Ericsson, Inc.v.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Mar 17, 2016

09059381 (P.T.A.B. Mar. 17, 2016)

Trials@uspto.gov
571-272-7822
Paper No. 33
Filed: March 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ERICSSON INC. and
TELEFONAKTIEBOLAGET LM ERICSSON,
Petitioner

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner
____________

Case IPR2014-01471
Patent 6,370,153 B1
____________

Before, BRIAN J. McNAMARA, JUSTIN BUSCH, and
MIRIAM L. QUINN, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

FINAL WRITTEN DECISION
Conduct of the Proceeding
35 U.S.C. § 318(a) and
37C.F.R. § 42.73

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BACKGROUND
Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively,
“Petitioner”) filed a corrected Petition (Paper 6, “Pet.”) for inter partes review of
claims 1–27 of U.S. Patent No. 6,370,153 (Ex. 1001, “the ’153 Patent”). On
March 18, 2015, we entered a Decision to Institute a trial (Paper 10, “Dec. to
Inst.”) on the following challenges to the patentability of the claims:
Claims 1, 4–6, 9–12, 18, 21–24, and 27 of the ’153 Patent as anticipated
under 35 U.S.C. § 102 by U.S. Patent No. 5,392,450 (Ex. 1005, “the ’450 patent”);
Claims 1, 4–7, 9–13, 18, 21–24, and 27 of the ’153 Patent as obvious under
35 U.S.C. § 103 over the ’450 patent;
Claims 7, 8, and 13–17 of the ’153 Patent as obvious under 35 U.S.C. § 103
over the combination of the ’450 patent and U.S. Patent No. 6,334,219 B1 (Ex.
1008, “the ’219 patent”);
Claims 2, 19, and 25 of the ’153 Patent as obvious under 35 U.S.C. § 103
over the combination of the ’450 patent and the admitted prior art (APA); and
Claims 3, 9, 20, and 26 as obvious under 35 U.S.C. § 103 over the
combination of the ’450 Patent and U.S. Patent No. 5,680,398 (Ex. 1007, “the ’398
patent).
Intellectual Ventures II LLC (“Patent Owner”) filed a Patent Owner
Response (Paper 16, “PO Resp.”) and Petitioner filed a Reply (Paper 21, “Reply).
Oral argument was heard on December 15, 2015, and a transcript (“Tr.”) was
entered (Paper 32).
We have jurisdiction under 35 U.S.C. § 311 and base our decision on the
preponderance of the evidence. 37 C.F.R. § 42.1(d). Having reviewed the
arguments of the parties and the supporting evidence, we conclude that claims 1–
27 of the ’153 Patent are unpatentable.
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THE ’153 PATENT
The ’153 Patent relates to a method and system for enabling point-to-point
and multicast communication in a network using three types of communication
channels—namely, upstream payload channels, upstream control channels, and
downstream channels. Ex. 1001, Abstract. Figure 7 of the ’153 Patent, shown
below, illustrates the three types of communication channels allocated by the
network of the invention. Id. at col. 8, ll. 34–38.

Figure 7 of the ’153 Patent
The ’153 Patent discloses that a central controller at the head end of the
network is connected to the subscriber stations via a shared medium. Id. at col. 8,
ll. 26–29. An upstream payload channel carries payload data from the stations to
the central controller, and an upstream control channel is used to transmit upstream
control data. Id. at col. 8, ll. 61–67. Downstream channels carry data from the
central controller to the stations. Id. at col. 8, l. 67–col. 9, l. 5. To allow
“contention free transmission” on an upstream payload channel (id. at col. 11,
ll. 33–34), stations send reservation requests on the upstream control channel to the
central controller, which responds by assigning specific upstream transmission
slots to each station and indicating the slot assignment by transmitting a control
message (“reservation grant”) to the stations on the downstream channel (id. at
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col. 9, ll. 25–33). Each station then transmits payload data only in the assigned
slots of the upstream payload channel. Id. at col. 9, ll. 34–36.
The ’153 Patent specifically discloses that on the upstream channel, payload
packets are written into “slots” and control packets are written into “mini-slots,”
while on the downstream channel, each slot accepts a frame that includes one
payload and one control packet. Id. at col. 4, ll. 34–43. Each station can attempt to
reserve slots (i.e., request an assignment of one or more slots) by writing a
reservation request control packet into a mini-slot of the upstream channel
allocated for receiving new reservation request packets. Id. at col. 4, ll. 49–53.
The reservation request may indicate the number or size of the slots needed for the
payload packets to be communicated. Id. at col. 4, ll. 53–56. The ’153 Patent
further discloses that the slot length may be an integral number of mini-slot lengths
and thus the number of slots needed may be expressed as the number of “mini-
slot” lengths needed. Id. at col. 4, ll. 56–59. A head end responds by assigning
one or more slots to each requesting station and writing control packets into slots
of the downstream channel, indicating which slots are assigned to each station, so
that each station transmits its payload during its assigned slots. Id. at col. 4, l. 62–
col. 5, l. 2. The result is that contention is localized to relatively small size
reservation mini-slots, and avoided by the relatively lengthy payload slots. Id. at
col. 5, ll. 4–6. According to the ’153 Patent, this use of the mini-slots enables the
stations to obtain access to larger slots in a fashion that conserves bandwidth. Id. at
col. 5, ll. 9–11.
The specification discloses an embodiment in which the reservation request
and payload packets are not transmitted simultaneously, but sequentially, since
they are transmitted by a single upstream programmable RF transmitter. Id. at
col. 10, ll. 8–12. This sequential transmission of control and payload signals is
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accomplished by switching between forwarding modulated upstream payload
channel (UPC) and upstream control channel (UCC) signals to a single frequency
agile tuner. Id. at col. 10, ll. 8–16; col. 13, l. 61–col. 14, l. 54. A second switch
switches an indication as to whether the selected carrier signal is f2 (UPC) or f3
(UCC) to cause the agile tuner to adjust to the appropriate frequency. Id. This
embodiment is distinguished from other embodiments in which the control and
payload signals are transmitted simultaneously at different frequencies. Id. at
col. 9, ll. 35–40, 51–54.
ILLUSTRATIVE CLAIM
Claim 1 of the ’153 Patent is illustrative:
1. A method for enabling a station to communicate via a shared
medium of a multiple access network comprising the steps of:
(a) transmitting a reservation request bitstream containing a
request to reserve one or more slots of an upstream payload
channel on an upstream control channel,
(b) receiving a plurality of bitstreams from a downstream
channel, including at least one bitstream containing an indication
of one or more slots of said upstream payload channel assigned
to said station for transmitting bitstreams,
(c) transmitting payload bitstreams on said upstream payload
channel, only at said assigned slots of said upstream payload
channel, and
(d) switching between transmitting said reservation request
bitstreams and the payload bitstreams, such that said reservation
request and payload bitstreams are sequentially transmitted,
wherein said upstream control channel, said upstream
payload channel and said downstream channel each have a
mutually different frequency band.

CLAIM CONSTRUCTION
We interpret claims of an unexpired patent using the broadest reasonable
construction in light of the specification of the patent in which they appear. See 37
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C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed.
Cir. 2015), cert granted sub nom. Cuozzo Speed Tech, LLC, v. Lee, 136 S. Ct. 890
(2016). In applying a broadest reasonable construction, claim terms generally are
given their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposed that the term “slot” be construed to mean “a time period
of fixed or variable size.” Pet. 8. Patent Owner initially responded that
Petitioner’s proposed construction is not supported by the specification and that the
term “slot” did not require construction. Prelim. Resp. 9. In our Decision to
Institute, we construed “slot” to mean “a duration of time.” Dec. to Inst. 7. In the
Patent Owner Response, Patent Owner argues that “slot” should be construed to
mean “a predetermined division of the time domain for a channel.” PO Resp. 9–
10. Patent Owner notes that the ’153 Patent discloses that “[e]ach channel
illustratively is divided into slots or mini-slots.” Id. at 9 (citing Ex. 1001, col. 8,
ll. 60–61). However, the mere division of a channel into slots, does not define a
slot. Patent Owner argues that “slot” should be further limited to a predetermined
division because in the context of the ’153 Patent, the central controller responds to
a reservation request by “assigning specific slots to each station.” Id. at 9–10
(citing Ex. 1001, col. 9, ll. 11–13). However, the assignment of specific slots to
each station neither defines a slot nor limits a slot to some predetermined division
of the time domain. Indeed, the ’153 Patent states that “the upstream payload
channel UPC carries a stream of only payload packets in slots (which may be fixed
or variable in size).” Ex. 1001, col. 12, ll. 9–12. Although it is unclear whether
the literal text is intended to mean that either the payload packets or the slots vary
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in size, the text does not restrict the slots to any particular size or preclude adapting
the size of the slots to the size of the payload packets.
The specification’s discussion of the upstream control channel (UCC) states
the “UCC carries a stream of only reservation request packets in mini-slots (which
illustratively are of a fixed size).” Id. at col. 12, ll. 12–14. We note that the
description of mini-slot as being of fixed sized is “illustrative,” which does not
preclude variable size mini-slots. Id. Whether or not mini-slots are of fixed
duration, the difference in the description of payload packets transmitted in slots
and reservation requests transmitted in mini-slots indicates that the specification
does not preclude a variable size slot on the payload channel. For example, Figure
9 shows fixed sized mini-slots “r” on the reservation channel, but the size of the
slots on the payload channel differs, with one payload transmission slot
corresponding to 3 mini-slots, two payload transmission slots corresponding to 4
mini-slots, one payload transmission slot corresponding to 6 mini-slots and one
payload transmission slot corresponding to 7 mini-slots. Thus, there is no fixed or
predetermined relationship between the station and the length of the payload
transmission slot. The ’153 Patent also describes transmitting to a station SS150 a
slot assignment acknowledgement control packet with “the identifier of the starting
slot in the upstream payload channel UPC assigned to the requesting SS150 and
the slot capacity (e.g., measured by the number of mini-slot lengths of the assigned
slot) assigned to the SS 150.” Id. at col. 20, ll. 45–53. Although the illustrations in
Figure 9 and the description of slot capacity indicate a relationship between mini-
slots and slots, the ’153 Patent claims do not recite one or more mini-slots and,
because the ’153 Patent states that its descriptions of slots and slot capacity as
related to a number of mini-slots are illustrative or exemplary, the claims do not
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limit a slot to a duration of time that corresponds to one or more mini-slot time
durations.

ANALYSIS OF PRIOR ART CHALLENGES
Introduction
To establish anticipation, each and every element in a claim, arranged as
recited in the claim, must be found in a single prior art reference. Net MoneyIN,
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “A reference
anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan
could take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed.
Cir. 1995) (emphasis omitted) (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA
1962)).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the scope
and content of the prior art; (2) any differences between the claimed subject matter
and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
The level of ordinary skill in the art is reflected by the prior art of record.
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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Claims 1, 4–6, 9–12, 18, 21–24, and 27 of the ’153 Patent as anticipated under 35
U.S.C. § 102 by the ’450 Patent
Claims 1, 18, and 27
Claim 1 is drawn to a method for enabling access to a station to
communicate via a shared medium of a multiple access network. Claim 1 recites a
method in which a station (1) transmits on an upstream control channel (f3) a
request to reserve one or more slots of an upstream payload channel (f2), (2)
receives on a downstream channel (f1) a bitstream containing an indication of one
or more slots of the payload channel (f2) assigned to the station for transmitting,
(3) transmits the payload bitstreams only at the assigned slots of the upstream
payload channel (f2), and (4) switches between transmitting reservation request (on
channel f3) and payload bitstreams (on channel f2) such that they are sequentially
transmitted. Claim 1 further recites that f1, f2, and f3 are different channels.
It is noteworthy that claim 1 does not limit the indication of the one or more
slots to any particular form, does not recite that slots themselves are transmitted,
does not limit the parameters of the slots, and does not limit the transmission of
reservation request and payload bitstreams to any particular sequence.
The ’450 Patent cited by Petitioner describes a system using three different
frequency channels in which a portable terminal (PT) transmits a reservation
request on reservation channel 25-2 to a network control terminal (NCT), which
responds on forward channel 25-1. The forward orderwire (FOW) on channel 25-1
identifies a time when the PT may begin transmitting its data on return channel 25-
3. Channels 25-1 and 25-2 use a frame structure so that FOW 25-1b and
contention return orderwire (CROW) 25-2b occur with predictable periodicity.
Ex. 1005, col. 5, ll. 12–14. On return channel 25-3, following a sync portion and
an assigned return orderwire (AROW) portion, data from the PT is transmitted
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using an unframed data format, such that an entire message will be transferred in
one block without gaps or interruptions. Id. at col. 5, ll. 14–19.
We have construed a slot to mean a duration of time. Although the length of
the duration is not specific, a duration of time requires that an event begin at a first
time and end at a second time. In the illustrative embodiment disclosed in the ’153
Patent, the beginning and end that defines the length of a slot may be specified by
an integral number of “mini-slots.” Ex. 1001, col. 4, ll. 56–59. Even if the mini-
slots are of fixed duration, the slots during which the payload is transmitted are not
of fixed duration or length, because each slot may be an unspecified integral
number of mini-slots. As shown in Figure 5 of the ’153 Patent, different slots
comprise different numbers of mini-slots. Thus, in the ’153 Patent, the length of a
slot is not fixed.
The ’450 Patent discloses a system in which the forward orderwire is used
“to precisely specify the start of the transmission time of each active SAT [small
aperture terminal].” Ex. 1005, col. 5, ll. 16–17. The transmission continues until it
is complete and does not end at any time specifically identified in the forward
orderwire. Id. at col. 5, ll. 17–20. Patent Owner argues that, because the
transmission continues until it is completed, it is unframed and unbounded, rather
than occurring only at assigned slots, as recited in claim 1 of the ’153 Patent. PO
Resp. 15–16. Indeed, Patent Owner has argued that in the ’450 patent, there are no
slots in the return channel. Oral Hearing Transcript (“Tr.”) 43–44.
However, Patent Owner does not address the language of claim 1, which
recites receiving on the downstream channel an indication of one or more slots
assigned to a station for transmitting payload bitstreams on the payload channel
and transmitting the payload bitstreams only at the assigned slots. It is significant
that claim 1 is drawn to one or more slots, and does not limit the type of indication
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of the one or more slots assigned to the station for transmitting payload bitstreams.
Claim 1 also does not limit the parameters of the slots. Thus, the claimed slot can
have a long or short duration.
Petitioner argues that in the ’450 Patent the NCT assigns slots by telling the
PT when to begin transmitting, i.e. “send data using the slots starting here.” Reply
8–9 (citing Reply Declaration of Dr. Wayne Stark (“Stark Reply Decl.”) ¶ 17).
Petitioner notes that the ’450 Patent discloses that on the CROW the NCT receives
the length of the message the PT seeks to transmit. Reply 9 (citing Ex. 1005,
col. 8, l. 47). According to Petitioner, even if a slot is considered to be a fixed
amount of time, e.g., 45 msec as discussed in the ’450 Patent, the NCT knows how
many slots it must assign to make the transmission and uses this information to
avoid assigning the PT overlapping slots. Id. Thus, in the ’450 Patent, by
specifying the start of the transmission time, the PT receives from the NCT on the
downstream channel “an indication of one or more slots of said upstream payload
channel assigned to said station for transmitting bitstreams,” as recited in claim 1
of the ’153 Patent. Alternatively, even if, because the entire message is transmitted
on an unframed channel, the transmission of the entire message is considered to
occur in one slot, the claim language “receiving . . . [a] bitstream containing an
indication of one or more slots” is disclosed by the ’450 Patent’s disclosure of
telling the PT when to begin transmitting.
Claim 1 next recites that the transmission occurs “only at said assigned
slots”, i.e., at one or more durations of time. In the ’450 Patent, although the entire
message is transmitted at one time, the message is transmitted only at the assigned
slots. The ’450 Patent does not disclose transmitting the message at any other
time. Thus, whether the time it takes to transmit one message is considered one
slot, or a plurality of 45 msec slots, the ’450 Patent discloses that the transmission
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of the upstream payload information occurs only at the assigned slots of the
upstream payload channel.
Claim 1 next recites switching between the reservation request bitstream and
the payload bitstream, such that the reservation request and payload bitstreams are
sequentially transmitted. Claim 1 does not limit the implementation of the
switching. Patent Owner contends that Petitioner has not established the ’450
Patent discloses this limitation because in the ’450 patent the PT does not switch
between reservation channel 25-2 and return channel 25-3. PO Resp. 21. Citing
the Declaration of Dr. Jonathan Wells (Ex. 2002, (“Wells Decl.”) ¶ 58), Patent
Owner argues that a PT with an existing allocation of return channel 25-3 uses the
AROW on that same channel to make future reservations without contention and
“without switching back to reservation channel 25-2.” Id. According to Patent
Owner, such a protocol does not teach or suggest switching between transmitting
bitstreams on reservation channel 25-2 and return channel 25-3. Id.
Petitioner argues that claim 1 is not so limited. According to Petitioner,
claim 1 recites only a request on a control channel followed by a request on the
payload channel, i.e., claim 1 does not recite “switching back” for a later upstream
reservation request. Reply 10.
Petitioner further argues that, even if claim 1 were limited to such a
“switching back” protocol, the ’450 patent discloses this “switching back.”
Petitioner explains that in the ’450 patent, the PT is authorized to send either data
or an assigned return orderwire (AROW), starting at one particular time 36 and
that if the PT has more data to send, it must “switch back” to channel 25-2 and
make another reservation request. Reply 11. Petitioner further contends that the
AROW is not for future requests. Id. Patent Owner’s witness, Dr. Wells, testified
that because the ’450 patent discloses that the AROW can be used for the same
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purposes as the contention return orderwire (CROW), the PT can send new data
while the AROW is active. Deposition Transcript of Dr. Jonathan Wells, Ex. 1023
(“Wells Tr.”) 40:11–42:7. However, Dr. Wells agreed that in the ’450 patent,
when the AROW is no longer active, after switching from channel 25-2 to channel
25-3 to send data, the PT must “switch back” to channel 25-2 to make a later
reservation request. Id. at 11 (citing Wells Tr. 44:6–45:17; Ex. 1024, Stark Reply
Decl. ¶¶ 23–25). Thus, we are persuaded that the ’450 Patent discloses switching
between the reservation request bitstream and the payload bitstreams, such that the
reservation request and payload bitstreams are sequentially transmitted.
In view of the above, Petitioner has established that all the limitations of
claim 1 of the ’153 Patent are disclosed in the ’450 patent and we conclude that
Petitioner has shown by a preponderance of the evidence that claim 1 of the ’153
Patent is unpatentable as anticipated by the ’450 patent.
Independent claim 18 is drawn to a method of enabling communications in a
multiple access network in which (a) a central controller receives from an upstream
control channel (f3) a reservation request bitstream requesting slots for a particular
station, (b) transmits a bitstream indicating the slots reserved for that station on a
downstream channel (f1), and (c) receives a bitstream from one or more of the
assigned slots of an upstream payload channel (f2) and in which reservation
request bitstream and the payload bitstreams are transmitted from each station by
switching between the upstream control channel and upstream payload channel.
Unlike claim 1, claim 18 does not limit the switching so that the reservation
request and payload bitstreams are transmitted sequentially. Claim 18 further
recites that the upstream control channel, the upstream payload channel, and the
downstream channel each have a mutually different frequency band, i.e., that f1,
f2, and f3 are different.
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Independent claim 27 recites a method for communicating in a multiple
access network that includes a central controller and a station communicating over
a shared medium. The method includes (a) switching between (i) transmitting
payload bitstreams from a station to a central controller on an upstream payload
channel (f2) and (ii) transmitting on an upstream control channel (f3) reservation
requests for time slots of the upload payload channel (f2); and (b) transmitting on a
downstream channel (f1) bitstreams from the central controller to the station
indicating which slots of the upstream payload channel (f2) are assigned. Claim 27
does not limit the switching so that the reservation request and payload bitstreams
are transmitted sequentially. Claim 27 also recites that the upstream control
channel, the upstream payload channel, and the downstream channel each have a
mutually different frequency band, i.e., that f1, f2, and f3 are different.
The “switching limitation” in claims 18 and 27 is similar to that of claim 1,
except that transmission of the request and payload bitstreams is not limited to
being a sequential transmission. For the reasons discussed above, we are similarly
persuaded that the ’450 Patent discloses or suggests the switching limitation in
claims 18 and 27. Thus, Petitioner has demonstrated that each of the limitations in
independent claims 1, 18, and 27 is disclosed in the ’450 Patent and we conclude
that Petitioner has shown by a preponderance of the evidence that these claims are
unpatentable as anticipated by the ’450 Patent.
Claims 5 and 21
Patent Owner contends that Petitioner has failed to establish that the ’450
patent discloses the limitation in claims 5 and 21 reciting “indicating that no slots
in said upstream payload channel are available for allocation.” Emphasis added.
Claim 5 depends from claim 4 and recites an additional limitation (step (g)) that
occurs after switching between transmitting the reservation request and payload
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bitstreams (step (d)), but before repeating the step of resending the reservation
request upon expiration of the acknowledgement time (step (f)). Step (g) recites
receiving a bitstream on the downstream channel indicating that no slots in the
upstream payload channel are available for allocation. Claim 21 depends from
claim 18 and recites in step (d) the further limitation that “after step (a),” i.e.,
receiving a reservation request, “but before step (b),” i.e., transmitting a bitstream
indicating one or more slots assigned to a particular station, in the absence of
available slots in the upstream payload channel, “transmitting a bitstream on said
downstream channel including an acknowledgement of receipt of said reservation
request . . . but also including an indication that no slots of said upstream payload
channel are currently available for allocation.” Neither claim 5 nor claim 21
recites the form of the claimed indication that no slots are available for payload
transmission in the upstream payload channel.
Patent Owner contends that Petitioner’s reliance on the disclosure in the
’450 patent that a PT receiving an acknowledgement, but no transmission, will
continue to listen is inadequate to demonstrate anticipation of these limitations.
PO Resp. 25. Patent Owner argues that the acknowledgement disclosed in the ’450
patent does not perform the recited “indicating” because the PT is not provided any
information as to whether no slots of the upstream channel are currently available.
Id. According to Patent Owner, the absence of a time slot assignment does not
indicate to a user that no slots in the upstream channel are available because the
NCT may still make an assignment after sending the acknowledgement, and the PT
has no way of knowing whether such an assignment will be made. Id. at 26–28
(citing Ex. 2004, Deposition Transcript of Dr. Wayne Stark (“Stark Tr.”) 94:13–
95:10, 97:4-98:7; Wells Decl. ¶ 65). Patent Owner further cites Dr. Stark’s
testimony that the acknowledgement may indicate “that the assignment will come
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shortly” as evidence that the acknowledgement does not indicate why the
assignment was not provided immediately, but that the NCT is waiting to make an
assignment. Id. at 28–29 (citing Stark Tr. 97:16–19). Petitioner correctly points
out that claims 5 and 21 do not recite that the indication provides a reason why no
assignment was made. Reply 12.
Petitioner replies that the indication in claim 5 that “no slots . . . are
available” and in claim 21 that “no slots . . . are currently available” is not limited
to a positive signal. Reply 12. According to Petitioner, the indication is that no
slots are available at the time of the acknowledgement and does not mean “an
indication that no slot will ever be available” to assign. Id. at 13. Petitioner
contends that claim 5 cannot mean that no slot will ever be available to assign
because the further limitation in step (h) that the PT refrains from repeating step
(a), i.e., that the PT refrains from making another reservation request, would result
in a station that could never transmit its data. Id. As to claim 21, Petitioner
contends that the message indicating “no slots . . . are currently available” in step
(d) comes “after step (a),” i.e., making a reservation request, “but before step (b),”
i.e., the central controller making an assignment, indicating that a slot will later be
assigned in step (b). Id. at 13–14.
As noted in our Decision to Institute, claims 5 and 21 of the ’153 Patent
require only an indication that no slots in the upstream payload channel are
available to be allocated or, in the case of claim 21 currently available to be
allocated. In the context of the ’153 Patent, the station receives on the downstream
channel from the head end a bitstream that contains an acknowledgement that the
station’s reservation request was received and an unspecified indication that no
slots are available in the upstream payload channel. The ’153 Patent places no
limitation on the form of the indication and does not require any specific signal to
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indicate the lack of available slots. Petitioner has demonstrated that the ’450
patent’s disclosure of a reservation request acknowledgement followed by an
absence of a slot allocation, while the PT continues to listen for a slot assignment,
provides an indication that no slots are available to be allocated. The reason for
the NCT failing to transmit a time when the PT may begin to send its data on the
return channel, i.e., a slot assignment, is immaterial. Until authorized by the NCT,
the only indication to the PT in the ’450 patent is that it does not have an available
slot during which it can begin transmitting its payload. A subsequent indication of
assigned slots in the ’450 patent does not alter the fact that until such a slot
assignment, i.e., time to begin transmission, the only indication provided the PT is
that there is no available slot. Thus, Petitioner has demonstrated that the recited
indication in claims 5 and 21 is disclosed in the ’450 patent, and we conclude that
Petitioner has demonstrated by a preponderance of the evidence that claim 21 is
unpatentable as anticipated by the ’450 patent.
An additional issue arises in claim 5. Patent Owner also argues that the ’450
patent does not teach or suggest the limitation in step (h) of claim 5 of “refraining
from repeating step (a) [making a reservation request] in step (f).” PO Resp. 29.
Step (f) is found in claim 4, from which claim 5 depends, and recites “in response
to said acknowledgement timer expiring before receiving a bitstream containing an
acknowledgement from said downstream channel, repeating step (a).” Emphasis
added. Thus, in claim 5 step (g), after switching between transmitting reservation
request bitstreams and transmitting payload bitstreams (step (d)), a station receives
a bitstream acknowledging its reservation request, but also indicating that no
payload channel slots are available before the retransmission of the reservation
request in step (a) that would result if the acknowledgment timer expires in step (f),
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and in step (h) the station refrains from retransmitting its reservation request
(step(a)) if the acknowledgement timer expires (step(f)).
Patent Owner argues that claim 5 requires a particular sequence in which the
steps are performed, citing two flow charts and testimony from Dr. Wells. PO
Resp. 33–36 (Wells Decl. ¶¶ 72, 76). Patent Owner argues that Petitioner ignores
the order of the steps and that the testimony of Petitioner’s witness Dr. Stark that
claim 5 should read after performing step (e) instead of step (d) contradicts
Petitioner’s position. Id. at 36 (citing Stark Decl. ¶ 123).
Although Patent Owner argues that relative order of claims steps (b) and (d)
is not specified, PO Resp. 33, Patent Owner does not address specifically Dr.
Stark’s testimony that it is impossible to perform step (d), “switching between
transmitting said reservation request bitstreams and the payload bitstreams, such
that said reservation request and payload bitstreams are sequentially transmitted”
(emphasis added). on assigned upstream slots, if there are no slots to assign, Stark
Decl. ¶ 123. Petitioner replies that Patent Owner’s flow charts demonstrate an
attempt to re-write the claim for just this reason. Reply 16. Petitioner further
argues that, assuming the new ordering of steps advocated by Patent Owner, claim
5 is anticipated by the ’450 patent. Petitioner cites the testimony of Patent
Owner’s witness, Dr. Wells, that “[Y]ou get this bitstream saying that no slots are
available at a time where your next upstream transmission is going to be on an
upstream data channel, and you have not retransmitted your reservation request.”
Id. (citing Wells Tr. 67:21–68:12). Petitioner contends that this is exactly what
happens in the ’450 patent when the PT receives an acknowledgement and no
transmission assignment, waits to send data on the upstream data channel, and has
not sent a second reservation request. Id at 16-17 (citing Ex. 1005, col. 7, l. 66–
col. 8, l. 2; Stark Reply Decl. ¶ 34). The portion of the ’450 specification cited by
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Petitioner discloses: “A PT receiving an acknowledgement 34 but no transmission
assignment continues to listen for another timeout interval; either the NCT has a
backlog of higher priority to send or the PT is about to receive a message.”
Ex. 1005, col. 7, l. 66–col. 8, l. 2 (emphasis added). Thus, the ’450 patent
discloses that, at least for another timeout interval, i.e., a timeout interval after the
current timeout interval expires, following receipt of an acknowledgement without
a transmission authorization, the PT refrains from transmitting another reservation
request. This disclosure that the PT refrains from transmitting another reservation
request after a timeout interval expires satisfies the limitation in claim 5, step (h).
Thus, Petitioner has demonstrated by a preponderance of the evidence that claim 5
is anticipated by the ’450 patent.
Claims 4, 6, 9–12, and 22–24
Patent Owner does not address these claims individually. Instead, Patent
Owner addresses claims 4–7, 9–13 and 21–24 and argues that they6 are patentable
because Petitioner has not shown that the ’450 patent anticipates or renders
obvious the independent claims. PO Resp. 39. We addressed claims 5 and 21
above. We did not institute a trial on claims 7 and 13 as anticipated by the ’450
patent. We address claims 7 and 13 in a separate section of this Decision
discussing obviousness over the ’450 patent.
As to claim 4, Petitioner persuasively argues that a PT not receiving an
acknowledgment of a request within several frames will assume that the request
was not heard and will send another CROW in a randomly selected reservation
time unit. Pet. 14 (citing Ex. 1005, col. 7, l. 59–col. 8. l. 2). Petitioner also cites to
the testimony of its witness, Dr. Stark, for the proposition that a person of ordinary
skill would have understood that waiting a number of time frames, as described in
the ’450 patent, discloses an acknowledgment timer. Pet. 14–15.
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Claim 6 depends from claim 1 and recites receiving from the downstream
channel a payload bitstream containing a communicated message originating from
another station in the multiple access network. Claim 22 depends from claim 18
and recites the additional steps (step (d)) of receiving a payload bitstream from the
upstream payload channel originating from a first station and destined for a second
station and (step(e)) transmitting the payload on the downstream channel.
Petitioner treats claims 6 and 22 together. Pet. 16. Petitioner persuasively argues
that the ’450 Patent discloses that data intended for another satellite will be
transmitted in channel 25-3 (the return channel in the ’450 Patent), i.e., as an
upstream payload, to the NCT in one frame and retransmitted downstream from the
NCT in a later frame. Id.
Claim 9 depends from claim 1 and recites that the multiple access network is
a wireless network, that the station is a communication unit and that the shared
medium is air. Petitioner persuasively argues that claim 9 is anticipated by or
would have been obvious over the ’450 Patent based on the disclosure in the ’450
Patent of a network in which SATs, referred to as PTs, are communication units
that communicate via the translating transponder of a satellite, such that the shared
medium is air. Pet. 17. For similar reasons, we are persuaded that Petitioner has
shown by a preponderance of the evidence the unpatentability of claim 10, which
recites that the multiple access network is a satellite network, that the station is an
earth station, and that the communication medium is air and space. Id.
Claims 12 and 23 depend from claims 1 and 18, respectively, and recite that
the upstream control channel and the upstream payload channel are multiple access
channels. Petitioner persuasively argues that the ’450 Patent teaches this limitation
by its disclosure that the upstream and downstream channels are part of a multiple
channel demand assignment multiple access system. Pet. 18.
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Claim 24 depends from claim 18 and recites that the downstream channel is
received by a plurality of stations via the shared medium. As discussed above, in
the ’450 patent, the forward orderwire (FOW) on channel 25-1 identifies a time
when the PT may begin transmitting its data on return channel 25-3.
In consideration of the above, we conclude that Petitioner has demonstrated
by a preponderance of the evidence that claims 4, 6, 9–12, and 22–24 are
unpatentable as anticipated by the ’450 patent.
Claims 1, 4–7, 9–13, 18, 21–24, and 27 of the ’153 Patent as obvious under 35
U.S.C. § 103 over the ’450 Patent
Above we determined that claims 1, 4–6, 9–12, 18, 21–24, and 27 are
anticipated by the ’450 patent. For the same reasons, we agree that these claims
are obvious under 35 U.S.C. § 103 over the ’450 patent. We now turn our
attention to the challenges to claim 7 and 13 under 35 U.S.C. § 103.
Claim 7
Claim 7 of the ’153 Patent depends from claim 1 and recites the further
limitation that “each of said bitstreams received from said downstream channel are
organized onto MPEG-2 transport packets.” Emphasis added. Petitioner contends
that a person of ordinary skill would understand that data transmissions to and
from communications satellites in the ’450 Patent could use the well-known,
standardized MPEG-2 transport packet format. Pet. 16–17 (citing Stark Decl.
¶ 126).
The Petition cites several references in the ’450 patent teaching that data
from the NCT is received by the PT. Reply 17. Patent Owner argues that
Petitioner misapplies the disclosure in the ’450 patent concerning the capability of
an NCT to receive data transmissions from the communications satellite. PO
Resp. 37. According to Patent Owner, the ’450 patent merely discloses the
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capability of the NCT and not the capability of a subscriber station, which is a
distinct entity from the NCT, to receive from a downstream channel, as recited in
claim 7 of the ’153 Patent. Id. Patent Owner also argues that Petitioner ignores
important characteristics of MPEG-2 packets and that those of ordinary skill would
not assume that a satellite network, such as that in the ’450 patent, with a high
delay (558.4 msec) and a low maximum rate (19.2 Kbps) would be able to
transport MPEG-2 data. Id. at 38. Patent Owner urges that we not rely on the
technical conclusion of Petitioner's witness, Dr. Stark, in the absence of an attempt
to address how those of ordinary skill would reasonably expect success in
transmitting such a high rate video format on a low rate network. Id.
Petitioner replies that Patent Owner's witness, Dr. Wells, conceded that even
at a 19.2 Kbps data rate, the satellite disclosed in the’450 patent could transmit ten
MPEG-2 data packets per second. Reply 18 (citing Wells Tr. 139:12–140:1).
Petitioner also points out that the test for obviousness is not whether the
precise ’450 patent satellite could send MPEG-2 packets but whether the subject
matter would have been obvious at the time of the asserted invention. Id. (citing In
re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006)). Petitioner notes that Dr. Wells
concedes that in 1997 a person of ordinary skill would know of the existence of
satellites with data rates that could send and stream MPEG-2 data. Id. at 18–19.
Petitioner notes that the ’450 patent discloses that the outbound data messages
should be transmitted at the highest data rate usable and that the 19.2 Kbps rate is
exemplary. Id. We are persuaded by Petitioner’s arguments and evidence of
record. Thus, we find that one of ordinary skill would be motivated from the ’450
patent alone to employ the techniques disclosed therein in systems that provide
higher data rates. We conclude that Petitioner has demonstrated by a
preponderance of the evidence that claim 7 is obvious over the ’450 patent.
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Claim 13
Claim 13 recites that first and second modulation techniques are used for the
upstream control channel and the upstream payload channel, respectively, with the
first modulation technique optimizing the robustness of the upstream control
channel without degrading the robustness or utilization of the upstream payload
channel. Petitioner persuasively argues that the ’450 Patent teaches selecting
different modulation techniques and data rates for the upstream control and
payload channels, such as minimum shift keying, BPSK modulation and
convolution codes for forward error correction. Pet. 19 (citing Ex. 1005, col. 3,
ll. 12–17; col, 9, ll. 21–64; col. 11, l. 61–col. 12, l. 2). Citing the testimony of its
declarant, Dr. Stark, Petitioner further argues that it would have been known to a
person of ordinary skill to select different modulations for the upstream and control
channels to optimize the control channel robustness without degrading the
robustness of the payload channel. Id. (citing Ex. 1003, Decl. of Dr. Wayne Stark
(“Stark Decl.”) ¶ 131).
Patent Owner does not address claim 13 specifically. Instead, Patent Owner
contends that claims 4–7, 9–13 and 21–24 are patentable because Petitioner has not
shown that the ’450 patent anticipates or renders obvious the independent claims.
PO Resp. 39. We have addressed these issues above, and, therefore, conclude that
Petitioner has shown by a preponderance of the evidence that claims 4–7, 9–13,
and 21–24 are unpatentable.
Claims 2, 19 and 25 As Unpatentable Over the Combination of the’450 Patent and
the APA
Claims 2 and 19
Claim 2 of the ’153 patent depends from claim 1 and recites the further
limitations of, (step (e)) after beginning to perform step (a), i.e., transmitting a
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reservation request bitstream, receiving from the downstream channel a bitstream
indicating a collision occurred in the upstream control channel while performing
step (a) and (step (f)), in response, retransmitting the reservation request bitstream.
Claim 19 depends from claim 18 and recites (step (d)) detecting a collision during
step (a), i.e., receipt of a reservation request bitstream, and (step (e)), in response,
transmitting in the downstream channel a notification to each station that a
collision occurred at a particular reservation slot, as indicated by at least one of a
network identifier, an upstream control channel identifier, and a reservation request
mini-slot identifier. Claim 19 is similar to claim 2, except that it adds identifying
information. Petitioner cites the ’450 Patent as disclosing that PT sending a
request and not receiving an acknowledgement within a specified period will send
another contention return orderwire (CROW) in a randomly selected reservation
unit. Pet. 38– 39 (citing Ex. 1005, col. 7, ll. 62–65). Petitioner argues persuasively
that the APA discloses that, when a head end detects a collision, the head end
transmits a message via the downstream channel indicating at which slots the
collision was detected. Id. at 39 (citing Ex. 1001, col. 5, ll. 22–24). Patent Owner
states only that claims 2 and 19 depend from claims 1 and 18 and that Petitioner
does not rely on the APA to cure the deficiencies of the ’450 patent relative to the
independent claims. PO Resp. 43. We addressed the independent claims in our
discussion of the ’450 patent above. Therefore, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that claims 2 and 19 are
unpatentable as obvious over the combination of the ’450 patent and the APA.
Claim 25
Claim 25 depends from claim 18 and recites a further limitation on step (b),
i.e., transmitting on the downstream channel a bitstream indicating one or more
slots assigned to said particular station, in which each of the assigned slots is
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indicated by at least one of a network identifier, a station identifier, an upstream
payload channel identifier, and a mini-slot identifier. Patent Owner contends that
the combination of the ’450 patent and the APA does not disclose using any of the
identifiers listed in claim 25 to indicate an assigned slot. According to Patent
Owner, Petitioner cites the APA disclosure in the ’450 patent that “[t]he head end
12 then writes control packets into slots of the downstream channel DC indicating
which slots were assigned to each SS” for its disclosure of a mini-slot identifier,
but that the ’450 patent does not teach or suggest the indication of mini-slots. Id.
at 41. Patent Owner is also critical of our Decision to Institute on the basis that we
improperly cited material not cited by Petitioner indicating the transmission of the
station identifier in the upstream channel as part of a reservation request. Id. at 42
(citing Dec. to Inst. 32).
As an initial matter, Patent Owner contends that 35 U.S.C. § 316(b)
“prohibits the Board from invalidating a patent on the basis not proved by
Petitioners.” Id. We note, however, that in the Decision to Institute the subject
matter cited (Ex. 1001, col. 4, ll. 44–46 and 53–54) is in the same paragraph of the
’153 Patent as that cited by Petitioner (Ex. 1001, col. 4, ll. 64–66). This subject
matter provides context to our analysis, but is not a substitution for Petitioner's
contention.
Patent Owner argues that the station identifier noted in our Decision to
Institute is transmitted in the upstream channel as part of the reservation request to
inform the central controller as to which station is requesting a reservation, but that
the ’450 patent does not teach or suggest that the same identifier is used to indicate
slots after they have been assigned. Id. Petitioner replies that in the ’450 patent
the purpose of the head end assigning slots is to prevent stations from sending
upstream data in the same slot and that to accomplish this the downstream control
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information "indicat[es] which slots were assigned to each SS,” as stated in the
subject matter cited in the Petition. Reply 22 (citing Ex. 1001, col. 4, ll. 64–66).
Thus, slots are assigned to each SS. As Petitioner points out, to indicate which
slots were assigned to each SS the head end would have to, at a minimum, identify
both the station and the channel to be used by that station. Id. Petitioner further
notes that the ’450 patent discloses that the outbound channel control messages can
include the destination ID. Reply 23 (citing Petition 19 (quoting Ex. 1005, col. 8,
ll. 24–28)). Petitioner further cites the testimony of Dr. Stark that an allocation
message of an upstream channel for payload traffic should include sufficient
information to indicate which particular station is receiving the allocation. Id.
(citing Stark Decl. ¶ 138).
In view of the above, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claim 25 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of the ’450 patent and the APA.
Claims 3, 9, 20, and 26 as Obvious Over the Combination of the ’450 Patent and
the ’398 Patent
Claims 3 and 20
Claim 3 depends from claim 1 and recites as step (e) waiting until a
bitstream is received from the downstream channel indicating the identity of an
available group of reservation slots in the upstream channel before transmitting a
reservation request bitstream in step (a) and, as step (f), if data is available for
transmission from the station, randomly determining, based on the indicated
available group of reservation slots, whether or not to perform step (a) during one
of the available reservation slots. Claim 20, which depends from claim 18, recites
as step (d) transmitting on the downstream channel a bitstream including an
indication of a group of available reservation slots on the upstream channel.
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Petitioner contends that, although the sync in the ’450 Patent is not disclosed as
expressly including an indication of available reservation slots, the ’398 Patent
discloses a central unit transmitting on a downlink an access command indicating
that the common control channel on the uplink in the next N slots is available for
random access. Pet. 40.
Patent Owner contends that Petitioner’s position is not supported by facts
and that Dr. Stark’s testimony that “[s]ince a channel is dedicated to reservations
[in the ’450 patent] . . . the central controller does not need to say which slots
are reservations” contradicts Petitioner’s argument. PO Resp. 44. According to
Petitioner’s witness, Dr. Wells, in the absence of such a need, one of ordinary skill
would not be motivated to combine the teachings of the two references. Id. Thus,
Patent Owner argues, Petitioner fails to provide reasoned analysis to support the
combination of references. Id.
Petitioner replies that the ’450 and ’398 patents concern media access
networks with separate upstream control and payload channels. Reply 23. The
’450 patent is discussed extensively above. The ’398 patent concerns a
communications system in which a signaling channel is provided on the downlink,
a plurality of traffic channels are provided on the uplink and signaling information
is transmitted on the downlink signaling channel to indicate which of one or more
of the uplink channels is to be used as a signaling channel for a random access
request. Ex. 1007, Abstract.
Petitioner contends that Patent Owner takes the comments of Dr. Stark out
of context, as Dr. Stark simply stated that there is not a need to distinguish between
the types of data (payload versus control) in the ’450 patent's system. Id. at 24.
Petitioner further notes Dr. Stark's explanation that the ’398 patent discloses a
bitstream that specifies slots available for reservation by indicating “the next N
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slots (e.g., 3 or 4) is available ran[d]om access.” Id. (citing Stark Decl. ¶ 194;
Ex. 1007, col. 1, ll. 42–48). Petitioner contends that a person of ordinary skill
would have been motivated to use such a message to reduce collisions by more
precisely identifying the available slots on the reservation channel for requesting
slots on the (return) payload channel. Id.
The ’398 patent discloses that a known technique for reducing the
probability of collisions is dynamic frame based slotted aloha random access and
that in this arrangement,
an access command is transmitted by a central unit on the downlink
indicating that the common control channel on the uplink in the next
N slots (e.g., 3 or 4 random slots) is available for access . . . [T]his
arrangement has the result that access requests are spread over N
frames and are therefore less likely to collide.
Ex. 1007 col. 1, ll. 40–50.
In consideration of the above, we find that Petitioner has demonstrated that a
person of ordinary skill would be motivated to combine the teachings in the ’450
patent and those of the ’398 patent. We thus conclude that Petitioner has
demonstrated by a preponderance of the evidence that claim 3 and, similarly, claim
20, are unpatentable over the combination of the ’450 patent and the ’398 patent.
Claims 9 and 26
As discussed above, Petitioner has demonstrated that a person of ordinary
skill would be motivated to combine the teachings in the ’450 patent and the ’398
patent. Claim 9 recites that the multiple access network is a wireless network, and
that the station is a communication station and the shared medium is air. Petitioner
has argued persuasively that the disclosure in the ’398 patent of a wireless radio
environment can be combined with the disclosures in the ’450 patent, which
concern a satellite network. Pet. 43–44 (citing Ex. 1007, col. 1, ll. 13–15).
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Claim 26 of the ’153 Patent depends from claim 20 and recites that each of
the available slots is indicated by at least one of a network identifier, station
identifier, upstream control channel identifier, and a mini-slot identifier. Petitioner
contends that the ’450 patent discloses a sync message for transmission of control
information, and that the ’398 patent discloses transmitting a message indicating
that the next N slots are available. Pet. 51. Petitioner further argues that a person
of ordinary skill would recognize that such an indication constitutes a mini-slot
identifier and would have found it obvious to include such a mini-slot identifier
identifying available reservation slots in the FOW message in the ’450 patent. Id.
We previously addressed this issue concerning the same limitation in the context of
claim 25 and the ’450 patent, and we reach the same conclusion in this challenge.
As to claims 9, 20, and 26, Patent Owner also argues that Petitioner has not
shown the ’450 patent renders the independent claims obvious and that the ’398
patent does not cure the deficiencies of the ’450 patent. We have addressed these
claims in the context of the ’450 patent above.
In consideration of the above, we conclude that Petitioner has demonstrated
by a preponderance of the evidence that claims 3, 9, 20, and 26 are unpatentable
under 35 U.S.C. § 103 (a) as obvious over the combination of the ’450 patent and
the ’398 patent.
Claims 7, 8, and 13–17 as Unpatentable Over the Combination of the ’450 Patent
and the ’219 Patent
Claim 7
As discussed above, claim 7 of the ’153 Patent depends from claim 1 and
recites the further limitation that “each of said bitstreams from said downstream
channel are organized onto MPEG-2 transport packets.” Emphasis added.
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The ’219 patent discloses channel allocation for a hybrid fiber coax network
used in providing communications in telephone, data, television, and video
services. Ex. 1008, col. 1, ll. 25–31. The ’219 patent discloses a head end
providing downstream transmission of control and telephony information, which
may be on orthogonal carriers in a first bandwidth, and upstream transmission from
service units in a second bandwidth using at least one control channel for
transmission of upstream control data and a plurality of telephony information
channels for transmission for upstream telephony information. Id.at col. 5, ll. 36–
45. Telephony information in the ’219 patent includes telephone services and
digital data transfer services. Id. at col. 1, ll. 29–31.
The ’219 patent states that its principles, which apply to video transmission
over a hybrid coax network, could be applied to other networks such as wireless
networks. Id. at col. 18, ll. 59–67. Thus, Petitioner contends that the ’450 Patent
together with the ’219 Patent discloses that a person of ordinary skill would
recognize that downstream data transmissions can include well-known MPEG-2
format video. Pet. 42 (citing Ex. 1008, col. 10, ll. 56–60; Stark Decl. ¶ 196).
Patent Owner argues that Petitioner has not established the combination is even
plausible and that Dr. Wells confirms the latency and data rate restrictions would
not support MPEG-2 video.
We previously addressed a similar argument presented by Patent Owner in
concluding that Petitioner has demonstrated that claim 7 is unpatentable as obvious
over the ’450 patent alone. Petitioner notes, and we agree, that the ’219 patent
contains even further disclosure concerning the use of a media access control
network to transport MPEG-2 data. Reply 21 (citing Pet. 42–43). We reach the
same conclusion here as in the case of the ’450 patent alone. As we noted above,
Patent Owner’s argument focuses on whether the networks can be combined,
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rather than what the teachings of the references suggest to a person of ordinary
skill in the art. In consideration of the above, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that claim 7 is unpatentable
under 35 U.S.C. § 103(a) as obvious over the combination of the ’450 patent and
the ’398 patent.
Claims 8 and 13–17
Claim 8 recites that the multiple access network is a cable network, the
station is a subscriber station and the shared medium includes cabling. As
Petitioner notes, and we agree, the ’219 patent discloses a CATV network for
distribution of multichannel signals from a head end to a plurality of subscribers.
Pet. 43 (citing Ex. 1008, col. 2, ll. 9–11). Petitioner also argues persuasively that
contemporaneous art recognized that satellites and cable networks are analogous in
this context, such that a person of ordinary skill would be motivated to combine the
teachings in the ’450 patent and the ’219 patent.
Petitioner persuasively argues that, to the extent the ’450 patent does not
disclose sufficiently selecting different modulation schemes for the upstream
control and payload channels to optimize the robustness of the control channel
without degrading the robustness of the payload channel, as recited in claim 13,
this feature is taught in the ’219 patent. Pet. 44. Petitioner notes, and we agree,
that the ’219 patent discloses using quadrature amplitude modulation for the
telephony data and binary phase shift keying (BPSK) modulation techniques for
the synchronization channel and for IOC control data to provide robustness in the
system. Id. at 45. Petitioner cites the Declaration of Dr. Stark to support its
contention that one of ordinary skill would have combined these teachings of the
’450 and ’219 patents. We are persuaded by this testimony.
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Claim 14 recites that the upstream control channel on which the bitstream
containing the reservation request is transmitted in step (a) of claim 1 is one of a
plurality of upstream control channels. As Petitioner notes, and we agree, the ’219
patent discloses that a plurality of control channels are interspersed among the
telephony channels of the second frequency bandwidth. Pet. 45–46 (citing Ex.
1008, col. 5, ll. 49–51; col. 4, ll. 59–66). Petitioner cites testimony of Dr. Stark to
support persuasively its contention that the disclosure of at least 3 separate data
channels in the ’450 patent would suggest to a person of ordinary skill that two or
more control channels could be used in the upstream channel. Id. at 46 (citing
Stark Decl. ¶ 201). The three data channels discussed in the ’450 patent are a
forward channel outbound from the NCT, a reservation channel inbound from the
PT, and a return channel inbound from the PT. Ex. 1005, col. 4, ll. 50–57. We are
persuaded by Petitioner’s argument and evidence presented.
Claim 15 recites that the downstream channel on which the bitstream
containing the indication is received is one of plural downstream channels.
Petitioner notes, and we agree, that the ’219 patent discloses that the first
frequency bandwidth includes a plurality of telephony information channels for
transmission of downstream telephony information. Pet. 46–47. Petitioner argues
persuasively that that a person of ordinary skill would have been motivated to
combine the disclosure in the ’219 patent with that of the ’450 patent to provide
multiple downstream channels. Id. at 47.
Claim 16 recites that the upstream payload channel on which the bitstream is
transmitted in step (c) of claim 1 is one of plural upstream payload channels.
Petitioner argues persuasively that claim 16 would have been obvious over the
combination of the ’450 patent and the ’219 Patent based on the disclosure in the
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’219 patent of a plurality of telephony information channels for transmission of
upstream telephony information. Pet. 47 (citing Ex. 1008, col. 5, ll. 41–45).
Claim 17 recites prior to performing step (a) in claim 1, the step of receiving
on the downstream channel a bitstream indicating the identity of the multiple
access network, where the identity includes an identity of the downstream and
upstream channels. Petitioner notes, and we agree, that the ’450 patent discloses
that the FOW defines source and destination identification and contains DAMA
control information such as channel assignment, and timing and frequency
synchronization needed for a terminal to acquire the downlink. Pet. 48 (citing Ex.
1005, col. 2, ll. 22–24; col. 5, ll. 65–67). The ’450 patent discloses terminals that
request channel access via a return order wire (ROW) and the hub responds via the
FOW. Ex. 1005, col. 2, ll. 20–22, 27–29. Petitioner further notes that the HDT in
the ’219 patent can tell an ISU which 6 MHz band it should use for frequency
reception and later for frequency transmission upstream. Id. at 48–49 (citing Ex.
1008, col. 57, ll. 17–21; col. 111, l. 65–col. 114, l. 28). Petitioner specifically
points out that in the ’219 patent the channel manager assigns each ISU to a
subband, allocates channels in the subband to complete a communications link, and
broadcasts control data over the IOC channels to the ISUs. Id. at 49 (citing Ex.
1008, col. 112, ll. 2–5, 18–20). Petitioner’s witness notes that, given these
disclosures, a person of ordinary skill would be motivated to combine these
teachings as a matter of using known methods to achieve predictable results. Id.
(citing Stark Decl. ¶ 205). Petitioner’s arguments and evidence presented are
persuasive.
Patent Owner argues that claims 8–17 depend from claim 1, which is
patentable over the ’450 patent and that the ’219 patent does not cure the
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deficiencies of the ’450 patent relative to claim 1. We have addressed claim 1 in
the context of its patentability over the ’450 patent and the ’219 patent above.
In consideration of the above, we conclude that Petitioner has demonstrated
by a preponderance of the evidence that claims 8 and 13–17 are unpatentable as
obvious under 35 U.S.C. § 103(a) over the combination of the ’450 patent and the
’219 patent.
CONCLUSION
Based on the evidence and arguments presented, we conclude that Petitioner
has shown by a preponderance of the evidence that:
Claims 1, 4–6, 9–12, 18, 21–24, and 27 of the ’153 Patent are unpatentable
as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,392,450 (Ex. 1005, “the
’450 Patent”);
Claims 1, 4–7, 9–13, 18, 21–24, and 27 of the ’153 Patent are unpatentable
as obvious under 35 U.S.C. § 103 over the ’450 patent;
Claims 7, 8, and 13–17 of the ’153 Patent are unpatentable as obvious under
35 U.S.C. § 103 over the combination of the ’450 patent and U.S. Patent No.
6,334,219 B1 (Ex. 1008, “the ’219 patent”);
Claims 2, 19, and 25 of the ’153 Patent are unpatentable as obvious under 35
U.S.C. § 103 over the combination of the ’450 patent and the admitted prior art;
and
Claims 3, 9, 20, and 26 are unpatentable as obvious under 35 U.S.C. § 103
over the combination of the ’450 patent and U.S. Patent No. 5,680,398 (Ex. 1007,
“the ’398 patent).

IPR2014-01471
Patent 6,370,153 B1

35

ORDER
In consideration of the above, it is
ORDERED that claims 1–27 of the ’153 Patent are unpatentable; and
FURTHER ORDERED, that because this is a final written decision, parties
to the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Steven Spears
sspears@mwe.com

Matthew McCloskey
mmccloskey@mwe.com

PATENT OWNER:

Lori Gordon
lgordon-PTAB@skgf.com

Michael Specht
mspecht-PTAB@skgf.com

James Hietala
jhietala@intven.com

Tim Seeley
tim@intven.com