UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HUGHES NETWORK SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`ELBIT SYSTEMS LAND AND C4I LTD.,
`Patent Owner.
`
`IPR2016-00141
`Patent No. 6,240,073
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`LIST OF EXHIBITS
`
`
`
`Description
`Corrected Petition for Inter Partes Review of Claims 2-8, 28, and
`29 of U.S. Patent No. 6,240,073 by Petitioner Hughes Network
`Systems, LLC, IPR2016-00142, Paper No. 6
`
`Exhibit
`Ex. 2001
`
`
`
`- i -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................. 1
`
`I.
`
`II. OVERVIEW OF THE ‘073 PATENT ............................................................ 6
`
`III. SUMMARY OF THE DOCUMENTS CITED IN THE PETITION ......... 9
`
`A.
`
`B.
`
`European Patent Publication EP 0719062 to Rudrapatna et al.
`(“Rudrapatna”) (Ex. 1004) ....................................................................... 9
`
`U.S. Patent No. 5,673,259 to Quick (“Quick”) (Ex. 1005) ................... 12
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART ............................... 14
`
`V. CLAIM CONSTRUCTION ........................................................................... 14
`
`1.
`
`2.
`
`“Multiple Access Communications System for use in a Satellite
`Communications Network” ......................................................... 15
`
`“Switching Means” / “Means For Switching” ............................ 17
`
`VI. THE PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘073
`PATENT IS UNPATENTABLE ................................................................... 19
`
`A. Ground 1: The Petition Fails to Demonstrate That Claim 28 is
`Anticipated by Rudrapatna ..................................................................... 19
`
`1.
`
`2.
`
`3.
`
`4.
`
`Rudrapatna does not disclose a “return communication link for
`transmitting data from said plurality of user terminals . . .
`including a first communication means for transmitting short
`bursty data in combination with second communication means
`for continuous transmission of data” ........................................... 19
`
`Rudrapatna does not disclose a “switching means within said
`plurality of user terminals” .......................................................... 23
`
`Rudrapatna does not disclose a “receiver means within said at
`least one hub adapted to receive data transmitted by said plurality
`of terminals utilizing . . . said second communication means” ... 24
`
`Rudrapatna does not disclose that “each user terminal comprises
`means for generating a request to be sent over said return
`
`- ii -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`communications link in order to utilize said second
`communication means” ............................................................... 26
`
`B.
`
`Grounds 2-6: The Petition Fails to Demonstrate that Claims 2-8
`or 29 are Unpatentable Over Rudrapatna in view of Quick, Kou,
`Nakamura, Beal, or Wilkinson ............................................................... 29
`
`1.
`
`2.
`
`The Petition Lacks Articulated Reasoning Supported by Evidence
`for Multiple Claim Limitations .................................................... 30
`
`The Petition Fails to Perform a Proper Graham Analysis .......... 58
`
`VII. CONCLUSION ................................................................................................ 60
`
`- iii -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 31
`
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251 (Fed. Cir. 1989) .......................................................................... 15
`
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .......................................................................... 16
`
`Fidelity Nat’l Info. Servs., Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ............................................... 52
`
`General Elec. Co. v. TAS Energy Inc.,
`IPR2014-00163, Paper 11 (PTAB May 13, 2014) ............................................... 5
`
`Genetics Inst., LLC v. Novartis Vaccines and Diagnostics, Inc.,
`655 F.3d 1291 (Fed. Cir. 2011) .......................................................................... 33
`
`Georgia-Pacific Corp. v. United States Gypsum Co.,
`195 F.3d 1322 (Fed. Cir. 1999) .......................................................................... 17
`
`Google Inc. v. Everymd.com LLC,
`IPR2014-00347, Paper 9 (PTAB May 22, 2014) ......................................... 32, 58
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................................ 6, 30
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ........................................... 33, 37, 48, 52, 55, 57
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 14
`
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) ............................................................................ 18
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 31
`
`- iv -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 14
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01633, Paper 10 (PTAB Jan. 4, 2016) .................................................. 5
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ......................................................................................... 4,31
`
`Nautique Boat Co. v. Malibu Boats, LLC,
`IPR2014-01045, Paper 13 (PTAB Nov. 26, 2014) ......................................... 6, 58
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F. 3d 1359 (Fed. Cir. 2008) ........................................................................... 4
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .......................................................................... 15
`
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00277, -00278, Paper 7 (PTAB May 29, 2015) ............................ 32, 48
`
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper 7 (PTAB Feb. 17, 2015) ................................................ 58
`
`Torrent Pharm. Ltd. v. Merck Frosst Canada & Co.,
`IPR2014-00559, Paper 8 (PTAB Oct. 1, 2014) ............................................ 32, 50
`
`TRW Automotive US LLC v. Magna Electronics Inc.,
`IPR2014-00257, Paper 18 (PTAB Aug. 24, 2014) ............................................. 36
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................................. 4
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .......................................................................... 19
`
`Statutes
`
`35 U.S.C. § 112, ¶ 6 ................................................................................................. 18
`
`35 U.S.C. § 314 .......................................................................................................... 6
`
`- v -
`
`

`
`IPR2016-00141
`
`Other Authorities
`
`Docket No. 037023.0003-US02
`
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 31, 52
`
`37 C.F.R. § 42.62(a) ................................................................................................... 5
`
`37 C.F.R. § 42.65(a) ..........................................................................................passim
`
`37 C.F.R. § 42.100(b) .............................................................................................. 14
`
`37 C.F.R. § 42.104(b)(4) ...................................................................................... 5, 31
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012)....................................................................... 14
`
`
`
`
`
`- vi -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`Patent Owner Elbit Systems Land and C4I Ltd. (“Patent Owner”) provides
`
`the following preliminary response to the Corrected Petition (“Petition” or “Pet.”)
`
`originally filed by Hughes Network Systems, LLC (“Petitioner”) on November 4,
`
`2015 and corrected on November 24, 2015, requesting inter partes review of
`
`claims 2-8, 28, and 29 of U.S. Patent No. 6,240,073 (“the ‘073 Patent”). Patent
`
`Owner requests that the Board deny inter partes review as to all grounds presented
`
`in the petition for at least the reasons set forth below.
`
`I.
`
`INTRODUCTION
`This is one of two petitions for inter partes review of the ‘073 Patent that
`
`was filed by Petitioner on November 4, 2015—the other being IPR2016-00142
`
`(“the ’142 Petition”). Defects in the originally filed ‘142 Petition were also
`
`corrected on November 24, 2015. See Ex. 2001. The present petition argues that
`
`independent claim 28 of the ‘073 Patent is anticipated by European Patent
`
`Publication EP 0719062 to Rudrapatna et al. (“Rudrapatna”) (Ex. 1004). The ‘142
`
`Petition argues anticipation of claim 28 by U.S. Patent No. 5,673,259 to Quick
`
`(“Quick”) (Ex. 1005). Each petition argues that independent claims 2-8 and 29 are
`
`obvious over the primary reference asserted in that petition (either alone or in
`
`combination with secondary references asserted in the petition). Both petitions
`
`share the same, identical 254-page declaration of Dr. Raymond J. Leopold (the
`
`“Leopold Declaration”) (Ex. 1003), resulting in large portions of the omnibus
`
`- 1 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`declaration being irrelevant to and uncited in one or both of the petitions. Both
`
`petitions fail to show a reasonable likelihood that at least one claim of the ‘073
`
`Patent is unpatentable.
`
`The problems of the present Petition begin with its proposed claim
`
`constructions. The ‘073 Patent is directed to a two-way satellite communication
`
`system in which satellite user terminals (VSATs) can switch between two modes of
`
`communication to more efficiently transmit data over the return link of the satellite
`
`system. See, e.g., Ex. 1001 at 4:45-65; 9:38-44. When the data requires a high
`
`transmission rate (for video conferencing, for example), the VSAT terminal selects a
`
`specific channel assignment for sending the data back to the hub of the satellite
`
`system at a high speed, see id. at 4:45-65; 9:65-10:7. When the data requires a low
`
`transmission rate (for e-mail or routine program requests), the VSAT terminal selects
`
`a shared random access bandwidth in order to conserve the amount of high-speed
`
`bandwidth needed for the system, see id. at 4:45-65; 9:53-64. In construing the terms
`
`of the ‘073 Patent, however, the Petitioner contends the claimed “multiple access
`
`communications system for use in a satellite communications network” can be a
`
`terrestrial cellular telephone system, Ex. 2001 at 10-12, while the corresponding
`
`structure for “switching means within said plurality of user terminals” must include
`
`the satellite-specific VSAT terminal, Pet. at 8. In addition to these contradicting
`
`constructions, Petitioner confirms that the claimed “transmitter means” transmits data
`
`- 2 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`from the user terminal to the hub of the satellite system, Pet. at 7, and that the
`
`“second communication means” of the transmitter means (for sending high-speed
`
`data) requires a “continuous transmission of data,” id. at 8, while the “first
`
`communication means” of the transmitter means is for “transmitting short bursty
`
`data,” such as routine program requests and e-mail messages, id.
`
`Using these proposed constructions, Petitioner argues that Rudrapatna
`
`anticipates claim 28. But Rudrapatna fails to anticipate for at least two reasons.
`
`First, Rudrapatna fails to disclose a “second communication means” for sending a
`
`“continuous transmission of data” from a user terminal to the hub. This is because
`
`Rudrapatna’s video-on-demand distribution system supports end-user terminals such
`
`as telephones, PCs, televisions and set-top boxes capable of transmitting data back to
`
`a hub at only low-speed—the lower-bandwidth “narrowband” mode of the claimed
`
`“first communication means.” Ex. 1004 at 3:26-32; 5:27-36; 11:8-12; 10:37-39; Pet.
`
`at 34. Moreover, the lower-speed transmissions are not sent via satellite, as claimed
`
`in the ‘073 Patent, but over fixed landlines or using radio frequency channels. See Ex.
`
`1004 at 4:26-30; 5:27-42; Fig. 1-2. Because Rudrapatna does not disclose that its end
`
`user devices are capable of transmitting information via a second communication
`
`means, Rudrapatna fails to disclose the claimed “transmitter means,” “switching
`
`means,” “receiver means,” “means for generating a request,” and the additional
`
`“wherein” limitations of claims 2-8, 28 and 29.
`
`- 3 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`Second, even if Rudrapatna disclosed a “second communication means,” it
`
`cannot disclose the claimed “switching means within said plurality of user terminals”
`
`under Petitioner’s own proposed construction. Petitioner contends Rudrapatna
`
`discloses an equivalent structure to the claimed “switching means” in the “Channel
`
`Allocation Server 222.” Pet. at 21. But Petitioner ignores that the “Channel
`
`Allocation Server 222” is not located “within said plurality of user terminals,” as
`
`required by the claim, but is instead part of the centralized servers that Petitioner
`
`analogizes to the ‘073 patent’s hub, Ex. 1004 at 4:15-30; Fig. 2. As a result, the
`
`Petition fails, on its face, to show how “each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed.
`
`Cir. 1987), let alone how “all of the limitations [are] arranged or combined in the
`
`same way as recited in the claim,” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1370 (Fed. Cir. 2008).
`
`The Petition’s obviousness analysis of claims 2-8 and 29 fares no better. Even
`
`under Petitioner’s flawed proposed claim constructions, the Petition fails to provide
`
`the requisite “articulated reasoning with some rational underpinning” for why these
`
`claims would have been obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007). Instead, the Petition relies solely on “conclusory statements,” id., which fall
`
`short of the regulatory requirement to specify where each element of the challenged
`
`- 4 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`claims is found in the evidence, 37 C.F.R. § 42.104(b)(4). In addition, the only
`
`support Petitioner provides for these conclusions is in the form of identical
`
`conclusory statements in its omnibus Leopold Declaration—not by the disclosures of
`
`the references or by other evidence found in the prior art. The Board should accord
`
`these conclusions no weight. See 37 C.F.R. § 42.65(a) (stating opinion testimony that
`
`does not disclose underlying facts or data “is entitled to little or no weight”); Johns
`
`Manville Corp. v. Knauf Insulation, Inc., IPR2015-01633, Paper 10, at 13 (PTAB
`
`Jan. 4, 2016) (“Nothing in the Federal Rules of Evidence, which are applicable to
`
`IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to
`
`credit unsupported assertions of an expert witness.”); General Elec. Co. v. TAS
`
`Energy Inc., IPR2014-00163, Paper 11, at 11 (PTAB May 13, 2014) (giving an
`
`expert’s “statements little weight” when its “Declaration does not disclose
`
`sufficiently the underlying facts or data forming the basis for the opinion”).
`
`For example, Petitioner fails to present an articulated rationale supported by
`
`evidence that the combination of Rudrapatna with Quick discloses a “means for
`
`polling each user terminal over said forward communication link as to whether said
`
`transmission of data should be switched to utilize said second communication
`
`means,” as recited by claim 29[h]. After citing a single excerpt of Quick, Pet. at 25,
`
`neither Petitioner nor Dr. Leopold explain why or how a person of ordinary skill in
`
`the art would apply the video-on-demand distribution system of Rudrapatna to the
`
`- 5 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`[terrestrial cellular telephone] communications system of Quick, Pet. at 25-28. Nor is
`
`there any explanation of why a person of skill in the art would have a reasonable
`
`expectation of success with this combination. Instead, the Leopold Declaration
`
`repeats the unsupported attorney argument, almost verbatim. See Ex. 1003 at ¶¶ 377-
`
`78, 381-84; Pet. at 25-28.
`
`The Petition also fails to perform a proper Graham analysis because it does not
`
`meaningfully address “the difference between the claimed invention and the prior
`
`art.” Significantly, Petitioner does not even attempt to explain how Quick—a non-
`
`satellite reference—is applicable to such admittedly satellite-specific claims.
`
`Nautique Boat Co. v. Malibu Boats, LLC, IPR2014-01045, Paper 13, at 14 (PTAB
`
`Nov. 26, 2014) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`
`Because Petitioner has not shown a reasonable likelihood of prevailing on
`
`any proposed ground under 35 U.S.C. § 314, the Petition should be denied.
`
`II. OVERVIEW OF THE ‘073 PATENT
`The ‘073 Patent is titled “Reverse Link for a Satellite Communication
`
`Network” and directed to “satellite communications and more particularly [] to a
`
`satellite based multiple access reverse communication link.” Ex. 1001 at 1:1-8.
`
`The “Background of the Invention” section of the ‘073 Patent reveals that, at
`
`the time of the invention, conventional satellite communication networks used
`
`landlines to transmit information back from satellite user terminals (VSATs) to the
`
`- 6 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`central “hub” of the satellite Internet system, while the user terminals received data
`
`from the “hub” over satellite. See id. at 1:34-39. However, this “asymmetric
`
`approach” (landlines for the “return” link, and satellite for the forward link) was
`
`insufficient for uses more bandwidth-intensive than e-mail and basic Internet
`
`browsing because the user terminals could only send return link data over landlines
`
`“at relatively low speeds.” Id. at 1:50-54.
`
`Accordingly, there was a need in the field for a system that would allow
`
`hundreds or thousands of users to transmit back to the hub via satellite for
`
`applications such as multimedia A/V conferencing, net gaming, and other bandwidth-
`
`intensive applications. Id. at 1:60-2:4; 4:20-22. But if a high-speed return channel
`
`over the satellite network was permanently dedicated to each and every user, the
`
`required amount of satellite bandwidth for such a system would quickly become
`
`prohibitive. See id. at 2:59-67; 4:20-30.
`
`The ‘073 Patent addresses the aforementioned problems by using “two
`
`separate communication schemes used in combination to implement the reverse link
`
`of the satellite system.” Id. at 4:50-53. More particularly, the ‘073 Patent discloses a
`
`satellite system in which each user’s VSAT terminal (“very small aperture terminal”)
`
`is capable of switching between transmitting in: a) a “random access” mode over
`
`bandwidth shared by all of the VSAT terminals in the system; and b) a “channel
`
`assignment” mode over bandwidth that has been assigned to that specific VSAT
`
`- 7 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`terminal. Id. at 8:56-62; 10:8-29. For example, when performing relatively low-
`
`bandwidth operations, such as sending short, “bursty” messages (e.g., “requests to
`
`start”), the VSAT terminals of the satellite system will transmit over the shared
`
`random access bandwidth. See, e.g., id. at 4:45-65; 9:53-64. For traffic requiring high
`
`transmission rates (for example, “video conferencing” or “Internet phone”), the
`
`terminal may request its own specific channel assignment for streaming data back to
`
`the hub. See, e.g., id. at 17:28-18:31; 15:14-22; 9:65-10:7. All of the claims in issue
`
`are directed to a “communications system for use in a satellite network” and contain
`
`limitations directed to the features just described.
`
`The primary document cited by Petitioner, Rudrapatna (Ex. 1004), is directed
`
`to a system for the one-way delivery of video-on-demand from centralized servers to
`
`end user televisions. Ex. 1004 at 8:3-12. It is not a two-way system, like the claimed
`
`inventions of the ‘073 Patent, in which user terminals can switch between two modes
`
`of communication when transmitting over the reverse link. The Petition thus fails to
`
`show that Rudrapatna discloses the claim limitations as properly construed.
`
`Petitioner’s other cited documents are similarly silent as to whether they are suitable
`
`for use in a two-way satellite communications system such as that claimed in the
`
`‘073 Patent. The petition thus fails to articulate any rationale reasoning for why a
`
`person skilled in the art would combine features from these secondary references
`
`with Rudrapatna, or how such a combination would be implemented to result in the
`
`- 8 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`claimed invention. These fundamental deficiencies in Rudrapatna, as well as
`
`Petitioner’s other cited documents, are discussed in more detail below.
`
`III. SUMMARY OF THE DOCUMENTS CITED IN THE PETITION
`Contrary to Petitioner’s assertions, the documents cited in the Petition are not
`
`“directed to the same field as the ‘073 patent” and are not “designed to solve the
`
`same problem as the ‘073 patent.” Pet. at 5. As explained in more detail below,
`
`because of this fundamental deficiency, and numerous others, the Petition fails to
`
`establish a reasonable likelihood that any challenged claim is unpatentable.
`
`A. European Patent Publication EP 0719062 to Rudrapatna et al.
`(“Rudrapatna”) (Ex. 1004)
`
`The Petition relies on Rudrapatna in each proposed ground. Rudrapatna’s
`
`network is fundamentally dissimilar to the claimed inventions challenged in this
`
`Petition. Rudrapatna features a group of centralized servers that can deliver content
`
`to different types of end user devices: such as telephone service to a telephone,
`
`Internet access to a personal computer, or video-on-demand to a television/set-top
`
`box. See Ex. 1004 at 3:26-32; 3:55-4:14. For example, basic voice telephony may
`
`be provided by the servers to an end user telephone using a “narrowband service”
`
`channel, id. at 10:56-11:1; 11:8-12, whereas “Interactive Broadcast Video” may be
`
`provided via a “one way broadcast only” broadband “downlink” to an end user
`
`television or set-top box (which can return narrowband signals for service requests
`
`or payment authorization over an uplink channel), id. at 8:3-12; 10:21-44.
`
`- 9 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`Rudrapatna discloses that its system supports various types of end user
`
`devices: “telephone[s],” “PC[s],” and “television/set-top boxes.” Id. at 3:26-32.
`
`But all of the end user devices in Rudrapatna are only capable of transmitting data
`
`to the centralized servers in a single mode, the lower-bandwidth “narrowband”
`
`mode. See id. at 5:27-36 (comparing the “downlink” bandwidth channels, which
`
`include “narrowband”, “broadcast video,” and “video on demand” channels, with
`
`the “uplink” bandwidth, which only contains “narrowband” channels); 11:8-12
`
`(explaining that “basic rate ISDN,” “basic voice telephony,” and “wireless data”
`
`are all transmitted over “narrowband” channels); 10:37-39 (“2. A moderate speed
`
`uplink (<64 Kbps, via ISDN B channel or voice telephony) for service requests,
`
`payment authorization, etc.”). This is unlike the challenged claims of the ‘073
`
`Patent, which require the claimed “user terminals” to be capable of transmitting in
`
`at least two modes. Moreover, also unlike the claimed invention of the ‘073 Patent,
`
`Rudrapatna’s “uplink” signals are not transmitted over satellite, but over fixed
`
`landlines or using radio frequency channels. See, e.g.., id. at 4:26-30; 5:27-42;
`
`Figs. 1-2. The Petition fails to show that Rudrapatna’s end user devices can
`
`transmit anything other than narrowband signals across standard landlines or
`
`wireless radio frequencies (not via satellite), and thus have no need to switch
`
`between different modes of transmission.
`
`Bandwidth spectrum is controlled and allocated within the centralized
`
`- 10 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`servers of Rudrapatna’s system—specifically, by channel allocation server 222,
`
`which “control[s] static and dynamic reallocations of spectrum to individual
`
`services.” Ex. 1004 at 3:50-54. The channel allocation server therefore determines
`
`what portions of the system’s bandwidth should be dedicated to the various
`
`telephone signals, Internet data, and/or video programs being delivered to the
`
`different types of end user devices from the centralized servers. Id. Importantly, the
`
`Petition fails to show that any channel allocation function is performed for any data
`
`transmitted from the end user devices, as is claimed in the ‘073 Patent.
`
`The following table summarizes these key differences:
`
`Challenged ‘073 Patent Claims
`
`Rudrapatna
`
`Claimed “user terminals” must transmit
`
`Alleged user terminals can only transmit
`
`in
`
`two modes
`
`(“bursty”)
`
`and
`
`in low-bandwidth “narrrowband” mode
`
`“continuous”). Ex. 1001 at 4:45-65;
`
`Ex. 1004 at 5:27-36; 11:8-12; 10:37-39.
`
`9:38-44; 9:53-10:7.
`
`Claimed “transmitter means” transmits
`
`No teaching of alleged user terminals
`
`data from user terminals over a satellite
`
`transmitting data over a satellite link.
`
`link. Ex. 1001 at 9:8-10.
`
`Claimed “switching means” is located
`
`Alleged switching means is located at
`
`within the user terminal. Ex. 1001 at Ex.
`
`the centralized servers that Petitioner
`
`1001 at 17:28-18:31; Fig. 8 23:30-40;
`
`analogizes to the “hub.” Ex. 1004 at
`
`- 11 -
`
`

`
`IPR2016-00141
`
`28:3.
`
`Docket No. 037023.0003-US02
`
`4:15-30; Fig. 2.
`
`
`B. U.S. Patent No. 5,673,259 to Quick (“Quick”) (Ex. 1005)
`The Petition relies on Quick as a secondary reference in combination with
`
`Rudrapatna in asserting that claim 29 would have been obvious. See Pet. at 25-28.
`
`The systems described in Quick are designed for use in “a cellular telephone
`
`communications system,” Ex. 1005 at 1:5-13. In particular, Quick’s invention is
`
`“[a]n exemplary embodiment of a terrestrial digital cellular mobile telephone
`
`system,” id. at 6:15-19 (emphasis added), as illustrated by Fig. 1:
`
`
`
`Ex. 1002 at Fig. 1 (annotated). Terrestrial cellular telephone systems are a different
`
`field of technology from the satellite communications systems of the ‘073 Patent
`
`and from the system of Rudrapatna, and, consequently, face different challenges
`
`and problems. One example of the differences between the cellular telephone
`
`- 12 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`system of Quick and the satellite system of the ‘073 Patent concerns the ability of
`
`the “VSAT” user terminals in the ‘073 Patent to switch between transmission in
`
`either a random access mode or a channel assignment mode, depending on the
`
`bandwidth required by the particular type of message the VSAT is transmitting
`
`(e.g., a short “bursty” request vs. continuous video). See, e.g., Ex. 1001 at 8:56-62;
`
`10:8-29. The “bandwidth demand” in Quick’s cellular telephone system is not
`
`managed by the end user cellular phones (the alleged “user terminals”), but instead
`
`by “processor 302.” Ex. 1005 at 11:5-19. The processor determines when
`
`individual cellular device users should be switched from a “random access channel
`
`208” to a “dedicated channel (or Traffic Channel) 214,” or vice versa. Id. The
`
`processor is located either at “switching station 110” or at “individual cell sites
`
`108,” id.; id. at 11:20-37, which are “terrestrial transceivers that communicate
`
`over-the-air with remote and/or mobile units,” id. at 6:15-27. Thus, the switching
`
`station 110 or the individual cell sites 108 house the processor used to switch from
`
`a “random access channel 208” to a “dedicated channel (or Traffic Channel) 214,”
`
`not the “remote user units 102, 104,” as required by the challenged claims.
`
`The Petition, therefore, fails to show that Quick’s end user devices have the
`
`capability to switch between transmission in either a random access mode or a
`
`channel assignment mode (as required by the ‘073 Patent’s claimed “user
`
`terminals”).
`
`- 13 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`Because no issue raised by this Preliminary Response depends on the proper
`
`definition of the person of ordinary skill, Patent Owner does not propose a definition
`
`here. Patent Owner reserves the right to present a definition if trial is instituted.
`
`V. CLAIM CONSTRUCTION
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14,
`
`2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278-79 (Fed. Cir. 2015),
`
`reh’g en banc denied, 793 F.3d 1297 (Fed. Cir. 2015), cert. granted, 2016 WL
`
`205946 (U.S. Jan. 15, 2016) (No. 15-446).
`
`Claim terms are given their ordinary and customary meaning as would be
`
`understood by a person of ordinary skill in the art at the time of the invention and
`
`in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Even under the broadest reasonable interpretation
`
`standard, however, Petitioner’s proposed constructions of several claim terms are
`
`divorced from both the language of the ‘073 patent’s disclosure and that of the
`
`claims themselves.
`
`Patent Owner comments below on only a subset of the claim terms
`
`construed by Petitioner. However, Patent Owner reserves the right to propose
`
`- 14 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`alternate constructions for these and other claim terms in the event trial is
`
`instituted. And, as discussed below in Section VI, even if Petitioner’s constructions
`
`were applied, the Petition still fails to carry its burden to demonstrate a reasonable
`
`likelihood that any of the claims of the ‘073 Patent are unpatentable.
`
`1.
`
`“Multiple Access Communications System for use in a
`Satellite Communications Network”
`
`In Section VI of the Petition, titled “Claim Construction,” Petitioner does not
`
`propose a construction for the term “multiple access communications system for
`
`use in a satellite communication network.” See Pet. at 7-11. Petitioner argues, in its
`
`separate petition for inter partes review of the ‘073 Patent, IPR No. 2016-00142,
`
`that this term “is not a limitation” because it is a “portion of the preamble” that is
`
`allegedly “only an intended use for the claimed techniques.” Ex. 2001 at 11. The
`
`Board should accord patentable weight
`
`to
`
`the
`
`term “multiple access
`
`communications system for use in a satellite communication network” in the
`
`preambles of each of the challenged claims of the ‘073 Patent. “If the claim
`
`preamble, when read in the context of the entire claim, recites limitations of the
`
`claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to
`
`the claim, then the claim preamble should be construed as if in the balance of the
`
`claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
`
`1999); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
`
`(Fed. Cir. 1989) (The determination of whether preamble recitations are structural
`
`- 15 -
`
`

`
`IPR2016-00141
`
`Docket No. 037023.0003-US02
`
`limitations can be resolved only on review of the entirety of the application “to
`
`gain an understanding of what the inventors actually invented and intended to
`
`encompass by the claim.”).
`
`Here, the claim preambles do more than merely “state a purpose or intended
`
`use for the invention,” as