N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ HYTERA COMMUNICATIONS CO. LTD., Appellant

v. MOTOROLA SOLUTIONS, INC., Cross

- Appellant ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor

______________________

2019

- 2127, 2019

- 2189

______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018

- 00176.

______________________ Decided: January 1 9 , 2021

______________________ T ODD R OBERTS T UCKER , Calfee, Halter & Griswold LLP, Cleveland, OH, for appellant. Also represented by K

YLE T IMOTHY D EIGHAN , J OSHUA F RIEDMAN , Y IZHOU L IU , M ARK M C D OUGALL , J OSHUA M ICHAEL R YLAND

. Case: 19-2127 Document: 67 Page: 1 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 2

J OHN C. O'Q UINN , Kirkland & Ellis LLP, Washington, DC, for cross

- appellant. Also represented by H ANNAH L AUREN B EDARD , J ASON M. W ILCOX ; M ICHAEL W. D E V RIES , Y IMENG D OU , B ENJAMIN A. H ERBERT , Los Angeles, CA; A KSHAY S. D EORAS , New York, NY; A DAM R. A LPER , San Francisco, CA.
M ONICA B ARNES L ATEEF , Office of the Solicitor, United States Patent and Trademark Office, A lexandria, VA, for intervenor. Also represented by T HOMAS W. K RAUSE , F ARHEENA Y ASMEEN R ASHEED

.

______________________ Before N EWMAN , L OURIE , and H UGHES , Circuit Judges

. N EWMAN , Circuit Judge. On inter partes review ( “ IPR ” ) petition filed by Hytera Communications Co. Ltd. , the Patent Trial and Appeal Board ( “ PTAB ” o r “ Board ” ) held that claims 1, 6, 7, and 12 of U.S. Patent No. 6,591,111 (“the ’111 patent”) , owned by Motorola Solutions, Inc. , are unpatentable on the ground of obviousness

. 1 The Board also held that claims 11, 13, 15, and 16 are patentable

. Hytera appeals the Board’s decision that claims 11, 13, 15, and 16 are patentable , and Motorola conditionally
cross - appeals the Board’s decisi on that claims 1, 6, 7, and 12 are unpatentable. W e affirm the Board’s decision s
. B ACKGROUND The ’111 patent is titled “ Group R adio C ommunication S ystem and M ethod U sing I nterconnected R adio S ub

1 Hytera Comm c’ ns Corp

. v. Motorola Sols

. , Inc. , No. IPR2018

- 00176 , 2019 WL 2067140 (P.T.A.B. May 9, 2019) (“Board Op.”). Case: 19-2127 Document: 67 Page: 2 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 3

networks .” M otorola describes the invention as providing two

- way radio communication between networks that use different communication protocols, as well as expanding the reach of existing networks. The invention concerns group radio communication systems where multip le communication sub

- systems , referred to as “ radio s ub

- networks , ” are connected using

“ point

- to

- multipoint communications ” that are coupled together through a “ group controller ” to form an overall network for point

- to

- multipoint communications. “Point

- to

multipoint ” ( “ PTM ” ) is defined as “ a communication circuit in which a single signal goes from one originating group member to many destination or target group members

. ” ’111 patent, col.1, ll. 15

– 17. These communications are referred to as “monologs.” To facilitate communication between subsystems, a “ group controller ” is used to manage PTM communication s between subscriber s in radio sub

networks

. A “packet switched data communication network” connects the group controller and sub

- networks. A “converter” translate s communications between the radio sub

- network and the packet switched data communication network.

“ R adio sub

- network controllers ” route communications into and out of a sub

- network and resolve conflicts between communications in the sub

- network

. With this communication system , subscribers in a radio sub

- network (such as a city police department) can communicate with subscribers in a different radio sub

- network (such as a federal agen cy) , with communications coordinate d so that radios in the different networks d o not attempt to transmit at the same time , and can duplicate and distribute transmissions between networks if the existing infrastructure i s not capable of supporting one

- to

- ma ny transmissions on its own

. Figure 1 depicts a communication network where a group controller is coupled to multiple radio

- subnetworks with radio sub

- network controllers, Case: 19-2127 Document: 67 Page: 3 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 4

and coordinates between call requests that come from the subscribers in each sub

- ne twork

. C onverters translate between the protocols used in the radio sub

- network s and the data communication protocol used by the group controller, and translate between incompatible protocols:

Claims 1 , 6, 7, 11, and 12 , are system claims

. I ndependent claim 1 is for a “group radio communication system” and requires multiple radio sub

- network s, a group controlle r, a packet switched data communication network , and a radio sub

- network controller : 1. A group radio communica tion system comprising: Case: 19-2127 Document: 67 Page: 4 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 5

a first radio sub

- network configured to implement point

- to

- multipoint communication sessions within said first radio sub

- network; a second radio sub

- network configured to implement point

- to

- multipoint communication sessions within s aid second radio sub

- network; and a group controller in data communication with said first radio sub

- network and said second radio sub

network, said group controller being configured to manage a common point

- to

- multipoint communication session involving sa id first radio sub

- network and said second radio sub

- network; a packet switched data communication network coupled between said first radio sub

- network andsaid group controller and between said second radio sub

- network and said group controller; a radio s ub

- network controller associated with each of said first and second radio sub

- networks and a plurality of subscriber radios in communication with said radio sub

- network controller, and each of said radio sub

- network controllers is configured to resolve con flicts between substantially concurrent requests from said plurality of subscriber radios in communication with said radio sub

- network controller to be origination points for a point

to

- multipoint monolog and to provide subscriber traffic distribution to s aid plurality of subscriber radios in communication with said radio sub

- network controller. ’111 patent, col. 11, ll. 21

– 50. Dependent claim s 6 and 7 additionally require “converters” to translate between the radio sub

- networks and the packet switched data communication networks. Dependent claim 11 additionally require s that the sub

Case: 19-2127 Document: 67 Page: 5 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 6

networks have “overlapping radio coverage areas

. ” Dependent claim 12 requires that the sub

- networks have “non

- overlapping coverage areas.” Claims 13, 15, and 16 are method cla ims. Independent claim 13 is for a “ method of implementing a common point

to

- multipoint communication session involving first and second radio sub

- networks.” Claim 13 recites: 13. A method of implementing a common point

- to

multipoint communication session involving first and second radio sub

- networks, said method comprising: coupling said first radio sub

- network to a packet switched communication network; coupling said second radio sub

- network to said packet switched communication netw ork;coupling a group controller to said data communication network ; routing a point

- to

- multipoint monolog from said first radio sub

- network through said group controller to said second radio sub

- network; converting said point

- to

- multipoint monolog into pa ckets for distribution through said packet switched data communication network and said group controller; receiving said point

- to

- multipoint monolog at a first converter configured to communicate in said first radio sub

- network using a communication protoc ol established for said first radio sub

- network; and transmitting said point

- to

- multipoint monolog aspackets over said packet switched data communication network using a protocol established for said packet switched data communication network. Case: 19-2127 Document: 67 Page: 6 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 7

’111 patent , col. 13, ll. 1

– 24. Dependent claim 15 additionally requires “incompatible communication protocols.” Dependent c laim 16 additionally requires that the radio

- subnetworks have “non

overlapping radio coverage areas.” Hytera filed a petition for inter partes review of claims 1, 6, 7, 11, 12, 13, 15, and 16 as unpatentable as obvious in view of : (1) U.S. Patent No. 5,987,331 (“Grube”) in combination with U.S. Patent No. 5,398,248 (“Shepherd”); and (2) Patent Cooperation Treaty Publication No. 99/63773 (“Stubbs”) in combination with U.S. Patent No. 5,659,881 (“Kent”)

. The Board decided that claims 1, 6, 7, and 12 are unpatentable, and that claims 11, 13, 15, and 16 are patentable. Hytera appeals as to claims 11, 13, 15, and 16, and Motorola conditionally cross - appeals as to claims 1, 6, 7, and 12

. D ISCUSSION On appeal, w e review de novo the Board’s construction or interpretation of a claim , or term of a claim. Teva Pharm. USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 3 3 2

– 33 (2015). An y subsidiary factual findings are reviewed for support by substantial evidence

. In re Gartside , 203 F.3d 1305, 1316 (Fed. Cir. 2000). S ubstantial evidence is such evidence as a reasonable mind might accept as adequate to support the findin g. Consol. Edison Co. v. NLRB , 305 U.S. 197, 229 (1938). Hytera argues that claims 11, 13, 15, and 16 would have been obvious over the combination of Stubbs and Kent, and also over the combination of Grube and Shepherd. Hytera raises three challenges to the Board’s decision : (1) the Board erred in finding that Stubbs does not teach “ routing ” monologs through a group controller; (2)the Board erred in finding that Stubbs does not teach “incompatible communication protocols”; and (3) the Board Case: 19-2127 Document: 67 Page: 7 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 8

erred in find ing the claims patentable over Grube and Shepherd. Motorola states that if we find that Stubbs in combination with Kent teaches routing monologs through a group controller , Motorola conditionally cross - appeals the Board’s invalidation of claims 1, 6, 7, and 12. I C laim 13

– Stubbs ’ routing of monologs Hytera fo cuses on the “routing” limitation of claim 13 , which requires “routing a point

- to

- multipoint monolog from said first radio sub

- network thro ugh said group controller to said second radio sub

- network.” The Board found that this limitation i s not taught by Stubbs, because the general packet radio service (“GPRS”) system of Stubbs routes packets using the serving GPRS support node (“SGSN”) and t he gateway GPRS support node (“GGSN”), not the “ packet handler ” which corresponds to the recited group controller. Board Op. at *12 ; see Stubbs , 15 : 15

– 16 (“ Data packets originated in the mobile station 8 are transmitted over the radio interface and via th e BTS 6 and the BSC 4 to the SGSN 40 .” )

. Hytera argues that all the ’111 patent claim s require that the group controller is located “ between ” the sub

- networks , and thus communications between sub

- networks must pass through the group controller

. Hytera points to claim 1 which requires “a group controller in data communication” with the first and second radio sub

- network , and

“ a packet switched data communication network c oupled between ” the first and second radio sub

- network and the group controller. Hytera also points to the language of claim 1 requiring that the group controller “manage” a communication session involving the first and second radio sub

- networks . Hytera thus argues that the group controller necessarily is located between the first and second sub

networks. Case: 19-2127 Document: 67 Page: 8 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 9

Hytera further argues that the monologs must passthrough the group controller if the group controller duplicates and distributes those monologs to the other radio sub

networks. Hytera points to an example in the ’111 patentspecification where a monolog received at the local converter for a radio sub

- network is “sent to group controller 24,” and is “duplicat[ed] and distribut[ed] [] to all non

- originati ng radio sub

- networks 26 for the group.” ’111 patent, col. 9 , l. 46

– col. 10 , l. 3. Hytera argues that because Stubb s ’ packet handler is between the radio sub

- networks for the communication system, monologs must be routed through it, satisfying the “routin g” limitation in claim 13 , and rendering claim 13 unpatentable

. T he Board found that Stubbs does not show a monolog routed from a first radio sub

- network to a second radio sub

network through a group controller. T here is no teachingin Stubbs that a monolog is routed through the packet handler ; the only routin g in Stubbs is through the support and gateway nodes. Hytera argues that the Board imputed into claim 13 a requirement that the “routing” step uses the group controller, where the claims only require routing “through” the group controller. Hytera states that the Board imposed an unduly narrow interpretation, thereby distinguishing Stubbs. However, the Board did not hold that the claims require that the routing step “uses” the group controller. Rather, the Board found that Stubbs does not route packets between its radio networks through the packet handler . The Board observed that, “when discussing this element” in its petition, Hytera “does not even mention the packet handler. ” Board Op. at *12

. Hytera states that the Board did not “consider the ‘ full record, ’ ” and “ignored” some of Hytera ’ s arguments. Hytera Br. 32

– 40. We do not discern such lapse, for the Boardacknowledged Hytera’s arguments, but deemed them unpersuasive. Cf. Microsoft Corp. v. Parallel Networks Licensing, LLC , 715 F. App’x 1013, 1021 (Fed. Cir. 2017) Case: 19-2127 Document: 67 Page: 9 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 10

(finding that the Board wholly overlooked an argument presented in the petition). W e conclude that substantial evidence supports the Board’s finding that St ubbs does not teach the “routing” limitation of claim 13

. We affirm t he Board ’ s holding that claim 13 is patentable

. 2 II Prior art uses with incompatible protocols Hytera also challenges the Board’s finding that Stubbs does not teach or render obvious radio sub

- networks that have “incompatible communication protocols,” as in system claim 1 1

. In addressing this claim element in its IPR p etition, Hytera stated that “having different protocol s among the sub

- networks is an obvious design choice” and that “ [t]h eclaims already require a converter, which would be pointless if there was only a single protocol across the entire network.” Petition at 70. The Board disagreed, finding that the conve rter recited in claim 6 is used to convert between a radio sub

- network and the packet

- switched network, not between a first incompatible radio sub

- network and a second incompatible radio sub

- network , as required by claim 13

. Board Op. at *11

. We conclude that s ubstantial evidence supports the Board ’ s findings concerning these claims . The ’111 patent

2 Hytera also urges that since claim 1 was held unpatentable, claim 13 is also unpatentable. Motorola responds that since claim 13 was held patentable, claim 1 is also patentable. Motorola points out that claim 13, unlike claim 1, requires “ routing a point

- to

- multipoint monolog from said first radio sub

- network through said group controller to said second radio sub

- network. ” We agree that this distinction supports treating these claims separately. Case: 19-2127 Document: 67 Page: 10 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 11

describes converters that can translate between incompatible protocols , and Figure 1 depicts that the converters allow devices operating on protocol to communicate with devices in a different sub

- network operating on protocol

. The Board correct ly found that Stubbs does not render obvious the presence of a converter to translate to a packet

switched network , and does not show capab ility of supporting inco mpatible protocols at the radio sub

- network level. III The Grube /

Shepherd prior art Hytera’s third general argument is that the claims are unpatentable over Grube in light of Shepherd

. Hytera states that the Board erred in finding that Grube does not teac h a group controller. Hytera states that the Board failed to apply its own construction of the term “ group controller ” and instead announced a new require ment of “active management

. ” Hytera points to the inter

- ward interface shown in Figure 3 of Grube as corresponding to the group controller, and argues that the ’111 patent’s material is not significantly different. T he Boa r d construed “ group controller ” to mean “a computational device that manages a point

- to

- multipoint communication session,” Board Op. at *15

. The Board found that Grube’s inter

- ward interface “is merely a connection between ward controller s and does not perform any functions that ‘manage’ a PTM communication session .” Id. The Board found that “ Grube’s inter

- ward interface plays no active role in distributing message payloads among Grube’s communication systems. Instead, messagedistribution is handled exclusively by switch 106a and associated components of ward cont roller 114a. ” Id. Grube teaches : “ T he inter

- ward interface 315 provides
a communication path between the ward controllers 114A and B

. ” Grube, col. 6 , ll. 52

– 53 . Grube further describes that this is a “physical interface” such as a “ parallel data Case: 19-2127 Document: 67 Page: 11 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 12

bus, multi

- drop parallel data bus, a V.35 interface, anEthernet interface, or other physical communication connection .” Grube, col. 6 , ll. 53

– 56. Nothing in Grube describes the inter

- ward interface as computational or managing a PTM communication sessio n. The plain and ordinary meaning of “manage” requires administering or regulating an activity. Manage , Black’s Law Dictionary ( 10th ed. 2014) (“1. To exercise executive, administrative, and supervisory powers. 2. To conduct, control, carry on, or supervise. 3. To regulate or administer a use or expenditure.”)

. The ’111 patent demonstrates that “manag [ing] a common point

- to

- mult ipoint communication session ” by filtering packets by group, determining whether the packets received from a sub

- network contain a monolog, duplicating and distributing the packet s to other sub

- networks for the group, and managing conflicts between sub

- net works to ensure only one radio at a time is transmitting messages to the group. ’111 patent, col. 9 , l. 29

– col. 10 , l. 53.On the Board’s unchallenged definition of “group controller” to mean “ a computational device that manages a point

- to

- multipoint comm unication session , ” substantial evidence supports the Board’s finding that Grube’s inter

ward interface does not meet this definition. IV Some procedural aspects

“

N ew argument” in the Reply

In its Reply filed in the PTAB, Hytera elaborated its argument concerning Stubbs, stating that Stubbs disclosesthe use of incompatible protocols as “exemplified by the encapsulation/decapsulation conversions in the GGSN and SGSN.” Reply at 18. Hytera’s Reply cited additional quotations from the Stubbs reference, that “flowed directlyfrom its contention [in the Petition] that converters evidence incompatible protocols.” Hytera Br. 51. The Board Case: 19-2127 Document: 67 Page: 12 Filed: 01/19/2021HYTERA COMMUNICATIONS CO

. LTD

. v. MOTOROLA SOLUTIONS , INC

. 13

declined to consider this information , calling it “new arg ument advanced in the Reply” without any reason “why this argument could not have been made in the Petition.” Board Op. at *11

– 12

. It was error for the Board to refuse to consider information filed in Reply , although it was relevant to Motorola ’ s Respons e, for the Board is intended and expected fully to explore the issues, to justify the estoppel that Congress included in the America Invents Act.In the interest of expediency, we have reviewed the information that the Board refused to consider

. We conclu de that this information does not change the result

. The question of “ waiver ” Hytera argues that the Board adop t ed an argument that had been waived by Motorola : the argument that the inter

- ward interface of Grube “refers merely to a connection between ward controllers” and thus does not function as a group controller

. Hytera Br. 53

– 54. Hytera acknowledge s that this argument was presented by Motorola in its preliminary response , but Hytera state s that Motorola did not develop th e argument , and t herefore that it could not be relied on by the Board. We do not discern error or inequity on the facts hereof , for the issue was initially mentioned by Motorola, and the record does not show that as to this aspect Hytera was foreclosed from stating its po sition. C ONCLUSION We affirm the Board’s decision of patentability of claims 11, 13, 15, and 16. With this decision , M otorola does not request review of its conditional cross

- appeal as to claims 1, 6, 7, and 12. AFFIRMED Case: 19-2127 Document: 67 Page: 13 Filed: 01/19/2021