U.S. Patent Trial Board to Review Validity of 3 Motorola Patents
Friday, May 18, 2018 | Comments

The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) accepted three petitions from Hytera Communications and instituted inter partes review (IPR) proceedings to re-examine the validity of claims in three patents owned by Motorola Solutions. The PTAB also denied Hytera’s petition for review into a fourth patent.

In October and November, Hytera filed four petitions with the PTAB, asking for review of four Motorola patents. In its four petitions, Hytera argued that claims in the four Motorola patents are described by patents that were issued earlier, meaning that the patents would be invalid under the prior art standard.

Under patent law, prior art is any proof or evidence of an invention that is already known.

The three petitions approved by the PTAB will now move to trial proceedings with oral arguments before a three-judge panel expected to occur in early 2019.

The first petition covers U.S. Patent No. 8,116,284, or “Method, Device and System for Temporarily Selecting a Timeslot” relates to talkgroup timeslot selection methods for radio communication devices and wireless communications systems that employ TDMA signal protocol to select an alternate channel for communicating when a preset first choice channel is unavailable.

“The ‘284 patent claims nothing more than applying the ubiquitous idea of using an alternate channel when a first channel choice is unavailable to decades-old trunked radio technology,” Hytera’s petition said. “Its only alleged ‘inventive’ concept is that the choice made by each individual radio rather than a group controller.”

Hytera argued that that feature was covered by prior art in much greater detail.

The second petition covers U.S. Patent No. 6,511,111, “Group Radio Communication System and Method Using Interconnected Radio Sub-Networks,” which relates to an LMR group call system created by linking subnetworks.

In its petition, Hytera argued that group call systems were not new when the patent was issued and that “Motorola never cited the most relevant prior art, including its own patents, to the patent office prosecuting the ‘111’ patent.”

The final accepted petition covers U.S. Petition No. 8,279,991, “Method of Efficiently Synchronizing to a Desired Timeslot in a Time Division Multiple Access Communication System,” which relates to a synchronization pattern used to identify time slots in a TDMA pattern. The patent was seen as an improvement to a well-known European Telecommunications Standards Institute (ETSI) standard for TDMA systems, Hytera’s petition said.

Again, Hytera argued that the patents had claims that were already present in the prior art before the approval of the patent, making it invalid.

"MSI claims in its '991 patent a capability that was part of a set of technology standards for TDMA that were publicly available and understood as industry standards at the time,"said Wineland. "The claims would have been obvious by any person of oridnary skill in the art of professional mobile radio communications."

On each of those three petitions, the PTAB board concluded that Hytera had shown enough to demonstrate a “reasonable likelihood of success” of proving that at least one claim in each patent is “unpatentable,” the requirement for moving forward to the trial process.

“We are pleased that the Patent Trial and Appeal Board has accepted our petitions,” said Tom Wineland, vice president of Hytera Communications America (West). “We believe the claims in the patents at issue are demonstrably invalid over prior art or should be invalidated as obvious.” The fourth petition covers U.S. Patent No. 7,369,869, “Method and System of Scanning a TDMA Channel,” which relates to a method and system in which a subscriber unit in a wireless communications landscape scans a TDMA channel. The patent says it solves an issue of the subscriber unit scanning and listening to communications that are of no interest to it.

Hytera argued that this improvement could be derived from prior art and that the claims are unpatentable under patent law using the person of ordinary skill in the art standard. Under that standard, a claim can be considered unpatentable if the claim would be obvious or easily discovered by someone with normal skills or knowledge in a particular technical field.

In denying the petition, the PTAB concluded that the knowledge shown in the patent would likely not be obvious to someone of ordinary skill in the field and rejected Hytera’s prior art argument as well.

“Motorola Solutions notes that the decision by the U.S. Patent and Trademark Office (PTO) to review certain Motorola Solutions patents is a normal course occurrence; the PTO regularly reviews patents, and its decision to do so at the request of Hytera is not an indication of the PTO’s final views as to the validity of any patent," a Motorola statement said. "We are disappointed, but not surprised, that Hytera is continuing its efforts to shift attention away from its brazen theft of Motorola Solutions’ trade secrets and willful infringement of our patents. Motorola Solutions is confident that our intellectual property will continue to be upheld, and we are committed to continuing to develop unique, innovative products for our customers around the world.”

All four of the patents have been involved in patent infringement suits Motorola filed against Hytera last year. Last March, Motorola filed a patent infringement case against Hytera in U.S. district court in Illinois and a few weeks later filed a similar case with the U.S. International Trade Commission (ITC).

The Illinois case is on hold pending the outcome of the ITC case; a decision in the ITC case is expected this summer. A spokesman for Hytera said there would be no immediate impact from the PTAB cases on the others cases because the ITC case operates independently of PTAB reviews.

Motorola’s responses to Hytera’s petitions are due Aug. 13, and oral arguments before the three-judge panel are scheduled for Feb. 8, 2019. A statutory deadline for the final written decision is set for May 10, 2019.

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