Cisco Systems, Inc. v. C-Cation Techs., LLC

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____________
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Trials@uspto.gov 	Paper 12
571-272-7822 	Entered: August 29, 2014
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
Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE,
BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
MIRIAM L. QUINN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Patent 5,563,883
I. 	INTRODUCTION
Cisco Systems, Inc., (“Petitioner”) filed a Petition1 (Paper 7,
“Petition” or “Pet.”) to institute an inter partes review of claims 1–20 (“the
challenged claims”) of U.S. Patent No. 5,563,883 (“the ’883 Patent”). See
35 U.S.C. §§ 311-19. C-Cation Technologies, LLC (“Patent Owner”) timely
filed a Preliminary Response to the Petition. Paper 10 (“Prelim. Resp.”) We
determine that, under 35 U.S.C. § 314(a), the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail with respect to at least one of the challenged claims.
A. Related Proceedings
Petitioner indicates the ’883 Patent is at issue in C-Cation
Technologies, LLC v. Time Warner Cable Inc., No 2:14-cv-0030 (E.D. Tex.
2014). Pet. 1. Petitioner is a named defendant in the aforementioned
proceeding. Claims 1, 3, 4, and 14 of the ’883 Patent are also the subject of
a petition for inter partes review filed by ARRIS Group (IPR2014-00746,
Paper 1). However, a decision on institution has not been made in that case.
B. The ’883 Patent (Ex. 1002)
The ’883 Patent relates to a “method and apparatus to support two-
way multi-media communication services on a multiple access
communication system, which comprises a central controller, a shared
transmission media, and a plurality of remote terminals dispersed throughout
the network.” Ex. 1002, Abs.; see id. at col. 2, l. 65–col. 3, l. 1.
1 “Petition” and “Pet.” refer to the Corrected Petition filed March 12, 2014.
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Figure 1 of the ’883 Patent, is reproduced below:
Figure 1 illustrates multiple access communication system architecture with
interconnections between remote terminals 14, central controller 10, and
wide area networks 18. Id. at col. 4, ll. 21–25. Communication channels 16
are provided to wide area networks 18, and communication channels 20 are
provided for supporting remote terminals 14. Id. at col. 5, ll. 12–15. “All
communication signals between central controller 10 and remote terminals
14 are multiplexed onto shared transmission media 12.” Id. at col. 5, ll. 21–
23. Central controller 10 comprises switch and control mechanism 32;
transmitters, called forward signaling data channel (FD) 22 and forward
traffic bearer channel (FB) 24; and receivers, called reverse signalling data
channel (RD) 26 and reverse traffic bearer channel (RB) 28. Id. at col. 5, ll.
15–21, 31–36; see id. at col. 12, l. 36–col. 13, l. 1; see also id. at col. 5, ll. 1–
2; col. 12, l. 36–col. 13, l. 1; Fig. 16 (describing the components of central
controller 10).
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Patent 5,563,883
Figure 17 of the ’883 Patent, is reproduced below:
Figure 17 illustrates a diagram of remote terminal 14. Id. at col. 5, ll. 3–4.
Remote terminal 14 comprises transmitter 40 and receiver 36 for
communication on shared transmission media 12 (i.e., FB, RB), and radio
frequency (RF) data modulator 38 and RF data demodulator 34 for
signalling data channels (i.e., FD, RD). Id. at col. 13, ll. 40–45; see id. at
col. 5, ll. 46–52. Transmitter 40, receiver 36, data modulator 38, and data
demodulator 34 are capable of tuning to the assigned RF frequency. Id. at
col. 13, ll. 45–47. Duplexer 170 combines the communication signals to be
transmitted and duplicates the communication signals from shared
transmission media 12 to receivers 34, 36. Id. at col. 13, ll. 47–51. A micro
processor communicates with Erasable Programmable Read Only Memory
(EPROM), Random Access Memory (RAM), RF data demodulator 34, and
RF data modulator 38 via a system bus. Id. at col. 13, ll. 51–53. Telephone
set 172 includes a keypad, speaker and microphone. Id. at col. 13, ll. 54–55.
The ’883 Patent additionally discloses a polling and registration
process at central controller 10 (Ex. 1002, col. 4, ll. 33–34; col. 7, ll. 50–67;
Fig. 4); and a registration, channel allocation, terminal assignment, and
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reassignment process at central controller 10 (id. at col. 4, ll. 37–39; col. 8,
ll. 16–55; Fig. 6).
C. Illustrative Claim
Claims 1, 6, 14, and 19 are independent claims. Claims 2–5 depend
from claim 1, claims 7–13 depend from claim 6, claims 15–18 depend from
claim 14, and claim 20 depends from claim 19. Claim 19, reproduced
below, is illustrative.
19. In a multiple access communication system having a
central controller, a plurality of communication channels, and a
plurality of remote terminals, each of said plurality of remote
terminals comprising:
(a) user traffic transmitting means for transmitting user
traffic on an assigned communication channel;
(b) user traffic receiving means for receiving user traffic on
an assigned communication channel;
(c) signalling data transmitting means for transmitting
signalling data on an assigned communication channel;
(d) signalling data receiving means for receiving signalling
data on an assigned communication channel;
(e) user interfacing means comprising a telephone with a
keypad;
(f) system controlling means for controlling the
communication system comprising a micro-processor and
associated EPROM and RAM and
(g) communication controlling means for tuning said
signalling data transmitting means and for tuning said
signalling data receiving means under control of said
central controller a pair of assigned communication
channels via said micro-processor and associated
EPROM and RAM.
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II. ANALYSIS
A. Prior Art
U.S. Patent No. 4,533,948 	(“McNamara”) 	Ex. 1012
U.S. Patent No. 4,742,512 	(“Akashi”) 	Ex. 1016
U.S. Patent No. 5,355,374 	(“Hester”) 	Ex. 1013
U.S. Patent No. 5,377,192 	(“Goodings”) 	Ex. 1015
U.S. Patent No. 5,594,726 	(“Thompson”) 	Ex. 1009
U.S. Patent No. 5,625,651 	(“Cioffi”) 	Ex. 1008
“Multiaccess Protocols in Packet Communication Systems,”
IEEE Transactions on Communications, vol. COM-28
no. 4, 1980 (“Tobagi”) 	Ex. 1011
“Modeling and Analysis of Computer Communication Networks,”
1st ed., Jeremiah F. Hayes, 1984 (“Hayes”) 	Ex. 1010
“A Demand-Adaptive Media Access Protocol for Metropolitan Area
Networks,” by Semir Sirazi, 1986 (“Sirazi”) 	Ex. 1014
MPT 1327 A Signalling Standard for Trunked Private Land Mobile
Radio Systems 1988 (collectively “MPT”) 	Ex. 1005
MPT 1343 Performance Specification 1988 (collectively “MPT”)
Ex. 1006
B. Asserted Grounds of Unpatentability
Petitioner contends the challenged claims are unpatentable under
35 U.S.C. §§ 102 and 103 based on the following grounds (Pet. 3–4):
Ground 	Claims
Challenged Basis 	Reference[s]
1 1–4, 6, 7, 10, and
11 § 102 MPT
2 1, 6–8, 10, 11, and
14–20 § 102 Cioffi
3 	14–20 	§ 102 Thompson
4 	6, 7, 12, and 13 	§ 102 Hayes
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5 1–4, 6, 7, 10, and
11 § 103 MPT
6 1, 6–8, 10 ,11, and
14–20 § 103 Cioffi
7 	14–20 	§ 103 Thompson
8 	6, 7, 12, and 13 	§ 103 Hayes
9 	1 	§ 103 MPT in view of Cioffi
10 	6 and 7 	§ 103 Hayes and/or MPT
11 	2 	§ 103 MPT in view of Cioffi,
Thompson, and Tobagi
12 	3 	§ 103 MPT in view of Thompson,
McNamara, and Hester
13 	4 	§ 103 MPT in view of Thompson,
and Sirazi
14 	5 	§ 103 MPT in view of Thompson,
Hester, and Goodings
15 	8 	§ 103 Cioffi in view of Hayes
and/or MPT
16 	9 	§ 103 Cioffi in view of Akashi
17 	9 	§ 103 Cioffi in view of Akashi,
Hayes, and MPT
18 	10 and 11 	§ 103 MPT in view of Hayes or
Cioffi
19 	12 and 13 	§ 103 Hayes in view of MPT
and/or Cioffi
20 	14–20 	§ 103 Thompson in view of Cioffi
C. Incorporation by Reference
We first address the propriety of Petitioner’s use of footnotes listing
certain paragraphs of the Declaration of Dr. Sumit Roy (Ex. 1001). See Pet.
17–19, 24–25, 27–34, 37, 39, 41–43. For example, section VII-A of the
Petition presents five asserted grounds that claim 1 is unpatentable, spanning
approximately seven pages, including a three-page claim chart. See id. at
17–24 (section VII-A). Section VII-A, however, includes four footnotes
citing Dr. Roy’s Declaration. See id. at 17 n.6, 18 nn.7–8, 19 n.9. The
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footnotes cite a total of seventeen pages, including eleven pages of claim
charts, of Dr. Roy’s Declaration—substantially more pages than section VII
A in the Petition. See, e.g., id. at 18 n.8 (citing Ex. 1001 ¶¶ 257–64
(referring to approximately seven pages of Dr. Roy’s Declaration, including
a four-page claim chart)), id. at 19 n.9 (citing Ex. 1001 ¶¶ 265–70 (referring
to approximately eight pages of Dr. Roy’s Declaration, including a seven-
page claim chart)). The practice, here, of using footnotes to cite large
portions of another document, without sufficient explanation of those
portions, amounts to incorporation by reference.2
Moreover, the claim charts in the Petition cite to other claim charts
included in Dr. Roy’s Declaration. Using claim 1 as an example, the claim
chart indicates the prior art descriptions that purportedly correspond to the
limitation “(a) establishing communications between said central controller
and said plurality of remote terminals via a plurality of signalling data
channels, each of said remote terminals being initially assigned to a pair of
predetermined signalling data channels.” Pet. 21. For this limitation, the
claim chart cites ¶ 264 of Dr. Roy’s Declaration for two of the grounds
asserted against claim 1 (i.e., Grounds 1 and 5). Paragraph 264 consists of
nearly five pages, four pages of which is a claim chart. For two other
grounds asserted against claim 1 (i.e., Grounds 2 and 6), the claim chart cites
¶ 270 of Dr. Roy’s Declaration, which consists of another six-page claim
chart, to explain how the asserted prior art discloses limitation (a). Id. The
2 BLACK’S LAW DICTIONARY 766-67 (6th ed. 1990) (defining incorporation
by reference as “[t]he method of making one document of any kind become
a part of another separate document by reference to the former in the latter,
and declaring that the former shall be taken and considered as a part of the
latter the same as if it were fully set out therein”).
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practice, here, of citing to other claim charts in another document also
amounts to incorporation by reference.
Further, the Petition includes citations to the Declaration to support
conclusory statements for which the Petition does not otherwise provide an
argument or explanation. For example, concerning limitation (a) in claim 1,
the claim chart indicates, concerning “Grounds 1 and 5” identified by
Petitioner: “MPT Spec. discloses limitation (a) of claim 1. Roy Dec. at
¶¶ 54, 67, 261, and 264” and provides a one sentence quotation from the
reference and several citations to the reference. Pet. 21. In another example
concerning claim 1, the Petition asserts:
Each of MPT Specification and Cioffi also discloses dynamic
signal allocation in a multi-access system, including each and
every feature of claim 1, arranged in the same manner as
claim 1 requires, and thus anticipates the claim. In the
alternative, it would have been obvious for a person of ordinary
skill in the art to modify the teachings of each of MPT
Specification and Cioffi or to combine the teachings of MPT
Specification and Cioffi to practice claim 1. The prior art
references are in the same field of endeavor and the
combination allows the extension of services from one system
to another.
Id. at 17–18. This conclusory paragraph is followed by a footnote, citing to
¶¶ 271–273 of Dr. Roy’s Declaration—one and a half pages indicating the
combinations would have been “well within the ordinary creativity of a
person of ordinary skill in the art” and providing reasons why one would
have combined the teachings of the references. This practice of citing the
Declaration to support conclusory statements that are not otherwise
supported in the Petition also amounts to incorporation by reference.
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It is improper to incorporate by reference arguments from one
document into another document. 37 C.F.R. § 42.6(a)(3). One purpose of
the prohibition against incorporation by reference is to eliminate abuses that
arise from incorporation. Rules of Practice for Trials Before The Patent
Trial and Appeal Board and Judicial Review of Patent Trial and Appeal
Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012);
see also DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999)
(Incorporation “by reference amounts to a self-help increase in the length of
the [] brief[,]” and “is a pointless imposition on the court’s time. A brief
must make all arguments accessible to the judges, rather than ask them to
play archeologist with the record.”). In the Petition before us, incorporation
by reference of numerous arguments from Dr. Roy’s 250-page Declaration
into the Petition serves to circumvent the page limits imposed on petitions
for inter partes review, while imposing on our time by asking us to sift
through over 250 pages of Dr. Roy’s Declaration (including numerous pages
of claim charts) to locate the specific arguments corresponding to the
numerous paragraphs cited to support Petitioner’s assertions.
Accordingly, we will not consider arguments that are not made in the
Petition, but are instead incorporated by reference to the cited paragraphs
and claims charts of Dr. Roy’s Declaration.
D. Unpatentability Grounds Based on Anticipation
The Petition provides characterizations of the claimed subject matter,
brief summaries of the applied references, and general assertions that the
applied references disclose the claimed subject matter. See Pet. 17–21, 24–
30, 32–34, 37–40, 42–43, 45–50. The Petition further includes claim charts
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providing quotations and citations from each of the applied references. See
id. at 21–24, 26–31, 34–41, 44–47, 50–59.
A petition for inter partes review must identify how the construed
claim is unpatentable under the statutory grounds on which the petitioner
challenges the claims, and must specify where each element of the claim is
found in the prior art patents or printed publications relied upon. 37 C.F.R.
§ 42.104(b)(4). Similarly, 37 C.F.R. § 42.22(a)(2) states that each petition
must include “a detailed explanation of the significance of the evidence
including material facts, and the governing law, rules, and precedent.” The
Office Patent Trial Practice Guide suggests parties requesting inter partes
review should “avoid submitting a repository of all the information that a
judge could possibly consider, and instead focus on concise, well organized,
easy-to-follow arguments supported by readily identifiable evidence of
record.” 77 Fed. Reg. at 48,763 (Aug. 14, 2012). The Petition before us
does not: (1) specify sufficiently where each element of the claims is found
in the applied references, and (2) include a detailed explanation of the
significance of the quotations and citations from the applied references. See
37 C.F.R. §§ 42.104(b)(4), 42.22(a)(2).
For example, independent claim 19 recites “system controlling means
for controlling the communication system comprising a micro-processor and
associated EPROM and RAM.” Petitioner asserts that claim 19 is
anticipated by Cioffi and by Thompson. Pet. 3, 47–50, 56–59.
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A portion of the claim chart from the Petition addressing the
aforementioned limitation of claim 19 is reproduced below (Pet. 58–59):
Petitioner asserts in the claim chart that Thompson and Cioffi disclose
limitation (f) and provides quotes and citations from Thompson and Cioffi
that allegedly support the assertions. The quotations provided in the claim
chart do not specify expressly where the associated EPROM and RAM are
disclosed by either Cioffi or Thompson. We also are not persuaded the
quotations provided in the claim chart show sufficiently that a person of
ordinary skill in the art in the relevant time period would have understood
those quotations to describe an associated EPROM and RAM, as recited in
the claim. Furthermore, the Petition does not provide a detailed explanation
of the significance of the quotations and citations from Cioffi and
Thompson, and does not otherwise specify sufficiently where the EPROM
and RAM are disclosed by Cioffi and Thompson. See id. at 47–50, 56–59;
37 C.F.R. §§ 42.104(b)(4), 42.22(a)(2).
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We have reviewed the Petition as to the remaining claims and grounds
of unpatentability based on anticipation, and have determined that the
Petition provides similarly deficient analyses of the remaining grounds.
Specifically, the remaining grounds also do not (1) specify sufficiently
where each element of the claims is found in the applied references, and (2)
include a detailed explanation of the significance of the quotations and
citations from the applied references. Accordingly, on the record before us,
the information presented in the Petition does not demonstrate a reasonable
likelihood that Petitioner would prevail with respect to its assertions of
unpatentability based on anticipation (i.e., Grounds 1 through 4).
E. Unpatentability Grounds Based on Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art,
(3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). Against this background, the obviousness of the claimed subject
matter is determined. Id. “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Khan, 441 F.3d 977, 998 (Fed. Cir. 2006)).
In addition to the deficiencies discussed above addressing Petitioner’s
assertions based on anticipation, the Petition does not address meaningfully
the scope and content of the prior art, and any differences between the
claimed subject matter and the prior art. See Pet. 17–59. The Petition also
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does not provide sufficient articulated reasoning with rational underpinning
explaining why one with ordinary skill in the art would modify the teachings
of the applied references to address those differences. The Petition merely
provides conclusory statements to support the assertions of obviousness. See
id. at 17–18, 24–25, 28, 30–33, 37, 39, 41–43, 45–48.
For example, Petitioner asserts that claim 19 would have been obvious
over Cioffi and Thompson. Pet. 4, 47–50, 56–59. Petitioner asserts in the
claim chart that a combination of Thompson and Cioffi discloses each of the
limitations of claim 19, with citations to certain paragraphs of Dr. Roy’s
Declaration. Id. at 56–59. Petitioner provides the following conclusions
regarding the combined teachings of Thompson and Cioffi:
[i]t would have been obvious for a person of ordinary skill in
the art . . . to combine the teachings of Thompson and Cioffi.
The motivation to combine is in the prior art references: to
implement different architectures that extend various services to
users. The prior art references are in the same field of endeavor:
multi-access communication protocols in multi-access
communication systems and proposed solutions to common
problems of multi-access communication protocols.
Id. at 47–48 (footnotes omitted). For exemplary claim 19, the Petition does
not provide sufficient articulated reasoning with rational underpinning
explaining which elements of Thompson would be combined with those of
Cioffi, and why one with ordinary skill in the art would modify the teachings
of Thompson in view of Cioffi’s teachings to arrive at the claimed invention.
We have reviewed the Petition as to the remaining claims and grounds
of unpatentability based on obviousness, and have determined that the
Petition provides similarly deficient analyses of the remaining grounds.
Specifically, the remaining grounds also do not provide sufficient articulated
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reasoning with rational underpinning explaining why one with ordinary skill
in the art would modify the teachings of the applied references to arrive at
the claimed invention. See Pet. 17–59. Therefore, on the record before us,
the information presented in the Petition does not demonstrate a reasonable
likelihood that Petitioner would prevail with respect to its assertions of
unpatentability based on obviousness (i.e., Grounds 5 through 20).
F. Time Bar Under 35 U.S.C. § 315(b) Based on Privity
Patent Owner argues that Petitioner is a privy of at least one party that
was served with a complaint for infringement of the ’883 Patent more than
one year prior to the date on which this Petition was filed, and therefore the
Petition is barred under 35 U.S.C. § 315(b). Prelim. Resp. 57–60. Because
the information presented in the Petition does not demonstrate a reasonable
likelihood that Petitioner would prevail with respect to at least one of the
challenged claims, we need not address Patent Owner’s assertions that the
Petition is barred under 35 U.S.C. § 315(b) based on privity.
III. 	CONCLUSION
Based on the record before us, the information presented in the
Petition does not demonstrate a reasonable likelihood that Petitioner would
prevail in showing that claims 1–20 are unpatentable.
IV. 	ORDER
Accordingly, it is ORDERED that the Petition for inter partes review
is DENIED.
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PETITIONER:
Mitchell G. Stockwell
Michael S. Pavento
Vaibhav P. Kadaba
Russell A. Korn
KILPATRICK TOWNSEND & STOCKTON LLP
MStockwell@kilpatricktownsend.com
MPavento@kilpatricktownsend.com
WKadaba@kilpatricktownsend.com
RKorn@kilpatricktownsend.com
PATENT OWNER:
Lewis V. Popovski
Jeffrey S. Ginsberg
David J. Kaplan
David J. Cooperberg
KENYON & KENYON LLP
lpopovski@kenyon.com
jginsberg@kenyon.com
djkaplan@kenyon.com
dcooperberg@kenyon.com
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