`571-272-7822
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`
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`Paper 40
`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 IPR2018-00176
`Patent 6,591,111 B1
`____________
`
`
`
`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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`IPR2018-00176
`Patent 6,591,111 B1
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`In response to a Petition (Paper 2, “Pet.”) filed by Hytera
`
`Communications Corp. Ltd. (“Petitioner”), we instituted an inter partes
`review of claims 1, 6, 7, 11–13, 15, and 16 of U.S. Patent No. 6,591,111 B1
`(“the ’111 patent”). Paper 7 (“Dec.”). During the trial, Motorola Solutions,
`Inc. (“Patent Owner”) filed a Response (Paper 18, “PO Resp.”) to which
`Petitioner filed a Reply (Paper 29, “Reply”) and Patent Owner filed an
`authorized Sur-Reply (Paper 35, “Sur-Reply”). Petitioner filed a Motion to
`Exclude evidence filed by Patent Owner, which Patent Owner opposed, and
`to which Petitioner replied. Papers 33, 36, 38. An oral hearing was held
`with the parties, and a copy of the transcript was entered into the record.
`Paper 39 (“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 shown, by a preponderance of the evidence, that claims 1, 6, 7, and 12 of
`the ’111 patent are unpatentable, but Petitioner has not shown that claims 11,
`13, 15, and 16 are unpatentable.
`
`
`I. BACKGROUND
`A. The ’111 Patent
`1. Overview
`The ’111 patent “relates to a group radio communication system
`which implements point-to-multipoint communications.” Ex. 1001, 1:6–8.
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`“Point-to-multipoint (PTM) refers to a communication circuit in which a
`single signal goes from originating group member to many destination or
`target group members,” with PTM communications sometimes being
`referred to in the ’111 patent as “monologs.” Id. at 1:15–17, 1:28–32. In
`particular, the patent addresses the implementation of point-to-multipoint
`communications between independent radio sub-networks, which “are
`coupled together through a group controller to form an overall network for
`point-to-multipoint communications.” Id. at 1:8–12. For example,
`subscribers in one radio sub-network (such as a city police department) may
`need to communicate with subscribers in a different radio sub-network (such
`as a federal agency). Id. at 1:54–63. The patent identifies two principal
`challenges in doing so: inefficient use of existing communication
`infrastructures and incompatibilities between the independent radio sub-
`networks. Id. at 1:42–63.
`Figure 1 of the ’111 patent is reproduced below.
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`Figure 1 illustrates a layout of group radio communication system 20, which
`includes data communication network 22 coupled to group controller 24 and
`a number of radio sub-networks 26. Id. at 2:31–35. Data communication
`network 22 is a packet switched network, i.e. it “merely includes addressing
`information in data packets and sends the addressed data packets . . . for
`delivery to their intended destinations on a packet-by-packet basis.” Id. at
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`3:42–50. Each radio sub-network 26 includes radio sub-network controller
`30, base station 32, and subscriber radios 34. Id. at 2:36–38. Within each
`sub-network 26, radio sub-network controller 30 coordinates among call
`requests from the subscribers within the sub-network. Id. at 2:36–49. Each
`sub-network 26 also includes converter 28, which translates between
`protocols used in network 22 and the data communication protocol used by
`group controller 24. Id. at 2:36–38, 4:34–35.
`The ’111 patent discloses that group controller 24 “may be
`implemented using conventional computer technology . . . , including, for
`example, a processor unit, a memory unit, a hard drive unit, I/O units such as
`video display, keyboard, mouse, and the like, and an interface to gateway
`50.” Id. at 3:65–4:3. Figure 8 is reproduced below.
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`Figure 8 provides a flow chart of a group control process performed by
`group controller 24 “to manage a common point-to-multipoint
`communication session involving point-to-multipoint communication
`sessions in more than one radio sub-network 26.” Id. at 9:28–33. Group
`control process 152 “is carried out in response to computer software stored
`in a memory portion . . . of group controller 24 and executed by a processor
`portion . . . of group controller 24.” Id. at 9:33–36. Task 154 filters packets
`received from data communication network 22 such that group control
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`process 152 is performed for a specified group of subscriber radios 34,
`which may be located in a variety of sub-networks 26. Id. at 9:39–44.
`The remaining steps shown in Figure 8 manage a communication
`session by identifying whether a packet containing monolog traffic is
`received at step 156, and duplicating and distributing the packets to all non-
`originating radio subnetworks 26 for the group. Id. at 9:47–10:3. “Tokens”
`are “intangible construct[s] used to manage a PTM communication session,”
`such as by representing “the permission to be the origination point for a
`point-to-multipoint monolog.” Id. at 6:39–42. When token grants are
`received at step 160, conflicts are resolved at step 162, such as with “a
`prioritization scheme which prioritizes by subscriber radio ID, radio sub-
`network ID, or the like.” Id. at 10:4–17. When token releases are received
`at step 166, the release message is duplicated and distributed to all non-
`originating radio sub-networks at step 168. Id. at 10:36–50.
`
`
`2. Illustrative Claims
`Independent claims 1 and 13 are illustrative of the claims at issue, and
`are reproduced below.
`1. A group radio communication system comprising:
`a first radio sub-network configured to implement point-
`to-multipoint communication sessions within said first radio sub-
`network;
`a second radio sub-network configured to implement
`point-to-multipoint communication sessions within said second
`radio sub-network; and
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`a group controller in data communication with said first
`radio sub-network and said second radio sub-network, said group
`controller being configured to manage a common point-to-
`multipoint communication session involving said first radio sub-
`network and said second radio sub-network;
`a packet switched data communication network coupled
`between said first radio sub-network and said group controller
`and between said second radio sub-network and said group
`controller;
`a radio sub-network controller associated with each of said
`first and second radio sub-networks and a plurality of subscriber
`radios in communication with said radio sub-network controller,
`and
`
`each of said radio sub-network controllers is configured to
`resolve conflicts between substantially concurrent requests from
`said plurality of subscriber radios in communication with said
`radio sub-network controller to be origination points for a point-
`to-multipoint monolog and
`to provide subscriber
`traffic
`distribution
`to said plurality of subscriber
`radios
`in
`communication with said radio sub-network controller.
`
`Ex. 1001, 11:21–50.
`13. A method of implementing a common point-to-multipoint
`communication session involving first and second radio sub-
`networks, said method comprising:
`coupling said first radio sub-network to a packet switched
`communication network;
`coupling said second radio sub-network to said packet
`switched communication network;
`coupling a group controller to said data communication
`network;
`routing a point-to-multipoint monolog from said first radio
`sub-network through said group controller to said second radio
`sub-network;
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`converting said point-to-multipoint monolog into packets
`for distribution
`through
`said packet
`switched data
`communication network and said group controller;
`receiving said point-to-multipoint monolog at a first
`converter configured to communicate in said first radio sub-
`network using a communication protocol established for said
`first radio sub-network; and
`transmitting said point-to-multipoint monolog as packets
`over said packet switched data communication network using a
`protocol
`established
`for
`said packet
`switched data
`communication network.
`
`Ex. 1001, 13:1–24.
`
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`B. Evidence
`Petitioner relies on the following references.
`Maggenti
`US 6,301,263 B1
`Oct. 9, 2001
`Shepherd
`US 5,398,248
`Mar. 14, 1995
`Grube
`US 5,987,331
`Nov. 16, 1999
`Stubbs
`WO 99/63773
`Dec. 9, 1999
`Kent
`US 5,659,881
`Aug. 19, 1997
`
`Petitioner also provides Declarations by Michael Davies. Exs. 1002, 1018.
`Mr. Davies was cross-examined by Patent Owner, and a transcript of his
`deposition was entered into the record. Ex. 2004. Patent Owner provides a
`Declaration by Kevin C. Almeroth, Ph.D. Ex. 2003. Dr. Almeroth was
`cross-examined by Petitioner, and a transcript of his deposition was also
`entered into the record. Ex. 1017.
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`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 6, 7, 11–13, 15, and 16 as unpatentable
`under 35 U.S.C. § 103(a) over the following combinations of references:
`(1) Maggenti and Shepherd; (2) Grube and Shepherd; and (3) Stubbs and
`Kent. Pet. 3.
`
`
`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. 74. Patent Owner identifies only itself as a real party in interest. Paper
`4, 1.
`
`
`
`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 ’111 patent has been asserted. Pet. 74; Paper 4, 1.
`
`
`II. ANALYSIS
`A. Legal Principles
`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
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`“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
`(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
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`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. 13. According to Petitioner,
`“[a]dditional education might compensate for a deficiency in experience,
`and vice-versa.” Id.
`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 ¶ 32. In light of that similarity, we see no compelling basis to deviate
`from Petitioner’s proposal and adopt it for this Decision.
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`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). 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, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In the Institution Decision, we addressed construction of two terms.
`In particular, we preliminarily construed the term “group controller,” which
`is recited in independent claims 1 and 13, as “a computational device that
`manages a point-to-multipoint communication session.” Dec. 11. Patent
`Owner expressly “agrees with the Board’s construction,” PO Resp. 8, and
`Petitioner does not dispute our preliminary construction. In addition, the
`Institution Decision noted our preliminary agreement with Patent Owner that
`“independent claim 1 requires that each radio sub-network includes a radio
`sub-network controller.” Dec. 12. Again, Patent Owner expressly “agrees
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`with this construction,” PO Resp. 8, and Petitioner does not dispute it.
`Because we see no compelling reason to alter these constructions in light of
`the record developed during the trial, we adopt them for this Decision.
`
`
`D. Obviousness over Stubbs and Kent
`1. Overview of Stubbs
`Stubbs describes a wireless network that uses general packet radio
`service (“GPRS”) to implement virtual push-to-talk functionality. Ex. 1006,
`abst. Figure 3 of Stubbs is reproduced below.
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`Figure 3 is a schematic illustration of a public land mobile network
`(“PLMN”) that uses the global system for mobile communications (“GSM”).
`Id. at 9:4–5. The PLMN includes GPRS support nodes, including serving
`GPRS support nodes (“SGSNs”) 40 and gateway GPRS support node
`(“GGSN”) 44 that interfaces the PLMN with external packet data
`network 46. Id. at 9:5–12. “It contains routing information for active GPRS
`users in the PLMN, which is used to transmit data packets,” with GGSN 44
`providing a mapping function that allows mobile users to be identified in
`packet data network 46. Id. at 9:12–19. SGSNs 40, which are in
`communication with GGSN 44 and base station controllers (“BSCs”) 4,
`serve mobile stations 8 in their routing areas, with each SGSN establishing a
`mobility management context and a routing context with GGSN 44 used by
`mobile station 8 to access packet data network 46. Id. at 4:8–9, 10:5–11.
`Other PLMNs may similarly be supported by GGSN 56. Id. at 10:15–17.
`In addition, Figure 3 shows additional structure that includes packet
`handler 48, packet store 50, packet user database 52, and service
`management terminal 54. Id. at 11:17–20. These components are
`responsible for “setting up virtual connections between GPRS users in the
`PLMN,” “storing data packets which are intended for distribution to GPRS
`users within the PLMN,” and “hold[ing] call group records for identifying
`the members of a call group” and “identification records for each mobile
`subscriber in the PLMN.” Id. at 11:21–13:3.
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`2. Overview of Kent
`Kent describes “a distributed method of arbitrating talk group call
`contentions in a multisite system.” Ex. 1007, 1:7–12. Kent explains that
`“call contention in a multisite environment can occur when multiple callers
`at different sites attempt to transmit on a common talk group (Call Group) at
`nearly the same moment.” Id. at 11:6–9. Accordingly, Kent teaches
`resolution of talk group call contention “to avoid the potential performance
`bottleneck and ‘single point of failure’ mode that would arise from a
`conventional central arbitration scheme.” Id. at 11:9–14. Instead, Kent
`“utilizes a distributed approach to contention arbitration wherein each site
`interface autonomously checks for contention and resolves occurrences by
`determining which call should be given priority based upon a predetermined
`common arbitration scheme.” Id. at 11:14–19.
`
`
`3. Combination of Stubbs and Kent
`Petitioner argues that claims 1, 6, 7, 11–13, 15, and 16 would have
`been obvious over the combination of Stubbs and Kent, specifically by
`incorporating the decentralized arbitration taught by Kent into the system
`taught by Stubbs. Pet. 55–57. Petitioner reasons that one of skill in the art
`would combine the teachings in light of Kent’s explicit recognition that its
`decentralized arbitration would “avoid the potential performance bottleneck
`and ‘single point of failure’ mode that would arise from a conventional
`central arbitration scheme,” and Petitioner supports that reasoning with
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`testimony by Mr. Davies. Id. at 56–57; Ex. 1007, 11:9–14; Ex. 1002 ¶¶ 84–
`85.
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`a. Independent Claim 1
`i. Summary of Petitioner’s Argument
`Petitioner draws an express correspondence between the limitations of
`independent claim 1 and its proposed combination of Stubbs and Kent. Pet.
`57–67. In doing so, Petitioner observes that Stubbs discloses a mobile
`communications system with a radio interface and thereby discloses a group
`radio communication system, as recited in the preamble of claim 1. Id. at 57
`(citing Ex. 1006, abst., 5:1–4; Ex. 1002 ¶ 141). For the first and second
`recited “radio sub-network[s] configured to implement point-to-multipoint
`communication sessions within [the respective] radio sub-network[s],”
`Petitioner identifies Stubbs’s structure, shown in Figure 3 above, of a PLMN
`with GGSN 44. Pet. 57–58. Petitioner further reasons that the second radio
`sub-network is disclosed by Stubbs’s second GGSN 56. Id. at 59. These
`identifications are sufficient in light of Stubbs’s specific teaching that GGSN
`56 is part of another PLMN, such that one of skill in the art would
`reasonably have understood that the full sub-network structure shown for
`GGSN 44 is reproduced for GGSN 56. Ex. 1006, 28:13–19.
`Petitioner’s argument is also sufficient that “a radio sub-network
`controller [is] associated with each of said first and second radio sub-
`networks and a plurality of subscriber radios in communication with said
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`radio sub-network controller.” Pet. 64. For this limitation, Petitioner
`identifies the BSC as performing the functions of the radio sub-network
`controller because it is responsible for encapsulating data prior to
`transmission outside a radio sub-network. Id. (citing Ex. 2006, 15:15–19).
`With respect to the requirement that each radio sub-network controller
`be configured to resolve conflicts, Petitioner relies on the combination of
`Stubbs and Kent, pointing to similarities in their disclosures, particularly
`between a mobile switching center (“MSC”) described in Stubbs and a
`multi-site switch described in Kent. Id. at 64–65. Stubbs’s MSC is
`described as provided with a link by the BSCs and as “provid[ing]
`conventional circuit switching with a public services telephone network
`(PSTN), and a Metro Packet Switch (MPS) which provides switching for the
`dispatch services.” Ex. 1006, 3:11–15. Petitioner reasons that one of
`ordinary skill in the art would accordingly apply Kent’s distributed
`arbitration as effected with its multi-site switch to the teachings of Stubbs.
`Pet. 64–67.
`With respect to the “group controller,” Petitioner identifies multiple
`components, including management terminal 54, PUD 52, and packet
`handler 48. Id. at 60 (“Stubbs discloses a management terminal 54 acting as
`a group controller”; “Stubbs also discloses a management terminal 54 and
`PUD 52. . . . Together, these elements define a group controller”), 61
`(“Packet handler 48 can also be a part of the group controller”), 62 (version
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`of Stubbs Fig. 3 with highlighting by Petitioner). In doing so, Petitioner
`identifies the following explicit disclosure in Stubbs:
`In the above description, virtual connections between mobile
`stations operating in the same PLMN are controlled by the packet
`handler. As illustrated in Figure 3, a GGSN 56 of another PLMN
`is also accessible, via the packet data network 46 from the packet
`handler. Therefore, the packet handler may also be used to set
`up virtual connections between mobile stations operating within
`the PLMN illustrated, and mobile stations operating in other
`PLMNs which include a GPRS infrastructure. In addition, the
`packet handler 48 is also able to control virtual connections
`between a mobile station operating the PLMN illustrated and
`fixed terminals, such as the fixed terminal 58 illustrated in Figure
`3, connected to the packet data network 46.
`
`Ex. 1006, 28:13–22 (emphasis added); Pet. 60. In addition, Petitioner
`identifies IP network 46 shown in Figure 3 above, which is coupled to
`management terminal 54 via intermediate elements, as corresponding to the
`recited “packet switched data communication network.” Id. at 63.
`Patent Owner disputes a number of aspects of how Petitioner draws
`these correspondences between the claim and the combination of Stubbs and
`Kent. We address these arguments below.
`
`
`ii. Conflict Resolution
`Patent Owner contends that “Petitioner has failed to show that
`Stub[b]s, alone or in combination with Kent, teaches or suggests the claimed
`radio sub-network controllers that claim 1 requires be configured ‘to resolve
`conflicts between substantially concurrent requests from said plurality of
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`subscriber radios in communication with said radio sub-network
`controller to be origination points for a point-to-multipoint monolog.’” PO
`Resp. 14 (quoting Ex. 1001, 11:43–48). Patent Owner’s Sur-Reply
`summarizes its argument as follows: “Stubbs in combination with Kent fails
`to disclose this element because integrating the conflict resolution scheme of
`Kent into Stubbs would resolve conflicts for a network as a whole rather
`than within each of the radio sub-networks.” Sur-Reply 3–4. But this does
`not address Petitioner’s more limited argument, which is that “the
`combination of Stubbs/Kent teaches conflict resolution in each ‘radio sub-
`network’ by associated ‘radio sub-network controllers.’” Reply 6. Indeed,
`we agree with Petitioner that Patent Owner “largely focuses on rebutting
`arguments not included in the asserted combination.” Id. at 7.
`Central to Patent Owner’s argument is its characterization that a
`“hierarchical scheme [is] disclosed and claimed by the ’111 patent.” PO
`Resp. 19 (citation omitted). In addressing independent claim 1, Patent
`Owner motivates this characterization by focusing on the claim’s
`requirement that “‘each of said radio sub-network controllers is configured
`to resolve conflicts between substantially concurrent requests from said
`plurality of subscriber radios in communication with said radio sub-
`network controller,’ and further that each radio sub-network controller must
`‘provide subscriber traffic distribution to said plurality of subscriber radios
`in communication with said radio sub-network controller.’” Id. (quoting
`Ex. 1001, 11:44–51) (emphases by Patent Owner)). According to Patent
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`Owner, Figure 1 of the ’111 patent illustrates a “hierarchical arbitration
`topology” in which “radio sub-network controller 30 . . . must resolve
`conflicts and provide subscriber traffic distribution to the subscriber radios
`34 and 35 within its radio sub-network.” Id. at 18–19; see id. at 40. “The
`radio sub-network controller does not resolve conflicts between devices in
`other sub-networks.” Id. But such a negative limitation, i.e. precluding the
`resolution of conflicts in other sub-networks with the same scheme, is not
`recited in the claim, and Patent Owner’s argument improperly seeks to
`narrow the claim by importing such a limitation from an embodiment
`disclosed in the specification. See In re Am. Acad. of Sci. Tech. Ctr., 367
`F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading
`limitations into a claim from the preferred embodiment described in the
`specification, even if it is the only embodiment described, absent clear
`disclaimer in the specification.”).
`In assessing the propriety of importing a requirement of a
`“hierarchical arbitration topology” under the specific factual circumstances
`at issue here, the testimony of the respective experts is instructive. Although
`Patent Owner’s expert, Dr. Almeroth, provides direct testimony that
`supports Patent Owner’s position that the claim requires “hierarchical
`conflict resolution” that involves “the simultaneous use of both a group
`controller and a radio sub-network controller to implement call management
`and conflict resolution,” Ex. 2003 ¶ 118, Petitioner’s expert, Mr. Davies,
`expressly disagrees. See Ex. 2003 ¶¶ 59, 77, 118; Ex. 1018 ¶ 10. As Mr.
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`Davies observes, “[t]he term ‘hierarchical arbitration topology’ appears
`nowhere in the ‘111 patent specification or claims,” and Mr. Davies also
`states that the “group controller” recited in claim 1 “is not required to
`perform arbitration or resolve conflicts.” Ex. 1018 ¶ 10. This leads Mr.
`Davies to conclude that a person of ordinary skill in the art “would not read
`the ‘111 patent to require the ‘hierarchical arbitration topology’ as described
`by Patent Owner and Dr. Almeroth.” Id. Thus, in considering the teachings
`of Kent, Mr. Davies opines that “whether Kent teaches a ‘hierarchical
`arbitration topology’ is irrelevant because the claims of the ‘111 patent do
`not require it, and the ‘111 patent neither uses that phrase nor explains its
`meaning.” Id. ¶ 11.
`Petitioner explored the bases for Dr. Almeroth’s contrary opinion on
`cross-examination. Acknowledging that the phrase “hierarchical arbitration
`topology” does not appear in the ’111 patent, Dr. Almeroth explained that he
`was “using it as a general characterization of what the invention is.” Ex.
`1017, 19:6–13, 142:8–13. In addition, Dr. Almeroth appeared to agree that
`the phrase does not require two levels of conflict resolution, but instead
`“requires two levels of where you are doing conflict resolution and
`management.” Id. at 138:8–15 (“I don’t know that there needs to be a
`separate level of conflict resolution distinct from the first level as opposed to
`managing the communication and facilitating that communication at the
`group controller level.”). More specifically, Dr. Almeroth conceded that the
`claim does not require the recited “group controller” to resolve conflicts. Id.
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`at 136:6–11 (“I don’t think that that is a specific requirement of the group
`controller. It’s something that could be within scope of managing that
`session, though.”).
`Weighing the testimony of the two experts, we find that Mr. Davies
`articulates the more compelling position, particularly in light of claim
`language that does not expressly require multiple levels of arbitration. It is
`thus irrelevant, as Mr. Davies suggests, that “Kent does not disclose or
`contemplate systems where individual sites or portions of the network
`operate on a different scheme.” See PO Resp. 21. Rather, we determine that
`Petitioner makes a sufficient showing with respect to the conflict-resolution
`element of claim 1 in its articulation of the combination of Stubbs and Kent.
`That is, Petitioner provides sufficient evidence that one of skill in the art
`would apply Kent’s distributed arbitration as effected with its multi-site
`switch to the teachings of Stubbs. As Petitioner asserts, a person of ordinary
`skill in the art “would appreciate that the combination of Stubbs and Kent
`results in the required conflict resolution in each radio sub-network.” Reply
`7 (citing Ex. 1002 ¶ 163; Ex. 1018 ¶ 12). In addition, as Petitioner asserts,
`“the combination of Stubbs and Kent, informed by the similarities between
`Kent’s Multi-Site Switch and Stubbs’ MSC linked to the BSC, teaches
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`‘radio sub-network controllers’ configured to resolve conflicts.” Id. (citing
`Ex. 1002 ¶¶ 157–163; Ex. 1018 ¶¶ 12–13).1
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`iii. Packet Switched Data Communication Network
`Patent Owner contends that Petitioner’s combination of Stubbs and
`Kent does not meet claim 1’s requirement that the group radio
`communication system comprise “a packet switched data communication
`network coupled between said first radio sub-network and said group
`controller and between said second radio sub-network and said group
`controller.” PO Resp. 33–35. Patent Owner appears to argue that Stubbs
`fails to disclose the reciting “coupl[ing]” between the radio sub-networks
`and the group controller because “the GPRS data network in Stubbs is a
`packet-switched data network.” Id. at 34. In doing so, Patent Owner
`
`
`1 Based on a statement made by Mr. Davies during his deposition, Patent
`Owner argues that Petitioner relies on a “new inherency argument—which
`should be understood as a clear admission that Stubbs does not disclose the
`functionality required by the claims.” PO Resp. 15. During cross-
`examination, referring to the BSC of Stubbs, Mr. Davies testified that
`conflict resolution is “inherent in what a BSC does.” Ex. 2004, 98:10–99:3.
`It is not apparent that Mr. Davies intended to use the word “inherent” in its
`legal sense, and Petitioner’s argument “does not rely solely on Stubbs’
`BSC—even inherently—to teach the conflict resolution.” Reply 8. Rather,
`as discussed above, Petitioner relies on the combination of Stubbs and Kent
`to reach the conflict resolution recited in the claim. Petitioner confirmed this
`un