Ericsson Inc.v.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Mar 17, 2016

08843033 (P.T.A.B. Mar. 17, 2016)

Trials@uspto.gov
571-272-7822
Paper No. 36
Date Entered: 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 I LLC AND
INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

Case No. IPR2014-01412
Case No. IPR2015-01077
Patent 5,963,557
____________

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

McNAMARA, Administrative Patent Judge.

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

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BACKGROUND
Ericsson Inc. and Telefonaktiebolaget LM Ericsson (collectively,
“Petitioner”) filed a Petition (Paper 1, “Pet.”) for inter partes review of claims 1, 2,
4–7, 10, 12–16, 18–21, 24, 26–28, and 32 of U.S. Patent No. 5,963,557 (Ex. 1001,
“the ’557 Patent”). On March 18, 2015 we entered a Decision to Institute a trial
(Paper 8, “Dec. to Inst.”) on the following challenges to patentability of the claims:
Claims 7 and 21 of the ’557 Patent as anticipated under 35 U.S.C. § 102 by
U.S. Patent No. 5,392,450 (“the ’450 Patent”);
Claims 1, 4, 5, 7, 12, 13, 15, 18, 19, 21, 26, and 27 of the ’557 Patent as
obvious under 35 U.S.C. § 103(a) over the ’450 Patent;
Claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18–21, 24, 26, 27, and 32 of the ’557
Patent as obvious under 35 U.S.C. § 103(a) over U.S. Patent No. 6,334,219 (“the
’219 Patent”);
Claim 32 of the ’557 Patent as anticipated under 35 U.S.C. § 102 by the ’219
Patent;
Claims 15, 18, and 20 of the ’557 Patent as obvious under 35 U.S.C.
§ 103(a) over the combination of the ’450 Patent and the admitted prior art;
Claims 5, 10, 12, and 13 of the ’557 Patent as obvious under 35 U.S.C.
§ 103(a) over the combination of the ’450 Patent and the ’219 Patent;
Claims 19, 24, 26, 27, and 32 of the ’557 Patent as obvious under 35 U.S.C.
§ 103(a) over the combination of the ’450 Patent, the ’219 Patent, and the admitted
prior art;
Claims 7 and 14 of the ’557 Patent as obvious under 35 U.S.C. § 103(a) over
the combination of the ’450 Patent and U.S. Patent No. 5,680,398 (“the ’398
Patent”); and
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Claims 21 and 28 of the ’557 Patent as obvious under 35 U.S.C. § 103(a)
over the combination of the ’450 Patent, the ’398 Patent, and the admitted prior art.
On July 10, 2015, we joined IPR2015-01077 to this proceeding and
instituted trial on the following grounds:
Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
over the ’450 patent;
Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
over the combination of the ’450 patent and the ’219 patent; and
Claims 11 and 25 of the ’557 patent as obvious under 35 U.S.C. § 103(a)
over the combination of the ’450 patent and Bungum.
In the joined proceeding Intellectual Ventures I LLC and Intellectual
Ventures II LLC (collectively, “Patent Owner”) filed a Patent Owner Response
(Paper 17, “PO Resp.”) and Petitioner filed a Reply (Paper 22, “Reply). Oral
argument was consolidated with the oral argument in IPR2014-01471, which
concerns a continuation-in-part of the ’557 Patent, and heard on December 15,
2015. A transcript of the consolidated hearing (Paper 35, “Tr.”) was entered in this
proceeding.
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, 2,
4–7, 10–16, 18–21, 24–28, and 32 have been shown to be unpatentable.

THE ’557 PATENT
The ’557 Patent relates to a method and system for enabling point-to-point
and multicast communication in a network using three types of communication
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channels—namely, upstream payload channels, upstream control channels, and
downstream channels. Ex. 1001, Abstract. Figure 7 of the ’557 Patent is
reproduced below.

Figure 7 illustrates the three types of communication channels allocated by the
network of the invention.
The ’557 Patent discloses that a central controller at the head end of the
network is connected to the subscriber stations via a shared medium. Ex. 1001,
col. 8, ll. 2–5. 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. Downstream channels carry data from the central controller
to the stations. Id. at col. 8, ll. 34–48. 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 indicates the
slot assignment by transmitting a control message (“reservation grant”) to the
stations on the downstream channel (id. at col. 8, ll. 51–55; col. 13, ll. 39–48).
Each station then transmits payload data only in the assigned slots of the upstream
payload channel. Id. at col. 8, ll. 56–58.

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ILLUSTRATIVE CLAIMS
Of the challenged claims, claims 1, 6, 7, 10, 11, 12, 13, 15, 20, 21, 24, 26,
27, 28, and 32 are independent. Claims 1 and 15 are illustrative and are reproduced
below:
1. A network comprising:
a centralized controller,
a station connected to said centralized controller over a shared
medium,
a first distinct shared unidirectional transmission path being
established between said centralized controller and said station for
transmitting data from said centralized controller to said station,
wherein the first path being a downstream channel, and
at least a second and third distinct shared unidirectional
transmission paths being established between said centralized
controller and said station for transmitting data from said station to said
centralized controller, wherein the second and third paths each being an
upstream channel,
wherein said station transmitting reservation requests data on
said second path and receiving a payload data transmission grant from
said centralized controller on said first path to transmit payload data on
said third path from said station to said centralized controller on time-
slots allocated by said centralized controller, and
wherein said centralized controller receiving said reservation
request data on said second path from said station and transmitting on
said first path a payload data transmission grant to said station for
transmitting payload data on said third path on said time-slots allocated
by said centralized controller and
wherein each of said transmission paths comprises a channel
having a unique carrier frequency and bandwidth, and a modulation
scheme.

15. A multiple access method via a shared medium of a network, said
network comprising a centralized controller and a plurality of stations
connected to said centralized controller over a shared medium, wherein
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a first distinct shared unidirectional transmission path is established
between said centralized controller and said stations for broadcasting
data from said centralized controller to said stations, at least second and
third distinct shared unidirectional transmission paths for transmitting
data from said stations to said centralized controller, wherein the first
path being a downstream channel and said second and third paths each
being an upstream channel, said multiple access method comprising the
steps of:
transmitting from a particular station reservation request data on
said second path and receiving a payload data transmission grant
message from said centralized controller on said first path to transmit
payload data packets on said third path from said particular station to
said centralized controller on payload time-slots allocated by said
centralized controller,
transmitting from said particular station said reservation request
data on said second path if said particular station fails to receive a grant
message from said centralized controller within a predetermined time
delay or if said particular station receives a collision status message
from said centralized controller on said first path to retransmit said
reservation request according to a collision resolution algorithm,
receiving by said centralized controller said reservation request
data on said second path from said particular station, and transmitting
on said first path said payload data transmission grant data to said
particular station for transmission on said third path of payload data on
said payload time-slots allocated by said centralized controller, and
optionally detecting by said centralized controller a collision due
to simultaneous transmission of said reservation requests by two or
more stations on the same reservation timeslot of said second path, and
then transmitting said collision statuses of said reservation requests on
said first path to said stations, which will retransmit their reservation
requests according to said collision resolution algorithm,
wherein each of said transmission paths comprises a channel
having a unique carrier frequency and bandwidth, and a modulation
scheme.

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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
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 Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (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).
Transmission Path
In our Decision to Institute, we construed the term “transmission path” to
have its plain and ordinary meaning as “a communications path in a
communications network.” Dec. to Inst. 8. Patent Owner contends that we should
not construe this term at all because its plain and ordinary meaning is clear. PO
Resp. 6–7. Patent Owner disputes the authority of the IEEE reference we used to
establish the plain and ordinary meaning, arguing that Exhibit 1017 is not a
standard, but a functional requirements document generated to assist a working
group and is subject to change. Id. at 7–8. However, Patent Owner does not
propose a “plain and ordinary meaning.” Id. Nor does Patent Owner argue that the
scope of the term would be different if we rely on other evidence of the plain and
ordinary meaning. Id.
Although our Decision to Institute notes that the construction of
“transmission path” is not particularly material to the decision, Dec. to Inst. 7–8, it
is helpful to establish a baseline definition of the meaning as understood by those
of ordinary skill in the art. Patent Owner’s assertion that the definition we applied
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was used by an IEEE working group supports our determination that our
construction in the Decision to Institute applies the plain and ordinary meaning to
those of ordinary skill in the art. Accordingly, we adopt the construction of
“transmission path” as “a communication path in a communications network.”
Optionally
Consistent with its ordinary meaning, we construed the term “optionally” to
mean “left to choice, not mandatory.” Id. at 8–9. Patent Owner contends that our
construction is inconsistent with the use of “optionally” in the specification. Id. at
10. Patent Owner contends that in the context of the claim as a whole, optionally
reflects that a construction of “optionally detecting” consistent with its use in the
specification is that the capability of detecting a collision be present at the
centralized controller and that a collision may, on occasion, be encountered. Id. at
12. We discuss the use of the term “optionally” in the context of the claims in our
analysis of Representative Claim B and the ’450 patent.
Or
In our Decision to Institute, although we discuss the use of “or” in the claims
as part of our construction of “optionally” (Dec. to Inst. 8–9), we did not construe
specifically the term “or,” which is used in Representative Claim B. We address
the use of the term “or” in the context of the claims in our analysis of
Representative Claim B and the ’450 Patent.
Time-Slot
In this proceeding, neither party proposed a construction for the term “time-
slot,” and we did not construe it in our Decision to Institute. However, in related
case IPR2015-01471, which concerns a continuation-in-part of the ’557 Patent, it
became clear that a construction of the term “slot” was in dispute, and it was
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discussed extensively at the consolidated oral hearing. In this proceeding, Patent
Owner argues that the ’450 Patent does not disclose transmitting payload data on
time slots allocated by the network control terminal (NCT), because the NCT in
the ’450 Patent assigns only one slot, so that a small aperture terminal (SAT)
transmits data beginning on a single slot. PO Resp. 15–19. In IPR2014-01471, we
construed “slot” to mean “a duration of time.” Ericsson Inc. and
Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case 2014-
01471, slip op. at 7 (PTAB, March 17, 2015) (Paper 33, Final Written Decision).
We address the implications of this issue in our analysis of Representative Claim A
and the ’450 patent.
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
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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).
Representative Claims A and B
The Patent Owner Response addresses “Representative Claims A and B,”
which are not actual issued claims, but exemplary claims proposed in the Petition
that include elements common to other claims and are addressed in our Decision to
Institute.1 Dec. to Inst. 10–11, PO Resp. 14–41. The common limitations in
Representative Claim A, which is drawn to a network, as recited in claims 1–14,
are recited identically in challenged independent claims 1, 6, 7, 10, 12, and 13. Id.
The common elements in Representative Claim B, which is drawn to a multiple
access method via a shared medium, are recited identically in challenged
independent claims 15, 20, 21, 24, 26, and 27. Id. For purposes of our analysis the
relevant elements of Representative Claim A recite:
(a) three distinct shared unidirectional transmission paths
between a station and a centralized controller, a first path for
downstream transmission and a second and a third path for upstream
transmission;
(b) the station transmitting reservation requests to the
centralized controller on the second path and receiving from the
centralized controller on the first path a payload transmission grant to

1 As noted in the Decision to Institute, Patent Owner did not object to Petitioner’s
use of Representative Claims A and B. Dec. to Inst. 11.
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transmit payload data on the third path to the centralized controller on
time-slots allocated by the centralized controller; and
(c) operation of the centralized controller that mirrors the
operation of the station described in (b).
Id. at 12 (citing Pet. 15–16). Representative Claim B includes all of the limitations
of Representative Claim A and further recites:
(1) a plurality of stations;
(2) the station transmitting (i.e., retransmitting) the reservation
request if a grant message is not received within a predetermined time
delay, or if a collision status message is received from the centralized
controller to retransmit the reservation request according to a collision
resolution algorithm; and
(3) the centralized controller optionally detecting a collision of
reservation requests and transmitting the collision statuses on the first
path to the stations, which will retransmit the reservation requests
according to the collision resolution algorithm.
Id. (citing Pet. 16–17).
Grounds Based on the ’450 Patent
Representative Claim A
Most of the instituted grounds cite the ’450 patent. Patent Owner contends
that the ’450 patent does not disclose each and every element of representative
claims A and B and that nothing in the remaining references (the ’398 patent, the
admitted prior art (APA), the ’219 patent, or Bungum) cures the deficiencies in the
’450 patent.
The ’450 Patent discloses a satellite communications system in which a
satellite relays information between small-aperture terminals (SAT), which may be
portable terminals (PT), and a hub network control terminal (NCT). Ex. 1005,
Abstract. The NCT receives requests from the PTs, allocates channel resources,
and broadcasts housekeeping messages. Id. Three separate data channels, each on
a different frequency, are used to effect reservation and basic data transfer. Ex.
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1005, col. 4, ll. 51–53. As shown in Fig. 3, these are a forward channel 25-1 from
the NCT (outbound [from the NCT]), a reservation channel 25-2 from PT (inbound
[to the NCT]), and a return channel 25-3 from PT (inbound [to the NCT]). Id. at
col. 4, ll. 53–57.
Petitioner explains that Figure 3 of the ’450 patent shows a forward channel
25-1, a reservation channel 25-2, a return channel 25-3 (Pet. 13 (citing Ex. 1005,
col. 4, ll. 53–56)), and that Figure 5 of the ’450 Patent describes “the operation of
these channels . . . through which the centralized controller processes reservation
requests” (Id. (citing Ex. 1005, col. 7, l. 59–col. 8, l. 2)). Further, Petitioner’s claim
chart quotes the disclosure in the ’450 patent that an SAT wishing to transmit
information sends a “request 32” during a frame (frame 1) on reservation channel
25-2, and that “[t]he NCT response 34 appears in some later frame (e.g. frame 3)”
on forward channel 25-1, shown in Fig. 5 as 25-1b, which “acknowledges receipt
of the request and assigns a future frame and slot . . . .” Pet. 16 (emphases added)
(quoting Ex. 1005, col. 7, ll. 16–46) (internal quotation marks omitted). The claim
chart also quotes the next paragraph in the ’450 patent, which states “[d]ata
intended for another SAT will be transmitted in channel 25-3 to the NCT.” Id.
(citing Ex. 1005, col. 8, ll. 3–5). In addition, Figure 5 of the ’450 patent cited in the
claim chart and discussed in the Petition shows a transmission 36 labelled “DATA
TO NCT” in a slot along the time axis following the NCT response 34. Thus,
Petitioner has cited disclosure supporting its contention that the ’450 Patent
discloses “receiving a payload data transmission grant . . . to transmit payload data
on said third path . . . on time-slots allocated by said centralized controller,” as
recited in Representative Claim A.
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Patent Owner’s primary contention concerning Representative Claim A is
that the ’450 patent does not disclose the feature recited in Representative Claims
A and B, and referenced in the Petition as claim element A.5, that recites: “wherein
said station transmitting reservation requests data on said second path and
receiving a payload data transmission grant from said centralized controller on
said first path to transmit payload data on said third path from said station to said
centralized controller on time slots allocated by said centralized controller.” PO
Resp. 15–16, 18–19. Patent Owner contends that the claims of the ’557 Patent
explicitly require that the centralized controller allocate plural time-slots for
transmission of payload data, as contrasted with the ’450 patent, in which the NCT
only specifies the start of the transmission time and in which the SAT transmits its
entire message without regard to the length of time required for such transmission.
Id. at 16, 19. Patent Owner highlights the unframed structure of the return channel
in the ’450 patent as evidence that the ’450 patent does not disclose a central
controller allocating time-slots to payload data transmission. Id. at 16–18.
Petitioner notes that the claims put no limitation on how the allocation of
slots is to be made and that in the ’450 patent, the transmission timing and length
are not arbitrary, but known and controlled by the NCT. Reply 6–7. Petitioner
argues that Figure 5 of the ’450 patent discloses a station responding to receipt of a
grant by transmitting to the NCT an upstream sync portion that is two 45 msec
slots long, followed by payload data for a time period that is longer than the two
slot sync and would be understood by a person of ordinary skill to comprise
multiple slots. Id. at 6. Citing the testimony of Patent Owner’s witness, Dr.
Jonathan Wells, Petitioner also argues that, even if the ’450 patent is read to assign
only one slot corresponding to the duration of the payload, assigning multiple slots
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was well known in the prior art, and using multi-slot allocations in a separate
upstream channel would have been obvious. Id. at 7. Petitioner further disputes
Patent Owner’s assertion that the claims require a multi-slot assignment for a
single request because the specification uses the terms “slot” and “slots”
interchangeably, the claims “would make no sense” when only one slot of data
needs to be transmitted, and because Patent Owner’s witness, Dr. Wells, testified
that “slots” encompasses “one or more slots” as used in the ’557 Patent. Id. at 8
(citing Transcript of Deposition of Dr. Jonathan Wells, Ex. 1023 (“Wells Tr.”),
54:17–56:9).
Claim element A.5 concerns actions taken by the station. As noted above,
the elements of Representative Claim A, including element A.5, are common to
independent claims 1 and 15. Patent Owner’s argument does not consider other
language in claim 1 that provides context for limitation A.5 concerning the central
controller that provides the grant to which the station responds. Apparatus claim 1
recites that, upon receiving a reservation request, the central controller responds by
“transmitting on said first path a payload data transmission grant to said station
for transmitting payload data on said third path on said time-slots allocated by
said centralized controller.” Almost identical language appears in method claim
15. Claims 1 and 15 do not limit the form of the grant, nor do claims 1 and 15
limit the time-slots allocated by the central controller. For example, there is no
requirement in the claims that the grant authorize a specific number of time-slots or
that the time slots be of any particular duration. Claims 1 and 15 recite that, in
response to receiving a request on the second path, the centralized controller
transmits on the first path a “grant” authorizing payload data transmission on the
third path at allocated time-slots. Claims 1 and 15 do not limit the allocated time
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slots to any particular frame or time. Nor do claims 1 and 15 preclude allocating
sufficient time slots for the terminal to transmit its entire message.
Given the language of the claims, we conclude that Petitioner has shown by
a preponderance of the evidence that the ’450 patent discloses the recited features
in element A.5, which appears in the challenged claims illustrated by
Representative Claim A (independent claims 1, 4, 5, 7, and 10–14, as well as
corresponding dependent claims 2–4) and Representative Claim B (independent
claims 15, 21, and 25–27, as well as corresponding dependent claims 16–19).
Representative Claim B
As discussed above, Representative Claim B has three elements. There is no
dispute that the ’450 patent discloses the first element, i.e., a plurality of stations.
We turn our attention to elements B.2 and B.3
Elements B.2 and B.3
As discussed below, Elements B.2 and B.3 are analyzed together. Element
B.2 recites in part “transmitting from said particular station said reservation
request data on said second path if said particular station fails to receive a grant
message from said centralized controller within a predetermined time delay. . .”
Id. The Petition cited to column 7, line 59 through column 8, line 2, as disclosing
this limitation. Pet. 16–17. The disclosure the Petition cites states that if two
different PTs attempt to send requests in the contention return order wire (CROW)
portion, the NCT will detect the collision and not send an acknowledgement, and
that in the absence of an acknowledgement the PT will assume that it was not
heard and send another CROW in a randomly selected time unit. Ex. 1005, col. 7,
ll. 59–65. The disclosure cited by Petitioner also states that a PT receiving an
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acknowledgement but no transmission assignment continues listening for another
timeout interval. Id. at col. 7, ll. 66–68.
Patent Owner first contends that the ’450 patent does not disclose the
“predetermined time delay” element (identified as element B.2) that is common to
all the claims corresponding to Representative Claim B. PO Resp. 20. Patent
Owner argues that the disclosure cited by Petitioner is not sufficient because it fails
to disclose the claimed feature that the grant message must be received within a
time delay that is predetermined. PO Resp. 20–21. According to Patent Owner, in
the ’450 patent, the time delay is not predetermined because the timeout interval
begins at the receipt of the acknowledgement, which can occur at any time. Id. at
21. Petitioner notes that there is no dispute that the ’450 patent discloses waiting
several frames before retransmitting a reservation request. Reply 9. Petitioner
argues that in Figure 5, the ’450 patent shows waiting three frames between the
reservation request and the repeated reservation request, and cites the testimony of
Petitioner’s witness, Dr. Wayne Stark, and Patent Owner’s witness, Dr. Wells, that
the several-frame delay is a matter of system design and that the system would be
programmed to know precisely how long to wait for a reservation request. Id.; Pet.
Opp. to Mot. for Observations on Cross Examination 4–5. Dr. Stark notes that the
’557 Patent does not provide any explicit definition of the term “predetermined
time delay” (Ex. 1024, Reply Decl. of Dr. Wayne Stark (“Stark Reply Decl.”) ¶ 38)
and contests the assumption by Dr. Wells that “predetermined” means a static or
fixed time delay, as opposed to a time delay determined in advance. Id. ¶ 40. Dr.
Stark notes Dr. Wells testified that receipt of the acknowledgment has the effect of
resetting a timer. Id. ¶ 39. We agree with Dr. Stark’s observation that this
testimony by Dr. Wells is a tacit admission that the delay in the ’450 patent is
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predetermined, as in the expiration of a timer. Id. Thus, we find that the ’450
patent discloses the predetermined time delay recited in element B.2 of
Representative Claim B.
Patent Owner also contends that the ’450 patent does not disclose the
collision status elements recited in element B.2 and element B.3 of Representative
Claim B. PO Resp. 21–24. In addition to the subject matter discussed above, i.e.,
“transmitting . . . said reservation request data . . . if said particular station fails to
receive a grant message from said centralized controller within a predetermined
time delay,” element B.2 also recites “or if said particular station receives a
collision status message from said centralized controller on said first path to
retransmit said reservation request according to a collision resolution algorithm.”
Id. at 21–22. Patent Owner argues that, in addition to transmitting reservation
request data within a “predetermined time delay” as discussed above, element B.2
requires transmitting reservation request data if the particular station receives a
collision status message. Id. at 21. According to Patent Owner, the Petition does
not establish that the ’450 patent discloses both capabilities and does not mention
the acknowledgement message corresponding to a collision status message because
one of ordinary skill would not consider an acknowledgement message to be a
collision status message. Id. at 23. Petitioner responds that the claim is written in
the alternative using the disjunctive term “or” and that the recited collision status
message is not necessary for anticipation. Reply 9–10.
Patent Owner also argues that Petitioner has not established that the ’450
patent discloses element B.3, i.e., “optionally detecting by said centralized
controller a collision due to simultaneous transmission of said reservation requests
by two or more stations on the same reservation time-slot of said second path, and
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then transmitting said collision statuses of said reservation requests on said first
path to said stations, which will retransmit their reservation requests according to
said collision algorithm.” PO Resp. 23–24. The claim chart in the Petition notes
that this feature is “optional” and refers the reader to the analysis of claim element
B.2. Pet. 17. Patent Owner argues that “optionally detecting” would have been
understood by those of ordinary skill to require that the capability of detecting a
collision be present at the centralized controller. Id. at 24.
The claim language recites “optionally detecting . . . a collision . . . and then
transmitting said collision statuses.” Patent Owner’s position appears to be that in
order to be able to choose whether to exercise the option of detecting a collision
and transmitting collision statuses, the central controller must have that capability.
However, instead of a structure having the capability to perform both actions, the
“optionally detecting” language appears in a claim drawn to a method, i.e.,
Representative Claim B, which as discussed above, is drawn to a multiple access
method via a shared medium, and recites common elements identical to those
recited in challenged independent claims 15, 20, 21, 24, 26, and 27. As discussed
further below, the claim language does not require the centralized controller to
have a structure that performs this step. Instead, the claim language recites that the
step of detecting collisions and transmitting collision statuses is optional. Such
optional elements do not narrow the claim because they can always be omitted. In
re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006).
Our analysis of elements B.2 and B.3 are related inextricably to each other
because element B.3 makes optional detecting collisions and transmitting collision
statuses to the stations on the first path. The alternative following “or” in Element
B.2 recites a collision status message, but does not limit how that message is
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generated. Petitioner argues that Patent Owner seeks to write out the word “or” in
the claim and replace it with “and.” Reply 3.
Courts have recognized that “or” is not restricted to mutually exclusive
alternatives (A or B, [but not both]) and may be used to denote an inclusive list (A,
or B [or both]), depending on context. Gonzalez v. Infostream Group, Inc., Case
No. 2:14–cv–906–JRG–RSP, 2015 WL 5604448, at *17–19 (E.D. Tex. Sept. 21,
2015). In addition, discussing the implications of a statement in the prosecution
history that “disparate databases” refers to the absence of common keys “or”
record ID columns of similar value, the Federal Circuit noted that the statement
could be interpreted to mean the absence of any one of these characteristics makes
the databases disparate (“disjunctive interpretation”) or that only the absence of all
these characteristics makes them disparate (“conjunctive interpretation”).
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 679–681 (Fed. Cir.
2015) (concluding that the applicant distinguished the reference based on the
conjunctive interpretation and affirming the district court’s construction that
“disparate databases” means databases that have (1) an absence of compatible
keys; and (2) an absence of record ID columns of similar value; and (3) an absence
of record ID columns of similar format in the schemas and format that would
otherwise enable linking data).
Although the Federal Circuit consistently has interpreted the meaning of the
word “or” to mean the items in the sequence are alternatives to each other, that is
not the end of the inquiry where a question remains as to whether the claims should
be interpreted to mean a method that must be capable of carrying out each of the
alternatives. Schumer v. Lab. Comput. Sys., Inc., 308 F. 3d 1304, 1311–14 (Fed.
Cir. 2002) (distinguishing between a product claim and a process claim limited to a
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particular machine, where the concept of capability has relevance, and a method
claim not tied to a particular device, and finding infringement of the method if any
one of three features of a coordinate system is translated). Representative Claim B
concerns a multiple access method in which claim element B.2 does not limit the
structure of the station to one that must have the capability of receiving a collision
status message from the central controller to transmit a reservation request; nor
does element B.2 limit the central controller to any specific structure that detects a
collision and transmits a collision status message. Thus, Representative Claim B
encompasses, and is disclosed by, a method in which the central controller detects
a collision, transmits a collision status message to the station and then receives
reservation request data, or a method in which the central controller receives
reservation request data from the station after a predetermined delay, as described
in the ’450 patent.
Our conclusion is consistent with a reading of elements B.2 and B.3
together, rather than in isolation. What distinguishes this case is the alternative
recitation in element B.2 “or if the station receives a collision status message from
said centralized controller on said first path” together with the recitation in
element B.3 of “optionally detecting . . . a collision . . . and then transmitting
collision statuses . . . on said first path to said stations . . .” As discussed above,
the claim recites that detecting a collision and transmitting a status on the first path
is optional. Because detecting a collision and transmitting a status is optional, we
must read the second part of limitation B.2, which recites transmitting reservation
request data after a predetermined time delay “or if the station receives a collision
status message from the centralized controller,” to be optional as well.
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Thus, we find that Petitioner has shown by a preponderance of the evidence
that the ’450 patent discloses all the limitations in Representative Claim B, i.e. the
’450 patent discloses the first part of the limitation recited in claim element B.2
and, given the language identifying alternatives and options in claim limitations
B.2 and B.3, it is not necessary for the ’450 patent to describe any further features
to disclose Representative Claim B.
Having determined that Petitioner has demonstrated by a preponderance of
the evidence that the common limitations of Representative Claims A and B are
disclosed by the ’450 patent, we turn to the challenges to specific claims based on
the ’450 patent alone or in combination with other references.
Anticipation and Obviousness of Claims 7 and 21 by the ’450 Patent
Patent Owner contends that Petitioner has not established that the ’450
patent teaches the limitation “wherein said centralized controller is a base-station.”
PO Resp. 26–27. Petitioner argues that the claims of the ’557 Patent are not
limited to land based stations and that the ’557 Patent discloses that the principles
of using two upstream and one downstream channel can be practiced in wireless,
cable, and satellite contention resolution systems. Reply 11–12 (citing Ex. 1001,
col. 19, ll. 39–57). Patent Owner argues that the NCT in the ’450 patent is a
component of a satellite system that acts as a relay for communications between
portable terminals, and that the claimed base station is a component of a land based
cellular system in which the base station connects mobile users to a larger network.
Id. at 28.
The Specification of the ’557 Patent describes a cable system
implementation and specifically states: (1) that “the implementation of the
invention in a cable network was merely illustrative” (Ex. 1001, col. 19, ll. 39–40);
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(2) that another example is an implementation in a wireless system in which the
central controller is a base station and that the communication units are cordless or
cellular telephones (id. at col. 19, ll. 41–42); and (3) that when employed in a
satellite system the central controller is a satellite and the subscriber stations are
earth stations (id. at col. 19, ll. 50–54). As previously discussed, the ’450 patent
discloses in Figure 1 NCT 12, which communicates with portable terminals 14
through satellite 11, using two upstream channels and one downstream channel.
Ex. 1005, Abstract, Fig.1. Thus, the ’450 patent discloses the NCT in the context
of a satellite network. Claims 7 and 21 recite only that the centralized controller is
a base station, that the network is a wireless network, that the transmission medium
is air, and that the station is a mobile or stationary communication unit. Claims 7
and 21 do not limit a wireless network to a non-satellite network, or, in the case of
a satellite network, limit the base station to any particular node. Thus, we conclude
that Petitioner has shown by a preponderance of the evidence that the ’450 patent
anticipates the base station limitation of claims 7 and 21.
Petitioner further notes that the question is not whether cellular base stations
and satellites have differences, but whether media access controller and contention
resolution access principles used in satellite and cellular applications are
translatable to each other. Reply 12. To the extent that the base station is
considered to be limited to a cellular wireless network as argued by Patent Owner,
we note (1) that the Specification of the ’557 patent extends the concept of using
two upstream channels and one downstream channel to a wireless network (Ex.
1001, col. 19, ll. 50–57) and (2) that the ’450 patent discloses the two upstream,
one downstream channel approach in the context of a satellite network, in which
the transmission medium is air and the central controller is the satellite (Ex. 1005,
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4:50–57). Thus, we conclude that Petitioner has shown by a preponderance of the
evidence, that this limitation, which recites that the central controller is a mobile or
stationary base station in a wireless network in which the transmission medium is
air, is obvious under 35 U.S.C. § 103(a) over the ’450 patent.
Obviousness of Claims 1, 4, 5, 7, 12, 13, 15, 18, 19, 21, 26, and 27 over the
’450 Patent
Patent Owner argues that Petitioner “failed to set forth a prima facie case
that claims 1, 4–7, 12, 13, 15, 18–21, and 26–27 are obvious over the ’450 patent,”
arguing that Petitioner does not explain the differences between the ’450 patent
and independent claims 1, 7, 12, 15, 20, 21, and 26. PO Resp. 42–43. We have
already addressed claims 7 and 21. Thus, we discuss below the independent claims
remaining in this ground of unpatentability over the ’450 patent.
Patent Owner’s argument is not persuasive because Patent Owner does not
offer specific arguments concerning the differences it argues are unexplained by
Petitioner.2 Patent Owner addresses claim pairs 7 and 21 (already discussed), 11
and 25, 12 and 26, and 13 and 27 under the heading “Petitioners failed to establish
the ’450 patent alone or in combination with any of the ’398 patent, the alleged
APA, the ’219 patent, or the Bungum reference fail to disclose the “wherein”
clauses of the independent claims.” PO Resp. 25–26. We address the claim pairs
not discussed in the Patent Owner Response as well as claim pairs 12 and 26, and
13 and 27 in this section of the Final Written Decision. We address claims 11 and
25 in a separate section.
We address below the disclosures of the ’450 patent with reference to each
of the claim limitations (in pairs) as they are addressed in the Petition. For the

2
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reasons discussed below, we find that the Petition sufficiently addressed each of
the claim limitations at issue.
Claims 1 and 15
As to the limitation in claims 1 and 15 “wherein each of said transmission
paths comprises a channel having a unique carrier frequency and bandwidth, and
a modulation scheme,” Petitioner cites to the disclosure in the ’450 patent that a
forward (downstream) channel and a return (upstream) channel can support a range
of transmission rates. We agree with Petitioner’s argument and evidence. We
declined to adopt Patent Owner’s argument that the forward and return channels
have the same data rate and therefore a person of ordinary skill would have
understood the channels to have the same bandwidth. See Dec. to Inst. 17–18. As
discussed above, Patent Owner offers no further argument or evidence on this
issue.
Claims 4 and 18
As to the limitation “wherein said network comprises three shared
unidirectional paths” in claims 4 and 18, Petitioner cites to Figure 3 and column 4,
line 48 through column 5, line 11 and argues that this limitation is disclosed in the
’450 patent. See Dec. to Inst. 19. We agree with Petitioner’s argument and
evidence.
Claims 5 and 19
As to the limitation “wherein said first path on which payload and control
data packets are transmitted is one of plural downstream channels” in claims 5
and 19, Petitioner cites to column 5, lines 29–35 and column 6, line 64 through
column 7, line 1 and argues that this limitation is disclosed in the ’450 patent. See
Dec. to Inst. 18–19. We agree with Petitioner’s argument and evidence.
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As noted above, Patent Owner argues generally that Petitioner has not
explained the differences between the above discussed claims and the ’450 patent,
but does not provide specific arguments. After considering the disclosures referred
to above, and in light of our interpretation of Representative claims A and B as
discussed above, we conclude that Petitioner has demonstrated by a preponderance
of the evidence that claims 1, 4, 5, 15, 18, and 19 are unpatentable over the ’450
patent.
Claims 12 and 26
As to the limitation “wherein first and second modulation schemes are used
for said second path and third path, respectively, wherein said second path being
an upstream control channel (UCC) and said third path being an upstream
payload channel (UPC), and wherein said first modulation scheme enhances
robustness and efficiency of said reservation request packet transmission of said
UCC without degrading the robustness, efficiency and utilization of said UPC” in
claims 12 and 26, we were persuaded, at institution, by Petitioner’s citation to the
testimony of Dr. Stark that a person of ordinary skill would understand that a
purpose of the modulation disclosed in the ’450 patent would be to enhance
robustness, and that different ones of the disclosed modulation techniques, such as
minimum phase shift keying and BPSK modulation could be used in separate
upstream channels to enhance robustness and efficiency. See Dec. to Inst. 22−23.
Patent Owner contends that Petitioner fails to address the second component of this
limitation, i.e., “without degrading the robustness.” PO Resp. 39–40. Petitioner
replies that this element was plainly addressed in the Petition because the use of
different modulation schemes used on each channel does not suggest any
degradation of robustness and efficiency. Reply 18. We further note Dr. Stark’s
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testimony that a person of ordinary skill would understand “that because the
channels are distinct, e.g. in frequency, use of a first modulation scheme, selected
to enhance robustness/ efficiency for the upstream control channel could be
implemented without degrading the robustness, efficiency, or utilization of the
upstream payload channel.” Ex. 1003, Declaration of Dr. Wayne Stark (“Stark
Decl.”) ¶ 141 (emphasis added). We credit this testimony and find it persuasive.
We also find persuasive the testimony (offered by Petitioner) of Patent Owner’s
witness, Dr. Wells, that modulation techniques on one channel do not impact the
robustness and efficiency on the other channel. Reply 17 (citing Wells Tr. 114:7–
16). Thus, contrary to Patent Owner’s argument, Petitioner has addressed the
second component of the limitation and has demonstrated by a preponderance of
the evidence that claims 12 and 26 are unpatentable as obvious under 35 U.S.C.
§ 103(a) over the ’450 patent.

Claims 13 and 27
As to the limitation “wherein said second path on which reservation request
packets are transmitted is one of a plurality of upstream control channels” in
claims 13 and 27, we noted at institution the disclosure at column 4, lines 48–52 of
the ’450 patent that the channel access protocol uses frequency division multiple
access (FDMA) techniques and Dr. Stark’s testimony that a person of ordinary
skill would have understood that, using FDMA, the channels would operate
independently. See Dec. to Inst. 23–24. Patent Owner contests the assertion in the
Petition that, because the ’450 patent discloses time slots disclosed in the upstream
control channel, a person of ordinary skill would understand that time slots could
be used for multiple time division multiple access (TDMA) channels. PO Resp.
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41. According to Patent Owner, Petitioner’s assertion erroneously equates time
slots with channels and the existence of multiple time slots, without more, does not
establish the existence of multiple channels. Id. Petitioner replies by noting that
claims 13 and 27 require only a plurality of upstream channels and the claims are
not limited to TDMA or FDMA channels. Reply 18. Petitioner also cites the
testimony of Patent Owner’s witness, Dr. Wells, that the claims are not limited to
FDMA channels and that TDMA channels were known. Id. (citing Wells Tr.
122:9–123:18). We are persuaded by Petitioner’s argument that the claim
language only requires upstream control channels, without restriction to any
particular type of channel, FDMA, TDMA, or otherwise. Given the claim
language, Petitioner has demonstrated by a preponderance of the evidence that
claims 13 and 27 are obvious over the ’450 patent.
Obviousness of Claims 15, 18, and 20 over the ’450 Patent and the Admitted
Prior Art; Obviousness of claims 21 and 28 over the ’450 Patent, the ’398
Patent, and the Admitted Prior Art; Obviousness of Claims 19, 24, 26, 27,
and 32 as Obvious over the Combination of the ’450 Patent, the ’219 Patent,
and the Admitted Prior Art
We instituted trial of claims 15, 18, and 20 of the ’557 Patent as obvious
over the combination of the ’450 Patent and the admitted prior art; claims 21 and
28 as obvious over the combination of the ’450 patent, the ’398 patent, and the
admitted prior art; and claims 19, 24, 26, 27, and 32 as obvious over the
combination of the ’450 patent, the ’219 patent, and the admitted prior art. See
Dec. to Inst. 48. Although the Decision to Institute does not number the grounds,
Patent Owner identifies these grounds as grounds 6–8, respectively (PO Resp. 13–
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14) and argues them together. PO Resp. 24–25.3 Patent Owner contends that
Petitioner has not established that the admitted prior art discloses the
“predetermined time delay” recited in these claims. Id. at 25. However, as we
discussed in our analysis of Representative Claim B, Petitioner has demonstrated
by a preponderance of the evidence that the ’450 patent discloses this claimed
limitation. Patent Owner has presented no persuasive arguments that refute the
evidence presented in the Petition, evidence which we found sufficient to institute
trial with respect to claims 15, 18, 19, 21, 24, and 28.
We have reviewed the evidence and arguments presented. For example, for
claims 15, 18, and 20, we find that the APA discloses that when a head end detects
collision, the head end transmits a message via the downstream channel indicating
in which slots the collision occurred. See Pet. 43 (citing Ex. 1001, col. 5, ll.
11−13). We also credit the testimony of Dr. Stark that one of ordinary skill in the
art would have applied the known techniques of the admitted prior art to the known
method of detecting collision in the ’450 patent to achieve a predictable result. See
Pet. 54 (citing Ex. 1003 ¶ 224). Further to claim 21, we find that the disclosure in
the ’398 patent of a wireless radio environment can be combined with the
disclosures of the ’450 patent concerning a satellite network. See Pet. 56 (citing
Ex. 1022, col. 8, ll. 6−23; Ex. 1003 ¶ 237). As to claim 28 we find that the ’398
patent discloses multiple uplink traffic channels on which access requests can be
transmitted. See Pet. 50−51 (citing Ex. 1022, col. 5, ll. 58−61; col. 5, l. 67−col. 6,
l. 1). And we find that the alleged combination of the ’450 and ’398 patent

3 Patent Owner also presents additional arguments concerning claim 20 (id. at 43–
44), claim 26 (id. at 39–40), claim 27 (id. at 41–42), and claim 32 (id. at 45).
These additional arguments are addressed separately in this Final Written Decision.
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involves using a known technique (upstream air traffic channels to transmit a
reservation request in a network having both upstream traffic and control channels)
in a known manner (in a network having an upstream reservation channel on which
reservation requests are transmitted and an upstream transmission channel) to yield
predictable results (increasing the maximum number of random accesses per unit
time so that the capacity of the uplink common random access channel is no longer
the limiting factor of the common control channel capacity). See Pet. 58−59
(citing Ex. 1022, col. 7, ll. 57−63; Ex. 1003 ¶ 241). Finally, as to claims 19, 24,
26, 27, and 32, we adopt as our own findings the facts presented by Petitioner
concerning the disclosure and rationale for the combination of the ’450 patent, the
’219 patent, and the admitted prior art as summarized in our Decision to Institute at
pages 41−44.
We determine that Petitioner has demonstrated by a preponderance of the
evidence that claims 15, 18, 19, 21, 24, and 28 are unpatentable on the above
grounds. As noted, Patent Owner’s arguments concerning claims 20, 26, 27, and
32 are discussed further herein.

Claim 20
Patent Owner argues that claim 20 was erroneously included with the
challenge to claims 15 and 18 as obvious over the combination of the ’450 patent
and the admitted prior art because we expressly found that the ’450 patent does not
disclose the limitation “wherein transmissions over said second and third paths are
carried out simultaneously during overlapping time periods in said station.” PO
Resp. 43–44 (citing Dec. to Inst. 20). Our Decision to Institute looks to
Petitioner’s citation of the Admitted Prior Art for this disclosure. Dec. to Inst. 41.
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The Petition cites the disclosure in the ’557 Patent that when a head end
monitoring each mini-slot detects a collision, the head end transmits a message via
the downstream channel DC indicating during which slot the collision was
detected. Pet. 43 (citing Ex. 1001, col. 5, ll. 11–13). Petitioner notes that in the
Admitted Prior Art, the head end immediately notifies the device of a collision,
rather than having the device wait for a time-out period. Pet. 54. As a result,
transmissions over the second and third paths are carried out simultaneously during
overlapping time periods in the station, as recited in claim 20. Petitioner argues
that the combination with the ’450 patent is motivated by the limited number of
alternatives (the only two possibilities are to: (1) transmit a collision message, or
(2) wait for a time-out). Id. at 54–55. We credited Dr. Stark’s testimony (Stark
Decl. ¶ 224) and found Petitioner’s argument persuasive. Dec. to Inst. 41. Patent
Owner has presented no persuasive arguments refuting the evidence presented by
Petitioner. Thus, Petitioner has demonstrated by a preponderance of the evidence
that the contested limitation of claim 20 is disclosed by the combination of the
’450 patent and the Admitted Prior Art.

Claim 26
Claim 26 recites substantially the same limitation as that recited in claim 12.
As discussed above, we have concluded that both claims 12 and 26 are
unpatentable over the ’450 patent alone. Further, at Institution, we were persuaded
by Petitioner’s evidence and arguments presented in the Petition, which we adopt
as our findings here, that the ’219 patent discloses using different modulation
schemes for different carriers, and that the use of different modulation schemes on
different upstream channels in the ’450 patent multiple upstream channels would
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yield a predictable result of allowing for different data rates on the different
channels. See Dec. to Inst. 42−43 (relying on Pet. 29, 57 (citing Ex. 1008, col. 6,
ll. 28−41; Ex. 1003 ¶ 239)). In the context of the combination with the Admitted
Prior Art (and also with the ’219 patent discussed further herein), Patent Owner
advances the same argument, i.e., that the ’450 patent does not disclose the first
modulation does not degrade the robustness, efficiency, and utilization of the
upstream payload channel. PO Resp. 40–41, 52. Having already declined to adopt
Patent Owner’s argument and relying on our findings above, we conclude that
Petitioner has demonstrated by a preponderance of the evidence that claims 12 and
26 are also unpatentable over the combination of the ’450 patent with the Admitted
Prior Art and the combination of the ’450 Patent, the Admitted Prior Art, and the
’219 Patent, discussed further herein.
Claim 27
Claim 27 recites substantially the same limitation as that recited in claim 13.
As discussed above, we have determined that Petitioner has demonstrated by a
preponderance of the evidence that claims 13 and 27 are unpatentable over the
’450 patent. Further, at Institution, we were persuaded that the ’219 patent
discloses a second path is one of a plurality of upstream control channels because it
discloses that a plurality of control channels are interspersed among the telephony
channels in the second frequency bandwidth. See Dec. to Inst. 35, 43−45 (citing
Ex. 1008, col. 5, ll. 48−51, col. 55, l. 65−col. 56, l. 63). We adopt this as our
finding, and further find that the combination of the ’450 patent upstream
reservation channel and the ’219 patent multiple upstream control channel would
yield the predictable result of reducing the amount of contention on the reservation
channel by allowing for use of additional control channels for reservations, in
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accordance with the evidence and arguments presented by Petitioner. See Pet. 58
(citing Ex. 1003 ¶ 240). Patent Owner again argues that the ’450 patent does not
disclose the claimed limitations. PO Resp. 40–41. Having already declined to
adopt Patent Owner’s argument, relying on our findings above, we conclude that
Petitioner has demonstrated by a preponderance of the evidence that claims 13 and
27 are also unpatentable over the combination of the ’450 patent with the Admitted
Prior Art and the combination of the ’450 Patent, the Admitted Prior Art, and the
’219 Patent, discussed further herein.
Claim 32
We address the substance of the combination of the ’450 patent and the ’219
patent with respect to claim 32 in a separate section of this Decision.
Claims 11 and 25 as Obvious Over the ’450 Patent
We addressed claims 11 and 25 in our Decision to Institute in joined case
IPR2015-01077 (“Joined IPR”), instituting on the following 3 grounds: (i)
obviousness over the ’450 patent, (ii) obviousness over the combination of the ’450
patent and the ’219 patent, and (iii) obviousness over the combination of the ’450
patent and Bungum. Paper 15 in this proceeding. We first address the grounds
based on the ’450 patent and the combination of the ’450 patent and Bungum. We
defer our analysis of the combination of the ’450 patent with the ’219 patent to
later in this Final Written Decision.
Claims 11 and 25 are independent claims that recite the limitations in
Representative Claims A and B respectively, as already considered above with
respect to the ’450 patent, with the added limitation “wherein the first path is a
broadcasting downstream channel carrying MPEG2 transport packets” (“the
MPEG2 limitation”). In its Petition in IPR2015-01077 (“Joined Pet.”), Petitioner
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acknowledges that the ’450 patent does not disclose transmitting MPEG2 packets,
but contends the MPEG2 limitation is obvious in view of the knowledge of those
of ordinary skill, which includes knowledge of the MPEG2 standard that mentions
a broadcast satellite service as one area for using MPEG2 technology. Joined Pet.
29–32. Citing the IEEE 802.14 standard mentioned several times in the ’557
Patent, Petitioner cites the testimony of its witness Dr. Stark that it would have
been a matter of design choice to combine a satellite network with a downstream
broadcasting channel, as in the ’450 patent, with MPEG2 transport packets. Joined
Pet. 11.
Patent Owner first contends that the ’450 patent does not disclose a satellite
network with a broadcasting downstream channel carrying any type of payload
data. PO Resp. 30. Patent Owner argues that the ’450 patent, instead expressly
discloses a channel with a data portion following a forward order wire (FOW)
portion, as shown in Figure 3. Id. Citing Petitioner’s reference to the NCT as
broadcasting the outbound FOW to enable all PTs to request network services over
the contention channel (Joined Pet. 29 (citing Ex. 1005, col. 10, ll. 62–64)), Patent
Owner argues that the ’450 patent discloses only the FOW portion as the broadcast
portion of the frame. PO Resp. 30.
Patent Owner further contends that Petitioner’s arguments concerning the
transmission of MPEG2 in the Joined IPR are inconsistent with the position
Petitioner took in underlying proceeding IPR2014-01412 (“the Underlying
Proceeding”). PO Resp. 30–31. Patent Owner notes that in the Underlying
Proceeding, Petitioner argued that the ’450 patent discloses transmitting control
information in the FOW and data in the data portion, but in the Joined Proceeding
Petitioner argues that control information can be equated with data to show the
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broadcasting MPEG2 limitation. Id. Patent Owner also argues that Petitioner
presents no evidence that one of ordinary skill would modify the ’450 patent to
transmit MPEG2 video on the FOW, which is the only portion of the frame
disclosed as a broadcast transmission. Id. at 31.
Petitioner replies that Patent Owner’s argument rewrites the limitation by
requiring that MPEG2 packets be broadcast, rather than focusing on the claim
language, which recites that the first path is “a broadcasting downstream channel
carrying MPEG2 packets.” Reply. 13–14. Petitioner contends that Patent Owner’s
expert Dr. Wells acknowledges that the ’450 discloses broadcasting data to the PTs
on the FOW. Id. at 13 (citing Wells Tr. 155:6–10). Petitioner also notes that the
’450 patent discloses a hub network in which the NCT receives requests from PTs,
allocates channel resources, and broadcasts housekeeping messages. Joined Pet.
29 (citing Ex. 1005, Abstract); see Ex. 1005, col 2, ll. 55–57. According to
Petitioner, although the ’450 patent does not call out MPEG2 transport packets as a
type of data to be transmitted, Dr. Stark’s declaration highlights many applicable
well-known prior art standards for multiple access communication that teach
transmission of MPEG2 transport packets, so that a person of ordinary skill would
have understood it would be obvious to use well-known MPEG2 transport packets
in the network disclosed in the ’450 patent. Id. at 30. Petitioner cites the IEEE
802.14 standard as a prior art managed access control (MAC) standard for MPEG2
transport packets, and notes that, although Patent Owner criticizes IEEE 802.14 as
a draft, it still demonstrates the state of the art at the time. Reply 14. Petitioner
also cites a document it calls “the MPEG2 standard itself,” which states that
MPEG2 packet transmission is to be achieved via the Broadcasting Satellite
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Service (BSS). Id. (citing Ex. 1023 in IPR2015-01077, at 6, which states that the
applications of the standard include Broadcast Satellite Service to the home).4
Patent Owner disputes Petitioner’s reliance on Dr. Stark’s testimony,
arguing that Petitioner has failed to provide rational underpinning for its proposed
modification of the ’450 patent. PO Resp. 30–36. Patent Owner contends that Dr.
Stark misrepresents the disclosure in the admitted prior art by spelling the term
“videotext” as “video text,” and highlighting the term video. Id. at 33 (citing Ex.
1027 (“the ’469 patent”) col. 7, ll. 56–60),5 thereby suggesting that videotext,
which is a special type of information, and video are the same thing. Id. at 32–33.
We note, however, that the ’469 patent cited by Patent Owner states that “[t]he
term ‘data’ is used throughout the specification and claims to refer to any type of
information digital or analog.” Ex. 1027, col. 7, ll. 56–58. In addition, “data”
includes “signaling information,” (id. at col. 7, ll. 60), as would be transmitted in
the FOW in the ’450 patent.
Patent Owner’s arguments are not persuasive because they incorporate into
claims 11 and 25 features that are not claimed. Claims 11 and 25 recite a
characteristic of the first path, i.e., it is a broadcasting channel. The ’450 patent
discloses explicitly that the first path broadcasts the FOW, and is, thus, a
broadcasting channel, and the broadcasting channel broadcasts at least
housekeeping messages. The same limitation in claims 11 and 25 of the ’557
Patent also recites that the broadcasting downstream channel carries MPEG2

4 Ex. 1023 in IPR2015-01077 is titled Information Technology – Generic Coding
of Moving Pictures and Associated Audio Information: Video, ITU-T
Recommendation H.262, International Telecommunication Union ITU-T
(Telecommunication Standardization Sector of ITU) (July 1995).
5 Patent Owner cites Ex. 1027 from joined proceeding IPR2015-01077.
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transport packets. Although Patent Owner argues extensively particular
characteristics of MPEG2 transport packets would not motivate a combination with
the ’450 patent, (PO Resp. 35–36), these characteristics are not recited in claims 11
and 25. Petitioner also notes the testimony of Patent Owner’s witness, Dr. Wells,
that the claims of the ’557 Patent do not require streaming real time video, but only
require transmitting MPEG2 data, as well as Dr. Wells’ acknowledgement that
MPEG2 transport packets could be transported at the speeds in the ’450 patent.
Reply 15. We further note Patent Owner’s earlier arguments that the ’450 patent
discloses the satellite acting as a relay. PO Resp. 28.
As discussed above, there is evidence that MPEG2 could have been used to
transmit video via satellite. As previously discussed, Petitioner has cited credible
evidence that satellites transport MPEG2 packets. Reply 14. The claims are drawn
to a three channel arrangement in which one channel is used to transmit data from
the central controller to the station and two channels are used to transmit data from
the station to the central controller. As discussed above, that arrangement is
disclosed in the ’450 patent. The further limitation in claims 11 and 25 that the
first path is a broadcast channel carrying MPEG2 data is a restriction to a field
where Petitioner has demonstrated it was known to use such a format. Thus,
Petitioner has produced persuasive evidence that combining the use of known
MPEG2 transport packets with a managed access satellite communication system,
such as that disclosed in the ’450 patent, would have been obvious to one of
ordinary skill. Therefore, we conclude that Patent Owner has demonstrated by a
preponderance of the evidence that claims 11 and 25 are unpatentable as obvious
under 35 U.S.C. § 103(a) over the ’450 patent.
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Claims 11 and 25 as Obvious Over the ’450 Patent and Bungum
As previously discussed, the ’450 patent concerns a satellite communication
network. Petitioner cites Bungum for the proposition that in 1997 it was known for
satellites to broadcast MPEG2 transport packets downstream. Joined Pet. 48–49
(citing IPR2015-01077 Ex. 1011 (“Bungum”), Abstract). Petitioner argues that a
person of ordinary skill would have been motivated to combine Bungum with the
’450 patent because sending MPEG2 packets over the network disclosed in the
’450 patent would have been applying known prior art elements to yield
predictable results. Joined Pet. 50–51.
Patent Owner contends that Petitioner’s combination of Bungum and the
’450 patent does not consider material differences between the two references. PO
Resp. 38–39. Patent Owner argues that a person of ordinary skill would not have
been motivated to combine the teachings of Bungum with those of the ’450 patent
because Bungum is directed to unidirectional broadcasting in which there is no
multiple access, no upstream transmission, no shared medium, and no reservation
requests. Id. at 38. We agree with Petitioner that Patent Owner’s argument fails
because in the ’450 patent the downstream broadcasting channel is also
unidirectional. Reply 17.
Patent Owner also argues that Petitioner does not address whether the
combination is plausible because of differences in the MPEG2 format and delay
rates, i.e., Bungum discloses broadband networks with low delay and high data
rates, while the ’450 patent discloses a satellite network with high delay. Id. at 39.
We are not persuaded by this argument for the same reasons we were not
persuaded by similar arguments Patent Owner presented in the context of
obviousness of claims 11 and 25 over the ’450 patent alone, as discussed above.
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Petitioner has cited credible evidence that MPEG2 could have been used to
transmit video via satellite and that satellites transport MPEG2 packets. Reply 14.
In view of the above, we conclude that Petitioner has shown by a
preponderance of the evidence that claims 11 and 25 are unpatentable over the
combination of the ’450 patent and Bungum.
Grounds Based on the ’219 Patent
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 states that its principles
could be applied to other networks such as wireless networks. Id. at col. 18, ll. 59–
67. 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 of 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.
Elements Common to Representative Claims A and B (claims 1, 2, 4–7, 10,
12, 13, 15, 16, 18–21, 24, 26, and 27)
Our Decision to Institute includes a thorough analysis of the elements of
Representative Claims A and B as compared to the disclosures in the’219 Patent.
Dec. to Inst. 25–29. We turn our attention to the elements of Representative
Claims A and B that Patent Owner contends are not disclosed in the ’219 patent.
Patent Owner contends that Petitioner has not established the ’219 patent
discloses a “shared medium,” as recited in the preamble common to Representative
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Claims A and B (PO Resp. 46). However, Petitioner points to testimony by Patent
Owner’s witness, Dr. Wells, that agrees with the testimony of Petitioner’s witness,
Dr. Stark, that the ’219 patent discloses a shared medium in Figure 1 (Reply 21).
Petitioner argues that “a first distinct shared unidirectional transmission path
being established between said centralized controller and said station for
transmitting data from said centralized controller to said station, wherein the first
path being a downstream channel” is disclosed in the ’219 patent as a head end
terminal that provides for downstream transmission of control data and
downstream telephone information in a first frequency bandwidth and a plurality of
control channels interspersed among the information channels in the first
frequency bandwidth. Pet. 23. Patent Owner contends that Petitioner fails to
explain how this subject matter in the ’219 patent maps to the claimed “distinct
shared unidirectional path[s].” PO Resp. 46–47. Petitioner responds that Patent
Owner ignores the subject matter at pages 22–23 of the Petition, which cites to
paragraphs 151 and 152 of the Stark Declaration, where transmission of
downstream control data in a first frequency bandwidth and receipt of upstream
telephony and upstream control is discussed. Reply. 21–22. We addressed this
issue in our Decision to Institute, where we determined that the subject matter in
Petitioner’s claim chart supports its contention. Dec. to Inst. 25–26. As we
discussed, Figure 1 of the ʼ219 Patent shows a head end connected to service units
over the hybrid-fiber-coaxial lines and multiple separate upstream control and data
channels are disclosed expressly in the ’219 patent because the disclosure shows
each upstream and downstream band is OFDM multiplexed to include 240 separate
payload channels and 24 separate IOC control data channels. Id. (citing Ex. 1008,
col. 56, ll. 25–45). See Pet. 20–21. Patent Owner has presented no new evidence or
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argument that would change our determination that the ’219 patent discloses the
claimed shared medium and first shared unidirectional transmission path between a
central controller and a station as a downstream path.
Patent Owner also argues that Petitioner has failed to establish that the ’219
patent discloses common element A.5, i.e., “wherein said station transmitting
reservation requests data on said second path and receiving a payload data
transmission grant from said centralized controller on said first path.” PO Resp.
47–48. Patent Owner argues that Petitioner’s citation of the disclosure in the ’219
patent that the control circuit allocates a payload channel to a service unit in
response to a request for bandwidth does not establish that the reservation request
is transmitted on the claimed “second path” or that data transmission is received on
the claimed “first path.” Id. at 48. The Petition explains that a request for an
allocation would have been received at the host data terminal (HDT) from an
integrated service unit (ISU) on the upstream ISU operations channel (IOC) and
Dr. Stark’s explains the disclosure of a transmission on an upstream payload
channel in response to a head end message grant on a downstream channel
following a request from a service unit on a distinct, second upstream IOC channel.
Reply 22–23. We also addressed this issue in our Decision to Institute and
determined that Petitioner provided sufficient evidence and argument to support its
assertions. Dec. to Inst. 27–28. Patent Owner has presented no new evidence or
argument that would change our determination.
Elements of Representative Claim B (claims 15, 16, 18–21, 24, 26, and 27)
We addressed the elements of Representative Claim B as compared to the
disclosures in the ’219 patent in our Decision to Institute. Dec. to Inst. 29. Patent
Owner contends that Petitioner has failed to establish that the ’219 patent has the
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capability of transmitting reservation request data if a particular station fails to
receive a grant message and if a particular station receives a collision status
message. PO Resp. 48. Patent Owner contends that Petitioner does not address the
first part of the limitation that recites “transmitting from said particular station
said reservation request data on said second path if said particular station fails to
receive a grant message from said centralized controller within a predetermined
time delay.” Id. The Patent Owner Response offers no detailed explanation of
Patent Owner’s position. Id.
Petitioner replies that Patent Owner’s position is premised on its incorrect
interpretation of the term “or.” We extensively discussed the meaning of “or” in
Representative Claim B previously in this Final Written Decision. We determined
that, Representative Claim Bis disclosed by a structure in which the central
controller detects a collision, transmits a collision status message to the station and
then receives reservation request data, or a structure in which the central controller
receives reservation request data from the station after a predetermined delay. The
’219 patent discloses a protocol for handling collisions that may include the HDT
detecting an error an transmission and broadcasting to all the ISUs a retransmission
command, i.e., transmits a collision status message to the station, such that the
ISUs retransmit the upstream signal, which the HDT then receives. Ex. 1008, col.
63, ll. 11–20. The ’219 patent also discloses that the HDT broadcasts the
retransmission request after waiting a particular time, i.e., a predetermined delay,
for example, a time based on an exponential back-off . Ex. 1108, col. 63, ll. 22–
30. Thus, we conclude that this limitation is disclosed in the ’219 patent.
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Having concluded that the ’219 patent discloses the disputed limitations in
Representative Claims A and B, we turn to Patent Owner’s remaining arguments
concerning claims 5 and 19, 6 and 20, 12 and 26, and 32.6
Claims 5 and 19
Claims 5 and 19 recite “wherein said first path on which payload and
control data packets are transmitted is one of plural downstream channels.”
Petitioner notes that the ’219 patent discloses a plurality of control channels
interspersed among telephony information channels in the first frequency
bandwidth and contends that the plural downstream channels are shown in Figure
13 of the ’219 patent. Pet. 28 (citing Ex. 1008, col. 5, ll. 36–41, 46–48; col. 55, ll.
56–62). Patent Owner contends that the IOC channel is not a path on which
payload and control data packets are transmitted, but instead carries only control
data. PO Resp. 49–50. Patent Owner contends that the ’219 patent distinguished
IOC channels, i.e. ISU operation channels, from payload channels and does not
disclose or suggest any channel on which payload and control data packets are
transmitted. Id. Patent Owner cites the disclosure in the ’219 patent that IOC
channels and synchronization channels may use a different modulation scheme for
transport of control data between the MCC modem and the ISU than is used for
transport of telephony data. Id. (citing Ex. 1008, col. 37, ll. 54–62).
Petitioner replies that the disclosed downstream bandwidth in the ’219
patent is a path including multiple payload and control channels. Reply 23.
Petitioner cites the Reply Declaration of Dr. Stark. Stark Reply Decl. ¶ 87.
According to Dr. Stark, the ’219 patent discloses that the downstream telephone
transmitter receives inputs from active coax master units (CXMUs), each within a

6 Challenges to claim 32 are addressed in separate sections.
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6 MHz frequency band and combines them into a single RF signal, that each 6
MHz band is separated by a guard band, and downstream telephony information is
transmitted in the 725–800 MHz frequency band. Id. Thus, according to Dr.
Stark, Figure 13 of the ’219 patent shows multiple downstream channels
transmitting payload and control information and that, even if one considered the 6
MHz band as a single channel containing both control data and payload data, there
would be multiple downstream channels. Id.
The ’219 patent states that “Fig. 13 shows a spectral allocation in a first
telephone embodiment in the system of Fig. 1.” Ex. 1008, col. 15, ll. 21–22. The
’219 patent further states that in “Fig. 13, the spectrum allocation for one 6 MHz
band for upstream and downstream transport of telephone information and control
data utilizing OFDM [orthogonal frequency division multiplexing] techniques is
shown.” Ex. 1008, col. 41, ll. 21–24. In the ’219 patent “the telephony payload
channels and the IOC channels of the 6 MHz band are interspersed in the
telephony payload channels with an IOC located every 10 payload channels. With
such a distributed technique, wherein sub-bands of payload channels greater than
10 include an IOC channel, the amount of bandwidth an ISU ‘sees’ can be limited
such that an IOC channel is available for the HDT to communicate with the ISU.”
Id. at col. 41, ll. 51–60. In view of this disclosure that IOC channels are
interspersed with payload channels, and the disclosure cited by Patent Owner that
IOC and telephone channels are modulated differently, we agree with Patent
Owner that the ’219 patent does not disclose that the first path on which the
payload and control data packets are transmitted is the same one of plural
downstream channels. However, claims 5 and 19 do not recite that the payload and
control information is transmitted on the same channel. Claims 5 and 19 recite that
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the first path on which the payload and control packets are transmitted is one of a
plurality of channels. As discussed above, the ’219 patent discloses a first path on
which payload and IOC channels are interspersed. Thus, we conclude that
Petitioner has demonstrated that the feature recited in claims 5 and 19 is disclosed
in the ’219 patent and has demonstrated by a preponderance of the evidence that
claims 5 and 19 are unpatentable based on the ’219 patent alone or in combination
with the ’450 patent.

Claims 6 and 20
Claims 6 and 20 recite that the second and third paths’ transmissions are
carried out simultaneously during overlapping time periods in a station. Citing Dr.
Stark’s testimony that the second (reservation or control) and third (payload) paths
transmit using multiple frequencies, Petitioner contends that one of ordinary skill
would know that the ’219 patent discloses separate upstream channels for control
and payload data and that one of ordinary skill would understand that transmission
over those paths could occur simultaneously during overlapping time periods. Pet.
28 (citing Stark Decl. ¶ 161). Arguing that the term “said station” refers to single
station that simultaneously transmits on two paths, based on the term’s antecedent,
Patent Owner argues that Petitioner has not identified an express disclosure of this
feature. PO Resp. 51. However, Patent Owner offers no explanation or evidence
why a person of ordinary skill would not have known that in the ’219 patent a
single station could transmit on different frequencies at the same time.7 Thus, we

7 The Patent Owner Response refers the reader to § IV(A)(1)(c), which does not
exist. There is no § V(A)(1)(c). Section VI, identified in the Table of Contents as
beginning on page 45, is mis-numbered on page 45 as § IV. However, there is no
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conclude that Petitioner has demonstrated by a preponderance of the evidence that
claims 6 and 20 are unpatentable as obvious over the ’219 patent.
Claims 12 and 26
Claims 12 and 26 recite that the first modulation technique enhances
robustness and efficiency of the reservation request transmission without degrading
the robustness, efficiency and utilization of the upstream payload channel. Patent
Owner argues that Petitioner does not address the second portion of the limitation,
i.e., without degrading the upstream payload channel. PO Resp. 52. We addressed
a similar argument advanced by Patent Owner in our discussion of the challenges
based on the ’450 patent. Petitioner also cites the testimony of Patent Owner’s
witness Dr. Jonathan Wells that “without degrading” is implicit in the use of
separate channels. Reply 24 (citing Wells Tr. 114:7–16). Therefore, we conclude
that Petitioner has demonstrated that the ’219 patent discloses this limitation and,
by a preponderance of the evidence, that claim 12 is unpatentable as obvious over
the ’219 patent and that claim 26 is unpatentable over the combination of the ’219
patent, the ’450 patent, and the admitted prior art, as addressed above in our
discussion of the challenges based on the ’450 patent.
Claim 32 as Anticipated by the ’219 Patent
We instituted trial on the grounds that claim 32 is anticipated by the ’219
patent. Claim 32 recites as a further limitation a second circuit for detecting
whether a collision has occurred in a particular time slot on the second path due to
simultaneous transmissions in the time slot from two or more stations, and for
causing, in response to detecting the collision, the transmitter to transmit a

sub-section (A)(1)(c) in this portion of the Patent Owner Response. Thus, the
subject matter that Patent Owner references is unclear.
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notification on the first path to at least the stations where the collisions have
occurred. Patent Owner proffers an argument similar to that which it advanced in
the Patent Owner Preliminary Response, i.e., that the claim charts in the Petition do
not show a circuit located at a centralized controller. PO Resp. 53. Patent Owner
contends that Petitioner does not explain how the elements cited individually in the
claim charts disclose the arrangement of elements recited in claim 32. Id.
Petitioner replies that Patent Owner ignores its citations to Dr. Stark’s testimony
explaining how the ’219 patent discloses a host digital terminal (HDT) in a central
controller, i.e., the head end, and that Dr. Stark’s explanation remains uncontested.
Reply 25 (citing Stark Decl. ¶¶ 165–166, 168, 174; Stark Reply Decl. ¶ 90).
Referencing Figure 1 of the ’219 patent, paragraph 168 of the Stark declaration
states that the head end, including the HDT, interfaces with multiple stations
located downstream of the head end. Stark Decl. ¶ 168. Dr. Stark further notes
that Patent Owner’s witness, Dr. Wells, does not refute Dr. Stark’s assertion that
the head end includes an HDT that operates as a circuit located at the central
controller. Stark Reply Decl. ¶ 90.
As we noted in our Decision to Institute, Petitioner’s claim charts identify a
HDT and coax master units (CXMUs), which are located at the head end. Dec. to
Inst. 36. The Petition explains that Figure 1 of the ’219 patent discloses hybrid-
fiber-coaxial (HFC) networks that include a head end and HDTs that implement all
common equipment functions for customer interface equipment, such as integrated
service units (ISUs). The claim charts also identify disclosure in the ’219 patent
that the downstream telephony transmitter in Figure 4 takes outputs from the active
CXMUs of the HDT, which carry telephony and control data, and combines the
outputs into a downstream telephony transmission signal. Dec. to Inst. 37. Thus,
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we conclude that Petitioner has demonstrated that the ’219 patent discloses the
claimed circuit located at a centralized controller, and that Petitioner has shown by
a preponderance of the evidence that claim 32 of the ’557 Patent is anticipated by
the ’219 patent.
Claim 32 as Obvious Over the Combination of the ’450 Patent, the ’219
Patent, and the Admitted Prior Art.
Petitioner also contends that a person of ordinary skill could have
implemented the structure of the ’219 patent in the NCT of the ’450 patent and
obtained predictable results (e.g., the transmitter would have transmitted on the
forward channel, the dual receivers would have each received on respective
upstream channels, and the circuit would detect collisions and cause the
transmission of a notification). Pet. 59–60 (citing Stark Decl. ¶ 243). Dr. Stark
further testifies that a person of ordinary skill would have been motivated to
combine the ’450 Patent with the structure of the ’219 Patent and the transmission
of a downstream message indicating a collision in a time slot as disclosed in the
APA to arrive at the subject matter of Claim 32. Stark Decl. ¶ 243. Patent Owner
has not provided persuasive evidence to overcome Dr. Stark’s testimony. Thus, we
conclude that Petitioner has demonstrated by a preponderance of the evidence that
claim 32 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of
the ’450 patent, the ’219 patent, and the APA.
CONCLUSION
Upon consideration of the challenges on which trial was instituted, we
conclude as follows:
Claims 7 and 21 of the ’557 Patent are unpatentable as anticipated under
35 U.S.C. § 102 by the ’450 Patent;
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Claims 1, 4, 5, 7, 11–13, 15, 18, 19, 21, and 25–27 of the ’557 Patent are
unpatentable as obvious under 35 U.S.C. § 103(a) over the ’450 Patent;
Claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18–21, 24, 26, 27, and 32 of the ’557
Patent are unpatentable as obvious under 35 U.S.C. § 103(a) over the ’219 Patent;
Claim 32 of the ’557 Patent is unpatentable as anticipated under 35 U.S.C.
§ 102 by the ’219 Patent;
Claims 15, 18, and 20 of the ’557 Patent are unpatentable as obvious under
35 U.S.C. § 103(a) over the combination of the ’450 Patent and the admitted prior
art;
Claims 5, 10–13, and 25 of the ’557 Patent are unpatentable as obvious
under 35 U.S.C. § 103(a) over the combination of the ’450 Patent and the ’219
Patent;
Claims 19, 24, 26, 27, and 32 of the ’557 Patent are unpatentable as obvious
under 35 U.S.C. § 103(a) over the combination of the ’450 Patent, the ’219 Patent,
and the admitted prior art;
Claims 7 and 14 of the ’557 Patent are unpatentable as obvious under
35 U.S.C. § 103(a) over the combination of the ’450 Patent and the ’398 Patent;
Claims 21 and 28 of the ’557 Patent are unpatentable as obvious under
35 U.S.C. § 103(a) over the combination of the ’450 Patent, the ’398 Patent, and
the admitted prior art; and
Claims 11 and 25 of the ’557 patent are unpatentable as obvious under
35 U.S.C. § 103(a) over the combination of the ’450 patent and Bungum.

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ORDER
In consideration of the above, it is
ORDERED that claims 1, 2, 4–7, 10–16, 18–21, 24–28, and 32 of the ’557
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 G. Spears
G. Matthew McCloskey
MCDERMOTT WILL & EMERY LLP
sspears@mwe.com
mmccloskey@mwe.com

PATENT OWNER:

Lori A. Gordon
Michael D. Specht
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
lgordon-PTAB@skgf.com
mspecht-PTAB@skgf.com

James R. Hietala
Tim R. Seeley
INTELLECTUAL VENTURES
jhietala@intven.com
tim@intven.com