UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent 7,245,874
`
`Inventors: Yehuda Rest, et al.
`
`Filed:
`
`Issued:
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`August 1, 2001
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`July 17, 2007
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`: Attorney Docket No. 082944.0104
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`:
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`:
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`: IPR No. Unassigned
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`Assignee: Shiron Satellite Communications, Ltd.
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`Title:
`
`Infrastructure for Telephony Network
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`HUGHES NETWORK SYSTEMS, LLC’S PETITION FOR INTER PARTES
`REVIEW OF CLAIMS 2-7 OF U.S. PATENT NO. 7,245,874 UNDER 35
`U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
`
`
`
`1
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`

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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`MANDATORY NOTICES, STANDING, AND FEES .................................. 1 
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2 
`
`A.  Patents and Printed Publications Relied Upon ........................................ 2 
`
`B.  Grounds For Challenge ............................................................................ 3 
`
`III.  OVERVIEW OF THE ’874 PATENT ............................................................ 4 
`
`A.  Summary of the Subject Matter ............................................................... 4 
`
`B.  Prosecution History of the ’874 Patent .................................................... 4 
`
`IV.  SUMMARY OF PRIOR ART AND REFERENCES RELIED ON ............... 6 
`
`A.  Brief Summary of Cox ............................................................................. 6 
`
`B.  Brief Summary of Silverman ................................................................... 8 
`
`C.  Brief Summary of Arimilli ...................................................................... 8 
`
`D.  Brief Summary of Lim ............................................................................. 8 
`
`E.  Brief Summary of Henkel ........................................................................ 9 
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`V. 
`
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9 
`
`VI.  CLAIM CONSTRUCTION .......................................................................... 10 
`
`A.  “Synchronous data communication protocol” ....................................... 10 
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`B.  “Asynchronous data communication protocol” ..................................... 11 
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`C.  “Central high-capacity data trunking region” ........................................ 12 
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`D.  “Peripheral branches of a telephone network” ...................................... 14 
`
`VII.  A REASONABLE LIKELIHOOD EXISTS THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ......................................................................... 14 
`
`A.  Ground 1: The ‘874 Patent Claims 2-7 are obvious over Cox in view
`of Silverman further in view of Arimilli further in view of Lim ........... 15 
`i
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`

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`B.  Ground 2: The ’874 Patent Claim 3 is obvious over Cox in view of
`Silverman further in view of Arimilli further in view of Lim further
`in view of Henkel ................................................................................... 56 
`
`VIII.  CONCLUSION .............................................................................................. 59 
`
`
`
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`
`ii
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`
`LIST OF EXHIBITS
`
`1001 U.S. Patent No. 7,245,874 by Yehuda Rest et al. entitled “Infrastructure
`for Telephony Network” (the “’874 Patent”)
`
`1002 File History for U.S. Patent No. 7,245,874
`
`1003 Declaration of Dr. Raymond Leopold
`
`1004 U.S. Patent No. 6,459,708 to Cox (“Cox”)
`
`1005 U.S. Patent No. 6,731,649 to Silverman (“Silverman”)
`
`1006 Application No. WO/95/50 29576 to Arimilli (“Arimilli”)
`
`1007 U.S. Patent No. 7,113,780 to McKenna (“McKenna”)
`
`1008 Canadian Patent CA 2,290,967 A1 to Henkel (“Henkel”)
`
`1009 U.S. Patent No. 5,623,532 to Houde, et al. (“Houde”)
`
`1010 Complaint and Amended Complaint, Elbit Systems Land and C4I Ltd. et
`al. v. Hughes Network Systems LLC et al., Case No. 2:15-CV-37 (E.D.
`Tex.)
`
`1011 Service of Complaint on Hughes Network Systems LLC
`
`1012 Executed Summons for Hughes Network Systems, LLC, Black Elk
`Energy Offshore Operations, LLC, BlueTide Communications, Inc.,
`Country Home Investments, Inc.
`
`1013 Excerpts of File History for EP 1 282 320 A2, European Patent
`Application to U.S. Patent No. 7,245,874, published on May 2, 2003
`(“File History for European Counterpart to the ’874 Patent”)
`
`1014 EPO Search Report for PCT Counterpart to the ’874 Patent (“EPO
`Search Report”)
`
`1015 U.S. Patent No. 5,729,544 to Lev (“Lev”)
`
`1016 U.S. Patent No. 5,392,280 to Zheng (“Zheng”)
`
`
`
`iii
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`

`
`1017
`
`to Random—Access
`J.L. Massey, Some New Approaches
`Communications, Reprinted from Performance 87, pp. 551-569, 1988
`‘P.J. Courtois and G. Latouche, Eds. New York : Elsevier Science, 1998,
`pp. 354-568
`
`1018
`
`J.L. Massey and P. Mathys, “The Collision Channel Without Feedback,”
`IEEE Trans. Inform. Theory, vol. IT-31, pp. 192-204, Mar. 1985.
`
`1019 Excerpts of Newton’s Telecom Dictionary (14th ed.)
`
`1020 U.S. Patent No. 7,065,321 to Lim (“Lim”)
`
`
`
`
`
`iv
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`

`
`I. MANDATORY NOTICES, STANDING, AND FEES
`Real Party in Interest: Petitioner Hughes Network Systems, LLC (“Hughes”),
`
`along with Black Elk Energy Offshore Operations, LLC, 1 BlueTide
`
`Communications, Inc., Country Home Investments, Inc. are real parties-in-interest
`
`to this petition. EchoStar Corporation is the parent of Hughes Satellite Systems
`
`Corporation, which is the parent of Hughes Communications, Inc., which is the
`
`parent of Hughes Network Systems, LLC, all of which are real parties in interest.
`
`Related Matters: U.S. Patent No. 7,245,874 (“the ’874 Patent”), is
`
`challenged in IPR2016-00135 (filed 11/3/2015), which is not yet Instituted. The
`
`‘874 Patent is also involved in a pending lawsuit involving petitioner entitled Elbit
`
`Systems Land and C4I Ltd. et al. v. Hughes et al., United States District Court for
`
`the Eastern District of Texas, Case No. 2:15-CV-37 (the “District Court
`
`Litigation”). See Ex. 1010. The District Court Litigation also asserts U.S. Patent
`
`No. 6,240,073. See Ex. 1008. That patent is in challenged in IPR2016-00141 and
`
`IPR2016-00142 (both filed 11/4/2015), which are not yet Instituted.
`
`Lead Counsel and Request for Authorization: Pursuant to 37 C.F.R.
`
`
`1 Black Elk is currently involved in a Chapter 11 bankruptcy proceeding pending
`
`before the Honorable Marvin Isgur. Black Elk filed a Suggestion of Bankruptcy
`
`in the pending district court patent litigation on November 5, 2015.
`
`
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`1
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`

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`§§ 42.8(b)(3) and 42.10(a), Petitioner designates the following: Lead Counsel is
`
`Eliot D. Williams (Reg. No. 50,822) of Baker Botts L.L.P.; Back-up Counsel is G.
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`Hopkins Guy (Reg. No. 35,886) of Baker Botts L.L.P.
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`Service Information: Service information is as follows: Baker Botts L.L.P.,
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`1001 Page Mill Rd., Palo Alto, CA 94304-1007 Tel. 650-739-7500; Fax 650-736-
`
`7699.
`
`Petitioner
`
`consents
`
`to
`
`service
`
`by
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`electronic mail
`
`at
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`eliot.williams@bakerbotts.com and hop.guy@bakerbotts.com.
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`Certification of Grounds for Standing: Petitioner certifies that the ’874
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`Patent is eligible for inter partes review and that Petitioner is not barred or
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`estopped from requesting inter partes review on the grounds set forth herein.
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`Fees: The Office is authorized to charge the fee set forth in 37 C.F.R.
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`§ 42.15(a) to Deposit Account No. 02-0384 as well as any additional fees that
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`might be due in connection with this Petition.
`
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Petitioner challenges claims 2-7 of the ’874 Patent, titled “Infrastructure for
`
`Telephony Network.” See Ex. 1001.
`
`A.
`Patents and Printed Publications Relied Upon
`Petitioner relies upon the following patents and publications:
`
`Exhibit 1004 - U.S. Patent No. 6,459,708 to Cox, (“Cox”). Cox is prior art
`
`under at least 35 U.S.C. § 102(e) because it was filed on December 21, 1999 and
`
`issued into a U.S. Patent on October 1, 2002.
`2
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`
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`

`
`Exhibit 1005 - U.S. Patent No. 6,731,649 to Silverman, (“Silverman”).
`
`Silverman is prior art under at least 35 U.S.C. § 102(e) because it was filed on July
`
`26, 2000 and issued into a U.S. Patent on May 4, 2004.
`
`Exhibit 1006 - Application No. WO/95/029576 by Arimilli (“Arimilli”).
`
`Arimilli is prior art under at least 35 U.S.C. § 102(b) because it was filed on April
`
`18, 1995 and published on November 2, 1995.
`
`Exhibit 1008 - Canadian Application No. CA 2,290,967 by Henkel
`
`(“Henkel”). Henkel is prior art under at least 35 U.S.C. § 102(b) because it was
`
`filed on June 19, 1998 and published on January 28, 1999.
`
`Exhibit 1009 - U.S. Patent No. 5,623,532 to Houde et al, (“Houde”). Houde
`
`is prior art under at least 35 U.S.C. § 102(b) because it was filed on January 12,
`
`1995 and issued into a U.S. Patent on April 22, 1997.
`
`Exhibit 1020 - U.S. Patent No. 7,245,874 to Lim (“Lim”). Lim is prior art
`
`under at least 35 U.S.C. § 102(e) because it was filed on July 31, 2001 and issued
`
`into a U.S. Patent on June 20, 2006.
`
`B. Grounds For Challenge
`Petitioner requests cancellation of the claims on the following grounds:
`
`1.
`
`Claims 2-7 are obvious over Cox in view of Silverman further in
`
`view of Arimilli further in view of Lim.
`
`
`
`3
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`

`
`2.
`
`Claim 3 is obvious over Cox in view of Silverman further in view
`
`of Arimilli further in view of Lim further in view of Henkel.
`
`III. OVERVIEW OF THE ’874 PATENT
`A.
`Summary of the Subject Matter
`The ’874 Patent relates to “interface for a satellite connection.” Ex. 1001 at
`
`Abstract. The ‘874 Patent purports to “provide a system in which the
`
`incompatibility between TCP/IP and E1 is overcome.” Ex. 1001 at 1:53-55.
`
`Satellite links as a backup is identified as incidental to the ’874 Patent. Ex. 1001 at
`
`Abstract (“The network backbone comprises a satellite interface for a satellite
`
`connection and alternatively or additionally a backup backbone route.”).
`
`The ‘874 Patent discloses an IP-based backup for cellular telephony
`
`networks. Ex. 1001 at 1:56-62. The ‘874 discloses a trunked backbone for
`
`cellular telephone networks that is the same type of backbone used in the non-
`
`cellular Public Switched Telephone Network (“PSTN”). The patent discusses
`
`using the ‘874 teachings as a backup for that backbone, or vice versa. Id. at 1:63-
`
`2:6. Backbones in telecommunication networks such as the PSTN, and backups
`
`for those backbones were well-known, and using TCP/IP or not in those networks
`
`was an ordinary business or design decision at the time ‘874 was filed.
`
`B.
`Prosecution History of the ’874 Patent
`The application leading to the ’874 Patent was filed on August 1, 2001 with
`
`36 claims. Ex. 1002 at p. 7. Based on a restriction requirement, Applicants
`
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`4
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`

`
`elected to pursue the group of claims “drawn to cellular telephone network
`
`comprising peripheral branches and a central data trunking region using a
`
`synchronous data communication protocol and having a satellite connection using
`
`a non-synchronous data communication protocol …” Id. at pp. 87, 92.
`
`In responding to the three Office Action issued by the Examiner, Applicants
`
`were unable to convince the Examiner that their claimed use of E1-T1 protocol
`
`was a non-obvious improvement over the already known methods and systems for
`
`interconnecting synchronous and non-synchronous data communication protocols.
`
`For instance, despite all the Arguments and Amendments in patent applicant’s
`
`August 31, 2006 response, (see id. at 126-128 and 133) the Examiner rejected all
`
`of the claims except for previously allowed Claim 18. Applicants promoted the
`
`Claim 18 to parent claim status leaving Claim 18 as the only parent claim.
`
`Applicants further amended Claim 18 to expunge references to “a telephony
`
`protocol.” Id. at 147. In their remarks accompanying the amendments,
`
`Applicants explained that “the telephony protocol to which the blank time slots are
`
`applied is the synchronous protocol.” Id. at 148. A notice of allowance as to the
`
`amended claims issued on March 16, 2007. Thus, Applicants obtained claims
`
`limited to a time division multiple access protocol.
`
`Notably, the Original Assignee, Shiron Satellite Communications Ltd.,
`
`attempted to file a European Counterpart to the ’874 Patent on July 31, 2002. Ex.
`
`
`
`5
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`

`
`1013 (Request for Grant of a European Patent). The EPO issued a European
`
`Search Report on January 30, 2003, while the United States application for
`
`the ’874 Patent was pending, identifying several references material to the
`
`patentability of the pending ‘874 Patent claims. Ex. 1014. Thereafter, without
`
`any substantive response, Original Assignee abandoned the European counterpart.
`
`Ex. 1015. But the Original Assignee, which has since been acquired by current
`
`Patent Owner Elbit, never submitted the search report or the references cited on the
`
`search report to the United States Patent Office.
`
`IV. SUMMARY OF PRIOR ART AND REFERENCES RELIED ON
`None of the prior art discussed below was considered by the Patent Office
`
`during prosecution of the ’874 patent. These prior art references are directed to the
`
`same field as the ‘874 patent (infrastructure for a telephony network); operate
`
`using the same architecture as the ’874 patent (converters for T1/E1 to TCP/IP);
`
`and are designed to solve the same problem as the ’874 patent (incompatibility
`
`between T1/E1 and TCP/IP networks).
`
`Secondary considerations do not support a finding of nonobviousness. There
`
`is no evidence that the Patent Owner will be able to show any secondary
`
`consideration. Should the Patent Owner introduce evidence of secondary
`
`considerations, Petitioners respectfully request an opportunity to respond.
`
`A.
`Brief Summary of Cox
`Cox is a U.S. Patent filed on December 21, 1999, well before the August 1,
`6
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`

`
`2001 priority date of the ’874 patent, and issued as a patent on October 1, 2002,
`
`and therefore qualifies as prior art under 35 U.S.C. § 102(e). Cox discloses the
`
`interconnectivity between a PSTN network (T1 trunks) and a high speed data
`
`network. Ex. 1003 at ¶ 58; Ex. 1004 at Figure 1. Cox describes “T1 (or E1)
`
`telecommunications
`
`frames
`
`to be
`
`transmitted between T1
`
`(or E1)
`
`telecommunications switches over a high bandwidth packet-switched network”
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`which includes “trunk interface logic” and “network translation logic.” Ex. 1004 at
`
`Abstract. The “network translation logic translates the telecommunications frames
`
`into network packets that the telecommunications frame data may be transferred
`
`over the high bandwidth packet-switched network.” Id.
`
`The objective of Cox is to address the need to allow “service providers to
`
`add T1(E1) trunks between central office switches that takes advantage of high
`
`speed packet-switched data networks.” Id. at 3:58-61; Ex. 1003 at ¶ 61. Cox
`
`provides “an apparatus for implementing a T1(E1), meaning either a T1 or E1,
`
`trunk between two central office switches that utilizes a packet-switched data
`
`network as the transmission medium.” Id. at 4:5-9; Id. Cox discloses that the
`
`network medium that can use its invention “can be any physical medium that can
`
`interface to the IP level to include wire, coaxial cable, fiber-optic cable, microwave,
`
`or satellite links.” Id. at 11:62-65 (emphasis supplied); Id. at ¶ 62. Cox further
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`provides that “[a]nother advantage of the present invention is that telephone
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`7
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`service providers can employ unused bandwidth on their packet-switched networks
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`to carry T1 (E1) trunk data.” Id. at 5:37-40; Id. at ¶ 72.
`
`B.
`Brief Summary of Silverman
`Silverman is a U.S. Patent filed on July 26, 2000, well before the August 1,
`
`2001 priority date of the ’874 patent, and issued as a patent on May 4, 2004, and
`
`therefore qualifies as prior art under 35 U.S.C. § 102(e). Silverman “offers a
`
`solution for transferring transparently E1 or T1 (or fractional E1/T1) TDM services
`
`over widely deployed high speed IP networks.” Ex. 1005 at 15:13-15. Silverman
`
`also teaches silence suppression, or non-data carrying time slot removal. Ex. 1005
`
`at 10:7-10; Ex. 1003 at ¶ 100.
`
`C.
`Brief Summary of Arimilli
`Arimilli is a PCT Application filed on April 18, 1994, and published on
`
`November 2, 1995, well before the August 1, 2001 priority date of the ’874 patent,
`
`and therefore qualifies as prior art under 35 U.S.C. §§ 102(a), (b), and (e). Arimilli
`
`discloses a “data multiplexing network” “which multiplexes a plurality of
`
`asynchronous data channels with a asynchronous data stream . . . onto a single
`
`synchronous data packet stream.” Ex. 1006 at Abstract. Arimilli discloses that
`
`some voice time slots may be non-data carrying time slots. Ex. 1003 at ¶ 130.
`
`D. Brief Summary of Lim
`Lim is a U.S. Patent filed on July 31, 2001, before the August 1, 2001
`
`priority date of the ‘874 patent, and issued as a patent on June 20, 2006, and
`
`
`
`8
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`

`
`therefore qualifies as prior art under 35 U.S.C. § 102(e). Lim discloses “[a]
`
`system and method for augmenting a wireless communications network.” Ex.
`
`1020, Abstract. In several embodiments, Lim discloses that data may be
`
`transferred from a content delivery network on mobile base stations by a PSTN or
`
`internet backbone, on the first hand, or by a satellite system, on the second hand.
`
`See, e.g., Ex. 1020, Figs. 2-5, 3:13-5:44.
`
`E.
`Brief Summary of Henkel
`Henkel is a Canadian Patent Application filed on June 19, 1998, and
`
`published on January 28, 1999, well before the August 1, 2001 priority date of the
`
`‘874 patent, and therefore qualifies as prior art under 35 U.S.C. §§ 102(a), (b), and
`
`(e). Henkel discloses a process and system “which automatically initiate[s] and
`
`monitor[s] alternative routing via satellite irrespective of the transmission medium
`
`that might be out of order.” Ex. 1008 at 6-7.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would have either a master’s degree in
`
`electrical engineering or a related communications or telecommunications field,
`
`along with three years of experience in wireless communications and/or a more
`
`advanced degree in the field with less experience but knowledge of wireless
`
`communication theory and telecommunications. Ex. 1003 at ¶ 17.
`
`
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`9
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`

`
`VI. CLAIM CONSTRUCTION
`For purposes of this proceeding, Petitioners propose constructions under the
`
`appropriate regulatory standard. 37 C.F.R. § 42.100(b).2 Petitioners submit that
`
`terms not specifically construed herein should be given their plain and ordinary
`
`meaning. Claims 2-7 contain terms that should all be interpreted under the broadest
`
`reasonable interpretation.
`
`A.
`“Synchronous data communication protocol”
`The ‘874 Patent’s use of the term “synchronous data communications
`
`protocol” is consistent with the usage in the art at the time of the alleged invention.
`
`Ex. 1001 at 1:26-50; Ex. 1003 at ¶ 44. For example, Newton’s Telecom Dictionary
`
`(14th Ed.) defines “synchronous,” in part, as:
`
`The condition that occurs when two events happen in a specific time
`relationship with each other and both are under the control of a master
`clock. Synchronous transmission means there is a constant time
`between successive bits, characters or events. The timing is
`achieved by the sharing of a single clock. Each end of the
`transmission synchronizes
`itself with
`the use of clocks and
`information sent along with the transmitted data. Synchronous is the
`
`2 Petitioner reserves the right to seek different claim constructions than those
`
`determined or sought in a different forum that applies more narrow standards of
`
`proof and analysis (e.g., the District Court Litigation, applying the Phillips
`
`standard). See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
`
`
`
`10
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`

`
`most popular communication method to and from mainframes. In
`synchronous transmission, characters are spaced by time, not by start
`and stop bit.
`Ex. 1019 at 727. In light of the specification and the knowledge of a person of
`
`ordinary skill in the art at the time of the alleged invention, the broadest reasonable
`
`interpretation of “a first synchronous data communications protocol” is “a data
`
`communications protocol that relies on the temporal relationship between time
`
`slots, such as the E1 or T1 protocols.” Ex. 1003 at ¶ 45.
`
`B.
`“Asynchronous data communication protocol”
`The ‘874 Patent characterizes TCP/IP as an asynchronous protocol. Ex. 1003
`
`at ¶ 46. The ‘874 Patent contrasts TCP/IP with the E1 and T1 protocols, which the
`
`‘874 Patent characterizes as synchronous protocols. Id.; Ex. 1001 at 1:34-50.
`
`The ‘874 Patent’s use of the term “asynchronous data communications
`
`protocol” is consistent with the usage in the art at the time of the alleged invention,
`
`as discussed above with respect to “synchronous data communications protocol.”
`
`Ex. 1003 at ¶ 47. In light of the specification and the knowledge of a person of
`
`ordinary skill in the art at the time of the alleged invention, the broadest reasonable
`
`interpretation of “a second asynchronous, data communications protocol” is “a data
`
`communications protocol that does not rely on the temporal relationship between
`
`time slots, such as the TCP/IP protocol.” Id. at ¶ 48.
`
`
`
`11
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`

`
`C.
`“Central high-capacity data trunking region”
`The ‘874 patent does not provide a definition for the term “central high-
`
`capacity data trunking region.” Id. at ¶ 49. Nor is this term, as a whole, common or
`
`known in the field of telecommunications. Id. A search of issued U.S. patents for
`
`the term “high-capacity data trunking region” returned only the ‘874 patent. Id. No
`
`relevant publications using the term “trunking region” could be identified. Id.
`
`However, the constituent term “trunk” is well known in the art. Newton’s Telecom
`
`Dictionary (14th ed.) defines trunk as:
`
`A communications line between two switching systems. The term
`switching system typically includes equipment in a central office (the
`telephone company) and PBXs. A tie trunk connects PBXs. Central
`office trunks connect a PBX to the switching system at the central
`office.
`Ex. 1019 (Newton’s Telecom Dictionary (14th ed.)) at 784-85. As shown by the
`
`above definition, the term “trunk” is a general term in telecommunications that
`
`describes a data-carrying connection between two devices. The Abstract of the
`
`‘874 patent discusses the “high-capacity trunking region,” as either equivalent to or
`
`interchangeable with a “network backbone:”
`
`A cellular telephone network comprises peripheral branches and a
`central high-capacity data trunking region or network backbone. The
`invention concerns effective utilization of trunking capacity to provide
`backbone facilities for such a network. The network backbone
`comprises a satellite interface for a satellite connection and alternative
`
`
`
`12
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`

`
`or additionally a backup backbone route. For example an Internet
`backbone route and a satellite backbone route may be used, one
`backing up the other.
`Ex. 1001, Abstract. Elsewhere, the ‘874 specification discusses the terms “trunking
`
`region” and “network backbone” as having the same components: a terrestrial
`
`connection and/or a satellite connection. Ex. 1003 at ¶ 51. For example, the
`
`summary of the invention describes a preferred embodiment of the high-capacity
`
`trunking region:
`
`Preferably, the high capacity trunking region comprises a terrestrial
`high capacity trunking connection in parallel with the satellite
`connection such that the satellite connection is usable to back up the
`terrestrial connection.
`. . .
`Preferably, the high capacity trunking region comprises a terrestrial
`high capacity trunking connection in parallel with the satellite
`connection such that the terrestrial high capacity trunking connection
`is usable to back up the satellite connection.
`Ex. 1002, 2:3-16. In the detailed description, the ‘874 patent describes a “backbone
`network” with both terrestrial and satellite links:
`Reference is now made to FIG. 9, which is a simplified block diagram
`showing how telephony, terrestrial IP and satellite IP networks can
`serve as backups for one another. In FIG. 9, a series of MSCs 26 are
`connected together via three different backbone networks, an E1/T1
`standard telephony backbone 122, a terrestrial TCP/IP link 124 and a
`satellite TCP/IP link 126.
`
`
`
`13
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`

`
`Ex. 1002, 10:31-38. In light of the specification and the knowledge of a person of
`
`ordinary skill in the art at the time of the alleged invention, the broadest reasonable
`
`interpretation of “central high-capacity data trunking region” is “a terrestrial link,
`
`or combination of terrestrial and satellite links for conveying data between at least
`
`two devices.”
`
`D.
`“Peripheral branches of a telephone network”
`The ‘874 patent does not provide a definition for the term “peripheral
`
`branches of a telephone network.” Ex. 1003 at ¶ 54. A person of ordinary skill in
`
`the art would recognize that a “peripheral” is one or more devices that are
`
`connected to something else. Id. In the claims of the ‘874 patent, the other
`
`devices are connected to a telephone network. Id. There is nothing in the
`
`specification or file history that would require a narrower broadest reasonable
`
`construction of this term. Id. Therefore, the broadest reasonable construction of
`
`the terms “peripheral branches of a telephone network” and “peripheral branches”
`
`is “one or more devices connected to a telephone network.” Id.
`
`VII. A REASONABLE
`EXISTS
`LIKELIHOOD
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`THAT
`
`THE
`
`All of the challenged claims are unpatentable as set forth below.
`
`
`
`14
`
`

`
`A. Ground 1: The ‘874 Patent Claims 2-7 are obvious over Cox in view
`of Silverman further in view of Arimilli further in view of Lim
`Claims 2-7 are obvious over Cox in view of Silverman further in view of Arimilli
`
`further in view of Lim. Because each of claims 2-7 depend directly or indirectly
`
`from claim 1, the elements of claim 1 are discussed below.
`
`1.
`Claim 1 (Included by Dependency)
`Cox (Ex. 1004) in view of Arimilli (Ex. 1006) discloses each element of
`
`Claim 1. To the extent that the Board finds that the preamble is limiting then Cox
`
`in combination with Silverman (Ex. 1005) and Arimilli discloses each element of
`
`Claim 1.
`
`’874 Claim 1
`
`1[a]. A branch of
`a cellular
`telephone
`network based on
`a first
`synchronous data
`communication
`protocol,
`comprising:
`
`Cox in view of Silverman further in view of Arimilli
`further in view of Lim
`See, e.g, Cox, Ex. 1004 at 12:17-27: “First, the trend in the
`communications industry is moving away from synchronous
`network technologies and towards packet-switched
`technologies. In fact, significant milestones have already been
`achieved in the area of transmitting real-time voice or other
`telecommunications signals over IP networks. Packet-
`switched central office switches now exist for providing voice
`over IP (VOIP) networks. But, as noted above, to do so
`requires that a telephone service provider completely change
`over equipment within a central office switch from that which
`uses the T1 (or E1) protocol to VoIP-based equipment.”
`Ex. 1004 at 18:4-9: “In addition, other telecommunication
`protocols have been developed for wireless or RF networks,
`that work at speeds from 9 Mhz up. The present invention
`certainly comprehends such protocols to the extent that high
`bandwidth data networks can supply the bit rates necessary to
`ensure timely transmission of frame data an to provide overall
`quality of service.”
`Ex. 1004 at Abstract: “The network translation logic
`
`
`
`15
`
`

`
`translates the telecommunications frames into network
`packets that the telecommunications frame data may be
`transferred over the high bandwidth packet-switched
`network.”
`Ex. 1004 at 5:37-39: “Another advantage of the present
`invention is that telephone service providers can employ
`unused bandwidth on their packet-switched networks to carry
`T1 (E1) trunk data.”
`See, e.g., Silverman, Ex. 1005 at 14:55-15:2: “Cellular
`carriers' networks are based on TDM technologies.
`Connectivity between the base stations (BTSs), base station
`controllers (BSCs), and the mobile switching center (MSC) is
`achieved using TDM microwave links and T1/E1 leased lines.
`Until recently, ATM was the most logical alternative.
`Because of pressure from environmental groups, cellular
`carriers are looking for an alternative to microwave, and
`leased lines are costly. With the introduction of QoS in
`Gigabit Ethernet networks and the availability of TDMoIP, IP
`is very seriously considered as the preferred solution.
`Third-generation cellular (UMTS) vendors are in advanced
`stages of implementing TDMoIP solutions where IP networks
`are the cellular backbone. In the future, current and third-
`generation cellular devices will be co-located to access on an
`IP-based backbone.”
`
`The preamble is not a claim limitation because it is not referenced by any
`
`other portion of the claim and is only an intended use for the claimed techniques.
`
`Ex. 1003 at 105; Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (preamble not
`
`limiting “where a patentee defines a structurally complete invention in the claim
`
`body and uses the preamble only to state a purpose or intended use.”).
`
`Cox discloses that “other telecommunication protocols have been developed
`
`for wireless or RF networks . . . [t]he present invention certainly comprehends such
`
`
`
`16
`
`

`
`protocols.” Ex. 1004 at 18:4-9. A person of ordinary skill in the art at the time
`
`of the alleged invention of the ‘874 patent would understand Cox’s “wireless or RF
`
`networks” to at least include a cellular telephone network. Ex. 1003 at ¶ 109. A
`
`person of ordinary skill in the art would understand Cox’s discussion to refer to
`
`cellular telephony, rather than other wireless telephony systems, such as in-home
`
`cordless phone or the microwave links that are part of the PSTN infrastructure. Id.
`
`Silverman discloses the implementation for a cellular network over an IP
`
`backbone. Ex. 1003 at ¶ 106; Ex. 1005 at 14:55-15:2. A person of ordinary skill
`
`in the art would understand that Silverman’s base stations (BTSs), base station
`
`controllers (BSCs), and the mobile switching center (MSC) are within the broadest
`
`reasonable interpretation of “a branch of a cellular telephone network,” since they
`
`refer to cellular system components. Ex. 1003 at ¶ 107. That these elements are
`
`linked in the first paragraph by T1/E1 leased lines demonstrates that the elements
`
`are “based on a first synchronous data communications protocol,” within the
`
`broadest reasonable interpretation of that term. Id. A person of ordinary skill in the
`
`art recognizes that both T1 and E1 are synchronous protocols. Id.; Ex. 1004 at
`
`12:17-27; Ex. 1003 at ¶101. In the cited passage, Cox contrasts “synchronous
`
`network technologies” such as the T1 and E1 protocols with the IP protocol, which
`
`is a packet switched (and therefore asynchronous) protocol. Ex. 1003 at ¶ 108.
`
`Therefore, to the extent that the preamble is limiting, a person of ordinary skill in
`
`
`
`17
`
`

`
`the art would find that Cox in combination with Silverman discloses the limitations
`
`of this claim element. Ex. 1007 at ¶ 113.
`
`’874 Claim 1
`
`1[b]. interfaces to
`a satellite link
`using a second,
`asynchronous,
`data
`communication
`protocol;
`
`Cox in view of Silverman further in view of Arimilli
`further in view of Lim
`See, e.g, Cox, Ex. 1004 at 12:65-13:20: “[A] system 400
`according to the present invention for providing T1/E1 trunk
`interconnections over a high bandwidth packet-switched data
`network. The system 400 includes a plurality of existing T1
`(or E1) telecommunications signal switches 410, like those
`101, 200 described with reference to FIGS. 1 and 2. Each
`switch 410 accepts a plurality of incoming
`telecommunications signal sources 401, like those 201
`described with respect to FIG. 2. In one embodiment, each
`switch 410 is directly paired with a T1(or E1)-to-IP
`multiplexer 420. T1 (or E1) trunk signals are provided to each
`multiplexer 420 via T1 (or E1) links 411. Each T1 (or E1)
`link 411 shown in the system 400 represents what would
`otherwise be a requirement for a T1 or E1 trunk between the
`switches 410. . . .
`IP network packets carrying T1 (or E1) frame information are
`output from each of the T1(E1)-to-IP multiplexers 420 on
`buses 421 in a format