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.
`
`IPR2016-00142
`Patent No. 6,240,073
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`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, IPR2016-00141, Paper No. 6
`
`Exhibit
`Ex. 2001
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`
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. OVERVIEW OF THE ‘073 PATENT ............................................................ 6
`
`III. SUMMARY OF THE DOCUMENTS CITED IN THE PETITION ......... 9
`
`A. U.S. Patent No. 5,673,259 to Quick (“Quick”) (Ex. 1005) ..................... 9
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART ............................... 11
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`V. CLAIM CONSTRUCTION ........................................................................... 12
`
`1.
`
`2.
`
`“Multiple Access Communications System for use in a Satellite
`Communications Network” ......................................................... 13
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`“Switching Means” / “Means For Switching” ............................ 15
`
`VI. THE PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘073
`PATENT IS UNPATENTABLE ................................................................... 17
`
`A. Ground 1: The Petition Fails to Demonstrate That Claim 28 is
`Anticipated by Quick .............................................................................. 17
`
`1.
`
`2.
`
`Quick does not disclose a “multiple access communications
`system for use in a satellite communications network” .............. 17
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`Quick does not disclose a “switching means within said plurality
`of user terminals” ......................................................................... 21
`
`B.
`
`Grounds 2-6: The Petition Fails to Demonstrate that Claims 2-8,
`28, or 29 are Unpatentable Over Quick in view of Kou,
`Nakamura, Beal, and/or Wilkinson ........................................................ 24
`
`1.
`
`2.
`
`The Petition Lacks Articulated Reasoning Supported by Evidence
`for Multiple Claim Limitations .................................................... 26
`
`The Petition Fails to Perform a Proper Graham Analysis .......... 53
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`VII. CONCLUSION ................................................................................................ 55
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases and Board Decisions
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00492, Paper 14 (PTAB Feb. 5, 2014) ...................................... 3, 18, 29
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 26
`
`Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251 (Fed. Cir. 1989) .......................................................................... 13
`
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .......................................................................... 14
`
`Fidelity Nat’l Info. Servs., Inc. v. Datatreasury Corp.,
`IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ............................................... 45
`
`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) .......................................................................... 28
`
`Georgia-Pacific Corp. v. United States Gypsum Co.,
`195 F.3d 1322 (Fed. Cir. 1999) .......................................................................... 14
`
`Google Inc. v. Everymd.com LLC,
`IPR2014-00347, Paper 9 (PTAB May 22, 2014) ......................................... 27, 53
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ............................................................................................ 6, 25
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ........................................... 28, 31, 36, 45, 48, 52
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 12
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) ............................................................................ 16
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 26
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 12
`
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`IPR2015-01633, Paper 10 (PTAB Jan. 4, 2016) .................................................. 4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................................ 4, 26
`
`Nautique Boat Co. v. Malibu Boats, LLC,
`IPR2014-01045, Paper 13 (PTAB Nov. 26, 2014) ......................................... 5, 53
`
`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) .......................................................................... 13
`
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00277, -00278, Paper 7 (PTAB May 29, 2015) ............................ 27, 41
`
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper 7 (PTAB Feb. 17, 2015) ................................................ 53
`
`Torrent Pharm. Ltd. v. Merck Frosst Canada & Co.,
`IPR2014-00559, Paper 8 (PTAB Oct. 1, 2014) ...................................... 28, 43, 47
`
`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) .......................................................................... 17
`
`Statutes
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`35 U.S.C. § 112, ¶ 6 ................................................................................................. 15
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`35 U.S.C. § 314 .......................................................................................................... 6
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`IPR2016-00142
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`Other Authorities
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`Docket No. 037023.0003-US03
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`37 C.F.R. § 42.22(a)(2) ...................................................................................... 26, 45
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`37 C.F.R. § 42.62(a) ................................................................................................... 4
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`37 C.F.R. § 42.65(a) ..........................................................................................passim
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`37 C.F.R. § 42.100(b) .............................................................................................. 12
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`37 C.F.R. § 42.104(b)(4) ................................................................................ 4, 26, 31
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`77 Fed. Reg. 48,756 (Aug. 14, 2012)....................................................................... 12
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`Patent Owner Elbit Systems Land and C4I Ltd. (“Patent Owner”) provides
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`the following preliminary response to the Corrected Petition (“Petition” or “Pet.”)
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`originally filed by Hughes Network Systems, LLC (“Petitioner”) on November 4,
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`2015 and corrected on November 24, 2015, requesting inter partes review of
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`claims 2-8, 28, and 29 of U.S. Patent No. 6,240,073 (“the ‘073 Patent”). Patent
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`Owner requests that the Board deny inter partes review as to all grounds presented
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`in the petition for at least the reasons set forth below.
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`I.
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`INTRODUCTION
`This is one of two petitions for inter partes review of the ‘073 Patent that
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`was filed by Petitioner on November 4, 2015—the other being IPR2016-00141
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`(“the ’141 Petition”). Defects in the originally filed ‘141 Petition were also
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`corrected on November 24, 2015. See Ex. 2001. The present petition argues that
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`independent claim 28 of the ‘073 Patent is anticipated by U.S. Patent No. 5,673,259
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`to Quick (“Quick”) (Ex. 1005). The ’141 Petition argues anticipation of claim 28 by
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`European Patent Publication EP 0719062 to Rudrapatna et al. (“Rudrapatna”) (Ex.
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`1004). Each petition also argues that independent claims 2-8 and 29 are obvious
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`over the primary reference asserted in that petition (either alone or in combination
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`with secondary references asserted in the petition). Both petitions share the same,
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`identical 254-page declaration of by Dr. Raymond J. Leopold (the “Leopold
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`Declaration”) (Ex. 1003), resulting in large portions of the omnibus declaration
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`being irrelevant to and uncited in one or both of the two petitions. Both petitions
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`fail to show a reasonable likelihood that at least one claim of the ‘073 Patent is
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`unpatentable.
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`The problems of the present Petition begin with its proposed claim
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`constructions, which are divorced from the ‘073 Patent’s actual disclosure and the
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`claim language. The ‘073 Patent is directed to a two-way satellite communication
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`system in which satellite user terminals (VSATs) can switch between two modes of
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`communication to more efficiently transmit data over the return link of the satellite
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`system. See, e.g., Ex. 1001 at 4:45-65; 9:38-44. When the data requires a high
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`transmission rate (for video conferencing, for example), the VSAT terminal selects a
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`specific channel assignment for sending the data back to the hub of the satellite
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`system at a high speed, see id. at 4:45-65; 9:65-10:7. When the data requires a low
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`transmission rate (for e-mail or routine program requests), the VSAT terminal selects
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`a shared random access bandwidth in order to conserve the amount of high-speed
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`bandwidth needed for the system, see id. at 4:45-65; 9:53-64. In construing the terms
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`of the ‘073 Patent, however, the Petitioner contends the claimed “multiple access
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`communications system for use in a satellite communications network” can be a
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`terrestrial cellular telephone system, Pet. at 10-12, while the corresponding structure
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`for “switching means within said plurality of user terminals” must include the
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`satellite-specific VSAT terminal, id. at 8.
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`From these conflicting positions, Petitioner argues that Quick anticipates
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`claim 28. But Quick fails to disclose at least two limitations recited in the claim.
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`First, Quick is directed to a system for managing a “terrestrial digital cellular
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`mobile telephone system,” not a two-way satellite communications system as in
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`the ‘073 Patent, and cannot disclose a “multiple access communications system for
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`use in a satellite communications network.” Recognizing this deficiency, Petitioner
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`improperly conflates into a single ground its anticipation argument and a back-up
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`obviousness argument to add a second reference, U.S. Patent No. 5,172,375 to Kuo
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`(“Kuo”) (Ex. 1006). Pet. at 12. This is improper. See CallCopy, Inc. v. Verint
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`Americas, Inc., IPR2013-00492, Paper 14, at 7 (PTAB Feb. 5, 2014) (rejecting
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`grounds that “conflate the [anticipation and obviousness] grounds without providing
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`a clear distinction how the identified disclosures are applied to the individual
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`grounds…”).
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`Second, Quick contains not a single mention of the word “satellite,” let alone
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`the VSAT terminals used in such satellite systems. Accordingly, Quick cannot
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`disclose the claimed “switching means within said plurality of user terminals” under
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`Petitioner’s own proposed construction. Even if Quick disclosed the VSAT
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`terminal, Petitioner concedes
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`that “the switching means for selecting
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`the
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`communication pathway is not within the user terminal of Quick.” Pet. at 38
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`(emphasis added). As a result, the Petition fails, on its face, to show how “each and
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`every element as set forth in the claim is found, either expressly or inherently
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`described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of
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`California, 814 F.2d 628, 631 (Fed. Cir. 1987), let alone how “all of the limitations
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`[are] arranged or combined the same way as recited in the claim,” Net MoneyIN, Inc.
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`v. VeriSign, Inc., 545 F. 3d 1359, 1370 (Fed. Cir. 2008).
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`The Petition’s obviousness analysis of claims 2-8 and 29 fares no better. Even
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`under Petitioner’s flawed proposed claim constructions, the Petition fails to provide
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`the requisite “articulated reasoning with some rational underpinning” for why these
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`claims would have been obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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`(2007). Instead, the Petition relies solely on “conclusory statements,” id., which fall
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`short of the regulatory requirement to specify where each element of the challenged
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`claims is found in the evidence, 37 C.F.R. § 42.104(b)(4). In addition, the only
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`support Petitioner provides for these conclusions is in the form of identical
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`conclusory statements in its omnibus Leopold Declaration—not by the disclosures of
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`the references or by other evidence found in the prior art. The Board should accord
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`these conclusions no weight. See 37 C.F.R. § 42.65(a) (stating opinion testimony that
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`does not disclose underlying facts or data “is entitled to little or no weight”); Johns
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`Manville Corp. v. Knauf Insulation, Inc., IPR2015-01633, Paper 10, at 13 (PTAB
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`Jan. 4, 2016) (“Nothing in the Federal Rules of Evidence, which are applicable to
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`IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`credit unsupported assertions of an expert witness.”); General Elec. Co. v. TAS
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`Energy Inc., IPR2014-00163, Paper 11, at 11 (PTAB May 13, 2014) (giving an
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`expert’s “statements little weight” when its “Declaration does not disclose
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`sufficiently the underlying facts or data forming the basis for the opinion”).
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`For example, Petitioner fails to present an articulated rationale supported by
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`evidence that the combination of Quick with Kou discloses a “multiple access
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`communications system for use in a satellite communication network,” as required
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`by each claim. After citing excerpts of Kou, Pet. at 12, neither Petitioner nor Dr.
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`Leopold explain why or how “a person of ordinary skill in the art would apply the
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`[terrestrial cellular telephone] communications system of Quick to satellite
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`communications [for connecting Point-of-Sales terminals via hubs], as disclosed in
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`Kuo,” Pet. at 12. Nor is there any explanation of why a person of skill in the art
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`would have a reasonable expectation of success with this combination. Instead, the
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`Leopold Declaration repeats the unsupported attorney argument, almost verbatim.
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`See Ex. 1003 at ¶¶ 540-41; Pet. at 12.
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`The Petition also fails to perform a proper Graham analysis because it does not
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`meaningfully address “the difference between the claimed invention and the prior
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`art.” This is a significant deficiency here, where Petitioner does not even attempt to
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`explain how Quick—a non-satellite reference—could satisfy such admittedly
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`satellite-specific claims. Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR2014-
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`01045, Paper 13, at 14 (PTAB Nov. 26, 2014) (citing Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966)).
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`Because Petitioner has not shown a reasonable likelihood of prevailing on
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`any proposed ground under 35 U.S.C. § 314, the Petition should be denied.
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`II. OVERVIEW OF THE ‘073 PATENT
`The ‘073 Patent is titled “Reverse Link for a Satellite Communication
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`Network,” and is directed to “satellite communications and more particularly
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`relates to a satellite based multiple access reverse communication link.” Ex. 1001
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`at 1:1-8.
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`The “Background of the Invention” section of the ‘073 Patent reveals that, at
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`the time of the invention, conventional satellite communication networks used
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`landlines to transmit information back from satellite user terminals (VSATs) to the
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`central “hub” of the satellite Internet system, while the user terminals received data
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`from the “hub” over satellite. See id. at 1:34-39. However, this “asymmetric
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`approach” (landlines for the “return” link, and satellite for the forward link) was
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`insufficient for uses more bandwidth-intensive than e-mail and basic Internet
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`browsing because the user terminals could only send return link data over landlines
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`“at relatively low speeds.” Id.; id. at 1:50-54.
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`Accordingly, there was a need in the field for a system that would allow
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`hundreds or thousands of users to transmit back to the hub via satellite for
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`applications such as multimedia A/V conferencing, net gaming, and other bandwidth-
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`intensive applications. Id. at 1:60-2:4; 4:20-22. But if a high-speed return channel
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`over the satellite network was permanently dedicated to each and every user, the
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`required amount of satellite bandwidth for such a system would quickly become
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`prohibitive. See id. at 2:59-67; 4:20-30.
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`The ‘073 Patent addresses the aforementioned problems by using “two
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`separate communication schemes used in combination to implement the reverse link
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`of the satellite system.” Id. at 4:50-53. More particularly, the ‘073 Patent discloses a
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`satellite system in which each user’s VSAT terminal (“very small aperture terminal”)
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`is capable of switching between transmitting in: a) a “random access” mode over
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`bandwidth shared by all of the VSAT terminals in the system; and b) a “channel
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`assignment” mode over bandwidth that has been assigned to that specific VSAT
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`terminal. Id. at 8:56-62; 10:8-29. For example, when performing relatively low-
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`bandwidth operations, such as sending short, “bursty” messages (e.g., “requests to
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`start”), the VSAT terminals of the satellite system will transmit over the shared
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`random access bandwidth. See, e.g., id. at 4:45-65; 9:53-64. For traffic requiring high
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`transmission rates (for example, “video conferencing” or “Internet phone”), the
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`terminal may request its own specific channel assignment for streaming data back to
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`the hub. See, e.g., id. at 17:28-18:31; 15:14-22; 9:65-10:7. All of the claims in issue
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`are directed to a “communications system for use in a satellite network” and contain
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`limitations directed to the features just described.
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`The primary document cited by Petitioner, Quick (Ex. 1005), is directed to a
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`system for managing a “cellular telephone communications system.” Ex. 1005 at
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`1:5-13. It is not a two-way satellite communications system in which user terminals
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`can switch between two modes of communication on the reverse link. Petitioner
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`carefully avoids using the word “satellite” in its “Overview of the ’730 Patent (sic),”
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`Pet. at 3, for a reason: Quick contains not a single mention of the word “satellite.”
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`The Petition thus fails to show that Quick discloses the claim limitations as properly
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`construed. Most glaringly, on the one hand, the Petition concedes that the ‘073 claim
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`terms must be construed
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`to
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`include
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`functionalities specific
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`to satellite
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`communications (see Pet. at 8), while on the other hand, it does not even attempt to
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`explain how Quick—a non-satellite reference—could satisfy such admittedly
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`satellite-specific claims. Petitioner’s other cited documents are similarly silent as to
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`whether they are suitable for use in a two-way satellite communications system such
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`as that claimed in the ‘073 Patent. The petition thus fails to articulate any rational
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`reasoning for why a person skilled in the art would combine features from these
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`secondary references with Quick, or how such a combination would be implemented
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`to result in the claimed satellite-specific invention. These fundamental deficiencies in
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`Quick, as well as Petitioner’s other cited documents, are discussed in more detail
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`below.
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`III. SUMMARY OF THE DOCUMENTS CITED IN THE PETITION
`Contrary to Petitioner’s assertions, the documents cited in the Petition are not
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`“directed to the same field as the ‘073 patent” and are not “designed to solve the
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`same problem as the ‘073 patent.” Pet. at 5. As explained in more detail below,
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`because of this fundamental deficiency, the Petition fails to establish a reasonable
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`likelihood that any challenged claim is unpatentable.
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`A. U.S. Patent No. 5,673,259 to Quick (“Quick”) (Ex. 1005)
`The Petition relies on Quick in each proposed ground. The systems
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`described in Quick are designed for use in “a cellular telephone communications
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`system.” Ex. 1005 at 1:5-13. In particular, Quick’s invention is “[a]n exemplary
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`embodiment of a terrestrial digital cellular mobile telephone system.” Id. at 6:15-
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`19 (emphasis added), as illustrated by Fig. 1:
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`
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`Ex. 1005 at Fig. 1 (annotated). Terrestrial cellular telephone systems are a different
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`field of technology from the satellite communications systems of the ‘073 Patent,
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`and, consequently, face different challenges and problems. One example of the
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`differences between the cellular telephone system of Quick and the satellite system
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`of the ‘073 Patent concerns the ability of the “VSAT” user terminals in the ‘073
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`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
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`message the VSAT is transmitting (e.g., a short “bursty” request vs. continuous
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`video). See, e.g., Ex. 1001 at 8:56-62; 10:8-29. The “bandwidth demand” in
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`Quick’s cellular telephone system is not managed by the end user cellular phones
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`(the alleged “user terminals”), but instead by “processor 302.” Ex. 1005 at 11:5-19.
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`IPR2016-00142
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`The processor determines when individual cellular device users should be switched
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`from a “random access channel 208” to a “dedicated channel (or Traffic Channel)
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`214,” or vice versa. Id. The processor is located either at “switching station 110” or
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`at “individual cell sites 108,” id., id. at 11:20-37, which are “terrestrial transceivers
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`that communicate over-the-air with remote and/or mobile units,” id. at 6:15-27.
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`Thus, the switching station 110 or the individual cell sites 108 house the processor
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`used to switch from a “random access channel 208” to a “dedicated channel (or
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`Traffic Channel) 214,” not the “remote user units 102, 104,” which Petitioner
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`analogizes to the claimed “user terminals.” See Pet. at 13 (“Quick’s plurality of
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`remote user units are within the broadest reasonable interpretation of the claimed
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`‘plurality of user terminals []’”); id. at 14 (referring to Quick’s remote user units as
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`“cellphones”).
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`The Petition, therefore, fails to show that Quick’s end user devices have the
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`capability to switch between transmission in either a random access mode or a
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`channel assignment mode (as required by the ‘073 patent’s claimed “user
`
`terminals”).
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`Because no issue raised by this Preliminary Response depends on the proper
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`definition of the person of ordinary skill, Patent Owner does not propose a definition
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`here. Patent Owner reserves the right to present a contrary definition in the event trial
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`is instituted.
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`V. CLAIM CONSTRUCTION
`A claim subject to IPR is given its “broadest reasonable construction in light
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`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764, 48,766 (Aug. 14,
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`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).
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`Claim terms are given their ordinary and customary meaning as would be
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`understood by a person of ordinary skill in the art at the time of the invention and
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`in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Even under the broadest reasonable interpretation
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`standard, however, Petitioner’s proposed constructions of several claim terms are
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`divorced from both the language of the ‘073 patent’s disclosure and that of the
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`claims themselves.
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`Patent Owner comments below on only a subset of the claim terms
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`construed by Petitioner. However, Patent Owner reserves the right to propose
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`alternate constructions for these and other claim terms in the event trial is
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`instituted. And, as discussed below in Section VI, even if Petitioner’s constructions
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`were applied, the Petition still fails to carry its burden to demonstrate a reasonable
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`likelihood that any of the claims of the ‘073 Patent are unpatentable.
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`1.
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`“Multiple Access Communications System for use in a
`Satellite Communications Network”
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`In Section VI of the Petition, titled “Claim Construction,” Petitioner does not
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`propose a construction for the term “multiple access communications system for
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`use in a satellite communication network.” See Pet. at 6-10. Petitioner later argues,
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`in its proposed Ground 1, that this term “is not a limitation” because it is a “portion
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`of the preamble” that is allegedly “only an intended use for the claimed
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`techniques.” Pet. at 11.
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`The Board should accord patentable weight to the term “multiple access
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`communications system for use in a satellite communication network” in the
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`preambles of each of the challenged claims of the ‘073 Patent. “If the claim
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`preamble, when read in the context of the entire claim, recites limitations of the
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`claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to
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`the claim, then the claim preamble should be construed as if in the balance of the
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`claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
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`1999); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
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`(Fed. Cir. 1989) (The determination of whether preamble recitations are structural
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`limitations can be resolved only on review of the entirety of the application “to
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`gain an understanding of what the inventors actually invented and intended to
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`encompass by the claim.”).
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`Here, the claim preambles do more than merely “state a purpose or intended
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`use for the invention,” as Petitioner argues. Pet. at 11. The Petition itself
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`recognizes that the challenged claims must be construed in the context of the
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`“satellite communications network” recited in the preamble. For example,
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`Petitioner proposes that the corresponding structure for “switching means” and
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`“means for switching” includes satellite-specific technology, namely “VSAT
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`terminals.” Pet. at 8, 9. The ‘073 Patent explains that “a satellite 17 is used to
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`forward communications between a hub 18 and a plurality of terminals comprising
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`very small aperture terminal (VSAT) users 20.” Ex. 1001 at 8:57-60. Petitioner has
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`thus conceded
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`that
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`the claimed communications network
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`is a satellite
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`communications network by
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`incorporating equipment specific
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`to satellite
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`communications (VSAT terminals) into the construction of switching means.
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`“When limitations in the body of the claim rely upon and derive antecedent basis
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`from the preamble, then the preamble may act as a necessary component of the
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`claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339
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`(Fed. Cir. 2003). And, “[u]nless the patent otherwise provides, a claim term cannot
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`be given a different meaning in the various claims of the same patent.” Georgia-
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`Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1331 (Fed. Cir. 1999).
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`Here, the preamble gives life to elements in the claim body because, as
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`Petitioner has conceded, such elements necessarily require structure specific to a
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`satellite communications network. The Board should therefore give patentable
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`weight to the preamble limitation “multiple access communications system for use
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`in a satellite communications network.” However, for the reasons set forth below
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`in Section VI, even if the Board finds the preamble non-limiting, the Petition still
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`fails to carry its burden to demonstrate a reasonable likelihood that any of the
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`claims of the ‘073 Patent are unpatentable.
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`“Switching Means” / “Means For Switching”
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`2.
`Challenged claims 2-8, 28, and 29 recite a “switching means,” and claims 2-
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`8 further recite that the “switching means” comprises “means for switching.” The
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`claims further explain that the corresponding function for this “switching means” is
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`“for switching transmission between said first communication means and said
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`second communication means.” Petitioner proposes that “the corresponding
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`structures for the claimed switching means are the hub and the VSAT terminals
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`performing the decision-making.” Pet. at 8. Petitioner is correct that the switching
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`means are located within VSAT terminals. But Petitioner’s proposed definition of
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`“switching means” is insufficiently specific, ignoring the specification’s disclosure
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`of the structure within the VSAT terminals necessary for performing the function
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`of the “switching means.” The broadest reasonable interpretation of a means-plus-
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`function limitation is that statutorily mandated in pre-AIA 35 U.S.C. § 112, ¶ 6.
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`“Accordingly, the PTO may not disregard the structure disclosed in the
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`specification corresponding to such language when rendering a patentability
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`determination.” In re Donaldson Co., 16 F.3d 1189, 1194 (Fed. Cir. 1994).
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`Petitioner’s definition ignores the “driver” and “modem,” which are
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`contained within the VSAT terminal and described as performing the function of
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`monitoring traffic over the random-access channel and requesting and switching a
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`switch to the channel-assignment mode if necessary. Ex. 1001 at 17:28-18:31; Fig.
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`8 (“[t]he transmitter method operates as a driver . . . [i]nitially, the transmission
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`mode within the modem 160 is switched to the random access mode (step 170) . . .
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`[o]nce the channel assignment request acknowledgment is received (step 194), the
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`modem switches to channel assignment mode of communications (step 196)”).
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`Further, in concluding that the hub is also a corresponding structure for the
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`claimed switching means, Petitioner misreads the ‘073 Patent. Pet. at 8. The hub
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`does not perform “the decision-making described at 10:56-11:40.” Pet. at 8.
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`Instead, it is the VSAT terminal that initiates requests to switch from random
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`access mode to channel allocation mode and requests to switch from channel
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`allocation mode to random access mode. Ex. 1001 at 10:56-11:41. Thus, the hub
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`does not perform the recited function of the claimed switching means and cannot
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`be a corresponding structure.
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`IPR2016-00142
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`Docket No. 037023.0003-US03
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`Petitioner’s construction of “switching means” and “means for switching”
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`should therefore be rejected by the Board. For the reasons set forth below in
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`Section VI, even if Petitioner’s constructions were applied, the Petition still fails to
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`demonstrate a reasonable likelihood that any of the claims of the ‘073 Patent are
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`unpatentable.
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`VI. THE PETITIONER HAS NOT SHOWN A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘073
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`PATENT IS UNPATENTABLE
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`A. Ground 1: The Petition Fails to Demonstrate That Claim 28 is
`Anticipated by Quick
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`The Petition asserts that “[t]he ‘073 Patent Claim 28 is anticipated by
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`Quick.” Pet. at 10. However, “[a] claim is anticipated only if each and every
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`element is found within