USPTO to review claims in Hytera, Motorola case

Monday, 21 May, 2018

USPTO to review claims in Hytera, Motorola case

The Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO) has accepted Hytera’s October 2017 petitions and has instituted inter partes review (IPR) proceedings to re-examine the validity of claims in two patents of Motorola Solutions.

The patents at issue, US Patent No. 8,116,284 (the ’284 Patent) and US Patent No. 6,591,111 (the ’111 Patent) relate to various features of PMR communications systems.

To institute IPR, the PTAB is required by statute to find that a petitioner has raised a reasonable likelihood that it will prevail with respect to at least one challenged claim. The PTAB instituted IPR on all challenged claims based on all grounds set forth in Hytera’s petitions.

“We are pleased that the Patent Trial and Appeal Board has accepted our petitions,” said Tom Wineland, Vice President of Hytera Communications America (West), Inc.

“We believe the claims in the patents at issue are demonstrably invalid over prior art or should be invalidated as obvious.”

Hytera’s petition in Case No. IPR2018-00128 challenged the validity of claims 1, 4–9, 12–15 and 18–19 of Motorola’s ’284 Patent, ‘Method, Device and System for Temporarily Selecting a Timeslot’, relating generally to talk-group timeslot selection methods for radiocommunication devices and wireless communication systems that employ a TDMA signalling protocol to a select an alternate channel for communicating when a preset first-choice channel is unavailable.

Hytera’s petition notes, “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. Its only alleged ‘inventive’ concept is that the ‘choice’ is made by each individual radio rather than a group controller.”

The petition goes on to state, “This rudimentary concept was already disclosed in the art — and in much greater detail — decades before the ’284 Patent was filed.”

In accepting the petition, the board noted, “After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least claim 1 of the ’284 patent is unpatentable.”

Hytera’s petition for IPR, Case No. IPR2018-00176, challenges the validity of claims 1, 6, 7, 11–13, 16, and 17 of the ’111 Patent, ‘Group Radio Communication System and Method Using Interconnected Radio Sub-Networks’, relating generally to a land mobile radio group-call system created by linking radio sub-networks.

Hytera’s petition argued that Motorola’s ’111 Patent claims “well-worn group call technology taught in multiple references ranging from public standards to Motorola’s own earlier, prior-art patents”.

Hytera’s petition also said that “[G]roup call systems are nothing new. … Motorola’s commercially-available radio system (iDEN), on sale years before filing the ’111 Patent, is the exemplar ‘radio sub-network’ for the claims at issue” and that “Motorola never cited the most relevant prior art, including its own patents, to the Patent Office in prosecuting the ’111 Patent.”

Moreover, Hytera said, “When … [the USPTO] Examiner found a matching reference and rejected each independent claim, Motorola amended its claims to merely move where certain known radio components were located in its system, not what those components did or how they did it.”

The PTAB has instituted IPR on all challenged claims based on all grounds set forth in Hytera’s petition with respect to Motorola’s ’111 Patent.

Motorola Solutions’ responses to both Hytera’s petitions are due on 13 August 2018. Oral argument before a three-judge panel at the PTAB is scheduled for 8 February 2019, with a statutory deadline for a final written decision of 10 May 2019.

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