Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 1 of 37 Page ID #:1477
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`I Caroline H. Mankey, SBN 187302
`Email: caroline@cypressllp.com
`2 Robert J. Muller, SBN 18%51
`Email: bob@,cy_pressllp.com
`3 CYPRESS,"LLP
`11111 Santa Monica Blvd., Suite 500
`4 Los Angele7 California 90025
`Telephone: ~424) 901-0123
`
`5
`
`Seth H. Ostrow (Pro Hac)
`6 sostrow(@,ostrowkaufinan.com
`Matthew'L. Kaufinan (Pro Hac)
`7 mkaufinan@,ostrowkaufinan.com
`Jeanpierre J. Giuliano (Pro Hac)
`jgiuhano@,ostrowkauffuan.com
`OSTROW'KAUFMAN LLP
`9 555 Fifth Avenue, 19th Floor
`NewYork,NY 10017
`IO Telephone: (212) 682-9200
`
`8
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`I I Attorneys for Plaintiff
`Advanced Media Networks, LLC
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`) Case No. CV-11-10474 GAF (JCGx)
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`~-------------------------)
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`Defendants.
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Plaintiff,
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`v.
`
`GOGO LLC,AIRCELL BUSINESS
`20 AVIATION SERVICES LL<;
`BOMBARDIER AEROSPAcE
`2I CORPORATION DELTAAIRLINES
`INC., LEARJET INC. , NET JETS INC.,
`22 UNITED AIR LINES INC. AND
`XOJET, INC,
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`PLAINTIFF'S OPENING CLAIM
`CONSTRUCTION BRIEF
`
`Hearing Date: March 11, 2013
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`Petitioners' Ex. 1020 - Page 1
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 2 of 37 Page ID #:1478
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`TABLE OF CONTENTS
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`I.
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`II.
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`Preliminary Statement. .......................................................................................... 1
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`Factual Background .............................................................................................. 2
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`A.
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`Parties ......................................................................................................... 2
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`B.
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`The Nature and Status of the Proceedings ............................................. , .. .3
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`C. Overview of the '074 Patent ..................................................................... .4
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`III.
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`Overview of the '074 Patent and Reexamination Prosecutions ........................... 5
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`Standard of Review Governing Claim Construction ........................................... 9
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`Terms for Construction for The '074 Patent ...................................................... 13
`
`A.
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`"ethemet packet switching protocol " (JCC: 1) ....................................... 13
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`B.
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`"configured to transfer information ... between ... " and
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`"information is transferred using the TCP/IP protocol" (JCC: 10-
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`13) ............................................................................................................. 18
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`C.
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`"TCP/IP protocol" (JCC: 9) ..................................................................... 21
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`D.
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`E.
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`"Wireless LAN' (JCC: 6) ......................................................................... 21
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`"single nomadic transmission/reception point", "single,"
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`"nomadic transmission/reception point between the microwave
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`communication system and the wireless LAN" and "nomadic
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`transmission/reception point between the communication
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`subsystem and the wireless LAN'' (JCC: 2, 7, 8) .................................... 23
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`IV.
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`13 v.
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`Petitioners' Ex. 1020 - Page 2
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 3 of 37 Page ID #:1479
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`F.
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`"digital microwave communication system" and "digital
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`microwave communication system configured to operate as a
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`intranet" (JCC: 3) ..................................................................................... 25
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`G.
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`"redundant digital microwave communication system" (JCC: 4) ........... 26
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`H.
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`"communication subsystem" (JCC: 5) ..................................................... 27
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`I.
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`"broadband information" (JCC: 14) ......................................................... 29
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`2
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`3
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`4
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`5
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`6
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`7
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`9 VI. Conclusion .......................................................................................................... 30
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Petitioners' Ex. 1020 - Page 3
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 4 of 37 Page ID #:1480
`
`I
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`2
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`3 CASES
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`TABLE OF AUTHORITIES
`
`ALZA Corp. v. Andrx Pharms., LLC,
`
`603 F.3d 935 (Fed. Cir. 2010) .......................................................................... 9
`
`Aristocrat Techs. Austl. Pty Ltd. v. Multimedia Games, Inc.,
`
`266 Fed. Appx. 942 (Fed. Cir. 2008) .............................................................. 11
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`
`672 F. 3d 1335 (Fed. Cir. 2012) .................................................................... .12
`
`Atmel Corp. v. Information Storage Devices, Inc.,
`
`198 F. 3d 1374 (Fed. Cir. 1999) .................................................................... .11
`
`Baldwin Graphic Systems, Inc. v. Siebert, Inc.,
`
`512 F. 3d 1338 (Fed. Cir. 2008) .................................................................... .19
`
`Bicon, Inc. v. Straumann Co.,
`
`441 F.3d 945 (Fed. Cir. 2006) ........................................................................ 11
`
`Boston Scientific Corp. v. Cordis Corp.,
`
`2006 WL 3782840 (N.D.Cal. Dec. 20, 2006) ................................................ .12
`
`Comark Commc'ns, Inc. v. Harris Corp.,
`
`156 F.3d 1182 (Fed.Cir.1998) ........................................................................ 12
`
`4
`
`5
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`6
`
`7
`
`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`21
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`28
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`iii
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`Petitioners' Ex. 1020 - Page 4
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 5 of 37 Page ID #:1481
`
`1 Ecolab Inc. v. Parae/ipse, Inc.,
`
`2
`
`3
`
`285 F.3d 1362 (Fed. Cir. 2002) ............................................................... 11, 29
`
`4 Ekchian v. Home Depot,
`
`5
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`6
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`104 F.3d 1299 (Fed. Cir. 1997) ...................................................................... 11
`
`7 Ernie Ball, Inc. v. Earvana, LLC,
`
`8
`
`9
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`2013 U.S. App. LEXIS 1578 (Fed. Cir. Jan. 24, 2013) .................................. 11
`
`10 Exxon Research and Engineering Co. v. US,
`
`11
`
`12
`
`265 F. 3d 1371 (Fed. Cir. 2001) .............................................................. 11, 30
`
`13 Gemstar-TV Guide International, Inc. v. Int'l Trade Comm.,
`
`14
`
`15
`
`383 F.3d 1352 (Fed. Cir. 2004) ...................................................................... 10
`
`16 Honeywell Int'l, Inc. v. Universal Avionics Systems Corp.,
`
`17
`
`18
`
`493 F.3d 1358 (Fed. Cir. 2007) ......................................................... 11, 26,27
`
`19 Hybritech, Inc. v. Monoclonal Antibodies, Inc.,
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`802 F.2d 1367 (Fed. Cir. 1986) ........................................................................ 9
`
`In re Suitco Surface, Inc.,
`
`603 F.3d 1255 (Fed. Cir. 2010) ...................................................................... 10
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`
`381 F.3d 1111 (Fed. Cir. 2004) ................................................................. 9, 23
`
`28 Johns Hopkins Univ. v. CellPro,
`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`IV
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`Petitioners' Ex. 1020 - Page 5
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 6 of 37 Page ID #:1482
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`I
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`II
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`152 F.3d 1342 (Fed. Cir.l998) ...................................................................... .12
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`Johnson Worldwide Associates, Inc. v. Zebco Corp,
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`175 F.3d 985 (Fed. Cir. 1999) ........................................................................ 12
`
`KCJ Corp. v. Kinetic Concepts, Inc.,
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`223 F.3d 1351 (Fed. Cir. 2000) ...................................................................... 19
`
`Markman v. Westview Instruments Inc.,
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`517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996) ............................ .13
`
`Markman v. Westview Instruments, Inc.,
`
`52 F.3d 967 (Fed. Cir. 1995) .......................................................................... 12
`
`Medrad, Inc. v. MRI Devices Corp.,
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`401 F. 3d 1313 (Fed. Cir. 2005) ..................................................................... 12
`
`Medtronic Inc. v. Boston Sci. Corp.,
`
`695 F.3d 1266 (Fed. Cir. 2012) ..................................................................... .11
`
`Omega Eng'g, Inc. v. Raytek Corp.,
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`334 F.3d 1314 (Fed. Cir. 2003) ...................................................................... 10
`
`On-Line Tech v. Bodenseewerk Perkin-Elmer,
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`386 F.3d 1133 (Fed. Cir. 2004) ...................................................................... 13
`
`Phillips v. A WH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) .............................................................. passim
`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`v
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`Petitioners' Ex. 1020 - Page 6
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 7 of 37 Page ID #:1483
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`1 Purdue Pharma L.P. v. Endo Pharms., Inc.,
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`2
`
`3
`
`438 F.3d 1123 (Fed. Cir. 2006) ..................................................................... .10
`
`4 Seachange International, Inc. v. C-COR Inc,
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`5
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`6
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`413 F.3d 1361 (Fed. Cir. 2005) ..................................................................... .10
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`7 Tandon Corp. v. US Intern. Trade Com'n,
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`8
`
`9
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`831 F. 2d 1017 (Fed. Cir.1987) .................................................................... .12
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`10 Transonic Sys. v. Non-Invasive Med. Techs. Corp.,
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`11
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`12
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`143 Fed. Appx. 320 (Fed. Cir. 2005) ............................................................. .12
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`13 Vitronics Corp. v. Conceptronic, Inc.,
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`14
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`15
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`90 F.3d 1576 (Fed. Cir. 1996) ................................................................. 10, 12
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`16 Zircon Corp. v. Stanley Black & Decker, Inc.,
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`17
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`18
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`452 Fed. Appx. 966 (Fed. Cir. 2011) ................................................................ 9
`
`19 OTHER SOURCES
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`MPEP § 2173 (8th ed., rev. 9, 2012) ........................................................................... 5
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Petitioners' Ex. 1020 - Page 7
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 8 of 37 Page ID #:1484
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`Plaintiff Advanced Media Networks, LLC ("AMN") respectfully submits this
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`2 opening memorandum in support of its claim constructions for disputed claim terms
`
`from the asserted claims of U.S. Patent No. 5,960,074 (the '"074 Patent," Exhibit
`3
`
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`4 A 1). Plaintiffs proposed constructions for the disputed terms are found in Exhibit B
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`5 and may also be found in the Joint Claim Construction and Prehearing Statement
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`6
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`7
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`8
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`("JCC Statement") previously filed in this case (Dkt. No. 76).
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`I.
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`Preliminary Statement
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`Plaintiff AMN owns a portfolio of patents relating to, among other things,
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`9 systems for providing Internet access to users of mobile devices through mobile hubs
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`10
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`11
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`that may be contained and used in moving vehicles such as cars and planes. One of
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`these patents -the '07 4 Patent at issue in this case -was filed way back in September
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`12 1996. The '074 Patent has gone through two rigorous examinations at the US Patent
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`13 and Trademark Office ("USPTO") in which its claims have been studied in detail by
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`14 unbiased examiners whose job is to evaluate and interpret patent claims and assess
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`15
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`16
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`their patentability and definiteness. AMN has already licensed its patents to several
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`large satellite-based network service providers and seeks in the present case to
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`17 enforce the '074 Patent against the defendants who provide similar mobile WiFi
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`18
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`19
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`systems and services.
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`As shown in the JCC Statement, the parties propose different interpretations of
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`20 certain terms from the '074 Patent claims. AMN's proposed constructions are clear
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`21 and understandable and provide meaningful information to the Court and jury on how
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`22
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`to understand the '074 Patent and apply it to determine infringement. Consistent with
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`23 applicable legal principles, AMN's constructions are derived from and supported by
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`the claims themselves and the specification of the '074 Patent, and are consistent
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`24
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`25
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`26
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`27
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`1 All exhibits referenced herein are attached to the Declaration of Jeanpierre J.
`Giuliano in Support of Plaintiffs Opening Claim Construction Briefffied
`28 concurrently herewith.
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Petitioners' Ex. 1020 - Page 8
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 9 of 37 Page ID #:1485
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`1 with the meaning of the terms as they would have been understood by one of
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`2 ordinary skill in the art.
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`3
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`The defendants in this case take a radically different approach. Many of the
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`4 defendants' proposed constructions are in outright violation of well established legal
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`5 precedents, such as placing primary emphasis on the claims and specification and not
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`6
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`reading embodiments from the specification into the claims. Others of the
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`7 defendants' proposed constructions are technically incorrect and even contradict the
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`8 explicit teachings of the specification. Indeed, the Court will quickly recognize the
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`9 defendants' torturous constructions and specious arguments as a blatant attempt to
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`10
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`11
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`rewrite the '074 Patent and thereby presumably avoid infringement.
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`AMN thus respectfully requests that the Court adopt its proposed
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`12 constructions.
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`13
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`14
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`15
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`II.
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`Factual Background
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`A.
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`Parties
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`Plaintiff AMN is a Los Angeles-based company established in 2003 that
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`16 acquired the '074 Patent and other assets ofNeTune Communications, Inc.
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`17
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`18
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`19
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`("NeTune"), the original assignee of the '074 Patent. NeTune itself was founded by
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`the inventor of the '074 Patent, Curtis Clark, to develop and commercialize the
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`technology covered by the patent. NeTune and AMN have used the technology
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`20 described by '074 Patent to provide, among other things, services to the motion
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`21 picture industry in the creation of several Hollywood blockbuster productions. AMN
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`22 continues to offer a broad range of services including the design and implementation
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`23 of wireless networks at remote locations that connect to the Internet, as well as the
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`24 design and installation of high quality videoconferencing and visual communication
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`25
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`26
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`systems and services for businesses.
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`Defendants Gogo LLC ("Gogo") and its subsidiary, Aircell Business Aviation
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`27 Services LLC ("Aircell"), are limited liability Delaware companies that deploy an air-
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`28
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`to-ground ("ATG") communications network and associated in-flight systems used to
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Petitioners' Ex. 1020 - Page 9
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 10 of 37 Page ID #:1486
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`1 provide mobile broadband services to users aboard aircraft flying over the continental
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`2 United States and Alaska. These mobile broadband products and services are
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`3
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`installed in and offered on aircraft owned and operated by various commercial
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`4 airlines, including defendants Delta Air Lines, Inc. ("Delta") and United Air Lines,
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`5
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`Inc. ("United"). These mobile broadband products and services are also provided
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`6 aboard private airline and by aircraft manufacturers, including defendants
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`7 Bombardier Aerospace Corporation ("Bombardier"), Learjet Inc. ("Learjet"), NetJets
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`8
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`Inc. ("NetJets") and XOJET, Inc. ("XOJET") (collectively, defendants Gogo, Aircell,
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`9 Delta, United, Bombardier, Learjet, NetJets and XOJET are referred herein as
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`10 "Defendants").
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`11
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`12
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`13
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`AMN previously enforced two of its patents, including the '074 Patent, against
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`Inmarsat Global Ltd. ("Inmarsat") and several of its subsidiaries and distributors for
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`their use of satellite-based mobile broadband services, including the SwiftBroadband
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`14 service also offered by defendant Aircell. This resulted in Inmarsat and the other
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`15 defendants licensing the patents. Advanced Media Networks, L.L.C. v. Inmarsat Inc.
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`16 et al., 1 :10-cv-00194-KBF (S.D.N.Y., filed Jan. 11, 2010, terminated July 26, 2012)
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`17
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`18
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`19
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`(Dk. Nos. 103 and 112), Exhibit C.
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`B.
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`The Nature and Status of the Proceedings
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`AMN filed its Complaint on or about December 19, 2011 and filed its
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`20 Amended Complaint on April9, 2012. In accordance with the Court's Scheduling
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`21 and Case Management Order (Dkt. No. 62), AMN provided infringement contentions
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`22
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`to the Defendants on November 16, 2012, which it supplemented on December 21,
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`23 2012. The Defendants provided preliminary invalidity contentions on December 28,
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`24 2012. Discovery regarding key issues offact, including undisclosed aspects of the
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`25 Defendants' technology, is still ongoing. Although the Amended Complaint in the
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`26 present action accused Aircell and other defendants of infringing based on their use
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`27 ofthe SwiftBroadband service, the parties have now stipulated that the Defendants'
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`28 use of that particular service is covered by the license to Inmarsat. Advanced Media
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`3
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`Petitioners' Ex. 1020 - Page 10
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 11 of 37 Page ID #:1487
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`1 Networks, L.L.C. v. Inmarsat Inc. eta!., 1 :10-cv-00194-KBF (S.D.N.Y., filed Jan. 11,
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`2 2010, terminated July 26, 2012) (Dk. Nos. 101 and 111), Exhibit D. The remaining
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`3 products and services accused of infringement, though similar in operation to the
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`4 SwiftBroadband service, are still at issue in the present case.
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`5
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`The parties exchanged terms from the '074 Patent that they contended require
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`6 construction on January 4, 2013 and exchanged the proposed constructions of those
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`7
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`terms on January 11, 2013. AMN originally proposed four terms for construction and
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`8 Defendants proposed 13 terms. The parties then met and conferred regarding their
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`9
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`respective proposed constructions in an attempt to narrow the number of terms
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`1 o requiring construction and focus their disputes for the Court. This resulted in 14
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`11
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`terms being submitted for construction in the JCC Statement, of which two were
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`12 originally proposed by AMN.
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`13
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`14
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`C. Overview ofthe '074 Patent
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`The '074 Patent describes a system and network for providing mobile wireless
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`15 network access at a time where many were only beginning to recognize the
`significance and value of such access. See, e.g., '074 Patent at Col. 1, ll. 49-57
`(providing an example of the television and film industry).2
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`16
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`17
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`18
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`The '074 Patent describes a mobile hub connecting a high-speed wide area
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`19 network (e.g., a satellite, microwave, or other wide area communication subsystem)
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`20 and a wireless local area network. '07 4 Patent, Col. 2, 11. 40-44, Col. 4, ll. 7-14. The
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`21 mobile hub transfers information between the wide area network and the wireless
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`22 LAN so that users can, among other things, gain access to a wide area network such
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`23 as the Internet from a moveable device while at a remote land location or while on a
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`24 vehicle, such as a truck or airplane. '074 Patent, Col2, 11. 44-48. Thus, at a time
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`25 when Internet access was primarily limited to access from fixed points, such as
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`26 homes and offices served by wired networks, the mobile hub of the '074 Patent
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`27
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`28
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`2 Citations to the '074 Patent in this summary are for illustrative purposes only.
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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`Petitioners' Ex. 1020 - Page 11
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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 12 of 37 Page ID #:1488
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`1
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`2
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`linked together a wireless local area network with the Internet, thereby allowing for
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`Internet access to users while in transit. '074 Patent, Col. 1, ll. 13-26, 30-36,and 49-
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`3 62.
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`4
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`In some embodiments, as shown in Figure 1 of the '074 Patent, the mobile hub
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`5 communicates with a digital microwave communication system via electromagnetic
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`6 waves propagated from antennae on the mobile hub and the microwave
`7 communication system. '074 Patent, Figure 1; Col. 3, ll. 40-48, Col. 4, 11. 53-55. The
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`8 mobile hub, in tum, links the microwave communications system to a wireless LAN,
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`9 which, in one embodiment, is a wireless ethemet LAN connecting multiple nodes.
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`10
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`'074 Patent, Col. 3, ll. 49-50, Col. 4, ll. 46-52, Col. 4, II. 33-35. Advantageously, the
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`11 mobile hub uses an ethemet packet switching protocol, such as an Internet protocol,
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`12
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`to transfer information between the wide area network and the wireless LAN. '074
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`13 Patent, Col. 2, ll. 8-14.
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`14
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`15
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`III. Overview of the '074 Patent and Reexamination Prosecutions
`
`The claims of the '074 Patent have been through a rigorous examination, not
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`16 once but twice. Throughout both examinations the examiners at the USPTO never
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`17 asserted that any terms in the claims were indefinite, much less the terms alleged by
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`18 Defendants as being indefinite, notwithstanding their having an obligation under the
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`19
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`20
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`21
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`rules to do so ifthey so determined. See e.g., MPEP § 2173 (8th ed., rev. 9, 2012)
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`("Claims Must Particularly Point Out and Distinctly Claim the Invention").
`
`The inventor filed the original application over 16 years ago, on September 23,
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`22 1996. Following an initial rejection of the claims as being allegedly obvious, the
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`23
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`inventor argued that the prior art did not disclose a mobile hub being used in a
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`24 nomadic fashion to transfer communications between a digital microwave
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`25 communication system and a wireless LAN. See April13, 1998 Amendment, Exhibit
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`26 E, at pp. 7-8. The inventor also amended the third element of claim 1 as follows
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`(with additions shown in underline and deletions in brackets):
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`27
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`28
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`5
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`Petitioners' Ex. 1020 - Page 12
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 13 of 37 Page ID #:1489
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`a mobile hub station configured to transfer information as a single
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`nomadic
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`transmission/reception point between
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`the mtcrowave
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`communication system and the wireless LAN [, such that information is
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`transferred over the network] using an ethernet packet switching
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`protocol.
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`Id. at 1-2 (a similar amendment was made to claim 14). This amendment was
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`2
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`3
`
`4
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`5
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`6
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`7 accompanied by an argument that the mobile hub's use of an ethernet packet
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`8 switching protocol such as TCPIIP to transfer information between a microwave
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`9 communication system and a wireless LAN enabled information to be transferred
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`10
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`throughout the system using an ethemet packet switching protocol. /d. at 7-8. After
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`11 careful consideration, the Examiner determined that the claims were patentable over
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`12
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`13
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`the prior art and the '074 Patent issued on September 28, 1999.
`
`After AMN sought to enforce its patent rights against Inmarsat and its
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`14 distribution partners as discussed above, a reexamination ofthe '074 Patent was
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`15
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`requested on May 11, 2010, the basis of which was new prior art not previously
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`16 considered by the USPTO during the original prosecution. First Amended Complaint
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`17
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`(Dk. No. 14). In the first reexamination Office Action, all claims were rejected as
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`18 either anticipated by or obvious over (i) Randy H. Katz, Adaptation and Mobility in
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`19 Wireless Information Systems, IEEE Personal Communications, First Quarter (1994),
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`20
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`21
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`("Katz") (ii) Field Manual100-16, entitled Army Operational Support, published by
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`the Department of the Army in Washington, D.C. on May 31, 1995 ("FM 100-16'')
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`22 and (iii) T. Nassif, "Supporting the Fleet: Taking Workflow to the Waterfront"
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`23 Thesis, submitted in partial fulfillment of the requirements for the degree of Master
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`24 of Science in Information Technology Management from the Naval Postgraduate
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`25 School, Monterey, CA, published August 17, 1995 ("Nassif'). See, February 10,
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`26 2011 Office Action in Ex Parte Reexamination for US Patent No. 5,960,074, Exhibit
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`27 F, at pp. 4, 9 and 18.
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`28
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`6
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`Petitioners' Ex. 1020 - Page 13
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 14 of 37 Page ID #:1490
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`1
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`In its response, AMN argued among other things, that Katz (i) failed to serve
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`2 as enabling prior art as the disclosure of Katz failed to teach how the disparate
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`3
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`4
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`technologies disclosed therein would be incorporated into a single system and (ii)
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`failed to teach or suggest, among other things, the claimed element of"a mobile hub
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`5 configured to transfer information as a single nomadic transmission/reception point
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`6 using an ethemet packet switching protocol." See, April11, 2011 Response to Office
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`7 Action in Ex Parte Reexamination for US Patent No. 5,960,074, Exhibit G, at pp.
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`8 24--42. Specifically, AMN argued that Katz's use of ATM was a technology that was
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`9 competing against ethemet packet switching protocols and which Katz suggested
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`10 would be best suited for the systems discussed therein. Id. at 38. AMN also added
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`11 new dependent claims 41-122. Id at 7-18.
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`12
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`In a second reexamination Office Action, the previous rejections were
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`13 withdrawn as having been overcome and all claims were rejected under new grounds,
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`14 specifically in view of one oftwo prior art combinations: M. Normoyle and R.
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`15 Nunan, "A Tactical Deployable Wireless Multimedia LAN," Proceedings of IEEE
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`16 MILCOM 1993, pp. 502-506 ("Normoyle") combined with either Nassif or FM 100-
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`17 16. See, June 15, 2011 Office Action in Ex Parte Reexamination for US Patent No.
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`18 5,960,074, Exhibit H, at p. 4. The Examiner did agreed with AMN, however, that
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`19
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`" ... Katz does not disclose 'an Ethernet packet switching protocol'. Katz suggests
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`20 using [a] connection oriented protocol such as ATM, not the connectionless TCP/IP
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`21 protocol (Katz: p. 11, col. 2- p. 12, col. 1)." Id. at p. 38.
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`22
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`In response, AMN argued that the combination of Normoyle with either Nassif
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`23 or FM 1 00-16 failed to teach or suggest use of an "ethemet packet switching
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`24 protocol" to transfer information by a mobile hub as claimed. In particular, AMN
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`25 argued that Nassifs use of ATM/SONET differed from the use of an ethemet packet
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`26 switching protocol due to the connection-oriented requirements of ATM. See, August
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`27 15, 2011 Response to Office Action in Ex Parte Reexamination for US Patent No.
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`28 5,960,074, Exhibit I at pp. 27. In addition, AMN argued the primary references,
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`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`7
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`Petitioners' Ex. 1020 - Page 14
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 15 of 37 Page ID #:1491
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`1 Nassif and FM 100-16, each failed to teach or suggest the claim elements directed to
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`2 mobility as recited in the independent claims. I d. at pp. 24-38.
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`3
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`In support of each of its responses, AMN submitted a declaration from Lance
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`4 McNally, a technical consultant retained by AMN. In his first declaration, Mr.
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`5 McNally stated that Katz taught away from the use of an ethemet packet switching
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`6 protocol because of a "hidden terminal" problem that prevents terminals from
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`7 detecting collisions in wireless networks. Declaration of Lance McNally ("Apr.
`
`8 McNally Decl.") dated Apr. 11, 2011, Exhibit L, at 10. Additionally, Mr. McNally
`
`9 stated that Katz specifically taught away from the use of wireless LANs due to the
`
`10
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`immaturity of the technology when Katz was authored. Id. at 4. In his second
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`11 declaration, Mr. McNally stated that, in the selection of communication protocols to
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`12 provide for the transfer of information between a wide area network (WAN) and a
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`13
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`local area network (LAN), "the '074 Patent specifies and claims the use of the same
`
`14 communications protocols for the WAN and the LAN." Declaration of Lance
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`15 McNally dated Aug. 15, 2012 ("Aug. McNally Decl."), Exhibit M, at 3. Mr. McNally
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`16
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`further confirmed that the use of connection-based ATM networks differed from
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`17 ethemet packet switching networks, primary regarding quality of service and
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`18 bandwidth. Id. at 4.
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`19
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`After giving careful consideration to the prior art submitted in reexamination
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`20 and the arguments made by AMN and Mr. McNally, the Examiner confirmed the
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`21 patentability of all the claims of the '074 Patent, including the newly introduced
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`22 dependent claims. See Notice oflntent to Issue Ex Parte Reexamination Certificate,
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`23 Exhibit J at pp. 7-8. In issuing the re-examination certificate, the Examiner noted that
`
`24
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`the prior art submitted by the requester failed to teach or suggest the claimed mobile
`
`25 hub configured to transfer information as a single nomadic transmission/reception
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`26 point using an ethemet packet switching protocol per claim 1 or TCPIIP per claim 14
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`27 which claim elements specify the "use of the same communications protocols
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`28
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`(TCP/IP Ethernet) for the WAN and the LAN," essentially repeating language from
`
`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`8
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`Petitioners' Ex. 1020 - Page 15
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 16 of 37 Page ID #:1492
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`1 one ofthe McNally declarations. Id. Thus, for a second time the '074 Patent was duly
`
`2
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`recognized by examiners at the USPTO as presenting a valuable, novel and non-
`
`3 obvious solution for providing mobile network access capabilities using a mobile
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`4 hub.
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`5
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`6
`
`The US Patent and Trademark Office issued a Certificate of Re-examination of
`
`the '074 Patent on November 22, 2011. See Reexamination Certificate for U.S. Patent
`
`7 5,960,074, Exhibit K.
`
`8
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`IV.
`
`Standard of Review Governing Claim Construction
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`9
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`10
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`11
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`12
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`The proper construction of a disputed term in a patent claim requires the Court
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`to interpret the claim term as it would have been understood by one of ordinary skill
`
`in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1314
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`(Fed. Cir. 2005). Zircon Corp. v. Stanley Black & Decker, Inc., 452 Fed. Appx. 966,
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`13 972 ((Fed. Cir. 2011) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`
`14
`
`15
`
`Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). To determine the proper meaning of a
`
`term, "a court looks to those sources available to the public that show what a person
`
`16 of ordinary skill in the art would have understood disputed claim language to mean,"
`
`17
`
`including "the words of the claims themselves, the remainder of the specification, the
`
`18 prosecution history, and extrinsic evidence concerning relevant scientific principles,
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`19
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`the meaning oftechnical terms, and the state of the art." Phillips, 415 F.3d at 1314.
`
`20 Additionally, an inventor is not required to fully define those terms that are "well
`
`21 known" in the art, and reliance on commonly understood meanings of common terms
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`22
`
`23
`
`is preferred over verbose descriptions of common technologies. See e.g., ALZA Corp.
`
`v. Andrx Pharms., LLC, 603 F.3d 935 (Fed. Cir. 2010) ("a specification need not
`
`24 disclose what is well known in the art"); see also Hybritech, Inc. v. Monoclonal
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`25 Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)("a patent need not teach, and
`
`26 preferably omits, what is well known in the art") (citations omitted).
`
`27
`
`28
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`The components of the intrinsic evidence form a natural hierarchy of
`
`interpretive guides. As AMN's constructions illustrate, the claims themselves form
`
`PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
`9
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`Petitioners' Ex. 1020 - Page 16
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`

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`Case 2:11-cv-10474-GAF-JCG Document 81 Filed 02/08/13 Page 17 of 37 Page ID #:1493
`
`1
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`the first tier of the hierarchy and are an important source of meaning for they
`
`2 "provide substantial guidance as to the meaning of particular claim terms" through
`
`3 context and by relation to other claims. Phillips, 415 F.3d at 1314-15. As such, the
`
`4 plain meaning of terms should always be given substantially more weight over other
`
`5 sources, such as extrinsic evidence; failure to look at the plain meaning of terms, as
`
`6
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`the Defendants do, is a fundamental mistake in ascertaining the meaning of a term
`