The Patent Trial and Appeal Board («PTAB» or «the Board») of the United States Patent and Trademark Office («USPTO») has accepted a third petition of global land mobile radio communications provider Hytera Communications Corporation Ltd. («Hytera») to review the validity of challenged claims in a patent of Motorola Solutions, Inc. («MSI») and has instituted inter partes proceedings («IPR») as of May 14, 2018. The decision follows the PTAB’s institution of IPR May 10 on two other MSI patents challenged by Hytera.
In its petition, Hytera challenges the validity of claims in MSI’s U.S. Patent No. 8,279,991, «Method of Efficiently Synchronizing to a Desired Timeslot in a Time Division Multiple Access Communication System» («the ‘991 Patent»). The claims at issue relate to time-division multiple access («TDMA») technology that allows multiple parties to communicate at the same time in a discrete timeslot, using a mutually exclusive synchronization pattern on equipment for sending and receiving messages.
TDMA features are a subset of widely adopted professional mobile radio («PMR») communications systems, often referred to as land mobile radio («LMR») systems. LMR systems are used by public safety personnel such as fire and police departments in emergency situations, as well as in the energy infrastructure industry and for other commercial applications.
«We find that Petitioner has provided sufficient evidence and argument showing that there is a reasonable likelihood that it would prevail in demonstrating the unpatentability of claims 7 and 8 of the ’991 patent as obvious,» noted the Board in issuing its decision to institute IPR. The PTAB’s latest decision to institute IPR proceedings with respect to MSI’s ‘991 Patent follows the success of two earlier Hytera petitions to institute IPR, in decisions issued by the Board on May 11, 2018.
By statute, a patent claim is unpatentable if the differences between the claimed subject matter and 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 that subject matter pertains.
Hytera’s petition argues that claims 7 and 8 in MSI’s ‘991 Patent are invalid in light of multiple, different combinations of prior art with respect to TDMA communication systems. The petition cites to the prosecutorial history of MSI’s ‘991 Patent at the USPTO to demonstrate that the TDMA capability claimed by MSI was already a publicly available standard of the European Telecommunication Standards Institute (ETSI) but this was not considered by the USPTO Examiner before the ‘991 Patent issued on October 2, 2012.
«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 Tom Wineland, Vice President of Hytera Communications America (West), Inc. «The claims would have been seen as obvious by any person of ordinary skill in the art of professional mobile radio communications.»
As with the two previous petitions accepted by the PTAB, MSI’s responses to Hytera’s petition are due on August 13, 2018. Oral argument before a three-judge panel at the PTAB is scheduled for February 8, 2019.
Hytera is represented in its petitions regarding the ‘991 Patent by Joshua L. Goldberg, E. Robert Yoches, Rachel L. Emsley, David C. Reese, and Yanbin Xu of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.