Case IPR2014-00454 U.S. Patent No. 5,563,883 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ CISCO SYSTEMS, INC. Petitioner v. C-CATION TECHNOLOGIES, LLC Patent Owner ____________________ CASE IPR2014-00454 Patent 5,563,883 ____________________ PATENT OWNER C-CATION TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
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Case IPR2014-00454 U.S. Patent No. 5,563,883
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UNITED STATES PATENT AND TRADEMARK OFFICE ____________________
I. INTRODUCTION .................................................................................................... 1
II. STANDARD FOR GRANTING INTER PARTES REVIEW .................................. 4
III. OVERVIEW OF U.S. PATENT NO. 5,563,883 ..................................................... 6
IV. CLAIM CONSTRUCTION ..................................................................................... 9
V. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW ANY CLAIM OF THE ’883 PATENT IS UNPATENTABLE ...................................................... 9
A. CLAIM 1 ............................................................................................................. 11
1. The MPT Specifications Fail to Disclose the Subject Matter of Claim 1 ....... 11
a. The MPT Specifications and the Petition’s related assertions ...................... 13
b. Mischaracterizations of the MPT Specifications in the Petition ................... 14
c. The MPT Specifications do not disclose the “monitoring” recited by claim 1(b) ................................................................................................................ 17
d. The MPT Specifications do not disclose the “determining” recited by claim 1(c) ................................................................................................................. 22
e. The MPT Specifications do not disclose the “determining” recited by claim 1(d) ................................................................................................................ 23
f. The MPT Specifications do not disclose the “reassigning” recited by claim 1(e) ................................................................................................................. 26
2. Cioffi Fails to Disclose The Subject Matter of Claim 1 .................................. 29
a. Cioffi and the Petition’s related assertions ................................................... 30
b. Cioffi does not disclose “establishing communications” via “signalling data channels” as recited by claim 1(a) ................................................................ 32
c. Cioffi does not disclose “determining” as recited by claim 1(c) .................. 34
3. Claim 1 Is Not Obvious In View of the Combination of the MPT Specifications and Cioffi .................................................................................. 35
B. CLAIMS 2-5 ....................................................................................................... 38
C. CLAIM 14 ........................................................................................................... 38
1. Cioffi Fails to Disclose the Subject Matter of Claim 14 .................................. 38
Case IPR2014-00454 U.S. Patent No. 5,563,883
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a. The structure of Cioffi ................................................................................... 38
b. Cioffi fails to disclose a “system controlling means” as recited by claim 14(a) ............................................................................................................... 39
c. Cioffi fails to disclose a “switching means” as recited by claim 14(g) ........ 40
d. Cioffi fails to disclose a “forward communication controlling means” as recited by claim 14(h) ................................................................................... 44
2. Thompson Fails to Disclose the Subject Matter of Claim 14 .......................... 46
a. The structure of Thompson ........................................................................... 46
b. Thompson fails to disclose a “transmitting means” as recited by claim 14(b) 48
c. Thompson fails to disclose a “receiving means” as recited by claim 14(c) . 50
d. Thompson fails to disclose a “switching means” as recited by claim 14(g). 52
e. Thompson fails to disclose a “forward communication controlling means” as recited by claim 14(h) ................................................................................... 53
3. Claim 14 Is Not Obvious In View of the Combination of Cioffi and Thompson 55
D. CLAIMS 15-18 ................................................................................................... 57
VI. PETITION IS BARRED UNDER 35 U.S.C. § 315 (b) ........................................ 57
VII. CONCLUSION ..................................................................................................... 60
Case IPR2014-00454 U.S. Patent No. 5,563,883
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Table of Authorities
Cases
ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 694 F.3d 1312 (Fed. Cir. 2012) ........................................................................ passim
Apple, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00080, Paper 8 (PTAB April 25, 2014) ..................................................... 11
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 31 (PTAB. Jan. 22, 2014) .................................................... 60
August Technology Corp. v. Camtek Ltd., 655 F.3d 1278 (Fed. Cir. 2011) ................................................................................... 4
Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00016, Paper 32 (Feb. 25, 2014) ................................................................ 10
Bomtech Electronics, Co. Ltd. v. Medium-Tech Medizingeräte Gmbh, IPR2014-00137 Paper 8 (PTAB April 22, 2014) ...................................................... 11
Facebook, Inc. v. Evolutionary Intelligence, LLC, IPR2014-00093, Paper 12 (PTAB April 28, 2014) ................................................... 11
K/S HIMPP v. Hear-Wear Techs., LLC, 2013-1549 (Fed. Cir. May 27, 2014) ............................................................ 3, 35, 56
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) .................................................................................................... 5
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ................................................................................. 15
PCT Int’l, Inc. v. Amphenol Corp., IPR2013-00229, Paper 17 (Dec. 24, 2013) ............................................................... 10
Printing Indus. of Am. v. CTP Innovations, LLC, IPR2013-00489, Paper 15 (PTAB Dec. 30, 2013) .............................................. 15, 50
Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997) ............................................................... 2, 34, 36, 38
Case IPR2014-00454 U.S. Patent No. 5,563,883
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SAS Inst., Inc. v. Complementsoft,LLC, IPR2013-00581, Paper 17 (PTAB Feb. 25, 2014) .......................................... passim
Spears v. Holland, Interf. No. 104,681, Paper 30 (BPAI Mar. 13, 2002) .................................................. 5
Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper 21 (PTAB May 2, 2013) ................................................ 15, 50
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325 (Fed. Cir. 2010) ........................................................................... 14, 50
Vizio, Inc. v. International Trade Com'n, 605 F.3d 1330 (Fed. Cir. 2010) ................................................................................... 4
Wowza Media Sys., LLC v. Adobe Sys. Inc., IPR2013-000054, Paper No. 16 (PTAB Jul. 13, 2013) ......................... 2, 34, 36, 38
C-Cation Tech 2001 Litwin and Pugel, “The principles of OFDM,” www.rfdesign.com, January 2001, pp. 30-48 (available as of June 4, 2014 at rfdesign.com/images/archive/0101Puegel30.pdf)
C-Cation Tech 2002 Cisco Systems, Inc. Form 10-Q Quarterly Report
C-Cation Tech 2003 Terms of Sale and Software Agreement (publicly available as of June 4, 2014 at www.cisco.com/web/about/doing_business/legal/docs/tc-us.pdf)
Case IPR2014-00454 U.S. Patent No. 5,563,883
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I. INTRODUCTION
Patent Owner C-Cation Technologies, LLC submits the following
preliminary response to the Petition filed by Cisco Systems, Inc. (“Petitioner”)
as Paper No. 7 in this proceeding, requesting inter partes review of claims 1-20
of U.S. Patent No. 5,563,883 (“Petition”).1 This response is timely pursuant to
the Board’s Notice in Paper No. 4.
Patent Owner respectfully requests that the Board decline to institute inter
partes review because Petitioner has not satisfied 37 C.F.R. § 42.104 insofar as
the Petition does not adequately support its allegations that any of claims 1-20
are unpatentable under either 35 U.S.C. § 102 or §103. Specifically, the
Petition provides almost no explanation or discussion of how the claims read on
the prior art. Instead, the Petition relies extensively on the conclusory
declaration of Dr. Roy (Petitioner’s Ex. 1001) which provides little, if any,
factual basis for his opinions.2 As such, it is entitled to little or no weight. See
1 The initial petition filed by Petitioner in this proceeding as Paper No. 1 was
deemed defective by the Board. Petitioner was required to file a corrected petition,
and did so as Paper No. 7.
2 Though it is improper for a petition to incorporate by reference arguments
contained solely in an expert declaration (see infra V), Patent Owner provides this
and associated text). In Cioffi, the modulator output is converted directly to an
analog signal and applied to the transmission media using a line driver. Cioffi, col.
6:38-42. That is, unlike the systems disclosed in the ’883 patent, Cioffi needs only
one transmitter because the modulator output already includes all orthogonal signal
components at each subchannel frequency whereas, claim 14 requires separate
transmitters for each specific frequency employed. This fundamental difference
between the structure of Cioffi and the system of the ’883 patent impacts many
elements of the claims.
b. Cioffi fails to disclose a “system controlling means” as recited by claim 14(a)
Element (a) of claim 14 requires a “system controlling means for controlling
the communication system comprising a micro-processor and associated EPROM
and RAM.” In construing this means-plus-function element, the Petition asserts
that the ’883 patent’s description of “a microprocessor, an EPROM and a RAM”
corresponds to the claimed “system controlling means.” Petition at 13.
10 Additional background information concerning Cioffi was provided above.
See supra V.A.2.a.
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However, in asserting that Cioffi anticipates (Ground 2) and renders obvious
(Ground 6) claim 14, neither the Petition nor the declaration of Dr. Roy asserts that
these structures are disclosed by Cioffi. Instead, the only structure that is identified
in Cioffi is a general description of “controller 60.” Petition at 51; Roy Dec. ¶ 411.
In an apparent acknowledgment of Cioffi’s lack of disclosure, the Petition refers to
the Roy Declaration, which asserts, without any support, that it would have been
obvious to add the non-disclosed structures to Cioffi. Petition at 51 (citing Roy
Dec. ¶ 174). Specifically, the Roy Declaration states that “[i]t is within the
knowledge of a person of ordinary skill in the art that such a controller includes a
microprocessor and associated EPROM and RAM.” Roy Decl. ¶ 174. It is
respectfully submitted that because there is no identified basis for suggesting Cioffi
discloses an EPROM or RAM for controlling the communication system, or why a
person of ordinary skill in the art would include an EPROM and RAM into the
system described by Cioffi, the Petition and the Roy Declaration are insufficient
under 37 C.F.R. § 42.104(b)(4) and 37 C.F.R. §42.65(a).
c. Cioffi fails to disclose a “switching means” as recited by claim 14(g)
Element (g) of claim 14 requires a “switching means for making dynamic
connections to switch signals among said transmitting means, said receiving
means, said modulating means, said demodulating means, and said interfacing
Case IPR2014-00454 U.S. Patent No. 5,563,883
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means.” The Petition asserts that the corresponding structure for the claimed
“switching means” is a “switching matrix.” Petition at 13.
However, the Petition fails to point to any such structure in Cioffi that
corresponds to the claimed “switching means.” The excerpts of Cioffi that the
Petition and the Roy Declaration point to identify a central modem having a
transmitter 40 that incorporates a discrete multi-tone modulator 45, a receiver 70
that incorporates a demodulator 76, and a network interface 41. See Petition at 53-
54, Roy Dec. ¶ (citing Cioffi, cols. 5:30-46; 6:43-46). But these excerpts identify
no switching matrix or any other component for making dynamic connections to
switch signals among those components.
Cioffi itself contradicts the notion that it describes a “switching matrix.” For
example, Figure 3 of Cioffi, reproduced below, shows fixed connections between
the transmitter (with an embedded modulator), the receiver (with an embedded
demodulator), and the network interface:
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The Petition appears to rely on an excerpt in Cioffi in alleging that these
connections are “dynamic,” (see Petition at 53, Roy Dec. ¶ 198 (citing Cioffi, col.
6:11-24)) in asserting that the claimed switching matrix is disclosed. Any such
reliance is misplaced because the excerpt states that the subchannels over which
data is transmitted can be “dynamically determined,” not that any connections are
dynamic or switched via a switching matrix. In fact, the modulator output in Cioffi
is not even connected to the claimed transmitters. Rather, Cioffi discloses that the
modulator output is fed directly to the transmission media using a line driver.
Cioffi, col. 6:38-42. Thus, no portion of Cioffi expressly states or implies that any
of these connections are switched, dynamically or otherwise, as switching is not
needed to implement Cioffi’s DMT communication scheme.
Nor does the Petition adequately support its assertion that the claimed
“switching means” in element (g) of claim 14 is rendered obvious by Cioffi. See
Case IPR2014-00454 U.S. Patent No. 5,563,883
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Petition at 53 (citing Roy Dec. ¶ 410). The only statement that relates to this issue
is Dr. Roy’s conclusory assertion that it would have been obvious to include a
switching matrix because the central controller is “frequency agile, dynamically
allocates communication channels, and dynamically adjusts modulation and
demodulation.” Roy Dec. ¶ 410. Dr. Roy’s assertion, however, is contradicted by
the differences between the claimed “switching means” of the ’883 patent and the
central controller disclosed by Cioffi. Specifically, unlike the central modem in
Cioffi, which includes one transmitter with a fixed connection to the network
interface, the system described in claim 14 of the ’883 patent recites a transmitting
means that mixes modulator output signals onto carrier frequencies. See ’883
patent, Fig. 16, col. 12:49-52. Cioffi itself recognizes this distinction and criticizes
non-DMT based cable systems such as disclosed in the ’883 patent by stating that
in “cable systems (which do not use discrete multi-tone transmission schemes),
each remote unit is given a dedicated frequency band over which it is to
communicate with the central station,” and that this approach “typically requires
the use of analog filters to separate transmissions from the various remote units,”
which results in the “inefficient use of transmission bandwidth.” Cioffi, col. 1:66-
2:6 (parenthetical in original).
Accordingly, one of ordinary skill in the art would have recognized that the
claimed central controller of claim 14 and Cioffi’s DMT central modem are based
Case IPR2014-00454 U.S. Patent No. 5,563,883
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on fundamentally different operating principles, and would not have found the
recited “switching means” to be an obvious extension of Cioffi’s central modem,
particularly in view of Cioffi’s criticism of cable systems that do not use DMT.
d. Cioffi fails to disclose a “forward communication controlling means” as recited by claim 14(h)
Element (h) of claim 14 recites a “forward communication controlling means
for selecting a forward signalling data channel via a dynamic connection between
said transmitting means and said modulating means.” According to the Petition,
the corresponding structure for the “forward communication controlling means” is
simply a “microprocessor.” See Petition at 14. The Petition does not propose a
construction of the corresponding function, (see Petition at 13-14), but according to
the claim language, the claimed function is “selecting a forward signallinig data
channel via a dynamic connection between said transmitting means and said
modulating means.”
A microprocessor, without more, cannot accomplish the claimed function.
Moreover, there is no disclosure in Cioffi of any microprocessor that performs the
claimed function. As is made clear in the claim and the specification of the ’883
patent, there must exist a dynamic connection between the transmitting means
(identified in the Petition as transmitter 160 (Petition at 13)) and the modulating
means (identified in the Petition as modulator 163 (Petition at 13)). See, e.g., ’883
patent, col. 13:4-13, Fig. 16.
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The structure disclosed by Cioffi does not select channels by making
dynamic connections. Rather, Cioffi discloses a central modem having a single
transmitter 40 that incorporates a discrete multi-tone modulator 45 in which no
connections, much less dynamic ones, are made. See Cioffi, Fig. 3, cols. 5:30-46.
Further, the claimed dynamic connections would not have been possible in the
structure described by Cioffi, as Cioffi discloses a modulator which is embedded in
a single transmitter whose output includes the contributions from all subchannel
signals. See supra V.C.1.c; Cioffi, Fig. 3.
Further still, the disclosure in Cioffi that the Petition cites to in asserting that
the subchannels are “dynamically determined” (see Petition at 54; Roy Dec. ¶¶
202, 411 (both citing Cioffi, col. 6:6-25)) is mischaracterized. This excerpt merely
states that the particular subchannels on which data is transmitted can be
“dynamically determined.” It does not state that any connections are dynamic. See
supra V.C.1.c.
Lastly, one of ordinary skill in the art would have recognized that claimed
central controller and Cioffi’s DMT central modem are based on fundamentally
different operating principles as even Cioffi distinguishes itself from cable systems
that do not use DMT. In view of these fundamental differences between the
claimed subject matter and the system disclosed in Cioffi, it is respectfully
submitted that there is no evidence that one of ordinary skill in the art would have
Case IPR2014-00454 U.S. Patent No. 5,563,883
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found the recited “forward communication controlling means” to be an obvious
extension of Cioffi’s central modem.
2. Thompson Fails to Disclose the Subject Matter of Claim 14
Grounds 3 and 7 of Cisco’s Petition assert that claim 14 is anticipated or
rendered obvious, respectively, by U.S. Patent No. 5,594,726 to Thompson, et al.
(Petitioner’s Ex. 1009, hereinafter “Thompson”) . As described in detail below, the
Petition fails to establish a reasonable likelihood that claim 14 of the ’883 patent is
anticipated or rendered obvious by Thompson as several key elements of claim 14
are not disclosed .
With respect to obviousness (Ground 7), the Petition again relies on
unsupported conclusions rather than fact to support its assertions and is silent as to
which specific elements of claim 14 would have been obvious in view of
Thompson. Accordingly, neither Ground 2 nor Ground 7 should be instituted with
respect to claim 14.
a. The structure of Thompson
Thompson relates to a system for coupling telephony or other digital
networks to a coaxial cable television network. Thompson, abstract, col. 1:10-17.
The described system includes a headend that serves as a conduit between a
network (such as a public telephone network) and a subscriber network (such as a
cable distribution network). Id. at col. 7:44-51. According to Thompson, the
Case IPR2014-00454 U.S. Patent No. 5,563,883
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headend receives multiple telephony signals from a public telephone network and
then modulates and transmits those signals onto a cable TV network over forward
channels. Id. Customer interface units (“CIUs”) can send return transmissions
over reverse channels, which are received, demodulated, and multiplexed into a
standard telephony signal which is directly interfaced to the telephony network.
See id, col. 7:16-24.
In one described embodiment, each forward channel is at a set frequency and
is capable of delivering 96 separate telephone conversations to subscribers, each
conversation on its own “DS0” channel. See, e.g., Thompson, Fig. 3C; col. 11:50-
56. A time division multiple access (“TDMA”) scheme is used for transmitting the
user/audio data corresponding to each of these 96 calls on the forward channel in
which data is sent over each channel in 99 byte blocks or subframes, one byte of
which is associated with each of the 96 DS0 channels, one byte which is for
providing directory information monitored by all subscribers CIUs, one byte which
is for signalling data, e.g. ringing status of other subscribers, and the remaining
byte of which is a framing byte. See, e.g., Thompson, Figs. 9C, 17 at 720, cols.
11:51-59, 32:30-43, 33:18-43.
Thompson discloses that the CIUs monitor the directory channel byte and
signal channel byte of a pre-assigned forward channel for instructions, which can
include instructions to initiate a call on a prescribed DS0 channel or to tune to a
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new reverse transmission upstream center frequency to initiate a call. Thompson,
cols. 24:6:15, 32:33-39, 33:29-37.
b. Thompson fails to disclose a “transmitting means” as recited by claim 14(b)
Element (b) of claim 14 recites a “transmitting means for transmitting user
traffic or signalling data on said communication channels.” The Petition proposes
that the corresponding structure in the ’883 patent of the “transmitting means” is
“transmitter 160” as illustrated in figure 16. Petition at 13 (citing ’883 patent, col.
12:38-40). While the Petition does not propose any construction of the
corresponding function (see Petition at 13-14), the antecedent basis for “said
communication channels” is found in the preamble of claim 14, which recites “a
plurality of communication channels for communicating with a plurality of remote
terminals.” Accordingly, the required function of transmitter 160 is to transmit
user data or signalling data to the remote terminals.11
11 As acknowledged by the Petitioner, transmitter 160 in the ’883 patent is also
used to send signalling information and user data to remote terminals. See, e.g.,
Petition at 13-14 (citing ’883 patent, col. 13:8-13). Moreover, figure 16 in the ’883
patent shows that transmitters 160 in the central controller are connected to shared
transmission media 12, and Figure 1 illustrates that shared transmission media 12
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The Petition does not identify any structure whose function is “for
communicating with a plurality of remote terminals.” The only transmitter that the
Petition and Dr. Roy identify in Thompson is optical transmitter 70. See, e.g.,
Petition at 51 (citing Thompson col. 14:52-15:11); Roy Dec. ¶¶ 177, 403 (referring
to same); see also Thompson, Figs. 1, 2 and 5. But optical transmitter 70 transmits
over the telephony network and not to remote terminals. Figure 5 of Thompson
shows that optical transmitter 70 is associated with output interface 34, and
explains that it converts the reverse band RF telephony signals sent by remotes on
the multiple access cable network into light for transmission on the optical fibers of
the wide area telephony network. See Thompson, Fig. 5, col. 14:52-15:11. Thus,
instead of transmitting to the remote terminals as in the ’883 patent, transmitter 70
transmits data received from the remote terminals to the network. This is a
fundamental difference: optical transmitter 70 identified by Petitioner transmits on
the wrong medium and in the wrong direction. As such, it does not meet the
transmitting means limitation of 14(b).
The Petition’s reliance on transmitter 70 in Thompson for element 14(b) has
an additional problem: it relates to an embodiment that is distinct from the
are connected between the central controller and the remote terminals 14. See also
ʼ883 patent, cols. 12:38-40, 5:8-15.
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embodiment cited as disclosing the “system controlling means” element of 14(a).
Specifically, the Petition relies on the selectable bandwidth allocation embodiment
depicted in Figure 11 of Thompson as disclosing the claimed “system controlling
means.” See Petition at 51; Thompson, col. 20:33-58. However, the Petition relies
on entirely different fixed bandwidth allocation embodiments as disclosing the
“transmitting means.” These embodiments have distinctly different interface and
control structures. See Thompson, Figs. 2, 5 and 11, col. 14:52-15:11. Therefore,
Thompson does not disclose these limitations arranged in the same way as in claim
14. It is improper to borrow and combine disclosure from here and there without
some teaching or suggestion to do so, and the Petition does not assert that any such
teaching or suggestion exists. See, e.g., Therasense, 593 F.3d at 1332; Lindemann
Maschinenfabrik, 730 F.2d at 1459; Printing Indus. of Am., IPR2013-00489, Paper
15 at 13-15; Synopsys, IPR2012-00041, Paper 21 at 4-5.
c. Thompson fails to disclose a “receiving means” as recited by claim 14(c)
Element 14(c) requires a “receiving means for receiving user traffic or
signalling data on said communication channels.” The Petition identifies the
corresponding structure as “receiver 160.”12 Petition at 13.
12 The receiver is marked as item 161 in the ’883 patent.
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As with limitation 14(b), “said communication channels” refers to the
channels that connect the central controller and the remote terminals, and thus the
claimed function of the receiver requires receiving communications from the
remote terminals. See supra V.C.2.b. This is consistent with the ’883 patent
specification as Figure 16 shows that the receivers 161 in the central controller are
connected to shared transmission media 12, and Figure 1 illustrates that shared
transmission media 12 connects the central controller with the remote terminals 14.
See also ʼ883 patent, cols. 12:38-40, 5:8-15.
Petitioner identifies only Thompson’s optical receiver 45 as the claimed
“receiving means” of element 14(c). See Petition at 52, Roy Dec. ¶¶ 181, 403.
However, optical receiver 45 does not receive signals from the remote terminals of
the claimed communication system. Optical receiver 45 is associated with an input
interface 32 (as shown in Figure 4) that converts light signals received on the
optical fibers of the wide area telephony network and destined for users on the
cable-TV network into an RF digital signal of a standard telephony format. See,
e.g., Thompson, col. 14:27-34, Figs. 1, 2 and 5. In other words, optical receiver 45
receives signals from the wide area telephony network and not from the users on
the cable-TV network. Thus, optical receiver 45 receives signals over a different
medium.
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Further, optical receiver 45 is part of a fixed bandwidth embodiment that is
distinct from the selectable bandwidth embodiment cited as disclosing the
limitations of claim 14(a). As explained above (see supra V.C.2.b.), these
embodiments are significantly different in structure and there is no teaching that
components of these embodiments are interchangeable. For this additional reason,
Thompson does not disclose element (c) of claim 14.
d. Thompson fails to disclose a “switching means” as recited by claim 14(g)
Element 14(g) recites a “switching means for making dynamic connections
to switch signals among said transmitting means, said receiving means, said
modulating means, said demodulating means, and said interfacing means.” As
discussed above, the Petition asserts that the corresponding structure for the recited
“switching means” is a “switching matrix.” Petition at 13.
As an initial matter, the Petition fails to identify any disclosure in Thompson
of the claimed “transmitting means” and “receiving means.” See supra V.C.1.b,
and V.C.1.c.
The Petition also fails to identify any disclosure in Thompson of a
“switching matrix.” For this structure, the Petition identifies a data table, stored in
the memory of a CPU, which correlates various information (such as subscribers’
respective upstream frequencies and telco line DS0 numbers) concerning each
subscriber. See Petition at 53 (citing Thompson, col. 27:21-53; Roy Dec. ¶ 197).
Case IPR2014-00454 U.S. Patent No. 5,563,883
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This data table, however, is not a switching matrix, because it has no ability to
make connections from one element to another. It merely correlates information.
The Petition further asserts that “frequency agility” as described in
Thompson discloses this feature. See Petition at 53 (citing Thompson, col. 6:43-
59). But simply having the ability to tune to different frequencies is not the same
as, and does not necessitate having dynamic connections to switch signals.
e. Thompson fails to disclose a “forward communication controlling means” as recited by claim 14(h)
Element (h) of claim 14 recites a “forward communication controlling means
for selecting a forward signalling data channel via a dynamic connection between
said transmitting means and said modulating means.” As discussed above, the
Petition asserts that a “microprocessor” is the appropriate corresponding structure,
and the claimed function requires a dynamic connection between the transmitting
means (identified in the Petition as transmitter 160) and the modulating means
(identified in the Petition as modulator 163). See supra V.C.1.d.; Petition at 13-14;
’883 patent, col. 13:4-13 and Fig. 16. The Petition additionally asserts that a
“dynamic connection is a connection that can be changed at any time.” Petition at
14.
As an initial matter, the Petition fails to identify disclosure of element (h) of
claim 14 because it fails to disclose the claimed “transmitting means” as explained
above. See supra V.C.2.b.
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The Petition also fails to identify any disclosure of “selecting a forward
signalling data channel.” While the Petition identifies the modulators 320 shown
in Figure 11 as the claimed “modulating means” of limitation (d), Thompson
discloses that RF signals output from each of these modulators are combined,
filtered and output to the shared multiple access broadband network over, e.g.,
coaxial cable. See, e.g., Thompson, col. 21:64- 22:14. Thompson contains no
disclosure of “selecting a forward signalling data channel via a dynamic
connection” between the modulators 320 and any transmitter that sends
communications to remote terminals. In fact, Thompson’s system cannot make
such a selection as there is no disclosure that its modulators are connected to
multiple transmitters.
In addition, Thompson does not disclose a system where a forward
signalling data channel is selected using a “dynamic connection,” as defined by
Petitioner. In Thompson, the forward channel frequency is selected in response to
a call request by sending the CIU a forward channel DS0 number to use for the
requested call-type, e.g., ISDN or single voice. See Thompson, Fig. 17. Once the
call has begun, the forward channel DS0 number and forward channel frequency
may not be changed.
In an apparent attempt to overcome this deficiency, the Petition cites
inapplicable passages that relate to predetermined carrier assignments and the
Case IPR2014-00454 U.S. Patent No. 5,563,883
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dynamic selection of carrier frequencies for reverse channels, i.e. channels for
receiving communications from remote CIUs, in response to, e.g., changing noise
level. Petition at 54 (citing, e.g., Thompson, col. 6:37-52 (“According to another
aspect of the invention, the reverse band circuitry is frequency agile, and is
responsive to channel information provided in a directory channel in the forward
band from the headend interface unit for tuning to one or more selected reverse
band frequencies, for modulating the telephony signals from the customer interface
unit in the one or more selected frequency subbands.”)).
This disclosure neither anticipates nor renders obvious limitation 14(g)
because the forward and reverse signalling schemes employed by Thompson are
significantly different. See Thompson, col. 5:58-6:25. Thompson acknowledges
factors that account for the differences between the chosen forward and reverse
communication implementations, including differences in available spectrum,
differing noise levels and differing needs for maintaining compatibility with
existing networks. See, e.g., Thompson, cols. 3:10-22, 5:58-67, 6:21-35. The
Petition fails to address these differences and fails to offer any substantive basis for
concluding that it would have been obvious to meet this limitation.
3. Claim 14 Is Not Obvious In View of the Combination of Cioffi and Thompson
The Petition does not identify any factual support as to why claim 14 is
unpatentable as obvious over the combination of Thompson and Cioffi. In Ground
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20, the Petition asserts, (again, solely by reference to Dr. Roy’s declaration), that it
would have been obvious to combine these two references, but nowhere identifies
what particular combination of elements from Thompson and Cioffi would have
been obvious.
Dr. Roy’s declaration merely provides conclusory opinion that both
references disclose multiple-access communication systems and from that asserts
that a “person of ordinary skill in the art would be motivated to combine the
teachings of Cioffi and Thompson to extend data services well beyond data
services over a multi-access communication system that couples CATV and
telephone networks.” (See Roy Dec. ¶¶ 412-13.) This is hardly the type of factual
basis needed to support an assertion of unpatentability. See, e.g., 37 C.F.R. §
42.104(b)(4); K/S HIMPP, 2013-1549, slip op. at 6-7; ActiveVideo, 694 F.3d at
1328; SAS Inst., IPR2013-00581, Paper 17 at 3-4. In any case, no such
conclusion can be reached as the DMT communication scheme implemented by
Cioffi is fundamentally different from the FDM scheme employed by the system of
claim 14. See supra V.c.1.c. It is also fundamentally different from the system
disclosed in Thompson, which relies on forward channels for sending
communications to remote subscribers that utilize a combination of FDMA and
TDMA techniques.
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In sum, Ground 20 of the Petition incorrectly concludes that unspecified
combinations of the materially different systems described in Thompson and Cioffi
would have rendered claim 14 obvious.
D. CLAIMS 15-18
Claims 15-18 of the ’883 patent each depend directly from claim 14, and
accordingly, incorporate all of the limitations of claim 14. As such, the proposed
grounds in the Petition relating to any of claims 15-18, including Grounds 2, 3, 6,
7, and 20, should not be instituted for at least the same reasons that the proposed
grounds relating to claim 1 should not be instituted.
Further, the Petition fails to provide any constructions whatsoever for claims
15-18, each of which includes a means-plus-function claim element not found in
any other claims. The Petition therefore fails to meet the requirements of 37
C.F.R. § 42.104(b)(3), and review should not be instituted with respect to
claims 15-18 on this independent basis.
VI. PETITION IS BARRED UNDER 35 U.S.C. § 315 (b)
35 U.S.C. § 315 (b) provides that “an inter partes review may not be
instituted if the petition requesting the proceeding is filed more than 1 year after
the date on which the petitioner, real party in interest, or privy of the petitioner is
served with a complaint alleging infringement of the patent. The instant Petition is
therefore barred as Petitioner is a privy of at least one party that was served with a
Case IPR2014-00454 U.S. Patent No. 5,563,883
58
complaint for infringement of the ’883 patent in January 2011, more than three
years prior to the date on which the Petition was filed.
On January 25, 2011, Patent Owner filed a complaint for patent
infringement against Comcast Corporation, Charter Communications, Inc., and
others in the United States District Court for the Eastern District of Texas,
alleging that each of the defendants’ cable systems infringed U.S. Patent No.
5,563,883 (“the First Texas Action”).13 Among other things, Patent Owner
accused CMTSs and cable modems provided by Petitioner to each of the
defendants of infringement. See Ex. 2002 at 36. In financial disclosures filed by
Petitioner with the Securities and Exchange Commission, Petitioner admits that it
entered into indemnification agreements with “customers that are subject to
patent claims” in the First Texas Action. For example, Cisco’s quarterly report,
as filed with the Securities and Exchange Commission on November 22, 2013,
states that Petitioner had indemnification agreements with the defendants and was
involved in the litigation. See id. At a minimum, Petitioner had sufficient
knowledge of the substance and strength of the claims and defenses in the First
Texas Action to be able to represent in a public financial filing that the defenses
13 The First Texas Action was assigned docket number 2:11-cv-00030.
Case IPR2014-00454 U.S. Patent No. 5,563,883
59
of its indemnitees were strong and that Petitioner’s products do not infringe the
’883 patent.
Further, “Cisco’s Default Terms of Sale,” obligate Petitioner’s customers to
grant full control of the lawsuit as a condition for indemnification.14 See Ex. 2003
at 7 (Section 10.1). When viewed in light of the admission by Petitioner that it
indemnified the defendants in the First Texas Action, the only reasonable inference
is that Petitioner was granted control of the litigation or at the very least had the
ability to control that litigation.
Because the First Texas Action was more than three years old when the
Petition was filed, the Petition is time barred under 35 U.S.C. § 315 (b). 77 Fed.
Reg. at 48759 (“A common consideration is whether the non-party exercised or
could have exercised control over a party’s participation in a proceeding. . . . The
concept of control generally means that ‘‘it should be enough that the nonparty has
the actual measure of control or opportunity to control that might reasonably be
expected between two formal coparties.’” (emphasis added)(quoting Wright &
14 In an oral hearing concerning a request by Patent Owner for additional
discovery on this issue, Petitioner did not deny that these terms of sale were
present in indemnity agreements with the defendants in the First Texas Action.
See Paper No. 9.
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60
Miller § 4451)); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
IPR2013-00453, Paper 31, at 16 (PTAB. Jan. 22, 2014) (two parties may be in
privity where a complaint for infringement served on the first party gives rise to an
obligation for indemnity and opportunity for control of the litigation by the second
party).
VII. CONCLUSION
For the reasons set forth above, the Board should decline to institute
inter partes review of all challenged claims 1-20 of the ’883 patent.
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Respectfully submitted, KENYON & KENYON LLP _/Lewis V. Popovski/_________________ Date: June 4, 2014 Lewis V. Popovski [email protected] Registration No. 37,423 Lead Counsel for Patent Owner KENYON & KENYON LLP One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200 Fax: (212) 425-5288 Backup Counsel: Jeffrey S. Ginsberg [email protected] Registration No. 36,148
KENYON & KENYON LLP One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200 Fax: (212) 425-5288
Case IPR2014-00454 U.S. Patent No. 5,563,883
Certificate of Service
The undersigned hereby certifies that the foregoing PRELIMINARY
RESPONSE PURSUANT TO 37 C.F.R. §42.107 was served on lead counsel
fo r Pet i t ioner (as ins t ructed in the Pet i t ion a t 2) via Overnight Federal
Express on June 4, 2014, as follows:
LEAD COUNSEL
Mitchell G. Stockwell Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4528 T: 404.815.6214; F: 404.541.3403
KENYON & KENYON LLP /David J. Kaplan/ David J. Kaplan Registration No. 57,117 Attorney for Patent Owner Date: June 4, 2014 One Broadway New York, NY 10004-1007 Tel.: (212) 425-7200