USPTO's Patent Trial and Appeal Board Accepts Petitions of Hytera

Global land mobile radio communications provider Hytera Communications Corporation Ltd. ("Hytera") today learned that the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO") has accepted Hytera’s October 2017 petitions under 35 U.S.C. § 314(a) and instituted inter partes review ("IPR") proceedings to reexamine the validity of claims in two patents of Motorola Solutions, Inc. ("MSI").

The patents at issue, U.S. Patent No. 8,116,284 ("the ‘284 Patent") and U.S. Patent No. 6,591,111 ("the ‘111 Patent") relate to various features of professional mobile radio ("PMR") communications systems, referred to as critical communications systems or land mobile radio ("LMR"). PMR communications 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.

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 MSI’s ‘284 Patent, "Method, Device and System for Temporarily Selecting a Timeslot," relating generally to talk-group timeslot selection methods for radio communication devices and wireless communication systems that employ a time division multiple access (TDMA) signaling 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 argues that MSI’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 points out 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, noted Hytera, "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."

As with its decision to institute IPR for the ‘284 patent, the PTAB instituted on all challenged claims based on all grounds set forth in Hytera’s petition with respect to MSI’s ‘111 Patent.

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

Hytera is represented in its petitions regarding the ‘111 and ‘284 Patents by Todd R. Tucker, Mark. W. McDougall, and Joshua A. Friedman of Calfee, Halter & Griswold LLP.