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:
`
`August 1, 2001
`
`July 17, 2007
`
`
`
`
`
`
`
` :
`
`
`
`
`
`: Attorney Docket No. 082944.0104
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`:
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`: IPR No. Unassigned
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`Assignee: Shiron Satellite Communications, Ltd.
`
`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 1, 8-12 OF U.S. PATENT NO. 7,245,874 UNDER 35
`U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
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`Hughes v. Elbit, IPR2016-00496
`ELBIT EX. 2002 - 1/66
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`MANDATORY NOTICES, STANDING, AND FEES .................................. 1 
`
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2 
`
`A.  Publications Relied Upon ........................................................................ 2 
`
`B.  Grounds For Challenge ............................................................................ 3 
`
`III.  OVERVIEW OF THE ’874 PATENT ............................................................ 3 
`
`A.  Summary of the Claimed Subject Matter ................................................ 3 
`
`B.  Prosecution History of the ’874 Patent .................................................... 4 
`
`IV.  SUMMARY OF PRIOR ART AND REFERENCES RELIED ON ............... 8 
`
`A.  Brief Summary of Cox ............................................................................. 9 
`
`B.  Brief Summary of Silverman ................................................................. 10 
`
`C.  Brief Summary of Arimilli .................................................................... 11 
`
`V. 
`
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11 
`
`VI.  CLAIM CONSTRUCTION .......................................................................... 12 
`
`A.  Synchronous data communication protocol ........................................... 12 
`
`B.  Asynchronous data communication protocol ........................................ 13 
`
`VII.  A REASONABLE LIKELIHOOD EXISTS THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ......................................................................... 13 
`
`A.  Ground 1: The ’874 Patent Claim 1 is obvious over Cox in view
`Arimilli ................................................................................................... 14 
`
`B.  Ground 2: The ’874 Patent Claim 1 is obvious over Cox in view
`Silverman further in view of Arimilli .................................................... 30 
`
`C.  Ground 3: The ’874 Patent Claims 8, 11, and 12 are obvious over
`Cox in view Silverman further in view of Arimilli ............................... 35 
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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`D.  Ground 4: The ’874 Patent Claim 9 is obvious over Cox in view
`Silverman further in view of Arimilli further in view of Henkel .......... 54 
`
`E.  Ground 5: The ’874 Patent Claim 10 is obvious over Cox in view
`Silverman further in view of Arimilli further in view of Houde ........... 57 
`
`VIII.  CONCLUSION .............................................................................................. 60 
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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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”)
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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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.)
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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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, 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 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 asserts U.S. Patent Nos. 7,245,874 and 6,240,073. See Ex. 1008.
`
`Lead Counsel and Request for Authorization: Pursuant to 37 C.F.R.
`
`§§ 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.
`
`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
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`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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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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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
`
`estopped from requesting inter partes review on the grounds set forth herein.
`
`Fees: The Office is authorized to charge the fee set forth in 37 C.F.R.
`
`§ 42.15(a) to Deposit Account No. 02-0384 as well as any additional fees that
`
`might be due in connection with this Petition.
`
`II. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Petitioner challenges claims
` 1, 8-12 of
`the ’874 Patent,
`
`titled
`
`“Infrastructure for Telephony Network.” See Ex. 1001.
`
`A.
`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
`
`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.
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`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.
`
`B. Grounds For Challenge
`Petitioner requests cancellation of the claims on the following grounds:
`
`Claim 1 is obvious over Cox in view of Arimilli.
`
`Claim 1 is obvious over Cox in view of Silverman further in view of
`
`1.
`
`2.
`
`Arimilli.
`
`3.
`
`Claims 8, 11, and 12 are obvious over Cox in view of Silverman
`
`further in view of Arimilli.
`
`4.
`
`Claim 9 is obvious over Cox in view of Silverman further in view of
`
`Arimilli further in view of Henkel.
`
`5.
`
`Claim 10 is obvious over Cox in view of Silverman further in view of
`
`Arimilli further in view of Houde.
`
`III. OVERVIEW OF THE ’874 PATENT
`A.
`Summary of the Claimed 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
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`incompatibility between TCP/IP and E1 is overcome.” Ex. 1001 at 1:53-55.
`
`Satellites are 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 goes on to teach providing an IP-based backup for cellular
`
`telephony networks. Ex. 1001 at 1:56-62. The ‘874 was focusing upon the
`
`trunked backbone for cellular telephone networks, which was the same type of
`
`backbone used in the non-cellular Public Switched Telephone Network (“PSTN”).
`
`The subsequent paragraph 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 whether backbones and backup were TCP/IP based or not 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
`
`elected to pursue the group of claims described by the Examiner as “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,
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`classified in class 455, subclass 427.” Id. at pp. 87, 92. The group of claims
`
`chosen by Applicants included original Claims 1-11, 12-18, and 27-28, with
`
`Claims 1, 12, and 27 comprising the independent claims. Id. at pp. 47-51, 87.
`
`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.
`
`Thus, Applicants obtained only a narrow grant covering time division multiple
`
`access protocol. Original claims 18, 1, 4, 7, 9-13, and 15-17 were ultimately
`
`allowed as claims 1, 2, 3, 4, 5-9, and 10-12, respectively.
`
`In the initial Office Action dated May 20, 2005, the Examiner rejected
`
`Claims 1, 3, 7, 11-13, 27, and 28 and objected to Claims 2, 4-6, 8-10, and 14-18.
`
`In rejecting Claims 1, 3, 7, 11-13, and 28 under 35 U.S.C. 103(a) the Examiner
`
`noted that McKenna et al. discloses “a communique system that operates with
`
`existing cellular networks” and
`
`that Bjorkman et al. “discloses a
`
`telecommunication switch to provide Internet communication access and service”
`
`and “includes means for interfacing synchronous data communication protocol and
`
`asynchronous data communication protocol.” Id. at p. 95-96.
`
`Each of the identified claims depended directly or indirectly from
`
`independent Claim 1 or independent Claim 12.
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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`In their August 22, 2005 response to the initial rejection, Applicants
`
`cancelled dependent Claims 2 and 14 and incorporated the body of the cancelled
`
`claims into their corresponding parent claims, Claims 1 and 12, respectively. Id.
`
`at p. 110. In addition, Claims 15, 16, 17 and 18 were rewritten in independent
`
`form. Id. at p. 110. Based on these amendments, Applicants argued that all of
`
`the non-cancelled claims, “clams 1, 3-13, and 15-18,” were “in allowable
`
`condition.” Id. at p. 110.
`
`In the second Office Action, dated May 31, 2006, the Examiner allowed
`
`Claim 18 and rejected all of the remaining claims, Claims 1, 3-13, and 15-17,
`
`under new grounds. In allowing Claim 18, the Examiner noted that “the prior arts
`
`fail to teach ‘interfaces comprising a non-data carrying time slot remover for
`
`removing said non-data carrying
`
`time slots during conversion
`
`into said
`
`asynchronous protocol and a time slot regenerator for regenerating non-data
`
`carrying time slots during reconstruction.” Id. at 121. Claims 1 and 7 were
`
`rejected under 35 U.S.C. §102(e) as being anticipated under Wiedeman, which the
`
`Examiner noted as disclosing:
`
`[A] cellular telephone network comprising peripheral branches
`and a central high capacity data trunking region,” “using a
`synchronous data communication protocol,” and “wherein said
`high capacity data trunking region comprises a satellite
`interface for a satellite connection using a non-synchronous
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`data communication protocol; wherein said high capacity
`trunking region comprises a terrestrial high capacity trunking
`connection in parallel with said satellite connection such that
`said satellite connection is usable back up said terrestrial
`connection.
`Id. at 117-118. Claims 12-13 and 15-16 were rejected under Section 102(e) as
`
`being anticipated by Davidson et al., which the Examiner noted as disclosing: “a
`
`branch of a cellular telephone network based on a first synchronous data
`
`communication protocol (see col. lines 30-50), comprising interfaces to a satellite
`
`link using a second, asynchronous data communication protocol” as well as
`
`interfaces comprising converters, with the interfaces providing the “satellite link as
`
`a parallel path to a terrestrial data link.” Id. at 118. Claims 3-6, 8, 10-11, and 17
`
`were rejected under 35 U.S.C. 103(a) as obvious under Wiedeman and Davidson.
`
`Id. at 119-20. Finally, Claim 9 was rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Wiedeman in view of Davidson et al. and further in view of
`
`Vassilovski, which discloses “an extractor for extracting ss7 signaling, and a
`
`TCP/IP packet former for arranging extracted signaling into TCP/IP packets.” Id.
`
`at 120-21.
`
`Despite all the Arguments and Amendments in their August 31, 2006
`
`response, (see id. at 126-128 and 133) Examiner again rejected all of the claims
`
`except for previously allowed Claim 18. In their February 27, 2007 response,
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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`Applicants cancelled Claims 2-3, 5-6, and 8. In addition, Applicants promoted the
`
`Claim 18 to parent claim status leaving Claim 18 as the only parent claim, and
`
`Claims 1 and 12 as dependent claims. 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.
`
`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).
`
`The Original Assignee, Shiron Satellite Communications Ltd., attempted to
`
`file a European Counterpart to the ’874 Patent on July 31, 2002. Ex. 1013 (Request
`
`for Grant of a European Patent). On January 30, 2003, the EPO issued a
`
`European Search Report while the United States application for the ’874 Patent
`
`was pending identifying several references, including U.S. Patent No. 6,044,070,
`
`EP 0 852 448, U.S. Patent No. 5,519,700, and WO 00 60770. Ex. 1014. U.S.
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`Patent No. 6,044,070 was listed with an “X” indicating its relevance to the subject
`
`matter of the application for the ’874 Patent. Id. Thereafter, without any
`
`substantive response, Original Assignee abandoned its efforts to obtain the
`
`European counterpart to the ’874 patent and the application was abandoned. 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.
`
`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,
`
`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 ¶ XX; 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”
`
`which includes “trunk interface logic” and “network translation logic.” Ex. 1004 at
`
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`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 ¶ 56. To solve
`
`these deficiencies, an object of the invention of 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;
`
`Id. at ¶ 57. Cox further provides that “[a]nother 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.” Id. at 5:37-40; Id. at ¶ 67.
`
`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).
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`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 ¶ 95.
`
`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(b).
`
`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 ¶ 125.
`
`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 ¶ 32.
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`Petition for Inter Partes Review of U.S. Patent No. 7,245,874
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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).1 Petitioners submit that
`
`terms not specifically construed herein should be given their plain and ordinary
`
`meaning. Claims 1, 8-12 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 ¶ 43. 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
`most popular communication method to and from mainframes. In
`
`
`1 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)
`
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`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 ¶ 44-45.
`
`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.
`
`VII. A REASONABLE
`EXISTS
`LIKELIHOOD
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`THAT
`
`THE
`
`All of the challenged claims are unpatentable as set forth below.
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`A. Ground 1: The ’874 Patent Claim 1 is obvious over Cox in view
`Arimilli
`1.
`Claim 1
`Cox (Ex. 1004) in combination with 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), further in view of
`
`Armilli discloses each element of Claim 1 as explained in Ground 2 below.
`
`’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 Arimilli
`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 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.”
`
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`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 100; 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
`
`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 ¶ 103. 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.
`
`’874 Claim 1
`1[b]. interfaces to
`a satellite link
`using a second,
`asynchronous,
`data
`communication
`protocol;
`
`Cox in view of Arimilli
`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
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`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 compatible with a high speed packet-
`switched data network 440.”
`Id., Ex. 1004 at Fig. 5.
`Id., Ex. 1004 at 14:9-23: “[T]he T1(E1)-to-IP multiplexer 500
`includes four T1(E1) trunk interface logic ports 510. In an
`alternative embodiment, up to 20 T1(E1) ports 510 are
`provided. Each T1(E1) port 510 provides full-duplex
`connectivity with a corresponding synchronous T1 frame
`stream 501 associated with a T1(E1) switch (not shown).
`Each port 510 transmits and receives T1(E1) data to network
`translation logic 520 via buses 511. . . .
`The network translation logic 520 provides formatted network
`packets to network interface logic 530 via bus 521. The
`network interface logic 530 transmits/receives packets from a
`router (not shown) connected to a packet-switched network
`(not shown) via a gateway 531.”
`Id., Ex. 1004 at 11:62-65: “The network medium 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., 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.”
`
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`Cox discloses a T1(or E1)-to-IP multiplexer for
`
`interconnect