time Division Multiple Access Communication
`System,” describes methods for transmitting communications in a Time
`Division Multiple Access Communication (“TDMA”) system to enable
`efficient use of resources in the TDMA system. Ex. 1001, 3:17–21, 3:58–
`62. TDMA air interface protocol is described in a European
`Telecommunications Standard Institute—Digital Mobile Radio (ETSI-
`DMR) standard (ETSI TS 102 361-1). Id. at 1:36–38. A subscriber unit in a
`TDMA communication system must ensure it is synchronized with a desired
`timeslot before it can receive or transmit data on a TDMA frequency
`channel. Id. at 1:38–41. The ’991 patent describes that “the ETSI-DMR
`standard provides a TDMA Channel (TC) bit which informs the receiving
`device whether the next timeslot to be received is timeslot 1 or timeslot 2.”
`Id. at 1:41–43.
`The ’991 patent
`discloses a method for efficiently synchronizing to a desired
`timeslot in a TDMA communication system. In repeater-based
`transmissions, the present disclosure reduces the time required
`for the receiving device to synchronize to the desired times lot,
`thus eliminating the extra time needed to reliably decode the TC
`bits in the CACH message, as described [in existing TDMC
`protocol].
`Id. at 3:15–22. Figure 7, below, illustrates a timing diagram of two direct-
`mode transmissions in accordance with the ’991 patent.
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`Figure 7 depicts a system with two timeslots per frequency channel for
`individual communications. The ’991 patent states that in Figure 7
`two transmissions are currently being transmitted by two
`transmitting subscriber units on a single frequency (e.g., 12.5
`kHz channel bandwidth with 2:1 TDMA slotting structure for
`6.25e spectral efficiency) in separate timeslots. Transmitting
`subscriber unit 1 is transmitting bursts in its transmission that
`have an embedded synchronization pattern associated with
`Timeslot 1, where appropriate; transmitting subscriber unit 3 is
`transmitting bursts in its transmission that have an embedded
`synchronization pattern associated with Timeslot 2, where
`appropriate. Once the synchronization patterns are detected by
`the receiving subscriber units 2 and 4, respectively, the receiving
`subscriber units 2 and 4 immediately know they have
`synchronized to their desired timeslots.
`Id. at 11:29–42.
`The ’991 patent discloses methods for a transmitting device to
`transmit bursts containing voice, data, or control information in different
`timeslots using different synchronization patterns associated with the
`timeslots, as well as methods for a receiving device to synchronize to a
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`desired timeslot. Id. at Figs. 2–6. The ’991 patent explains that the
`transmitting device knows a set of synchronization patterns associated with
`each timeslot on a frequency. Id. at 5:25–26, 9:33–40. Each set of
`synchronization patterns “can be a set of one or greater,” such that the set
`may comprise “one synchronization pattern associated with the timeslot” or
`may have a plurality of synchronization patterns that differentiate between
`the source and/or payload-type for bursts transmitted on that timeslot. Id. at
`5:45–65, 9:47–60, 9:64–10:9. The ’991 Specification describes a “two slot
`TDMA communication system” in which the transmitting device knows a
`different set of synchronization patterns associated with each of the two
`timeslots on a frequency, each set comprising at least two synchronization
`patterns. Id. at 5:56–65 (synchronization patterns associated with timeslot 1,
`including “BS_Sourced_Data_TS1=DFF57D75DF5D16”,
`“BS_Sourced_Voice_TS1=755FD7DF75F716”), 6:27–34 (synchronization
`patterns associated with timeslot 2, including “BS_Sourced_Data_TS2 =
`DD7FF5D757DD16”, “BS_Sourced_Voice_TS2=77D55F7DFD7716”).
`The ’991 patent describes that “[i]n a repeater-based transmission, a
`transmitting device selects a synchronization pattern associated with the
`desired timeslot . . . .” Id. at 3:21–23. “If the receiving device detects the
`synchronization pattern, the receiving device immediately synchronizes with
`the timeslot with confidence that it is synchronizing to the desired timeslot,
`or can immediately adjust its timing in order to decode the desired timeslot,
`without needing extra time to reliably decode the TC bits in the CACH.” Id.
`at 3:31–37. In order to transmit bursts, a device prepares to transmit in a
`timeslot (such as Timeslot 1, Timeslot 2, a rest timeslot, or a non-rest
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`timeslot), selects a synchronization pattern from a set of patterns associated
`with that timeslot, and transmits the burst having the selected
`synchronization pattern. Id. at 5:32–44, 5:66–6:40, 9:39–47, 9:61–64,
`10:10–17.
`The receiving device (mobile) tunes to a frequency associated with a
`selected channel and searches for a synchronization pattern associated with a
`desired timeslot (e.g., timeslot 1). Id. at 7:22–26, 10:52–56. If the receiving
`device detects the synchronization pattern associated with the desired
`timeslot (e.g., timeslot 1), the receiving device synchronizes to the timeslot
`on which the synchronization pattern was detected. Id. at 7:53–62, 8:3–16,
`10:59–66.
`
`D. Challenged Claims
`We instituted review of Petitioner’s challenges to independent claim 7
`and dependent claim 8 of the ’991 patent, reproduced below:
`7.
`In a time division multiple access (TDMA) system having
`a plurality of timeslots, a method comprises the steps of:
`[a] knowing a first set of synchronization patterns associated
`with a desired timeslot and a second set of synchronization
`patterns associated with each of the other timeslots in the TDMA
`system, wherein the first set of synchronization patterns is
`mutually exclusive from the second set of synchronization
`patterns, and each set comprising at least two different
`synchronization patterns as a function of at least one of a payload
`type and a source of the transmission;
`[b] preparing to transmit a particular payload type in a
`timeslot;
`[c] determining whether the timeslot is a current desired
`timeslot for the TDMA system;
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`if the timeslot is the current desired timeslot, selecting a
`[d]
`synchronization pattern selected
`from
`the
`first set of
`synchronization patterns based on the one of the particular
`payload type and a particular source of the transmission;
`otherwise selecting a synchronization pattern selected from the
`second set of synchronization patterns based on the one of the
`particular payload type and the particular source of the
`transmission; and
`[e]
`transmitting a burst in the timeslot having embedded the
`synchronization pattern that was selected.
`8.
`The method of claim 7 wherein the current desired
`timeslot at a first time is different than the current desired
`timeslot at a second time.
`Ex. 1001, 17:35–63 (bracketed lettering added).
`
`Basis
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`E. Alleged Grounds of Unpatentability
`We instituted trial on independent claim 7 and dependent claim 8 of
`the ’991 patent on the following grounds. Dec. 20; see Pet. 5:
`Claims
`Challenged
`7 and 8
`7 and 8
`7 and 8
`
`References
`Yamaguchi,2 ETSI
`Standard,3 and Zak4
`ETSI Standard and Zak
`Yamaguchi, Wiatrowski,5
`and Zak
`
`2 U.S. Pat. No. 5,761,211 issued June 2, 1998 to Yamaguchi et al. (Ex. 1005,
`“Yamaguchi”).
`3 Electromagnetic compatibility and Radio spectrum Matters (ERM):
`Technical Requirements for Digital Mobile Radio (DMR); Part 1: Air
`Interface (AI) protocol, ETSI TS 102 361-1 v1.1.1 (2005–04) (Ex. 1006,
`“ETSI Standard”).
`4 U.S. Pat. No. 6,452,991 B1 issued Sept. 17, 2002 to Zak (Ex. 1007, “Zak”).
`5 U.S. Pat. Pub. No. 2006/0013188 A1 published Jan. 19, 2006 to
`Wiatrowski et al. (Ex. 1008, “Wiatrowski”).
`
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`II. ANALYSIS
`
`A. Legal Standard
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`To prevail on its challenges, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
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`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)). This burden never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burden of proof in inter partes review). Furthermore, Petitioner does not
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`
`B. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have had a Bachelor’s degree in electrical engineering, computer
`engineering, or computer science, or a related field, along with at least two
`to three years of experience in telecommunications and networking, or an
`equivalent degree and/or experience.” Pet. 9. According to Petitioner,
`“[a]dditional education might compensate for a deficiency in experience,
`and vice-versa.” Id. at 10.
`Patent Owner does not advocate for a particular level of skill in the art
`in its Response, but Patent Owner’s declarant, Dr. Stephen B. Wicker, sets
`forth a proposed level of skill that is similar to that advocated by Petitioner.
`Ex. 2008 ¶ 32. In light of that similarity, we see no compelling basis to
`deviate from Petitioner’s proposal and we adopt it for this Decision.
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`C. Claim Interpretation
`For petitions filed prior to November 13, 2018, 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)
`(2017);6 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); Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of an inter partes review).
` Our Institution Decision adopted the constructions proposed by both
`parties in the related ITC proceedings (Ex. 1003, 10). Dec. 9; see Pet. 10-
`11; Prelim. Resp. 10–11.
`
`Proposed Construction
`plain and ordinary meaning
`“a current assigned timeslot”
`
`Term (Claims)
`[1] “knowing” (claim 7)
`[2] “a current desired
`timeslot” (claim 7)
`
`6 The recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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`Proposed Construction
`
`“each synchronization pattern in the
`first set is not in the second set”
`
`“each set of synchronization patterns
`has at least two different patterns that
`correspond to at least one of a payload
`type or transmission source”
`
`Term (Claims)
`[3] “the first set of
`synchronization patterns is
`mutually exclusive from the
`second set of synchronization
`patterns” (claim 7)
`[4] “each set [of
`synchronization patterns]
`comprising at least two
`different synchronization
`patterns as a function of at
`least one of a payload type and
`a source of the transmission”
`(claim 7)
`
`The parties do not directly dispute these proposed constructions. See
`PO Resp. 8–11; Reply 2–3. Instead, the parties’ dispute revolves around
`whether the method of claim 7 (and its dependent claim 8) requires the steps
`to be performed in a specified order as written or in any order. Id. Because
`the parties offer no specific modifications to the constructions above, we
`adopt those constructions for this Decision. We address below the parties’
`contentions regarding whether the claims require the steps of claim 7 to be
`performed in a particular order.
`1. Steps in Method Claim Performed in Order
`Steps in a method claim need not necessarily be performed in the
`order they are written, but if grammar, logic, the specification, or the
`prosecution history require the steps to be performed sequentially, then the
`claims are so limited. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369
`(Fed. Cir. 2003); Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322
`(Fed. Cir. 1999) (“Although not every process claim is limited to the
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`performance of its steps in the order written, the language of the claim, the
`specification and the prosecution history support a limiting construction in
`this case.”).
`Patent Owner argues that Petitioner’s implicit construction relies on
`the steps being performed in any order rather than the order written.
`PO Resp. 8 (citing Ex. 2007, 26:1–7 (arguing that Petitioner’s declarant,
`Dr. Robert Akl, did not consider whether the claim 7 required the steps in
`order)). Patent Owner argues that the language of the claims “requires
`performing the ‘preparing’ step [limitation 7[b]] before the ‘determining’
`and ‘selecting’ steps” [limitation 7[c] and [d]]. PO Resp. 8–9. Specifically,
`Patent Owner relies on the antecedent basis in each step of claim 7 as shown
`in the emphasized claim language below:
`Ex. 1001, cl. 7 (“[7a] knowing a first set of synchronization
`patterns . . . and a second set of synchronization patterns . . .[7b]
`preparing to transmit a particular payload type in a timeslot; [7c]
`determining whether the timeslot is a current desired timeslot
`for the TDMA system; [7d] if the timeslot is the current desired
`timeslot, selecting a synchronization pattern selected from the
`first set . . . otherwise selecting a synchronization pattern selected
`from the second set . . . [7e] transmitting a burst in the timeslot
`having embedded
`that was
`the synchronization pattern
`selected.”).
`PO Resp. 9. Thus, Patent Owner argues that the antecedent basis of the
`claim language requires performing the steps 7[b] to 7[e] in the order in
`which they are written in the claim. Id. at 9–10 (citing Wi-Lan, Inc. v.
`Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016); Function Media, L.L.C. v.
`Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013)).
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`Patent Owner further asserts that the ’991 patent specification
`“uniformly confirms that the steps must be performed in order.” PO Resp.
`10–11. Patent Owner refers to the embodiments of the invention, stating:
`First, “the transmitting device knows a set of synchronization
`patterns associated with each timeslot on a frequency.” Ex. 1001
`at 5:24–26; Ex. 2008 ¶ 67. Next, the “transmitting device
`prepares to transmit in Timeslot 1.” Ex. 1001 at 5:32–33; Ex.
`2008 ¶ 67. After prepared to transmit, “the transmitting device
`selects a synchronization pattern from the set of synchronization
`patterns associated with Timeslot 1.” Ex. 1001 at 5:41–44; Ex.
`2008 ¶ 67. Finally, the “transmitting device transmits the burst
`having embedded
`the
`[selected] synchronization pattern
`associated with Timeslot 1 that was selected.” Ex. 1001 at 5:66–
`6:4; Ex. 2008 ¶ 67. The same order is described with respect to
`the ’991 patent’s other embodiments. See, e.g., Ex. 1001 at 9:33–
`43, 9:61–10:15; Fig. 5; Fig. 8; Ex. 2008, ¶ 68.
`PO Resp. 10–11.
`Petitioner disputes that any order is required because “both the Board
`and the Federal Circuit have held that method claims are not construed to
`require a specific order ‘unless the Specification or claims expressly or
`implicitly require the performance in that specific order.’” Reply 3 (quoting
`Ex parte Li, No. 2017-008638, slip op. at 4 (PTAB Jan. 18, 2018) (citing
`Altiris, 318 F.3d at 1369); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1309
`(Fed. Cir. 2014)). Petitioner relies on the general rule and does not make
`any specific argument with respect to the language of the claims. Id.
`We begin by looking at the intrinsic evidence of the claim language
`and the specification to determine whether they expressly or implicitly
`require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree
`with Patent Owner that the language shows that the results of a step are used
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`in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload
`type in a timeslot’ [comes before] step 7[c] ‘determining whether the
`timeslot is a current desired timeslot for the TDMA system,’ because the
`transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’
`step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’”
`PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).
`With respect to the specification, the parties rely on different
`embodiments and draw competing conclusions. Patent Owner argues that
`Figure 5 of the ’991 patent, shown below, and the accompanying text
`confirm the order of method steps. PO Sur-Reply 5–6.
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`Ex. 1001, Fig. 5. Figure 5 depicts “a flow diagram of an exemplary method
`of how a transmitting device transmits bursts using different synchronization
`patterns associated with a rest timeslot and a non-rest timeslot in accordance
`with an embodiment of the [’991 patent] disclosure.” Ex. 1001, 9:19–23.
`Patent Owner asserts that specification discussion of Figure 5 shows the
`preparing step (505) occurring before determining step (510), which occurs
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`before the selecting step (515). PO Sur-Reply 5–6 (citing Ex. 1001, 9:33–
`10:15; Ex. 1022, 219:2–18).
`Petitioner argues that no specific order of the method steps is required
`because the specification does not expressly require it and the performing
`step does not technically require it. Reply 4. Petitioner also notes that the
`disclosure generally disclaims any strict relational order for the steps. Id. at
`3 (citing Ex. 1001, 16:50–55). Petitioner draws support from Dr. Wicker’s
`admission that there is no explicit statement that prevents the determining
`step from occurring before the preparing step, nor anything technical
`requiring such an order. Id. at 4 (citing Ex. 1001, 5:32–44; Ex. 1022, 118:5–
`119:2, 126:21–24, 127:23–128:6, 201:17–25). With respect to the preparing
`step in Figure 2, Petitioner relies on an example of preparing to transmit on
`timeslot 1 for a repeater by setting the TC bit. Ex. 1001, 5:32–44; Reply 4;
`Ex. 1023 ¶ 36. Specifically, Petitioner argues that testimony shows there is
`no technical limitation that would prevent the determining step from
`occurring before the preparing step in claim 7. See Reply 4.
`
`We are not persuaded by Petitioner’s argument and evidence that the
`specification’s technical reference to the “preparing” step with respect to
`Figure 2 negates the specification’s support for the order of steps in Figure 7
`and its accompanying specification discussion. See Reply 4; Ex. 1023 ¶ 36;
`PO Sur-Reply 6. We are also not persuaded by Dr. Wicker’s testimony, as
`the lack of an explicit statement regarding the order or the technical
`implementation of the performing step in Figure 2 does not address
`persuasively Patent Owner’s arguments based on Figure 5. Reply 4;
`Ex. 1022, 118:5–119:2, 126:21–24, 127:23–128:6, 201:17–25.
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`We agree with Patent Owner’s argument that the ’991 patent
`embodiments depicted in Figures 5 and 8 show the enumerated steps being
`performed in sequence as claimed. PO Resp. 10–11 (citing Ex. 1001, 5:24–
`26, 5:32–33, 5:41–44, 5:66–6:4, Figs, 2, 5, 8); Ex. 2008 ¶¶ 67–68; PO Sur-
`Reply 5–7. Because the embodiment shown in Figure 2 of the ’991 patent
`lacks an express determining step, we also agree with Patent Owner that it is
`not as informative regarding the sequence of steps in claim 7. Reply 4; PO
`Sur-Reply 6. In contrast, Figure 5’s embodiment, which expressly describes
`determining and transmission in accordance with the plain language of claim
`7, indicates that the steps are ordered as claimed. See Ex. 1001, 5:32–44,
`9:33–10:15; Ex. 1022, 219:2–18; Reply 4; PO Sur-Reply 6. Finally,
`Petitioner’s reliance on a general disclaimer for “relational terms” is not
`specific to claim 7 nor is it definitive, as the cited text notes only that a
`specific relationship is not “necessarily required.” See Reply 3 (citing Ex.
`1001, 16:50–55).
`The case law cited by Petitioner also does not persuade us that no
`sequence is required based on an antecedent basis and the intrinsic evidence.
`In Ex parte Li, the Board rejected an implied antecedent basis because both
`the claim language and the specification did not support a specific order for
`the method steps. Ex parte Li, No. 2017-008638, slip op. at 4–5 (noting that
`neither the antecedent basis for “the application program” nor the reference
`to “replacement” of a prior step’s element was sufficient and that the
`
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`specification did not support a specific order).7 In the present case, the
`antecedent basis is express and not implied.
`Based on the foregoing, we are persuaded by Patent Owner’s
`argument that the plain language and the specification together indicate that
`the method of claim 7 requires the steps be performed in the recited order.
`PO Resp. 10–11; Ex. 2008 ¶¶ 67–68; PO Sur-Reply 5–7.
`
`D. Cited Prior Art
`1. Yamaguchi (Ex. 1005)
`Yamaguchi discloses a timing recovery circuit that determines a
`timing offset for synchronizing transmitters and receivers in TDMA
`systems. Ex.1005, Abstract, 1:10–13, 2:10–20, 5:51–62. Yamaguchi
`discusses “a time-division multiple access (TDMA) signal of the type
`employed in the North American digital cellular system.” Id. at 2:11–13.
`Yamaguchi discloses that “[t]he signal is organized into frames of six time
`slots each, each slot comprising a synchronization pattern (SYNC) and
`data,” where “[e]ach synchronization pattern is designed to have . . . no
`significant correlation with the other synchronization patterns.” Id. at 2:10–
`20.
`
`
`7 We note that the Federal Circuit in Apple Inc. v. Motorola, Inc., also turned
`to both the plain meaning of the claim language (antecedent basis) and
`supporting specification to find that method claim at issue required a specific
`sequence. See Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1309 (Fed. Cir.
`2014), overruled on other grounds by Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1349 (Fed. Cir. 2015).
`
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`2. ETSI Standard (Ex. 1006)
`The ETSI Standard “contains technical requirements for Digital
`Mobile Radio (DMR) operating in the existing licensed land mobile service
`frequency bands.” Ex. 1006, 9. The ETSI Standard “describes a [] DMR
`system for [products] which employs a Time Division Multiple Access
`(TDMA) technology with a 2-slot TDMA solution and RF Carrier
`bandwidth of 12.5 kHz.” Id. at 13. In TDMA, “[s]lot formats, field
`definitions, and timing are defined for voice traffic, data traffic, and control
`[signaling].” Id. The ETSI Standard explains that the “burst” “represents
`the physical channel of a timeslot.” Id. at 15. The ETSI Standard discloses
`that “[b]ursts have either a synchronization pattern or an embedded
`[signaling] field located in the center of the burst” and “[d]ifferent SYNC
`patterns are used in voice bursts and data bursts to allow the receiver to
`differentiate between them.” Id. at 16. Also, “[d]ifferent SYNC patterns are
`used for inbound and outbound channels to help the receiver reject co-
`channel interference.” Id.
`The ETSI Standard describes two types of TDMA frames—“MS
`sourced TDMA frame” and “BS Sourced TDMA frame.” Id. at 18 (Figure
`4.4, and Figure 4.5). The MS sourced TDMA frame is used for MS sourced
`communications only, and the BS sourced TDMA frame is used for BS
`sourced communications only. Id.
`3. Zak (Ex. 1007)
`Zak discloses “systems and methods for locating a known multi-
`symbol syncword in a received signal” for use in systems requiring channel
`synchronization, such as time division multiple access communications
`
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`systems. Ex. 1007, Abstract, 1:7–11. Zak discloses that TDMA systems
`“divide communications resources among the terminals using the network,”
`and that in FDMA/TDMA cellular systems, the frequency sub-bands are
`“divided into up to six separate communications time slots.” Id. at 1:24–29.
`Zak explains that “[t]he users involved with a particular phone call in an
`ANSI-136 network access one of the available time slots on a specific
`frequency sub-band” so that “up to six separate calls may occur
`simultaneously on any given sub-band” because “the six sets of users share
`the sub-band by transmitting only during their assigned time slots.” Id.
`To synchronize, the user terminals receive a signal identifying the
`location in that signal of “a predefined sequence of symbols which comprise
`a known synchronization word or ‘syncword.’” Id. at 6:21–40. And “a
`unique syncword is typically provided for each separate time slot in a
`frequency sub-band” such that, for each of the “frequency bands which carry
`communications into up to six separate time-multiplexed channels, six
`unique synchronization sequences are provided.” Id. at 6:21–40; see id. at
`1:24–29, 1:34–36.
`
`4. Wiatrowski (Ex. 1008)
`Wiatrowski is a Motorola patent publication with common inventors
`with the ’991 patent, and is directed to a TDMA DMR system. Ex. 1008, 1.
`Wiatrowski states that “[o]nce the receiver is synchronized to a channel, the
`receiver uses pattern matching to detect the presence of a message that
`identifies whether the channel is present and synchronized.” Id. ¶ 15. “The
`message identifies the type of synchronization present on the channel” using
`the message
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`to differentiate a) voice bursts from data/control bursts and from
`reverse channel bursts, b) inbound channels from outbound
`channels, c) the type of modulation on the channel, e.g. a
`Motorola P25 Phase 1 FDMA from a Motorola P25 Phase 2
`TDMA, and d) the type of wireless communications system, e.g.
`a Motorola P25 system from a Motorola Low Tier Digital
`system.
`
`Id.
`
`E. Obviousness based on ETSI Standard and Zak
`Petitioner contends that the combination of the ETSI Standard and
`Zak would have rendered claims 7 and 8 obvious. Pet. 30–39.
`1. Analysis
`Petitioner contends that the ETSI Standard teaches a TDMA system
`and, in combination with Zak, teaches limitation 7[a], for
`knowing a first set of synchronization patterns associated with a
`desired timeslot and a second set of synchronization patterns
`associated with each of the other timeslots in the TDMA system,
`wherein the first set of synchronization patterns is mutually
`exclusive from the second set of synchronization patterns, and
`each set comprising at least two different synchronization
`patterns as a function of at least one of a payload type and a
`source of the transmission.
`Ex. 1001, 17:38–46; Pet. 31–34; Ex. 1006, 18–19.
`Petitioner maps Zak and the ETSI Standard to the limitations 7[b] –
`7[e], providing arguments for the combination of references as understood
`by ordinarily skilled artisans. Pet. 34–39. For the determining step
`(limitation 7[c]), Petitioner argues that the ETSI standard TDMA timeslot
`
`21
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