Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper 47
`Entered: May 9, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HYTERA COMMUNICATIONS CORP. LTD.,
`Petitioner,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00128
`Patent 8,116,284 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL N. FISHMAN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`IPR2018-00128
`Patent 8,116,284 B2
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`In response to a Petition (Paper 1, “Pet.”) filed by Hytera
`
`Communications Corp. Ltd. (“Petitioner”), we instituted an inter partes
`review of claims 1, 4–9, 12–15, 18, and 19 of U.S. Patent No. 8,116,284 B2
`(“the ’284 patent”). Paper 8 (“Dec.”). During the trial, Motorola Solutions,
`Inc. (“Patent Owner”) filed a Response (Paper 17, “PO Resp.”) to which
`Petitioner filed a Reply (Paper 35, “Reply”) and Patent Owner filed an
`authorized Sur-Reply (Paper 42, “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 1, 4–9, 12–
`15, 18, and 19 of the ’284 patent are unpatentable.
`
`
`I. BACKGROUND
`A. The ’284 Patent
`1. Overview
`The ’284 patent “relates generally to talkgroup timeslot selection
`methods, communication devices and wireless communication systems that
`employ[] a time division multiple access (TDMA) signaling protocol.”
`Ex. 1001, 1:6–9. The patent explains that, in a known timeslot assignment
`approach, a common controller is used to monitor timeslots and to determine
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`“when to assign, maintain assignment, deassign and reassign timeslots
`(channels) to a talkgroup or a radio communication device.” Id. at 1:49–57.
`Instead of this approach, the patent discloses and claims a method, as well as
`corresponding devices and systems, that “alleviates the need for timeslot
`(channel) assignment by common or system level controllers since each
`radio communication device in a talkgroup determines individually, but
`concurrently, which timeslot to select.” Id. at 5:40–44.
`Figure 2 of the ’284 patent is reproduced below.
`
`
`Figure 2 illustrates a TDMA wireless communication system 200, in which
`two-way radios 100, 230, 240, 250 are in a talkgroup and communicate with
`each other through repeater station 210 via a traffic channel provided by
`radio links 220. Id. at 3:50–56. “[T]he traffic channel . . . consists of two or
`more TDMA traffic channel slots as well as a Common Announcement
`Channel (CACH) for channel numbering, and channel access.” Id. at 3:59–
`62.
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`IPR2018-00128
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`Figure 3 of the ’284 patent is reproduced below.
`
`
`Figure 3 is a flow diagram that illustrates a method “for temporarily
`selecting a TDMA timeslot by a radio communication device, such as the
`two-way radio 100, to communicate, through at least one repeater station
`210 with a talkgroup of other radio communication devices 230, 240, 250.”
`Id. at 4:5–9. The method is performed by radio 100, which has an assigned
`default timeslot for communicating with the talkgroup. Id. at 4:9–12.
`First, if the default timeslot is unavailable, as determined at step 310,
`radio 100 “searches for an available timeslot by processing information sent
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`from the repeater station 210 provided in the traffic channel, and more
`specifically, the CACH, at step 320.” Id. at 4:23–26. If an available
`timeslot cannot be found at step 325, the method returns to step 310. Id. at
`4:31–35. Conversely, if an available timeslot is found at step 325, radio 100
`temporarily selects the available timeslot at step 330 “as a temporary
`selected group timeslot for the talkgroup.” Id. at 4:35–40.
`If communication is then initiated by any member of the talkgroup at
`step 335, radio 100 transmits or receives the communication using the
`temporary selected group timeslot, which is “identified by the CACH as
`unavailable to any other talkgroup in the TDMA wireless communication
`system 200.” Id. at 4:41–47. As indicated at step 335, the method returns to
`step 310 upon either completion of communication at step 340 or if no
`communication is initiated. Id. at 4:47–50.
`Second, if radio 100 determines at step 310 that the default timeslot is
`available, radio 100 “selects or re-selects the default timeslot at step 315,”
`with communications, if initiated, taking place at step 335 over the default
`timeslot. Id. at 4:51–60.
`
`
`2. Illustrative Claim
`Independent claim 1 is illustrative of the claims at issue, and is
`reproduced below.
`1. A method for temporarily selecting a time division multiple
`access (TDMA) timeslot by a radio communication device to
`thereby allow the radio communication device to communicate,
`through at least one repeater station, with a talkgroup of other
`radio communication devices, the method comprising:
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`the radio communication device having an assigned
`default timeslot for communicating with the talkgroup;
`the radio communication device determining if the default
`timeslot is available for the radio communication device to
`communicate with the talkgroup;
`the radio communication device searching for an available
`timeslot when the default timeslot is unavailable;
`the radio communication device temporarily selecting the
`available timeslot as a temporary selected group timeslot for the
`talkgroup; and
`the radio communication device re-selecting the default
`timeslot for communicating with the talkgroup when the default
`timeslot becomes available.
`
`Id. at 6:20–39. Challenged independent claims 9 and 15 recite generally
`corresponding devices and systems. Id. at 6:61–7:14, 7:31–8:16.
`
`
`B. Evidence
`Petitioner relies on the following references.
`Ex. 1003
`Barnes
`US 6,374,115 B1
`Apr. 16, 2002
`Ex. 1004
`Janky
`US 5,790,527
`Aug. 4, 1998
`Ex. 1005
`Ganucheau
`US 6,529,740 B1
`Mar. 4, 2003
`Ex. 1006
`Wiatrowski
`US 8,279,991 B2
`Oct. 2, 2012
`Petitioner also provides Declarations by Robert Akl, D.Sc. Exs. 1002, 1024.
`Dr. Akl was cross-examined by Patent Owner, and transcripts of his
`depositions were entered into the record. Exs. 2008, 2034. Patent Owner
`provides Declarations by Kevin C. Almeroth, Ph.D., and Kin Wei Wong, an
`inventor named on the ’284 patent. Exs. 2003, 2004. Dr. Almeroth and
`Mr. Wong were cross-examined by Petitioner, and transcripts of their
`depositions were also entered into the record. Exs. 1025–1028.
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`IPR2018-00128
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`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 4–9, 12–15, 18, and 19 on each of the
`following grounds. Pet. 2.
`Reference(s)
`Barnes and Janky
`Ganucheau
`Wiatrowski
`
`Basis(es)
`§ 103(a)
`§§ 102(a), 102(b)
`§ 102(e)
`
`
`D. Real Parties in Interest
`In addition to itself, Petitioner identifies Hytera America, Inc., and
`Hytera Communications America (West), Inc., as real parties in interest.
`Pet. 65. Patent Owner identifies only itself as a real party in interest.
`Paper 5, 2.
`
`
`E. Related Proceedings
`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
`Corp. Ltd., No. 1:17-cv-01972 (N.D. Ill.), as related proceedings in which
`the ’284 patent has been asserted. Pet. 65; Paper 5, 2.
`
`
`II. ANALYSIS
`A. Legal Principles
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). While the elements must be arranged in the same way as is recited in
`the claim, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
`832–33 (Fed. Cir. 1990). Identity of terminology between the anticipatory
`prior art reference and the claim is not required. Prior art references must be
`“considered together with the knowledge of one of ordinary skill in the
`pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`A claim is unpatentable for obviousness 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 skill in the art; and (4) when in evidence, objective
`indicia of non-obviousness, i.e., secondary considerations. 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
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`(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
`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. 15. According to Petitioner,
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`“[a]dditional education might compensate for a deficiency in experience,
`and vice-versa.” Id. at 16.
`Patent Owner does not advocate for a particular level of skill in the art
`in its Response, but Patent Owner’s expert, Dr. Almeroth, sets forth a
`proposed level of skill that is similar to that advocated by Petitioner.
`Ex. 2003 ¶ 35. In light of that similarity, we see no compelling basis to
`deviate from Petitioner’s proposal and we adopt it for this Decision.
`
`
`C. Claim Construction
`In an inter partes review proceeding based on a petition filed prior to
`November 13, 2018, the Board interprets 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); Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
`use of the broadest reasonable interpretation standard); see also 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). Under the broadest reasonable interpretation standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
`inventor may provide a meaning for a term that is different from its ordinary
`meaning by defining the term in the specification with reasonable clarity,
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`In the Institution Decision, we provided preliminary constructions of
`two terms. In particular, we construed “default timeslot,” which is recited in
`each of independent claims 1, 9, and 15, in accordance with Petitioner’s
`proposal as “including a timeslot that changes based on time, location, or
`other criteria.” Pet. 16; Dec. 8. Patent Owner “does not challenge this
`construction for purposes of [its] Response,” and we therefore adopt that
`construction for this Decision. PO Resp. 4.
`We also construed “common announcement channel,” which is
`recited in dependent claims 6, 8, and 14. Dec. 9–10. Because we conclude
`that Petitioner makes an insufficient showing with respect to the independent
`claims, we need not reach the issue of how to construe “common
`announcement channel,” and therefore make no express construction for this
`Decision.
`
`
`D. Anticipation by Ganucheau
`Ganucheau describes point-to-multipoint communication through
`bidirectional channels between base stations on satellites and ground radios
`using a group control computer. Ex. 1005, Abstract, 4:10–32. Figure 1 of
`Ganucheau is reproduced below.
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`Figure 1 provides a layout diagram of a group communication system that
`includes subscriber radios 24 and 26, and group control computer 28. Id. at
`4:12–16. Base stations 32 are implemented in a constellation of satellites 34
`in low Earth orbits, and project antenna beams 46 toward the surface of the
`Earth. Id. at 4:19–22, 4:39–40.
`Group control computer 28 performs a group-controller process in
`which a “channel list” is calculated for a group of ground radios, indicating
`bidirectional multipoint channels for a communication session. Id. at 9:1–
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`30. Subscriber radios 24 tune the channels using FDMA, TDMA, and/or
`CDMA channel-division techniques. Id. at 6:22–24. Each ground radio
`updates the channel it uses to communicate with the base station for its
`current time and location from the group control computer. Id. at 12:28–32.
`When a ground radio “determines that [its] currently suggested channel is no
`longer acceptable,” it “identifies a best candidate multipoint channel 52 from
`the local channel list, based upon the current time and location,” and
`“verifies whether the candidate channel identified . . . exhibits adequate
`signal quality.” Id. at 12:61–65, 13:19–21. If there is adequate signal
`quality, the ground radio switches to that channel. Id. at 13:43–57.
`The dispositive issue in considering anticipation by Ganucheau is
`whether that reference discloses “the radio communication device re-
`selecting the default timeslot for communicating with the talkgroup when
`the default timeslot becomes available,” as recited in challenged independent
`claim 1 and similarly recited in challenged independent claims 9 and 15.
`See Ex. 1001, 6:37–39, 7:11–14, 8:14–16. The Petition provides context for
`its discussion of that limitation by describing Ganucheau’s subscriber
`radios 24 as forming the talkgroup recited in the claim, and observing that,
`within common beam 46, all members of the group use the same multipoint
`channel 52. Pet. 38–39 (citing Ex. 1005, 4:11–37, 4:66–5:11, 5:38–47).
`According to Petitioner, satellites 34 act as the recited repeaters because they
`receive communications from a radio communication device and repeat
`those communications to increase the effective range of the transmitting
`device. Id. at 39–40 (citations omitted).
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`Petitioner contends that the radio communication device has an
`“assigned default timeslot,” which corresponds to the initially tuned channel
`in the channel list for the particular time and location of the subscriber radio.
`Id. at 41–42 (citing Ex. 1005, 12:28–32). Petitioner reasons that such
`channels are “timeslots” in light of Ganucheau’s teaching of implementing
`bidirectional channels with TDMA channel-division techniques. Id. (citing
`Ex. 1005, 4:49–55). According to Petitioner, by teaching that subscriber
`radio 24 determines whether the channel has an acceptable quality,
`Ganucheau teaches the claim’s requirement that the radio communication
`device determine if the default timeslot is available for the radio
`communication device to communicate with the talkgroup. Id. at 45–46
`(citing Ex. 1005, 12:33–36).
`When the default timeslot is unavailable, challenged claim 1 requires
`that the radio communication device search for an available timeslot,
`temporarily select the timeslot, and “re-select[]” the default timeslot “when
`the default timeslot becomes available.” Ex. 1001, 6:32–39. The Petition
`relies on two scenarios that are discussed by its expert, Dr. Akl: one in
`which the “re-select[ed]” default timeslot “is different than the one
`previously used by the subscriber radios,” and one in which it “is the same
`channel previously assigned to the radio.” Ex. 1002 ¶¶ 96, 97 (emphases
`added). At the oral hearing, Petitioner maintained that the first scenario is
`relevant in that “re-selecting the default channel doesn’t necessarily mean
`selecting the same channel again,” but instead that “[r]e-selecting the default
`is re-selecting the default at that moment in time.” Tr. 10:16–19.
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`In the context of Ganucheau, Dr. Akl explains the first scenario as
`follows:
`In Ganucheau, the subscriber radios will automatically select the
`best available channel (timeslot) on the channel list for the time
`and location of the radio as soon as it becomes available. (Ex.
`1005, 14:1–23.) Thus, the subscriber radios will select (or re-
`select) a default channel (timeslot) as soon as it becomes
`available. . . . [T]he ‘284 patent does not restrict the term “default
`timeslot” from including a timeslot that will change based on the
`time or location of the radio communication device. Thus, it is
`my opinion that the subscriber radios of Ganucheau can re-select
`a “default channel (timeslot)” that is different than the one
`previously used by the subscriber radios.
`
`Id. ¶ 96. Patent Owner’s expert, Dr. Almeroth, disagrees with this
`characterization because, according to Dr. Almeroth, “the timeslot that is re-
`selected must be the originally selected timeslot.” Ex. 2003 ¶ 268.
`Dr. Almeroth grounds his opinion in the interplay of limitations explicitly
`recited in the claim (“[t]hat is because the ‘re-selecting’ step refers to ‘re-
`selecting the default timeslot,’ and that ‘default timeslot’ is first defined in
`an earlier limitation (‘the radio communication device having an assigned
`default timeslot’)”), and appears also to rely on the plain meaning of “re-
`selecting” (“[m]oreover, ‘reselection’ indicates that that timeslot must have
`first been selected”). Id.
`We find that Dr. Almeroth articulates the more compelling position,
`namely that ‘the re-selecting step cannot be met by selecting a new, different
`timeslot, even if it otherwise would qualify as a ‘default.’” Id. ¶ 267
`(citation omitted). Not only is such a position commensurate with the plain
`meaning of “re-selecting,” which implies previous selection, it is consistent
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`with the ’284 patent’s distinction between “select[ion]” and “re-select[ion].”
`For example, in explaining the method for temporary selection of a TDMA
`timeslot, the ’284 patent’s specification explains that, “if the radio
`communication device determines that the default timeslot (slot 1) is
`available for the radio communication device to communicate with the
`talkgroup, the radio communication device selects or re-selects the default
`timeslot.” Ex. 1001, 4:51–55 (emphasis added).
`In addition, Dr. Akl’s cross-examination testimony is relevant and
`supports Patent Owner’s declarant. Dr. Akl specifically agreed when asked
`to confirm that he was “not talking about the original default channel” when
`“opin[ing] that the subscriber radios of Ganucheau can reselect a default
`channel that is different than the one previously used by the subscriber
`radios.” Ex. 2008, 59:5–18. Rather, “the previously used channels [he’s]
`talking about are the ones [he’s] referred to as the temporary channels.” Id.
`Dr. Akl was given further opportunity on cross-examination to clarify, and
`his additional testimony confirms this understanding. Id. at 59:21–61:2 (“I
`believe ‘the default timeslot’ . . . is referring back to, for example, limitation
`1 where you have an assigned timeslot, and then limitation 2, which is the
`radio communication device determines if ‘the default timeslot.’”).
`In light of these considerations, we conclude that the “re-selecting”
`limitation of independent claim 1, and its counterparts in independent claims
`9 and 15, require that the same timeslot be selected again. The first scenario
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`discussed by Dr. Akl is accordingly irrelevant to whether the claims are
`anticipated by Ganucheau.1
`Dr. Akl describes the second scenario as follows:
`I also believe the subscriber radios of Ganucheau can re-select a
`“default channel (timeslot)” that is the same channel previously
`assigned to the radio depending on the time and location of the
`subscriber radio. For example, if the “assigned default channel”
`for a subscriber radio in Ganucheau is the best available channel
`for location A and the radio moves to location B, the radio will
`switch to the best available channel for location B. If there is no
`substantial change in time when the subscriber radio returns to
`location A, the radio will re-select the “assigned default channel”
`because it is the best available channel for location A at that time.
`Considering the disclosures in Ganucheau regarding the group
`radio communication system and my knowledge and experience
`regarding such systems, I believe that a [person of ordinary skill
`in the art] would understand that the best available channel for
`location A may be the same if the subscriber radio returns to
`location A within a couple of hours. This is because traffic and
`demand patterns usually change on the order of hours (for
`example, morning rush hour, mid-day slump, evening rush hour,
`etc.).
`
`
`1 Petitioner argues in its Reply that our construction of “default timeslot”
`compels a reading of the claim language that “does not require re-selecting
`the same channel.” Reply 14. We disagree for the detailed reasons above.
`That is, although the “default timeslot” itself can change based on time,
`location, or other criteria, the record developed at trial supports the
`conclusion that “re-selecting the default timeslot” requires re-selecting the
`same channel. In this respect, we agree with Patent Owner that Petitioner’s
`“position that the re-selecting step covers selecting a new or different
`default timeslot directly conflicts with that claim language, as well as the
`basic requirement that there be a ‘re’-selecting of a timeslot.” Sur-Reply 13.
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`Ex. 1002 ¶ 97 (emphases added). In reproducing Dr. Akl’s testimony, we
`have emphasized certain language that highlights the hypothetical nature of
`the scenario he considers. In this respect, we agree with Patent Owner that
`“Petitioner identifies no actual disclosure of the ‘re-selecting’ requirement in
`Ganucheau, instead relying exclusively on extrinsic expert testimony to
`construct a hypothetical describing how a POSITA could use Ganucheau to
`perform ‘re-select[ing].” PO Resp. 6 (citing Pet. 50 (citing Ex. 1002 ¶ 97;
`Ex. 2003 ¶ 263)). But “in order to demonstrate anticipation, the proponent
`must show ‘that the four corners of a single, prior art document describe
`every element of the claimed invention.’” Net MoneyIN, Inc. v. VeriSign,
`Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`Petitioner replies that “[b]ecause the system of Ganucheau prioritizes
`channels based on time and location, . . . an immediately apparent
`conclusion is that a subscriber leaving and returning to a given location at a
`given time would return to the same channel for that location and time.”
`Reply 15 (citation omitted). According to Petitioner, “[t]his is not
`‘hypothetical’ as [Patent Owner] suggests. . . . It is the result of the system
`described in Ganucheau.” Id. (citations omitted). To support its argument
`that this provides a sufficient showing, Petitioner directs our attention to
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`Cir. 2015), which states that “a reference can anticipate a claim even if it
`‘d[oes] not expressly spell out’ all the limitations arranged or combined as in
`the claim, if a person of skill in the art, reading the reference, would ‘at once
`envisage’ the claimed arrangement or combination.” Reply 15–16. But the
`Federal Circuit has expressly clarified that “Kennametal does not stand for
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`the proposition that a reference missing a limitation can anticipate a claim if
`a skilled artisan viewing the reference would ‘at once envisage’ the missing
`limitation.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`851 F.3d 1270, 1274 (Fed. Cir. 2017).
`At the oral hearing, we questioned whether the sheer number of
`devices involved in any practical implementation of Ganucheau’s system
`would necessarily result in the scenario described by Dr. Akl. See Tr. 58:1–
`59:14 (“[J]ust considering the sheer numbers of private radios that exist,
`doesn’t it seem almost impossible not to have that situation arise where you
`would get the selection of the same channel?”), 66:4–67:3 (“[W]ould it have
`been one slot for so many devices that are coming online or going offline,
`channels that are probably getting used and released or reused and released
`or selected, unselected, re-selected[?]”). In response to that questioning,
`Patent Owner directed our attention to Dr. Akl’s cross-examination
`testimony, in which Dr. Akl indicated that he did not render an opinion on
`certain details relevant to such a practical implementation. See Ex. 2008,
`54:3–9 (no opinion on whether geographic locations are described cells in
`Ganucheau), 54:18–24 (no opinion on geographic size of a cell in
`Ganucheau), 56:5–13 (no opinion on time period for returning to location A
`from location B), 57:3–17 (no opinion on whether Ganucheau describes
`preparation of a channel list available for sufficient time periods to
`accommodate movement to different locations).
`Dr. Almeroth’s testimony is relevant on these points. Dr. Almeroth
`testified that Dr. Akl “provides no description of how that scenario would
`occur,” and referring to the testimony cited above, asserts that “Dr. Akl had
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`not considered even the most basic facts necessary to support his
`conclusion.” Ex. 2003 ¶ 264. According to Dr. Almeroth, “the scenario
`contemplated by Dr. Akl—in which a radio moves from one coverage area
`(‘location A’) to another (‘location B’), necessitating a switch in channels,
`and then returns to location A with ‘no substantial change in time’—is not
`the typical or contemplated use case.” Id. ¶ 265. Dr. Almeroth explains that
`“[t]his is because the coverage area of satellites, such as those disclosed in
`Ganucheau, is so large that radios rarely change locations, and then return to
`the original location, without substantial changes in time.” Id.
`In light of the deficiencies in Dr. Akl’s testimony and the explicit
`reasoning and explanation provided by Dr. Almeroth, we give greater weight
`to Dr. Almeroth’s testimony. Accordingly, we find that Petitioner has
`inadequately shown that Ganucheau discloses the “re-selecting” limitation of
`independent claim 1, or its counterparts in independent claims 9 and 15.
`We conclude that Petitioner does not show, by a preponderance of the
`evidence, that independent claims 1, 9, or 15 are anticipated by Ganucheau.
`Because the dependent claims necessarily incorporate the “re-selecting”
`limitations of the independent claims, we similarly conclude that Petitioner
`does not show, by a preponderance of the evidence, that claims 4–8, 12–14,
`18, or 19 are anticipated by Ganucheau.
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`E. Anticipation by Wiatrowski
`Wiatrowski “relates generally to two-way wireless communication
`systems, and more particularly to timeslot synchronization on a time division
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`multiple access (TDMA) communication system.” Ex. 1006, 1:29–32.
`Figure 1 of Wiatrowski is reproduced below.
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`Figure 1 illustrates “a wireless communications landscape 100 having
`system 110, system 120, and system 130, whereby a system comprises a
`multiplicity of communication resources of radio frequencies, repeaters (also
`known as base stations) and subscriber units (also known as mobile stations,
`or the like) optionally managed by system controllers (not shown).” Id. at
`4:20–26. Within this landscape, Wiatrowski focuses on methods for
`synchronizing to a “desired timeslot” in a TDMA communication system.
`Id. at 3:15–17. Essentially, a transmitting device selects a synchronization
`pattern associated with the desired timeslot that is mutually exclusive from
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`synchronization patterns associated with other timeslots on the same
`frequency. Id. at 3:21–29. Once selected, the transmitting device transmits
`a burst embedding the synchronization pattern so that it may be detected by
`a receiving device, so that when the receiving device synchronizes with the
`timeslot, there is confidence that synchronization occurs with the desired
`timeslot. Id. at 3:29–37.
`Figure 8 of Wiatrowski illustrates this process in more detail and is
`reproduced below.
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`Figure 8 is a flow diagram that illustrates a method by which a subscriber
`unit determines whether it is allowed to transmit a direct-mode transmission.
`Id. at 2:61–64. In operation, the transmitting subscriber unit attempts to
`initiate a transmission in the desired timeslot at step 805, and searches for
`carrier presence on a particular frequency at step 810. Id. at 11:49–53. The
`relevant portion of the drawing corresponds to the situation in which carrier
`presence is detected, in which case a set of synchronization patterns
`associated with the timeslots on the particular frequency is searched at step
`820. Id. at 11:58–65.
`Steps 825 and 835 illustrate the distinction between the desired
`timeslot and undesired timeslots. Transmission is denied at steps 825 and
`830 if a synchronization pattern associated with the desired timeslot is
`detected, on the assumption that the desired timeslot is busy. Id. at 11:66–
`12:2. Transmi