UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE...

Case IPR2014-00454 U.S. Patent No. 5,563,883

1

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________

CISCO SYSTEMS, INC.

Petitioner

v.

C-CATION TECHNOLOGIES, LLC Patent Owner

____________________

CASE IPR2014-00454 Patent 5,563,883

____________________

PATENT OWNER C-CATION TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107


i

Table of Contents

I. INTRODUCTION .................................................................................................... 1

II. STANDARD FOR GRANTING INTER PARTES REVIEW .................................. 4

III. OVERVIEW OF U.S. PATENT NO. 5,563,883 ..................................................... 6

IV. CLAIM CONSTRUCTION ..................................................................................... 9

V. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW ANY CLAIM OF THE ’883 PATENT IS UNPATENTABLE ...................................................... 9

A. CLAIM 1 ............................................................................................................. 11

1. The MPT Specifications Fail to Disclose the Subject Matter of Claim 1 ....... 11

a. The MPT Specifications and the Petition’s related assertions ...................... 13

b. Mischaracterizations of the MPT Specifications in the Petition ................... 14

c. The MPT Specifications do not disclose the “monitoring” recited by claim 1(b) ................................................................................................................ 17

d. The MPT Specifications do not disclose the “determining” recited by claim 1(c) ................................................................................................................. 22

e. The MPT Specifications do not disclose the “determining” recited by claim 1(d) ................................................................................................................ 23

f. The MPT Specifications do not disclose the “reassigning” recited by claim 1(e) ................................................................................................................. 26

2. Cioffi Fails to Disclose The Subject Matter of Claim 1 .................................. 29

a. Cioffi and the Petition’s related assertions ................................................... 30

b. Cioffi does not disclose “establishing communications” via “signalling data channels” as recited by claim 1(a) ................................................................ 32

c. Cioffi does not disclose “determining” as recited by claim 1(c) .................. 34

3. Claim 1 Is Not Obvious In View of the Combination of the MPT Specifications and Cioffi .................................................................................. 35

B. CLAIMS 2-5 ....................................................................................................... 38

C. CLAIM 14 ........................................................................................................... 38

1. Cioffi Fails to Disclose the Subject Matter of Claim 14 .................................. 38


ii

a. The structure of Cioffi ................................................................................... 38

b. Cioffi fails to disclose a “system controlling means” as recited by claim 14(a) ............................................................................................................... 39

c. Cioffi fails to disclose a “switching means” as recited by claim 14(g) ........ 40

d. Cioffi fails to disclose a “forward communication controlling means” as recited by claim 14(h) ................................................................................... 44

2. Thompson Fails to Disclose the Subject Matter of Claim 14 .......................... 46

a. The structure of Thompson ........................................................................... 46

b. Thompson fails to disclose a “transmitting means” as recited by claim 14(b) 48

c. Thompson fails to disclose a “receiving means” as recited by claim 14(c) . 50

d. Thompson fails to disclose a “switching means” as recited by claim 14(g). 52

e. Thompson fails to disclose a “forward communication controlling means” as recited by claim 14(h) ................................................................................... 53

3. Claim 14 Is Not Obvious In View of the Combination of Cioffi and Thompson 55

D. CLAIMS 15-18 ................................................................................................... 57

VI. PETITION IS BARRED UNDER 35 U.S.C. § 315 (b) ........................................ 57

VII. CONCLUSION ..................................................................................................... 60


iii

Table of Authorities

Cases

ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 694 F.3d 1312 (Fed. Cir. 2012) ........................................................................ passim

Apple, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00080, Paper 8 (PTAB April 25, 2014) ..................................................... 11

Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 31 (PTAB. Jan. 22, 2014) .................................................... 60

August Technology Corp. v. Camtek Ltd., 655 F.3d 1278 (Fed. Cir. 2011) ................................................................................... 4

Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00016, Paper 32 (Feb. 25, 2014) ................................................................ 10

Bomtech Electronics, Co. Ltd. v. Medium-Tech Medizingeräte Gmbh, IPR2014-00137 Paper 8 (PTAB April 22, 2014) ...................................................... 11

Facebook, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00093, Paper 12 (PTAB April 28, 2014) ................................................... 11

K/S HIMPP v. Hear-Wear Techs., LLC, 2013-1549 (Fed. Cir. May 27, 2014) ............................................................ 3, 35, 56

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) .................................................................................................... 5

Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452 (Fed. Cir. 1984) ........................................................................... 14, 50

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ................................................................................. 15

PCT Int’l, Inc. v. Amphenol Corp., IPR2013-00229, Paper 17 (Dec. 24, 2013) ............................................................... 10

Printing Indus. of Am. v. CTP Innovations, LLC, IPR2013-00489, Paper 15 (PTAB Dec. 30, 2013) .............................................. 15, 50

Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997) ............................................................... 2, 34, 36, 38


iv

SAS Inst., Inc. v. Complementsoft,LLC, IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... passim

Spears v. Holland, Interf. No. 104,681, Paper 30 (BPAI Mar. 13, 2002) .................................................. 5

Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 21 (PTAB May 2, 2013) ................................................ 15, 50

Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Fed. Cir. 2010) ........................................................................... 14, 50

Vizio, Inc. v. International Trade Com'n, 605 F.3d 1330 (Fed. Cir. 2010) ................................................................................... 4

Wowza Media Sys., LLC v. Adobe Sys. Inc., IPR2013-000054, Paper No. 16 (PTAB Jul. 13, 2013) ......................... 2, 34, 36, 38

Statutes

35 U.S.C. § 314 ...................................................................................................... 2, 4, 5

35 U.S.C. § 315 ....................................................................................................... 57, 59

35 U.S.C. § 316 ............................................................................................................... 4

Other Authorities

77 Fed. Reg. 157. ................................................................................................... passim

Standing Order ¶ 121.5.2 (BPAI Mar. 8, 2011) ............................................................. 5

Regulations

37 C.F.R. § 42.100 ....................................................................................... 2, 33, 36, 38

37 C.F.R. § 42.104 ................................................................................................ passim

37 C.F.R. § 42.108 ...................................................................................................... 4, 5

37 C.F.R. § 42.65 .................................................................................................. passim

37 C.F.R. §§ 42.6 .......................................................................................................... 10


v

Exhibit List

Exhibit # Exhibit Description

C-Cation Tech 2001 Litwin and Pugel, “The principles of OFDM,” www.rfdesign.com, January 2001, pp. 30-48 (available as of June 4, 2014 at rfdesign.com/images/archive/0101Puegel30.pdf)

C-Cation Tech 2002 Cisco Systems, Inc. Form 10-Q Quarterly Report

C-Cation Tech 2003 Terms of Sale and Software Agreement (publicly available as of June 4, 2014 at www.cisco.com/web/about/doing_business/legal/docs/tc-us.pdf)


1

I. INTRODUCTION

Patent Owner C-Cation Technologies, LLC submits the following

preliminary response to the Petition filed by Cisco Systems, Inc. (“Petitioner”)

as Paper No. 7 in this proceeding, requesting inter partes review of claims 1-20

of U.S. Patent No. 5,563,883 (“Petition”).1 This response is timely pursuant to

the Board’s Notice in Paper No. 4.

Patent Owner respectfully requests that the Board decline to institute inter

partes review because Petitioner has not satisfied 37 C.F.R. § 42.104 insofar as

the Petition does not adequately support its allegations that any of claims 1-20

are unpatentable under either 35 U.S.C. § 102 or §103. Specifically, the

Petition provides almost no explanation or discussion of how the claims read on

the prior art. Instead, the Petition relies extensively on the conclusory

declaration of Dr. Roy (Petitioner’s Ex. 1001) which provides little, if any,

factual basis for his opinions.2 As such, it is entitled to little or no weight. See

1 The initial petition filed by Petitioner in this proceeding as Paper No. 1 was

deemed defective by the Board. Petitioner was required to file a corrected petition,

and did so as Paper No. 7.

2 Though it is improper for a petition to incorporate by reference arguments

contained solely in an expert declaration (see infra V), Patent Owner provides this


2

37 C.F.R. § 42.65(a); 37 C.F.R. § 42.100(a); 77 Fed. Reg. at 48,763;

ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 694 F.3d 1312, 1327 (Fed.

Cir. 2012); Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.

Cir. 1997); SAS Inst., Inc. v. Complementsoft,LLC, IPR2013-00581, Paper 17 at

3-4 (PTAB Feb. 25, 2014); Wowza Media Sys., LLC v. Adobe Sys. Inc.,

IPR2013-000054, Paper No. 16 at 4 (PTAB Jul. 13, 2013).

Due to these deficiencies, the Petition does not present “a reasonable

likelihood that the petitioner would prevail with respect to at least 1 of the

claims challenged in the petition.” 35 U.S.C. § 314(a).

The Petition’s shortfalls are particularly apparent with respect to claims

1-5 and 14-18 as it fails to articulate any plausible explanation as to how these

claims are unpatentable over the prior art. For example, none of the prior art

cited by Petitioner discloses the use of a central controller to dynamically

allocate signalling data channels to meet the requirements of varying traffic

demand and growth by assigning and reassigning remote terminals to signalling

data channels, as recited in claim 1, or the “means for selecting a forward

signalling data channel,” as recited in claim 14.

response to both the Petition and any corresponding portion of the Roy Declaration

cited in the Petition.


3

Moreover, while the Petition asserts 16 grounds under which one or more

claims are allegedly rendered obvious (Grounds 5-20), it provides, at best,

conclusory assertions with respect to how the prior art references might be

combined that are insufficient to support a claim of obviousness. See K/S

HIMPP v. Hear-Wear Techs., LLC, 2013-1549, slip op. at 6-7 (Fed. Cir. May

27, 2014); ActiveVideo Networks, 694 F.3d at 1328 (dismissing expert

testimony that “failed to explain how specific references could be combined,

which combination(s) of elements in specific references would yield a

predictable result, or how any specific combination would operate or read on the

asserted claims” and further dismissing expert testimony that generically recites

a desire for more efficient and cheaper systems that had more features for

customers); SAS Inst., IPR2013-00581, Paper 17 at 3-4 (observing that the

PTAB “is not required to take every statement by a petitioner’s expert as

established fact” and “is required to assess the persuasiveness of the testimony

in light of other factual evidence in the record, e.g., the explicit wording of the

prior art and the scope of the claimed invention”; and finding the petitioner’s

expert testimony unpersuasive).

Further, the Petition fails to construe several claim terms as is required by

37 C.F.R. § 42.104(b)(3); for example, it provides no proposed functions for the

means-plus-function limitations in claim 14 (see Petition at 13-14), and no


4

proposed constructions at all for several means-plus-function limitations recited

in claims 15-18.

Thus, even if the Board determines that the Petition shows that there is a

reasonable likelihood that the petitioner will prevail for at least one claim, the

Board should decline to institute review of claims 1-5 and 14-18.

II. STANDARD FOR GRANTING INTER PARTES REVIEW

A petition for inter partes review may be granted when “the information

presented in the petition . . . shows that there is a reasonable likelihood that the

petitioner would prevail with respect to at least 1 of the claims challenged in the

petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). A petitioner bears

the burden of showing that this statutory threshold has been met. See Office Patent

Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) (hereinafter

“Practice Guide”) (“The Board . . . may institute a trial where the petitioner

establishes that the standards for instituting the requested trial are met . . . .”). A

petitioner also bears the burden of proving unpatentability by a preponderance of

the evidence. 35 U.S.C. § 316(e).

A party challenging a claim as obvious must show where each claimed

limitation is taught in the prior art. See, e.g., Vizio, Inc. v. International Trade

Com'n, 605 F.3d 1330, 1343 (Fed. Cir. 2010); August Technology Corp. v. Camtek

Ltd., 655 F.3d 1278, 1287 (Fed. Cir. 2011); see also 42 C.F.R. § 42.104(b)(4). If a


5

petition asserts that a combination of prior art renders a claim unpatentable, it must

“set forth sufficient articulated reasoning with rational underpinning to support its

proposed obviousness ground.” SAS Inst., IPR2013-00581, Paper 15 at 12 (citing

KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord ActiveVideo

Networks, 694 F.3d at 1328.

In determining whether to institute an inter partes review, the Board may

“deny some or all grounds for unpatentability for some or all of the challenged

claims.” 37 C.F.R. § 42.108(b); see also 35.U.S.C. § 314(a).

Petitioner either glosses over entire claim elements or fails to address

limitations completely. By doing so, Petitioner puts the onus on the Board to fill in

the blanks. However, it is not the job of the Board to correct these inadequacies.

See, e.g., Standing Order ¶ 121.5.2 (BPAI Mar. 8, 2011) (stating that “[t]he Board

will not take on the role of advocate for a party, trying to make out a case the party

has not adequately stated”); see also Spears v. Holland, Interf. No. 104,681, Paper

30, p. 15 (BPAI Mar. 13, 2002) (“It is not the role of this board to help party Spears

articulate a difference between [claims]. That is the role of Spears’ counsel as an

advocate, not the role of the board as an unbiased and impartial decision maker.

Taking sides to aid one party to the detriment of the other is not what we do.”).

Accordingly, the duty to provide sufficient grounds for the institution of a review


6

proceeding falls squarely on Petitioner, and Petitioner has failed to perform its

duty.

III. OVERVIEW OF U.S. PATENT NO. 5,563,883

U.S. Patent No. 5,563,883 (Petitioner’s Ex. 1002, hereinafter “the ’883

patent”) issued on October 8, 1996 from an application filed on July 18, 1994. It

includes 20 claims, of which claims 1, 6, 14, and 19 are independent. The ’883

patent describes and claims a novel way to effectively provide and manage

communications between remote devices and a central controller over a shared,

i.e., multiple access, communications medium.

The ’883 patent recognized that previous multiple access two-way

communication schemes were susceptible to degraded quality and responsiveness

on non-dedicated communication channels, such as signalling data channels, that

are shared by multiple remote terminals. See generally, ’883 patent, col. 1:15-56,

7:46-49.

From a user’s perspective, a shared communication channel with poor

quality results in delayed communications (e.g., long download times over a

shared network), lack of responsiveness, or dropped communications altogether.

Such undesirable results typically occur when the capacity of a channel is

approached or exceeded, or when a remote terminal sends a request to the central

controller that is lost or delayed. In discussing the then-existing systems, the


7

’883 patent notes that none had a central controller that reassigned individual

remote terminals from a signalling data channel on which a remote terminal was

experiencing a degradation in quality to a different and more suitable channel.

Id. at col. 1:60- 2:8.

To solve these problems, the ’883 patent presents an efficient, flexible and

extensible method wherein a central controller allocates signalling data channels

to meet the requirements of varying traffic demand, channel quality, and growth.

Id. at cols. 2:4-7, 2:38-52 (“This dynamic signalling channel allocation and

terminal assignment method also aids in redundancy for anomalies such as

interference or component failure.”). Id. at col. 4:1-11; claim 1.

The central controller of the ’883 patent monitors the channels in use for

parameters that affect the suitability of those channels. These factors include the

number of remote terminals on a channel, their traffic requirements, and available

bandwidth. Id. at col. 8:35-41.

The central controller dynamically allocates individual remote terminals

across the available signalling data channels at startup, during failure recovery or

as deemed necessary:

Prompted by the remote terminals at startup, or through the failure

recovery procedure, or deemed necessary by the central controller, the


8

channel allocation and terminal assignment process are initiated and

controlled by the central controller.

’883 patent, col. 3:36-50. As recited in claim 1, when the central controller finds

that a more suitable channel is available for one of the connected remote

terminals, the central controller can reassign that remote terminal to the more

suitable channel. Id. at cols. 7:32-38, 8:32-39, claim 1 steps (c), (d), and (e).

Thus, the ’883 patent discloses and claims a shared access communication

system that includes an intelligent controller that: (i) is centrally located, (ii)

assigns individual terminals to forward and reverse signalling data channels

common to a particular group of terminals; (iii) monitors the signalling data

channels for usability; and (iv) reassigns individual remote terminals to a more

suitable channel. By doing so, the system manages its remote terminals

efficiently. None of the prior art referred to in the ’883 patent, cited in its

prosecution history, or now cited in the Petition describes a system having these

capabilities.

The ʼ883 patent is also directed to system architectures that are suitable for

performing these functions. See, e.g., ’883 patent, Figs. 1, 16, claims 14-18. For

example, claim 14 provides a system for dynamic, micro-processor based

management of connections between modulating means and transmitting means

to provide forward signalling data channels to a plurality of remote terminals.


9

The central controller of claim 14 implements a frequency division multiple

access (“FDMA”) communications scheme in which each transmitter includes an

oscillator for tuning to a particular channel. See, e.g., ’883 patent, col. 12:47-52.

A benefit of the controller design described in claim 14 is that the modulating

means are a shared resource having modulated forward signalling data output that

is directed to particular transmitters as needed. Id. at col. 12:4-12.

IV. CLAIM CONSTRUCTION

The discussion throughout this response with respect to all claim elements is

based on the constructions proposed in the Petition. In utilizing these proposals,

the Patent Owner does not necessarily agree that such constructions are proper or

should be adopted, and reserves the right to present alternate constructions at the

appropriate time in this and/or other proceedings.

V. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW ANY CLAIM OF THE ’883 PATENT IS UNPATENTABLE

As discussed above, a petitioner is required to identify how the challenged

claims, as construed, are rendered unpatentable by the prior art. The Petition fails

to do this for any of the challenged claims.

As an initial matter, the Petition’s extensive reliance on the declaration of

Dr. Roy is improper and should not be considered. The Board has consistently

determined that declarations are not to be used as a tool for circumventing page

limits as here. While a petition for inter partes review is limited to 60 pages, the


10

Petition includes a 269-page declaration from Dr. Roy as an exhibit (Ex. 1001), and

has referred to the same in the claim charts included in the Petition. See, e.g.,

Petition at 21-24. This is precisely the tactic that has been determined to be

improper. 37 C.F.R. §§ 42.6(a)(3) and 42.24(a)(i); Blackberry Corp. v.

Mobilemedia Ideas LLC, IPR2013-00016, Paper 32 at 21 (Feb. 25, 2014) (rejecting

attempt to incorporate expert testimony as incorporation of arguments from one

document into another is prohibited by 37 C.F.R. § 42.6(a)(3) . . . [and] also

violates the page limit set forth in 37 C.F.R. § 42.24(a)(1)(v).”); PCT Int’l, Inc. v.

Amphenol Corp., IPR2013-00229, Paper 17 at 2 (Dec. 24, 2013).

Even if the declaration of Dr. Roy is considered, the Petition includes sparse

and in many cases no explanation as to the factual basis for why claims 1-20 are

unpatentable. For example, with respect to the grounds of obviousness presented

in the Petition with respect to claim 1 (Grounds 5, 6, and 9), neither the Petition nor

the Roy Declaration provide:

• any explanation as to which claim elements would have been obvious;

• any specific allegations as to which portions of the prior art

references could be combined; or

• any factual basis for combining them.

See Petition at 17-24 (citing Roy Dec. ¶¶ 67, 271-273). The Petition is similarly

lacking as to the grounds of obviousness presented with respect to claim 14


11

(Grounds 6, 7, and 20). See Petition at 47-54 (citing Roy Dec. ¶¶ 199, 203, 412-

413). As such, the Petition cannot meet the burden of showing that there is a

reasonable likelihood that Petitioner will prevail as to any claim of the ’883 patent.

Bomtech Electronics, Co. Ltd. v. Medium-Tech Medizingeräte Gmbh, IPR2014-

00137 Paper 8 at 10-13, 17 (PTAB April 22, 2014); Facebook, Inc. v. Evolutionary

Intelligence, LLC, IPR2014-00093, Paper 12 at 14-15, 18-19 (PTAB April 28,

2014); Apple, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00080, Paper 8 at

25-26, 28-29 (PTAB April 25, 2014). The Petition should be denied for at least

this reason.

In addition, as explained in further detail below, even if the Petition is

accepted, the Board should decline to institute review for claims 1-5 and 14-18 for

the independent reason that the prior art presented in the Petition clearly does not

disclose several key elements of independent claims 1 and 14, nor are those claims

rendered obvious by the cited prior art.

A. CLAIM 1

1. The MPT Specifications Fail to Disclose the Subject Matter of Claim 1

Grounds 1 and 5 of the Petition assert that claim 1 is anticipated or rendered

obvious, respectively, by the pair of references “MPT 1327 – A Signalling

Standard for Trunked Private Land Mobile Radio Systems,” (Petitioner’s Ex. 1005,

hereinafter “MPT 1327”) and “MPT 1343 – Performance Specification,”


12

(Petitioner’s Ex. 1006, hereinafter “MPT 1343”) when taken together (collectively,

the “MPT Specifications”).3 As described in detail below, the Petition fails to

establish a reasonable likelihood that claim 1 of the ’883 patent is unpatentable in

view of the MPT Specifications because the Petition’s assertions are based on a

combination of unrelated steps and features found throughout various parts of these

references. In an effort to make it appear that the MPT Specifications disclose

claim 1, the Petition uses the MPT Specifications like a catalog from which it picks

and chooses from among separate and distinct procedures in an effort to construct

the challenged claims. But this is improper and does not mask the fundamental

differences between the MPT Specifications and the method recited in claim 1 of

the ’883 patent.

With respect to Ground 5 (obviousness), the Petition provides no

particularized allegation that any specific element of claim 1 would have been

obvious in view of the MPT Specifications, let alone any factual basis for the same.

In any case, neither Ground 1 nor Ground 5 should be instituted with respect to

claim 1 because the MPT Specifications fail to disclose several elements recited in

claim 1, and the missing elements would not have been obvious in view of them.

3 While the Petition treats them as one combined document, MPT 1327 and

MPT 1343 are separate specifications spanning over 500 pages between them.


13

a. The MPT Specifications and the Petition’s related assertions

The MPT Specifications relate to a standard developed by the British

Ministry of Post and Telecommunications for communications between a “trunking

system controller” (TSC) and users’ radio units. MPT 1327 § 1.

In accordance with the MPT Specifications, when switched on, a mobile

radio unit must establish communications with the TSC over designated control

channels (e.g., MPT 1327 §§ 6.2.1.1; 6.2.1.2; see also § 2 at page 2-1 (providing

definition of “control channel”)). When a user wants to initiate a speech or data

call, the mobile directs the TSC to transfer the call participants to a “traffic

channel” for the duration of the call. See MPT 1327 §§ 1.2.3, 1.3.5.1, 1.3.5.2,

9.1.1.12. Thus, unlike the centrally controlled system of the ’883 patent, the MPT

Specifications envision a system where the mobile units request a channel change.

In addition to these basic operations, the 507-page MPT Specifications

describe numerous independent and complex functions, many of which take place

only in certain very specific circumstances. In asserting that claim 1 is

unpatentable in view of the MPT Specifications, the Petition relies on isolated steps

and parts from the following unrelated sections of the MPT Specifications:

• Control channel acquisition (see, e.g., MPT 1327 § 6.2.1.1);

• Management of data calls using data channels (see, e.g., MPT 1327 §§

5.7.3, 17.0.1(q));


14

• Converting control channels into traffic channels (see, e.g., MPT 1327 §

1.2.2; MPT 1327 § 6.1.1; MPT 1343 § 3.1);

• Frame length adaptation (see, e.g., MPT 1327 § 1.3.3.2);

• Traffic channel discipline (see, e.g., MPT 1327 §6.1.2.1); and

• System robustness (see, e.g., MPT 1327 § 1.2.2).

See Petition at 18-19, 21-24. Each of these self-contained functions includes its

own procedural steps, and the Petition provides no justification for cherry picking

and combining these steps.

b. Mischaracterizations of the MPT Specifications in the Petition

It is black letter law a reference disclosing each element of a claim is not

anticipatory unless the way in which the elements are arranged or combined in the

claim is also disclosed. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d

1325, 1331-33 (Fed. Cir. 2010) (it is legal error to instruct a jury that a reference is

anticipatory when it merely informs “those skilled in the art that all of the claimed

elements could have been arranged as in the claimed invention”) (emphasis in

original). “The requirement that the prior art elements themselves be ‘arranged as

in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate

parts, in disregard of the part-to-part relationships set forth in the claims and that

give the claims their meaning.’” Id. (quoting Lindemann Maschinenfabrik GMBH

v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). “[U]nless a


15

reference discloses within the four corners of the document not only all of the

limitations claimed but also all of the limitations arranged or combined in the same

way as recited in the claim, it cannot be said to prove prior invention of the thing

claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Id. (citing Net

MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis in

original)). See also Printing Indus. of Am. v. CTP Innovations, LLC, IPR2013-

00489, Paper 15 at 13-15 (PTAB Dec. 30, 2013) (finding that twenty-four cherry-

picked pages spanning six chapters of a prior art reference were not reasonably

likely to anticipate a challenged claim); Synopsys, Inc. v. Mentor Graphics Corp.,

IPR2012-00041, Paper 21 at 4-5 (PTAB May 2, 2013) (concluding that disclosure

of “independent clocking” was not arranged as in the challenged claim as required

to prove anticipation).

The Petition completely ignores this foundational requirement. By

combining unrelated functions and features, the Petition completely ignores the

claimed connections between those elements. Petitioner fails to acknowledge that

it is relying on disparate and unrelated parts of the MPT Specifications and

presents no argument or reasoning that such combinations of elements would have

been obvious to one of ordinary skill in the art.

By way of example, the Petition relies on discussions concerning different

types of communication channels in an attempt to show the existence of the


16

claimed initial predetermined signalling data channels. See Petition at 16-17.

Specifically, the Petition identifies “control channels” (MPT 1327 § 2 at 2-1), as

the “predetermined channels” recited in claim 1 over which communications are

established (see Petition at 18-19; Roy Decl. ¶ 54; MPT 1327 §§ 1.2.2, 1.3.1.), but

then goes on to rely on material associated only with other types of channels (e.g.,

“traffic” and “data traffic channels”) to fill in the shortcomings of the “control

channels.” See, e.g., Petition at 21; Roy Decl. ¶ 264 (citing MPT a327 § 6.1.2.1);

see also Roy Decl. ¶ 264 (citing same). Petitioner has not pointed to any feature

that relates to the assignment to, the monitoring of, and the reassignment away

from the “predetermined” signalling data channels recited in claim 1.

Dr. Roy and the Petition also attempt to blur the distinction between the

different types of channels discussed in the MPT Specifications by mistakenly

asserting that channels can simultaneously function as control channels and traffic

channels under a “non-dedicated” control channel strategy. See, e.g., Roy Decl. ¶

262; Petition at 21-23 (citing same). To the contrary, the MPT Specifications

specifically disclose that, under the “non-dedicated” scheme, radio units may be

“instructed to leave a control channel to enable that channel to be used as a traffic

channel (non-dedicated control channels).” MPT 1343 § 9.1. That is, according to

the MPT Specifications, a channel cannot act as both a control channel and a traffic

channel at the same time. MPT 1343 § 9.1; MPT 1343 § 3.1 (defining a “non-


17

dedicated” scheme as one in which a “*control channel* would normally be

allocated as a *traffic channel* when all other channels are in use for traffic and

the *control channel* facility restored when possible, e.g. by allocating the next

*traffic channel* to become free as a new *control channel*”); MPT 1327 § 6.1.1

(noting that control channel signalling will be interrupted when non-dedicated

control channels have been allocated as traffic channels).

c. The MPT Specifications do not disclose the “monitoring” recited by claim 1(b)

Step (b) of claim 1 requires “monitoring the status of a plurality of the

signalling data channels in use . . . for the usability of said signalling data

channels.” This step includes at least three separate requirements: (i) the

monitoring must be of signalling data channels; (ii) the signalling data channels

must be “in use”, and (iii) the monitoring must be for the “usability” of the

channels. As is made clear by claim 1, all this is done for the purpose of assigning

and reassigning remote terminals to signalling data channels. For example, the

information obtained by the “monitoring” recited in step (b) must be related to the

claimed determination of whether one of the remote terminals needs to be

reassigned (step (c)), the determination of whether a different and suitable

signalling data channel is available other than one of the pair of predetermined

channels (step (d)), and finally, the reassignment to the different channel (step (e)).


18

The monitoring of step (b) cannot be divorced from the performance of these other

claimed method steps, as the Petition seeks to do.

The Petition identifies several passages within the MPT Specifications as

purportedly disclosing these elements of step (b) of claim 1. Here again, the

Petition is a collection of unrelated quotes from distinct and discrete sections of the

MPT Specifications.

First, the Petition refers to MPT 1327 § 6.1.2.1, which states that the “TSC

shall monitor all traffic channels continuously while they are allocated for traffic.”

See Petition at 22; Roy Dec. ¶ 264. However, the very next uncited sentence places

this statement in its proper context: that this monitoring is performed in order to

reclaim unused traffic channels, not to reassign a remote terminal from an initial

predetermined channel based on monitored channel usability as claimed. MPT

1327 § 6.1.2.1 (“If there is any reason to doubt whether communication is still

taking place, the TSC may query whether an individual radio unit is on the traffic

channel . . . .”).

Moreover, even if such monitoring was for usability—it is not—claim 1 is

not directed to the monitoring of traffic channels. Rather, claim 1is directed to the

monitoring of a pair of predetermined signalling data channels” to determine


19

whether there needs to be a reassignment as set forth in step 1(c).4 To accomplish

this, at least one of the “pair of predetermined signalling data channels” must be

monitored in step (b).

But this can never be the case with respect to the “monitoring” described in

MPT 1327 § 6.1.2.1 because if the control channels correspond to the claimed

“predetermined signalling data channels” as Petitioner contends,5 the monitoring of

traffic channels described in MPT 1327 § 6.1.2.1 cannot be the monitoring claimed

in step 1(b).

Second, the Petition points to a portion of MPT 1327 § 6.1.1 that requires the

TSC to provide at least one control channel substantially continuously. See

Petition at 22; Roy Dec. ¶ 264. This is a non sequitur: this passage does not

describe any monitoring, let alone monitoring control channels “in use” for

4 Dr. Roy acknowledges that the monitoring claimed in step 1(b) serves as the

basis for determining whether one of the remote terminals needs to be reassigned

from its initial predetermined channel as recited in step 1(c) (See Roy Dec. ¶ 262).

5 As both the Petition and Dr. Roy acknowledge (see Petition at 17-18, 21;

Roy Dec. ¶¶ 54, 261, 264), the channels over which communications are

established in the MPT Specifications are the control channels and not the traffic

channels.


20

“usability,” as required by step (b). Rather, this description relates to the specific

instance where the system tries to allocate all channels as traffic channels (see, e.g.,

MPT 1327 § 6.1.1), rendering them all unsuitable as control channels.

In addition, the Petition does not identify, and the MPT Specifications do not

disclose, that any alleged monitoring associated with the substantially continuous

provision of a control channel is ever used in making a determination relating to

the reassignment of one of the remote terminals as required in step 1(c) (and 1(d)).

Consequently, any monitoring associated with the requirement in MPT 1327 §

6.1.1 to provide a control channel is not arranged as in claim 1 because it is simply

not done for the same purposes in claim 1.

Third, Dr. Roy points to additional passages that are even further removed

from claim 1: MPT 1327 §§ 1.3.3.1 to 1.3.3.2 and MPT 1327 § 1.2.2. See Roy

Decl. ¶ 264. While MPT 1327 §§ 1.3.3.1 to 1.3.3.2 refer to monitoring control

channel activity to prevent excessive clashing, i.e., colliding of transmissions from

different radio units, this monitoring does not result in the reassigning of a channel.

Instead, this clashing is addressed by varying the framelength of messages that


21

radio units transmit.6 It is wholly irrelevant to any channel reassignment to a more

suitable channel.

The remaining passage relied on by Petitioner, MPT 1327 § 1.2.2, states that

when “heavy interference is encountered, control can be changed to a different

channel.” This is very different from the claimed monitoring, as it relates to a

procedure by which one control channel is replaced with another; there is no

disclosure in the MPT Specifications of the reassignment of any radio unit by the

TSC. In fact, the same circumstance that has caused the control channel change—

“high interference”—would likely prevent receipt of any reassignment command

by a radio unit. The MPT Specifications address this issue by having the radio

units themselves execute control channel change by independently monitoring

control channels, leaving control channels on which excessive transmission errors

occur, and subsequently initiating channel hunting procedures to find a better

control channel offered by the TSC. See, e.g., MPT 1343 § 9.4.1. Accordingly,

6 The TSC transmits synchronization messages on control channels to invite

radio units to send random access request messages to the TSC. MPT 1327 §

1.3.3.1. The synchronization messages contain a parameter N, framelength, which

indicates the number of following timeslots that are available for access messages

to and from the radio units. Id.


22

any “monitoring” that is disclosed by MPT 1327 § 1.2.2 is fundamentally different

than the monitoring of claim 1, as it is not related to any subsequent reassignment.

d. The MPT Specifications do not disclose the “determining” recited by claim 1(c)

Step (c) of claim 1 requires “determining whether one of said plurality of

remote terminals needs to be reassigned to a different signalling data channel other

than said predetermined signalling data channel” (emphasis added).

The method steps of claim 1 as a whole also require that the claimed

“determining” must be related to, and not isolated from, the other method steps.

The Petition asserts that two separate and unrelated sentences in the MPT

Specifications disclose the limitations of step (c). First, the Petition points to MPT

1327 § 1.2.2 (see Petition at 22; Roy Dec. ¶¶ 60, 264), one of the same excerpts it

pointed to for step (b). As discussed above, MPT 1327 § 1.2.2 states that “[i]f

heavy interference is encountered, control can be changed to a different channel, ”

but this is fundamentally different from the claimed method for several reasons: (i)

it relates to the substitution of one control channel with another; (ii) the MPT

Specifications explain that the remote terminals themselves would initiate channel

hunting procedures themselves such that there is no reassignment, and (iii) the

encountered “heavy interference” would foreclose any reassignment command,

even if one were sent, from reaching the radio units. See supra V.A.1.c.


23

The other passage of the MPT Specifications that Petitioner asserts discloses

step 1(c), MPT 1327 § 17.0.1(q), provides that “[r]adio units may be transferred

individually or in groups from one data channel to another so that relief data

channels may be created and brought into use when a data traffic overload occurs

and can be taken out of use when the overload subsides” (emphasis added). Here

again, the Petition attempts to conflate two distinct features of the MPT

Specifications. As discussed above, step (c) requires the central controller to

determine if one of the remote terminals needs to be reassigned from one of its

initial predetermined channels. And while the Petition asserts that the control

channels of the MPT correspond to the claimed predetermined channels (see

Petition at 17-18, 21; Roy Dec. ¶¶ 54, 261, 264), MPT 1327 § 17.0.1(q) focuses on

different channels, the data channels, as corresponding to the channels from which

the transfer is made. As the data channels of the MPT Specifications can never be

the claimed “predetermined” channels, transfers from one data channel to another,

as described in MPT 1327 § 17.0.1(q), do not relate to step 1(c).

e. The MPT Specifications do not disclose the “determining” recited by claim 1(d)

Step (d) requires “determining whether a different and suitable signalling

data channel is available other than said predetermined channel.” It is clear from

the claim language that this step includes at least two separate requirements: (i) a

determination of whether a different and suitable channel is available, and (ii) that


24

such channel must be other than said predetermined signalling data channel.7 In

addition, as with the preceding method steps, the required determining must be as a

consequence of the “monitoring” of step (b), the “determining” of step (c), and

must result in the “reassigning” of step (e).

For step 1(d), the Petition yet again identifies unrelated sections from the

MPT Specifications. First, the Petition relies on the out of context use of one

sentence from MPT 1327 § 1.2.2 concerning interference-induced control channel

changes. See Petition at 23; Roy Dec. ¶ 264. As previously explained, the MPT

Specifications describe that radio units themselves will leave a control channel

when certain conditions occur (including degraded control channel performance),

and return to the control channel hunting procedures regardless of whether another

control channel is available. See supra V.A.1.c (citing MPT 1343 § 9.4.1). The

radio unit knows nothing more than it cannot communicate on the control channel

that it is tuned to. There is no disclosure relating to a determination of whether a

different and suitable channel is available as is recited in step (d). Indeed, the radio

7 The Petition acknowledges that “said predetermined signalling data channel”

means “one of the pair of predetermined signalling data channels.” Petition at 9-

10.


25

unit may tune to another channel that has an equal amount of interference as the

channel it was previously tuned to.

The Petition also points to two excerpts from MPT 1327 § 6.1.1. See

Petition at 23; Roy Dec. ¶ 264. The first excerpt states that “at least one control

channel” should be provided continuously “for as long as a suitable channel is

available,” while the second excerpt, cited only by Dr. Roy, deals with taking

control channels out of service. These excerpts both fail to disclose step 1(d), as

neither describes that any determination is made as to whether a potential different

control channel, other than the one already being used, is suitable. The first

excerpt is directed to the particular instance when the system is operating without

any control channels. See, e.g., MPT 1327 § 6.1.1 (“Interruptions in the control

channel signalling will occur when, for example . . . all channels are allocated for

traffic in a system with a non-dedicated control channel.”). At most, this vague

disclosure suggests that a number of control channels are tracked to ensure that at

least one is present, but nowhere does the MPT Specifications disclose that a

determination is ever made as to whether a different channel is suitable. With

respect to the second excerpt, taking a control channel out of service when

additional traffic channels are needed has nothing to do with the method of claim 1,

as it does not depend on monitoring control channels for usability, making the

claimed determinations, or reassigning radio units as a result.


26

Moreover, the Petition’s reliance on MPT 1327 § 6.1.1 is another instance of

an improper attempt to cobble together unconnected steps and features while

ignoring that the MPT Specifications do not disclose the features of claim 1 as they

are arranged in the claim. There is no allegation in the Petition that any

determination related to step (d) is related to a determination of “whether one of

said plurality of remote terminals needs to be reassigned” as recited in step (c)—

neither the Petition nor Dr. Roy allege that MPT 1327 § 6.1.1, or any other portion

of the MPT Specifications related thereto, discloses step (c) of claim 1.

f. The MPT Specifications do not disclose the “reassigning” recited by claim 1(e)

Step 1(e) requires “reassigning by said central controller said remote

terminal to a different and suitable signalling data channel . . . .” By its express

language, this step is linked to the “determining” steps (c) and (d), and additionally

includes a requirement that the reassignment be directed by the central controller

because “said remote terminal” refers to the same remote terminal from step (c),

and “different and suitable signalling data channel” is the different and suitable

signalling data channel that was found to be available in step (d).

The Petition again relies on unrelated sections from the MPT Specifications

that fail to disclose the claim limitations of step 1(e), or, at best, describe a

“reassignment” that is unrelated to the method recited in claim 1.


27

The Petition first references the Go To Channel (“GTC”) command of MPT

1327 § 5.4 as disclosing step (e). Petition at 23. This command is used in response

to a request by a remote radio unit to move that unit to a traffic channel so it can

initiate or maintain a requested telephone call. See MPT 1327 § 5.4. This has

nothing to do with monitored usability conditions or a determination of whether a

radio unit should be reassigned to a more suitable channel, as required by steps (b)

and (c). These fundamental differences are further evident from the parameters for

the GTC command, which include calling and called party identifiers (see MPT

1327 § 5.4), and from MPT 1327 § 1.3.5.1, which discloses that a GTC command

is “addressed to the calling unit and called group; this message instructs the units to

switch to the traffic channel for their conversation.” See also MPT 1327 §§

1.3.5.2, 9.1.1.12 (“The TSC shall allocate traffic channels using the Go To Channel

message GTC (see 5.4).”). Indeed, the movement of units to traffic channels is

simply a response to a remotes unit’s request to be switched to a traffic channel for

a telephone call. Accordingly, regardless of whether the cited GTC command

discloses “reassignment,” it does not disclose reassignment in the context of claim

1.

The Petition also relies on the description of a Move to Control Channel

(“MOVE”) command (MPT 1327 § 5.5.4.4) as disclosing step 1(e). See Petition at

23. However, the MOVE command is not used to effectuate a determination that a


28

radio unit needs to be reassigned to a channel that was determined to be more

suitable as required by steps (c) and (d). In fact, the Petition does not even assert

that the MOVE command relates to step (c). See Petition at 22; Roy Dec. ¶ 264.

The MOVE command is used to empty a channel before it is taken out of service.

See MPT 1327 § 6.1.1 (“before a channel is taken out of control service, another

control channel shall be indicated if practicable (for example, by sending an

appropriate MOVE message).”). As discussed, this recommendation relates to the

conversion of a control channel into a traffic channel when a traffic channel is

requested to complete a call, and all traffic channels are in use. See, e.g., MPT

1343 § 3.1 at 3-5. This change is not based on a determination relating to the

monitored usability, as required by steps 1(b) and (c), and is not based on any

determination as to whether a channel different than the one currently being used is

suitable, as required by step (d).

Finally, the Petition relies on the previously discussed sentence from MPT

1327 § 1.2.2—“[i]f heavy interference is encountered, control can be changed to a

different channel”—as disclosing step 1(e). As previously explained (see supra

V.A.1.c), this vague disclosure of interference-induced control channel changes is

not performed as part of the claimed “determining” steps (c) and (d), and therefore

does not disclose the claimed “reassignment.” There is no disclosure, and

Petitioner points to none, that such an interference-induced control channel change


29

is implemented by a central controller that reassigns radio units to different

channels as required by step (e). Instead of the centrally controlled system of the

’883 patent, the radio units themselves initiate these channel changes—the

antithesis of central control. Indeed, it would not even be possible for the TSC to

do so in such situations because the current channel is known to have “heavy

interference.”

2. Cioffi Fails to Disclose The Subject Matter of Claim 1

Grounds 2 and 6 of Cisco’s Petition assert that claim 1 is anticipated or

rendered obvious, respectively, by U.S. Patent No. 5,625,651 to Cioffi (Petitioner’s

Ex. 1008, hereinafter “Cioffi”). As described herein, the Petition fails to establish

a reasonable likelihood that claim 1 of the ’883 patent is anticipated or rendered

obvious by Cioffi as several key elements of claim 1 are not disclosed or taught by

Cioffi. Similar to the tactic it took with the MPT Specifications, the Petition

attempts to disguise Cioffi’s deficiencies by conflating the two separate and very

different types of channels discussed in Cioffi. Specifically, the Petition combines

passages relating to Cioffi’s “dedicated overhead” channels with passages relating

to traffic “subchannels” without acknowledging it is doing so let alone providing

an explanation as to why combining them is appropriate.

In any case, the system and procedures disclosed by Cioffi are

fundamentally different from the method of claim 1. This is not surprising as


30

Cioffi is directed at solving a different problem than the ’883 patent. At a

fundamental level, Cioffi does not disclose or consider a central controller that can

reassign remote terminals to more suitable channels than the channels on which

communications were established. As such, Cioffi does not disclose the subject

matter of claim 1.

With respect to Ground 6 (obviousness), the Petition again provides nothing

more than conclusory statements that any missing element would have been

obvious in view of Cioffi. The Petition also fails to address whether it would have

been obvious to arrange unrelated procedures described in Cioffi as arranged in

claim 1. In short, the Petition provides no facts, explanations, or substantive

arguments to support Ground 6 with regard to claim 1. As such the Petition fails to

raise a reasonable likelihood that claim 1 is anticipated or made obvious by Cioffi.

a. Cioffi and the Petition’s related assertions

Cioffi relates to a system in which a central unit and a plurality of remote

units communicate using a frame based discrete multi-tone (DMT) transmission

scheme. Abstract. In particular, Cioffi describes a method for implementing a

DMT data transmission scheme using cable based networks in which many

subscribers are connected to the same coaxial cable. Cioffi, col. 1:53-2:21. The

system includes “dedicated overhead” channels over which remote terminals

establish communication with the central unit, and on which only information


31

related to the control of communications is sent (hereinafter, “control channels”).

The system also allows for the synchronization of transmissions from the remotes

so that those transmissions do not interfere with each other. Id. at col. 2:31-52.

Once communications are established and synchronized, data can be sent between

the central unit and the remote terminals on distinct DMT subchannels (hereinafter

“data subchannels”). According to Cioffi, data channels are designed, via a timing

scheme, such that transmissions do not interfere with each other, whereas

transmissions on the control channels can cause interference. Id. at col. 5:11-26.

In asserting that Cioffi discloses the elements of claim 1 of the ’883 patent,

the Petition improperly conflates the structure and function of Cioffi’s control

channels with that of the data channels. By doing so, the Petition erases the

claimed “predetermined signalling data channels.” For example, while the Petition

asserts that the control channels are the claimed “predetermined signalling data

channels” (see Petition at 20, Roy Dec. ¶ 268), it never applies the remaining claim

elements to a control channel. Instead, the “analysis” jumps to a discussion of the

data channels. This is improper as the data channels of Cioffi have nothing to do

with the “determining” step of 1(c), the “determining step of 1(d) and/or the

“reassigning” step of 1(e) as each of these steps implicates one of the

“predetermined” signalling data channels that Petitioner asserts corresponds to the

control channels.


32

b. Cioffi does not disclose “establishing communications” via “signalling data channels” as recited by claim 1(a)

Step (a) of claim 1 recites “establishing communications between said

central controller and said plurality of remote terminals via a plurality of signalling

data channels . . . .” As the Petition recognizes, a “signalling data channel” must

be able to carry both signalling data and user traffic. See Petition at 11 (defining

“signalling data channels” as channels that “may also carry user traffic”). As such,

claim 1(a) requires that communications between the central controller and a

remote terminal be established on a channel that carries signalling data and is at

least capable of carrying user traffic. This arrangement advances the ’883 patent’s

goal of providing an efficient, “flexible and extensible” method for signalling data

channel management, and for assigning remote terminals to the signalling data

channels. ’883 patent, col. 3:35-41.

The Petition acknowledges that communications in Cioffi are established

via control channels (see Petition at 21-22 (citing Cioffi, col. 5:5-9); Roy Dec. ¶

268), and asserts that these dedicated channels correspond to the claimed

predetermined signalling data channels to which the remote terminals are initially

assigned (see id.), as recited in claim 1(a).

However, there is no disclosure, identified in the Petition or otherwise in

Cioffi that the control channels are capable of carrying user traffic. Cioffi only


33

describes use of its control channels for synchronization signalling and other

signals concerned with the control of communications, and explicitly notes that the

use of control channels should be sparse, as they cause detrimental distortion and

interference with the data channels. See Cioffi, col. 5:11-26.

Thus, not only is Dr. Roy’s foundational premise that the control channel

“may also carry user traffic” (Roy Decl. ¶ 268) unsupported,8 but it is inconsistent

with the disclosure of Cioffi. Such unsupported conclusory statements cannot

meet Petitioner’s burden. See, e.g., 37 C.F.R. § 42.65(a); 37 C.F.R. § 42.100(a);

77 Fed. Reg. at 48,763; ActiveVideo Networks, 694 F.3d at 1327; Rohm and

8 Dr. Roy’s related assertion in ¶ 268 that “control information can be

multiplexed with user traffic” on control channels is equally misguided, and the

two cited passages in Dr. Roy’s claim chart (see ¶ 270) offer no support for it. The

first passage, Cioffi, col. 11:44-48, says nothing about sending user traffic over

control channels. It merely states that allocation control signals may be sent over

the control channels or the data channels. The second passage, Cioffi, col. 11:62-

12:7, simply provides examples of control information that can be provided

together on control channels. There is no disclosure in Cioffi of sending user

traffic on control channels.


34

Haas, 127 F.3d at 1092; SAS Inst., IPR2013-00581, Paper 17 at 3-4; Wowza

Media Sys., IPR2013-000054, Paper No. 16 at 4.

c. Cioffi does not disclose “determining” as recited by claim 1(c)

Step (c) requires determining whether a remote terminal “needs to be

reassigned to a different signalling data channel other than said predetermined

signalling data channel.” This element is directed at determining if one of the

remote terminals presently on one of the “pair of predetermined signalling data

channels” of step 1(a) needs to be reassigned to a different signalling data channel.

As such, the claimed determination of step (c) is made based on the “monitoring”

of the channels in use in step (b), and is the basis of the reassignment of step (e).

The Petition does not allege (much less provide any factual support for the

proposition) that any control channels in Cioffi—which, are alleged to be the

“predetermined signalling data channels”—are monitored, that any determination

based on such monitoring is ever made that a remote tuned to a control channel

needs to be reassigned, or that any remote is actually ever reassigned based on any

such determination. Rather, the portions of Cioffi relied on by the Petition as

disclosing step (c) of claim 1 refer to the determination of which of the data

channels will be used to send user traffic. See, e.g., Petition at 23 (quoting Cioffi,

col. 6:11-15). Cioffi simply does not disclose any decision to move any modem

from the control channels based on any monitoring of usability or any


35

determination based on such monitoring. Indeed, Cioffi only discloses that its

modems either share a common set of control channels, or are each assigned a

dedicated control channel (in a small network). See Cioffi, col. 11:52-12:4.

3. Claim 1 Is Not Obvious In View of the Combination of the MPT Specifications and Cioffi

In Ground 9 Petitioner asserts that it would have been obvious to combine

the MPT Specifications and Cioffi, and that this combination would have rendered

claim 1 obvious under 35 U.S.C. § 103. However, the Petition provides no

substantive basis for this assertion nor any explanation of how to combine these

two references to invalidate claim 1. Such conclusory assertions are improper.

See, e.g., 37 C.F.R. § 42.104(b)(4); K/S HIMPP, 2013-1549, slip op. at 6-7;

ActiveVideo, 694 F.3d at 1328; SAS Inst., IPR2013-00581, Paper 17 at 3-4.

Indeed, while the Petition incorporates by reference Dr. Roy’s conclusion that it

would have been obvious to combine these two references, it does not identify

what specific disclosures from the MPT Specifications and Cioffi would have been

combined in what way to achieve what claim element, and why a person of

ordinary skill in the art would have done so.9 See Petition at 17-24 (discussing

obviousness by pointing only to ¶¶ 67 and 271-273 of Dr. Roy’s declaration which

9 To the contrary, the Petition maintains that each reference independently

discloses every limitation of claim 1.


36

asserts that it would have been obvious to combine the MPT Specifications and

Cioffi, but cites to no facts in support).

Such unsupported opinions should be afforded no weight. See, e.g., 37

C.F.R. § 42.65(a); 37 C.F.R. § 42.100(a); 77 Fed. Reg. at 48,763; ActiveVideo

Networks, 694 F.3d at 1327; Rohm and Haas, 127 F.3d at 1092; SAS Inst.,

IPR2013-00581, Paper 17 at 3-4; Wowza Media Sys., IPR2013-000054, Paper

No. 16 at 4. Accordingly, Ground 9 should not be instituted with respect to claim

1 for this reason alone.

It is also clear from the references themselves that it would not have been

obvious to combine the disclosures in the MPT Specifications with Cioffi as there

are fundamental differences between the two disclosed systems that would make

any combination highly unlikely. For example, as discussed above (see supra

V.A.1), with respect to the MPT Specifications, the Petition relies in large part on

the disclosure of control channel interference for the determination of usability

recited in claim 1, but the MPT Specifications disclose that such interference is

addressed by the radio units themselves independently monitoring control

channels, leaving control channels with excessive transmission errors, and

subsequently initiating channel hunting procedures to find a better control channel

offered by the TSC. See, e.g., MPT 1343 § 9.4.1. There is no disclosure of the

claimed monitoring, determining, and reassigning method steps. Accordingly, the


37

MPT Specifications at best purport to solve interference issues in very different

ways differently than the ’883 patent.

In Cioffi, the control channels (which the Petitioner asserts correspond to the

claimed “predetermined signalling data channels”) exist for one purpose:

determining the “frame boundary phase shift required to better synchronize the

selected first remote unit with other remote units that are currently communicating

with the central unit.” Cioffi, col. 2:40-42. While this type of synchronization is

relevant to the DMT transmission scheme of Cioffi, it is neither disclosed nor

relevant to the radio communication system disclosed in the MPT Specifications.

Additionally, while the MPT Specifications disclosed that the control channels

over which communications are established can be converted, based on need, into

data channels (See, e.g., MPT 1343 at 3-5 (defining the non-dedicated procedure)),

the channels over which communications are established in Cioffi, i.e., the control

channels, are dedicated and fixed. That is, there is no disclosure in Cioffi (or in the

MPT Specifications) of reassignment of a remote terminal to another control

channel. It is respectfully submitted that a person of ordinary skill in the art would

not seek to combine procedures from these two references.

In sum, neither the Petition nor the references themselves provide factual

support for combining the MPT Specifications with Cioffi.


38

B. CLAIMS 2-5

Claims 2-5 of the ’883 patent each depend directly from claim 1, and

accordingly, incorporate all of the limitations of claim 1. As such, the proposed

grounds in the Petition relating to any of claims 2-5, including Grounds 1, 5, 11,

12, 13, and 14, should not be instituted for at least the same reasons that the

proposed grounds relating to claim 1 should not be instituted.

C. CLAIM 14

1. Cioffi Fails to Disclose the Subject Matter of Claim 14

Grounds 2 and 6 of THE Petition assert that claim 14 is anticipated or

rendered obvious, respectively, by Cioffi. As described in detail below, the

Petition fails to establish a reasonable likelihood that claim 14 of the ’883 patent is

anticipated or rendered obvious by Cioffi as several key elements of claim 14 are

not disclosed and there is no factual support for any conclusion that the addition of

these elements would have been obvious. See, e.g., 37 C.F.R. § 42.65(a); 37

C.F.R. § 42.100(a); 77 Fed. Reg. at 48,763; ActiveVideo Networks, 694 F.3d at

1327; Rohm and Haas, 127 F.3d at 1092; SAS Inst., IPR2013-00581, Paper 17

at 3-4; Wowza Media Sys., IPR2013-000054, Paper No. 16 at 4.

a. The structure of Cioffi

Cioffi discloses a DMT based communication system which utilizes a form

of orthogonal frequency division multiplexing (OFDM) in which information is


39

transmitted over orthogonal subchannels. 10 See Ex. 2001 at 2-3 and 8. Cioffi uses

a single modulator to generate a composite signal that is a sum of all the orthogonal

subchannels. Cioffi, Fig. 3, cols. 5:62-63; 6:26-30; Ex. 2001 at 3 (including Fig. 5

and associated text). In Cioffi, the modulator output is converted directly to an

analog signal and applied to the transmission media using a line driver. Cioffi, col.

6:38-42. That is, unlike the systems disclosed in the ’883 patent, Cioffi needs only

one transmitter because the modulator output already includes all orthogonal signal

components at each subchannel frequency whereas, claim 14 requires separate

transmitters for each specific frequency employed. This fundamental difference

between the structure of Cioffi and the system of the ’883 patent impacts many

elements of the claims.

b. Cioffi fails to disclose a “system controlling means” as recited by claim 14(a)

Element (a) of claim 14 requires a “system controlling means for controlling

the communication system comprising a micro-processor and associated EPROM

and RAM.” In construing this means-plus-function element, the Petition asserts

that the ’883 patent’s description of “a microprocessor, an EPROM and a RAM”

corresponds to the claimed “system controlling means.” Petition at 13.

10 Additional background information concerning Cioffi was provided above.

See supra V.A.2.a.


40

However, in asserting that Cioffi anticipates (Ground 2) and renders obvious

(Ground 6) claim 14, neither the Petition nor the declaration of Dr. Roy asserts that

these structures are disclosed by Cioffi. Instead, the only structure that is identified

in Cioffi is a general description of “controller 60.” Petition at 51; Roy Dec. ¶ 411.

In an apparent acknowledgment of Cioffi’s lack of disclosure, the Petition refers to

the Roy Declaration, which asserts, without any support, that it would have been

obvious to add the non-disclosed structures to Cioffi. Petition at 51 (citing Roy

Dec. ¶ 174). Specifically, the Roy Declaration states that “[i]t is within the

knowledge of a person of ordinary skill in the art that such a controller includes a

microprocessor and associated EPROM and RAM.” Roy Decl. ¶ 174. It is

respectfully submitted that because there is no identified basis for suggesting Cioffi

discloses an EPROM or RAM for controlling the communication system, or why a

person of ordinary skill in the art would include an EPROM and RAM into the

system described by Cioffi, the Petition and the Roy Declaration are insufficient

under 37 C.F.R. § 42.104(b)(4) and 37 C.F.R. §42.65(a).

c. Cioffi fails to disclose a “switching means” as recited by claim 14(g)

Element (g) of claim 14 requires a “switching means for making dynamic

connections to switch signals among said transmitting means, said receiving

means, said modulating means, said demodulating means, and said interfacing


41

means.” The Petition asserts that the corresponding structure for the claimed

“switching means” is a “switching matrix.” Petition at 13.

However, the Petition fails to point to any such structure in Cioffi that

corresponds to the claimed “switching means.” The excerpts of Cioffi that the

Petition and the Roy Declaration point to identify a central modem having a

transmitter 40 that incorporates a discrete multi-tone modulator 45, a receiver 70

that incorporates a demodulator 76, and a network interface 41. See Petition at 53-

54, Roy Dec. ¶ (citing Cioffi, cols. 5:30-46; 6:43-46). But these excerpts identify

no switching matrix or any other component for making dynamic connections to

switch signals among those components.

Cioffi itself contradicts the notion that it describes a “switching matrix.” For

example, Figure 3 of Cioffi, reproduced below, shows fixed connections between

the transmitter (with an embedded modulator), the receiver (with an embedded

demodulator), and the network interface:


42

The Petition appears to rely on an excerpt in Cioffi in alleging that these

connections are “dynamic,” (see Petition at 53, Roy Dec. ¶ 198 (citing Cioffi, col.

6:11-24)) in asserting that the claimed switching matrix is disclosed. Any such

reliance is misplaced because the excerpt states that the subchannels over which

data is transmitted can be “dynamically determined,” not that any connections are

dynamic or switched via a switching matrix. In fact, the modulator output in Cioffi

is not even connected to the claimed transmitters. Rather, Cioffi discloses that the

modulator output is fed directly to the transmission media using a line driver.

Cioffi, col. 6:38-42. Thus, no portion of Cioffi expressly states or implies that any

of these connections are switched, dynamically or otherwise, as switching is not

needed to implement Cioffi’s DMT communication scheme.

Nor does the Petition adequately support its assertion that the claimed

“switching means” in element (g) of claim 14 is rendered obvious by Cioffi. See


43

Petition at 53 (citing Roy Dec. ¶ 410). The only statement that relates to this issue

is Dr. Roy’s conclusory assertion that it would have been obvious to include a

switching matrix because the central controller is “frequency agile, dynamically

allocates communication channels, and dynamically adjusts modulation and

demodulation.” Roy Dec. ¶ 410. Dr. Roy’s assertion, however, is contradicted by

the differences between the claimed “switching means” of the ’883 patent and the

central controller disclosed by Cioffi. Specifically, unlike the central modem in

Cioffi, which includes one transmitter with a fixed connection to the network

interface, the system described in claim 14 of the ’883 patent recites a transmitting

means that mixes modulator output signals onto carrier frequencies. See ’883

patent, Fig. 16, col. 12:49-52. Cioffi itself recognizes this distinction and criticizes

non-DMT based cable systems such as disclosed in the ’883 patent by stating that

in “cable systems (which do not use discrete multi-tone transmission schemes),

each remote unit is given a dedicated frequency band over which it is to

communicate with the central station,” and that this approach “typically requires

the use of analog filters to separate transmissions from the various remote units,”

which results in the “inefficient use of transmission bandwidth.” Cioffi, col. 1:66-

2:6 (parenthetical in original).

Accordingly, one of ordinary skill in the art would have recognized that the

claimed central controller of claim 14 and Cioffi’s DMT central modem are based


44

on fundamentally different operating principles, and would not have found the

recited “switching means” to be an obvious extension of Cioffi’s central modem,

particularly in view of Cioffi’s criticism of cable systems that do not use DMT.

d. Cioffi fails to disclose a “forward communication controlling means” as recited by claim 14(h)

Element (h) of claim 14 recites a “forward communication controlling means

for selecting a forward signalling data channel via a dynamic connection between

said transmitting means and said modulating means.” According to the Petition,

the corresponding structure for the “forward communication controlling means” is

simply a “microprocessor.” See Petition at 14. The Petition does not propose a

construction of the corresponding function, (see Petition at 13-14), but according to

the claim language, the claimed function is “selecting a forward signallinig data

channel via a dynamic connection between said transmitting means and said

modulating means.”

A microprocessor, without more, cannot accomplish the claimed function.

Moreover, there is no disclosure in Cioffi of any microprocessor that performs the

claimed function. As is made clear in the claim and the specification of the ’883

patent, there must exist a dynamic connection between the transmitting means

(identified in the Petition as transmitter 160 (Petition at 13)) and the modulating

means (identified in the Petition as modulator 163 (Petition at 13)). See, e.g., ’883

patent, col. 13:4-13, Fig. 16.


45

The structure disclosed by Cioffi does not select channels by making

dynamic connections. Rather, Cioffi discloses a central modem having a single

transmitter 40 that incorporates a discrete multi-tone modulator 45 in which no

connections, much less dynamic ones, are made. See Cioffi, Fig. 3, cols. 5:30-46.

Further, the claimed dynamic connections would not have been possible in the

structure described by Cioffi, as Cioffi discloses a modulator which is embedded in

a single transmitter whose output includes the contributions from all subchannel

signals. See supra V.C.1.c; Cioffi, Fig. 3.

Further still, the disclosure in Cioffi that the Petition cites to in asserting that

the subchannels are “dynamically determined” (see Petition at 54; Roy Dec. ¶¶

202, 411 (both citing Cioffi, col. 6:6-25)) is mischaracterized. This excerpt merely

states that the particular subchannels on which data is transmitted can be

“dynamically determined.” It does not state that any connections are dynamic. See

supra V.C.1.c.

Lastly, one of ordinary skill in the art would have recognized that claimed

central controller and Cioffi’s DMT central modem are based on fundamentally

different operating principles as even Cioffi distinguishes itself from cable systems

that do not use DMT. In view of these fundamental differences between the

claimed subject matter and the system disclosed in Cioffi, it is respectfully

submitted that there is no evidence that one of ordinary skill in the art would have


46

found the recited “forward communication controlling means” to be an obvious

extension of Cioffi’s central modem.

2. Thompson Fails to Disclose the Subject Matter of Claim 14

Grounds 3 and 7 of Cisco’s Petition assert that claim 14 is anticipated or

rendered obvious, respectively, by U.S. Patent No. 5,594,726 to Thompson, et al.

(Petitioner’s Ex. 1009, hereinafter “Thompson”) . As described in detail below, the

Petition fails to establish a reasonable likelihood that claim 14 of the ’883 patent is

anticipated or rendered obvious by Thompson as several key elements of claim 14

are not disclosed .

With respect to obviousness (Ground 7), the Petition again relies on

unsupported conclusions rather than fact to support its assertions and is silent as to

which specific elements of claim 14 would have been obvious in view of

Thompson. Accordingly, neither Ground 2 nor Ground 7 should be instituted with

respect to claim 14.

a. The structure of Thompson

Thompson relates to a system for coupling telephony or other digital

networks to a coaxial cable television network. Thompson, abstract, col. 1:10-17.

The described system includes a headend that serves as a conduit between a

network (such as a public telephone network) and a subscriber network (such as a

cable distribution network). Id. at col. 7:44-51. According to Thompson, the


47

headend receives multiple telephony signals from a public telephone network and

then modulates and transmits those signals onto a cable TV network over forward

channels. Id. Customer interface units (“CIUs”) can send return transmissions

over reverse channels, which are received, demodulated, and multiplexed into a

standard telephony signal which is directly interfaced to the telephony network.

See id, col. 7:16-24.

In one described embodiment, each forward channel is at a set frequency and

is capable of delivering 96 separate telephone conversations to subscribers, each

conversation on its own “DS0” channel. See, e.g., Thompson, Fig. 3C; col. 11:50-

56. A time division multiple access (“TDMA”) scheme is used for transmitting the

user/audio data corresponding to each of these 96 calls on the forward channel in

which data is sent over each channel in 99 byte blocks or subframes, one byte of

which is associated with each of the 96 DS0 channels, one byte which is for

providing directory information monitored by all subscribers CIUs, one byte which

is for signalling data, e.g. ringing status of other subscribers, and the remaining

byte of which is a framing byte. See, e.g., Thompson, Figs. 9C, 17 at 720, cols.

11:51-59, 32:30-43, 33:18-43.

Thompson discloses that the CIUs monitor the directory channel byte and

signal channel byte of a pre-assigned forward channel for instructions, which can

include instructions to initiate a call on a prescribed DS0 channel or to tune to a


48

new reverse transmission upstream center frequency to initiate a call. Thompson,

cols. 24:6:15, 32:33-39, 33:29-37.

b. Thompson fails to disclose a “transmitting means” as recited by claim 14(b)

Element (b) of claim 14 recites a “transmitting means for transmitting user

traffic or signalling data on said communication channels.” The Petition proposes

that the corresponding structure in the ’883 patent of the “transmitting means” is

“transmitter 160” as illustrated in figure 16. Petition at 13 (citing ’883 patent, col.

12:38-40). While the Petition does not propose any construction of the

corresponding function (see Petition at 13-14), the antecedent basis for “said

communication channels” is found in the preamble of claim 14, which recites “a

plurality of communication channels for communicating with a plurality of remote

terminals.” Accordingly, the required function of transmitter 160 is to transmit

user data or signalling data to the remote terminals.11

11 As acknowledged by the Petitioner, transmitter 160 in the ’883 patent is also

used to send signalling information and user data to remote terminals. See, e.g.,

Petition at 13-14 (citing ’883 patent, col. 13:8-13). Moreover, figure 16 in the ’883

patent shows that transmitters 160 in the central controller are connected to shared

transmission media 12, and Figure 1 illustrates that shared transmission media 12


49

The Petition does not identify any structure whose function is “for

communicating with a plurality of remote terminals.” The only transmitter that the

Petition and Dr. Roy identify in Thompson is optical transmitter 70. See, e.g.,

Petition at 51 (citing Thompson col. 14:52-15:11); Roy Dec. ¶¶ 177, 403 (referring

to same); see also Thompson, Figs. 1, 2 and 5. But optical transmitter 70 transmits

over the telephony network and not to remote terminals. Figure 5 of Thompson

shows that optical transmitter 70 is associated with output interface 34, and

explains that it converts the reverse band RF telephony signals sent by remotes on

the multiple access cable network into light for transmission on the optical fibers of

the wide area telephony network. See Thompson, Fig. 5, col. 14:52-15:11. Thus,

instead of transmitting to the remote terminals as in the ’883 patent, transmitter 70

transmits data received from the remote terminals to the network. This is a

fundamental difference: optical transmitter 70 identified by Petitioner transmits on

the wrong medium and in the wrong direction. As such, it does not meet the

transmitting means limitation of 14(b).

The Petition’s reliance on transmitter 70 in Thompson for element 14(b) has

an additional problem: it relates to an embodiment that is distinct from the

are connected between the central controller and the remote terminals 14. See also

ʼ883 patent, cols. 12:38-40, 5:8-15.


50

embodiment cited as disclosing the “system controlling means” element of 14(a).

Specifically, the Petition relies on the selectable bandwidth allocation embodiment

depicted in Figure 11 of Thompson as disclosing the claimed “system controlling

means.” See Petition at 51; Thompson, col. 20:33-58. However, the Petition relies

on entirely different fixed bandwidth allocation embodiments as disclosing the

“transmitting means.” These embodiments have distinctly different interface and

control structures. See Thompson, Figs. 2, 5 and 11, col. 14:52-15:11. Therefore,

Thompson does not disclose these limitations arranged in the same way as in claim

14. It is improper to borrow and combine disclosure from here and there without

some teaching or suggestion to do so, and the Petition does not assert that any such

teaching or suggestion exists. See, e.g., Therasense, 593 F.3d at 1332; Lindemann

Maschinenfabrik, 730 F.2d at 1459; Printing Indus. of Am., IPR2013-00489, Paper

15 at 13-15; Synopsys, IPR2012-00041, Paper 21 at 4-5.

c. Thompson fails to disclose a “receiving means” as recited by claim 14(c)

Element 14(c) requires a “receiving means for receiving user traffic or

signalling data on said communication channels.” The Petition identifies the

corresponding structure as “receiver 160.”12 Petition at 13.

12 The receiver is marked as item 161 in the ’883 patent.


51

As with limitation 14(b), “said communication channels” refers to the

channels that connect the central controller and the remote terminals, and thus the

claimed function of the receiver requires receiving communications from the

remote terminals. See supra V.C.2.b. This is consistent with the ’883 patent

specification as Figure 16 shows that the receivers 161 in the central controller are

connected to shared transmission media 12, and Figure 1 illustrates that shared

transmission media 12 connects the central controller with the remote terminals 14.

See also ʼ883 patent, cols. 12:38-40, 5:8-15.

Petitioner identifies only Thompson’s optical receiver 45 as the claimed

“receiving means” of element 14(c). See Petition at 52, Roy Dec. ¶¶ 181, 403.

However, optical receiver 45 does not receive signals from the remote terminals of

the claimed communication system. Optical receiver 45 is associated with an input

interface 32 (as shown in Figure 4) that converts light signals received on the

optical fibers of the wide area telephony network and destined for users on the

cable-TV network into an RF digital signal of a standard telephony format. See,

e.g., Thompson, col. 14:27-34, Figs. 1, 2 and 5. In other words, optical receiver 45

receives signals from the wide area telephony network and not from the users on

the cable-TV network. Thus, optical receiver 45 receives signals over a different

medium.


52

Further, optical receiver 45 is part of a fixed bandwidth embodiment that is

distinct from the selectable bandwidth embodiment cited as disclosing the

limitations of claim 14(a). As explained above (see supra V.C.2.b.), these

embodiments are significantly different in structure and there is no teaching that

components of these embodiments are interchangeable. For this additional reason,

Thompson does not disclose element (c) of claim 14.

d. Thompson fails to disclose a “switching means” as recited by claim 14(g)

Element 14(g) recites a “switching means for making dynamic connections

to switch signals among said transmitting means, said receiving means, said

modulating means, said demodulating means, and said interfacing means.” As

discussed above, the Petition asserts that the corresponding structure for the recited

“switching means” is a “switching matrix.” Petition at 13.

As an initial matter, the Petition fails to identify any disclosure in Thompson

of the claimed “transmitting means” and “receiving means.” See supra V.C.1.b,

and V.C.1.c.

The Petition also fails to identify any disclosure in Thompson of a

“switching matrix.” For this structure, the Petition identifies a data table, stored in

the memory of a CPU, which correlates various information (such as subscribers’

respective upstream frequencies and telco line DS0 numbers) concerning each

subscriber. See Petition at 53 (citing Thompson, col. 27:21-53; Roy Dec. ¶ 197).


53

This data table, however, is not a switching matrix, because it has no ability to

make connections from one element to another. It merely correlates information.

The Petition further asserts that “frequency agility” as described in

Thompson discloses this feature. See Petition at 53 (citing Thompson, col. 6:43-

59). But simply having the ability to tune to different frequencies is not the same

as, and does not necessitate having dynamic connections to switch signals.

e. Thompson fails to disclose a “forward communication controlling means” as recited by claim 14(h)

Element (h) of claim 14 recites a “forward communication controlling means

for selecting a forward signalling data channel via a dynamic connection between

said transmitting means and said modulating means.” As discussed above, the

Petition asserts that a “microprocessor” is the appropriate corresponding structure,

and the claimed function requires a dynamic connection between the transmitting

means (identified in the Petition as transmitter 160) and the modulating means

(identified in the Petition as modulator 163). See supra V.C.1.d.; Petition at 13-14;

’883 patent, col. 13:4-13 and Fig. 16. The Petition additionally asserts that a

“dynamic connection is a connection that can be changed at any time.” Petition at

14.

As an initial matter, the Petition fails to identify disclosure of element (h) of

claim 14 because it fails to disclose the claimed “transmitting means” as explained

above. See supra V.C.2.b.


54

The Petition also fails to identify any disclosure of “selecting a forward

signalling data channel.” While the Petition identifies the modulators 320 shown

in Figure 11 as the claimed “modulating means” of limitation (d), Thompson

discloses that RF signals output from each of these modulators are combined,

filtered and output to the shared multiple access broadband network over, e.g.,

coaxial cable. See, e.g., Thompson, col. 21:64- 22:14. Thompson contains no

disclosure of “selecting a forward signalling data channel via a dynamic

connection” between the modulators 320 and any transmitter that sends

communications to remote terminals. In fact, Thompson’s system cannot make

such a selection as there is no disclosure that its modulators are connected to

multiple transmitters.

In addition, Thompson does not disclose a system where a forward

signalling data channel is selected using a “dynamic connection,” as defined by

Petitioner. In Thompson, the forward channel frequency is selected in response to

a call request by sending the CIU a forward channel DS0 number to use for the

requested call-type, e.g., ISDN or single voice. See Thompson, Fig. 17. Once the

call has begun, the forward channel DS0 number and forward channel frequency

may not be changed.

In an apparent attempt to overcome this deficiency, the Petition cites

inapplicable passages that relate to predetermined carrier assignments and the


55

dynamic selection of carrier frequencies for reverse channels, i.e. channels for

receiving communications from remote CIUs, in response to, e.g., changing noise

level. Petition at 54 (citing, e.g., Thompson, col. 6:37-52 (“According to another

aspect of the invention, the reverse band circuitry is frequency agile, and is

responsive to channel information provided in a directory channel in the forward

band from the headend interface unit for tuning to one or more selected reverse

band frequencies, for modulating the telephony signals from the customer interface

unit in the one or more selected frequency subbands.”)).

This disclosure neither anticipates nor renders obvious limitation 14(g)

because the forward and reverse signalling schemes employed by Thompson are

significantly different. See Thompson, col. 5:58-6:25. Thompson acknowledges

factors that account for the differences between the chosen forward and reverse

communication implementations, including differences in available spectrum,

differing noise levels and differing needs for maintaining compatibility with

existing networks. See, e.g., Thompson, cols. 3:10-22, 5:58-67, 6:21-35. The

Petition fails to address these differences and fails to offer any substantive basis for

concluding that it would have been obvious to meet this limitation.

3. Claim 14 Is Not Obvious In View of the Combination of Cioffi and Thompson

The Petition does not identify any factual support as to why claim 14 is

unpatentable as obvious over the combination of Thompson and Cioffi. In Ground


56

20, the Petition asserts, (again, solely by reference to Dr. Roy’s declaration), that it

would have been obvious to combine these two references, but nowhere identifies

what particular combination of elements from Thompson and Cioffi would have

been obvious.

Dr. Roy’s declaration merely provides conclusory opinion that both

references disclose multiple-access communication systems and from that asserts

that a “person of ordinary skill in the art would be motivated to combine the

teachings of Cioffi and Thompson to extend data services well beyond data

services over a multi-access communication system that couples CATV and

telephone networks.” (See Roy Dec. ¶¶ 412-13.) This is hardly the type of factual

basis needed to support an assertion of unpatentability. See, e.g., 37 C.F.R. §

42.104(b)(4); K/S HIMPP, 2013-1549, slip op. at 6-7; ActiveVideo, 694 F.3d at

1328; SAS Inst., IPR2013-00581, Paper 17 at 3-4. In any case, no such

conclusion can be reached as the DMT communication scheme implemented by

Cioffi is fundamentally different from the FDM scheme employed by the system of

claim 14. See supra V.c.1.c. It is also fundamentally different from the system

disclosed in Thompson, which relies on forward channels for sending

communications to remote subscribers that utilize a combination of FDMA and

TDMA techniques.


57

In sum, Ground 20 of the Petition incorrectly concludes that unspecified

combinations of the materially different systems described in Thompson and Cioffi

would have rendered claim 14 obvious.

D. CLAIMS 15-18

Claims 15-18 of the ’883 patent each depend directly from claim 14, and

accordingly, incorporate all of the limitations of claim 14. As such, the proposed

grounds in the Petition relating to any of claims 15-18, including Grounds 2, 3, 6,

7, and 20, should not be instituted for at least the same reasons that the proposed

grounds relating to claim 1 should not be instituted.

Further, the Petition fails to provide any constructions whatsoever for claims

15-18, each of which includes a means-plus-function claim element not found in

any other claims. The Petition therefore fails to meet the requirements of 37

C.F.R. § 42.104(b)(3), and review should not be instituted with respect to

claims 15-18 on this independent basis.

VI. PETITION IS BARRED UNDER 35 U.S.C. § 315 (b)

35 U.S.C. § 315 (b) provides that “an inter partes review may not be

instituted if the petition requesting the proceeding is filed more than 1 year after

the date on which the petitioner, real party in interest, or privy of the petitioner is

served with a complaint alleging infringement of the patent. The instant Petition is

therefore barred as Petitioner is a privy of at least one party that was served with a


58

complaint for infringement of the ’883 patent in January 2011, more than three

years prior to the date on which the Petition was filed.

On January 25, 2011, Patent Owner filed a complaint for patent

infringement against Comcast Corporation, Charter Communications, Inc., and

others in the United States District Court for the Eastern District of Texas,

alleging that each of the defendants’ cable systems infringed U.S. Patent No.

5,563,883 (“the First Texas Action”).13 Among other things, Patent Owner

accused CMTSs and cable modems provided by Petitioner to each of the

defendants of infringement. See Ex. 2002 at 36. In financial disclosures filed by

Petitioner with the Securities and Exchange Commission, Petitioner admits that it

entered into indemnification agreements with “customers that are subject to

patent claims” in the First Texas Action. For example, Cisco’s quarterly report,

as filed with the Securities and Exchange Commission on November 22, 2013,

states that Petitioner had indemnification agreements with the defendants and was

involved in the litigation. See id. At a minimum, Petitioner had sufficient

knowledge of the substance and strength of the claims and defenses in the First

Texas Action to be able to represent in a public financial filing that the defenses

13 The First Texas Action was assigned docket number 2:11-cv-00030.


59

of its indemnitees were strong and that Petitioner’s products do not infringe the

’883 patent.

Further, “Cisco’s Default Terms of Sale,” obligate Petitioner’s customers to

grant full control of the lawsuit as a condition for indemnification.14 See Ex. 2003

at 7 (Section 10.1). When viewed in light of the admission by Petitioner that it

indemnified the defendants in the First Texas Action, the only reasonable inference

is that Petitioner was granted control of the litigation or at the very least had the

ability to control that litigation.

Because the First Texas Action was more than three years old when the

Petition was filed, the Petition is time barred under 35 U.S.C. § 315 (b). 77 Fed.

Reg. at 48759 (“A common consideration is whether the non-party exercised or

could have exercised control over a party’s participation in a proceeding. . . . The

concept of control generally means that ‘‘it should be enough that the nonparty has

the actual measure of control or opportunity to control that might reasonably be

expected between two formal coparties.’” (emphasis added)(quoting Wright &

14 In an oral hearing concerning a request by Patent Owner for additional

discovery on this issue, Petitioner did not deny that these terms of sale were

present in indemnity agreements with the defendants in the First Texas Action.

See Paper No. 9.


60

Miller § 4451)); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,

IPR2013-00453, Paper 31, at 16 (PTAB. Jan. 22, 2014) (two parties may be in

privity where a complaint for infringement served on the first party gives rise to an

obligation for indemnity and opportunity for control of the litigation by the second

party).

VII. CONCLUSION

For the reasons set forth above, the Board should decline to institute

inter partes review of all challenged claims 1-20 of the ’883 patent.


61

Respectfully submitted, KENYON & KENYON LLP _/Lewis V. Popovski/_________________ Date: June 4, 2014 Lewis V. Popovski [email protected] Registration No. 37,423 Lead Counsel for Patent Owner KENYON & KENYON LLP One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200 Fax: (212) 425-5288 Backup Counsel: Jeffrey S. Ginsberg [email protected] Registration No. 36,148

David J. Kaplan [email protected] Registration No. 57,117 David J. Cooperberg [email protected] Registration No. 63,250

KENYON & KENYON LLP One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200 Fax: (212) 425-5288


Certificate of Service

The undersigned hereby certifies that the foregoing PRELIMINARY

RESPONSE PURSUANT TO 37 C.F.R. §42.107 was served on lead counsel

fo r Pet i t ioner (as ins t ructed in the Pet i t ion a t 2) via Overnight Federal

Express on June 4, 2014, as follows:

LEAD COUNSEL

Mitchell G. Stockwell Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4528 T: 404.815.6214; F: 404.541.3403

KENYON & KENYON LLP /David J. Kaplan/ David J. Kaplan Registration No. 57,117 Attorney for Patent Owner Date: June 4, 2014 One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200

Date post:	26-Mar-2018
Category:	Documents
Upload:	phungquynh
View:	216 times
Download:	3 times

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE...

Documents