UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MERCEDES-BENZ USA, LLC
`Petitioner
`
`v.
`
`ADVANCED MEDIA NETWORKS LLC,
`Patent Owner
`
`Patent No. 5,960,074
`
`Issue Date: September 28, 1999
`
`Title: MOBILE TELE-COMPUTER NETWORK FOR MOTION PICTURE,
`TELEVISION AND TV ADVERTISING PRODUCTION
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,960,074
`PURSUANT TO 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`Case No. IPR2016-01255
`
`

`
`I.
`
`TABLE OF CONTENTS
`
`IV.
`V.
`
`MANDATORY NOTICES .............................................................................1
`A.
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1)) ..................................1
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ..............................................1
`C.
`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))..............2
`PAYMENT OF FEES (37 C.F.R. § 42.103)....................................................2
`II.
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §42.104) ......3
`A.
`Grounds for Standing (37 C.F.R. § 42.104(a))......................................3
`B.
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .....................................................3
`INTRODUCTION ...........................................................................................4
`CLAIM CONSTRUCTION ..........................................................................10
`A.
`“digital microwave communication system” (Independent Claims 1,
`14, 128, 160)........................................................................................10
`“redundant digital microwave communication system” (Independent
`Claims 1, 14, 128, 160) .......................................................................10
`“broadband information” (Independent Claims 28, 148)....................11
`“configured to transfer [broadband] information as a single nomadic
`transmission/reception point between the microwave communication
`system [communication subsystem] and the wireless LAN”
`(Independent Claims 1, 14, 28, 128, 148, 160)...................................11
`“wireless local area network (LAN)” (Independent Claims 1, 14, 28,
`128, 148, 160)......................................................................................14
`“wireless wide area network (WAN)” (Independent Claim 14).........15
`“intranet” (Claim 14) / “secured private intranet” (Claim 2) / “private
`intranet” (Claim 15).............................................................................15
`“ethernet packet switching protocol” (Independent Claims 1, 28).....16
`H.
`VI. Grounds for inter partes Review...................................................................17
`A.
`Obviousness over Dao in View of Rebec and Binder.........................17
`1.
`Overview of Dao.......................................................................18
`i
`
`B.
`
`C.
`D.
`
`E.
`
`F.
`G.
`
`

`
`5.
`
`6.
`
`2.
`3.
`4.
`
`Overview of Rebec....................................................................19
`Overview of Binder...................................................................20
`Independent claims 1, 28, 128, 148, and 160 are obvious over
`Dao in view of Rebec and Binder.............................................22
`Independent claim 14 is obvious over Dao in view of Binder
`and Rebec..................................................................................37
`Dependent claims 2, 3, 9, 10, 15, 20, 31, 36, 37, 42, 58, 73, 93,
`103, 129, 135-137, 146, 149, 153, 154, 157, 161, 165-167, 169,
`171 are obvious over Dao in view of Binder and Rebec..........42
`Obviousness over Crane in View of Rudrapatna................................47
`1.
`Overview of Crane....................................................................47
`2.
`Overview of Rudrapatna...........................................................49
`3.
`Independent claims 1, 28, 128, 148, and 160 are obvious over
`Crane in view of Rudrapatna ....................................................50
`Dependent claims 3, 9, 31, 36, 42, 93, 129, 135, 137, 149, 153,
`161, 165, 166, 167, 169, and 171 Are Obvious........................62
`VII. CONCLUSION..............................................................................................64
`
`B.
`
`4.
`
`ii
`
`

`
`LISTING OF EXHIBITS1
`
`Exhibit 1001 U.S. Patent No. 5,960,074 to Clark, including (i)
`Reexamination Certificate C1 5,960,074 issued Nov.
`22, 2001; (ii) Reexamination Certificate C2 5,960,074
`issued Apr. 23, 2014; and (iii) Reexamination
`Certificate C3 5,960,074 issued Nov. 13, 2015
`
`Exhibit 1002
`
`John Jubin et al., The DARPA Packet Radio Network
`Protocols, Proceedings of the IEEE, Vol. 75, No. 1
`(Jan. 1987)
`
`Exhibit 1003 Richard Binder, et al., Crosslink Architectures for a
`Multiple Satellite System, Proceedings of the IEEE, Vol.
`75, No. 1 (Jan. 1987)
`
`Exhibit 1004 Robert E. Kahn, et al., Advances in Packet Radio
`Technology, Proceedings of the IEEE, Vol. 66, No. 11
`(Nov. 1978)
`
`Exhibit 1005 David D. Clark, et al., An Introduction to Local Area
`Networks, Proceedings of the IEEE, Vol. 66, No. 11
`(Nov. 1978)
`
`Exhibit 1006
`
`Irwin M. Jacobs, et al., General Purpose Packet
`Satellite Networks, Proceedings of the IEEE, Vol. 66,
`No. 11 (Nov. 1978)
`
`1 Given the large number of challenged claims in the ’074 patent and the word
`limits applicable to a petition for inter partes review, Petitioner is simultaneously
`filing two petitions: IPR2016-01253 and IPR2016-01255. To avoid confusion in
`referencing overlapping exhibits, Petitioner is submitting the same exhibit list in
`both IPR proceedings. The only exhibits that differ between the two proceedings
`are the Declarations of Jeffery Fischer (both Exhibits 1009), which are directed to
`the specific grounds of unpatentability raised in their corresponding petitions.
`iii
`
`

`
`Exhibit 1007 David A. Beyer, Accomplishments of the DARPA
`SURAN Program, published in Military
`Communications Conference 1990 (MILCOM ’90)
`Conference Record (IEEE 1990)
`
`Exhibit 1008 Clifford Lynch and Edwin Brownrigg, Packet Radio
`Networks: Architectures, Protocols, Technologies and
`Applications (Pergamon Press, 1987)
`
`Exhibit 1009 Declaration of Jeffrey Fischer
`
`Exhibit 1010 Patent Owner Preliminary Response in IPR2016-00349
`(Mar. 22, 2016)
`
`Exhibit 1011 Patent Owner’s Claim Construction Brief, Advanced
`Media Networks, LLC v. GoGo LLC, et al., 11-cv-
`10474 (C.D. Cal.), Dkt. No. 81 (Feb. 8, 2013)
`
`Exhibit 1012 David Morse, Cyber Dictionary (1996) (excerpts)
`
`Exhibit 1013 Summary of Examiner Interview, Reexamination Nos.
`90/012,728 – 90/012,789 (Apr. 3, 2014)
`
`Exhibit 1014 Franklin P. Antonio, et al., OmniTRACS: A Commercial
`Ku-Band Mobile Satellite Terminal and Its Applicability
`to Military Mobile Terminals, Military Communications
`Conference 1988 (MILCOM ’88) Conference Record
`(IEEE 1988)
`
`Exhibit 1015 Patent Owner’s Claim Construction Brief, Advanced
`Media Networks, LLC v. Inmarsat, Inc., et al., 10-cv-
`00194 (S.D.N.Y.), Dkt. No. 105 (June 4, 2012)
`
`Exhibit 1016 W. Richard Stevens, TCP/IP Illustrated, Volume 1: The
`Protocols (Addison Wesley 1994)
`
`Exhibit 1017 Newton’s Telecom Dictionary (9th ed. 1995)
`
`iv
`
`

`
`Exhibit 1018 Response to Office Action in Ex Parte Reexamination,
`Reexamination Nos. 90/012,728 – 90/012,789 (Dec. 2,
`2013)
`
`Exhibit 1019 Notice of Intent to Issue Ex Parte Reexamination
`Certificate, Reexamination Nos. 90/012,728 –
`90/012,789 (Apr. 10, 2014)
`
`Exhibit 1020 Kwang-Cheng Chen, Medium Access Control of
`Wireless LANs for Mobile Computing, IEEE Network
`Magazine, vol. 8, no. 5 (Sept./Oct. 1994)
`
`Exhibit 1021 B. Leiner, The DARPA Internet Protocol Suite, IEEE
`Communications Magazine, vol. 23, no. 3 (March 1985)
`
`Exhibit 1022 U.S. Patent No. 5,519,761 to Gilhousen (filed July 8,
`1994, issued May 21, 1996)
`
`Exhibit 1023 U.S. Patent No. 6,175,717 to Rebec, et al. (filed May
`21, 1994, issued January 16, 2001)
`
`Exhibit 1024 Brian H. Davies, et al., The Application of Packet
`Switching Techniques to Combat Net Radio,
`Proceedings of the IEEE, vol. 75, no. 1 (1987)
`
`Exhibit 1025 Steven L. Telleen, The IntraNet Architecture:
`Managing information in the new paradigm (June
`1996), available at
`http://www.iorg.com/papers/amdahl/infra.html
`
`Exhibit 1026
`
`Jakob Nielson, 1994 Design of SunWeb: Sun
`Microsystems’ Intranet (Dec. 31, 1994), available at
`https://www.nngroup.com/articles/1994-design-sunweb-
`sun-microsystems-intranet/
`
`Exhibit 1027 Karen Seo, et al., Distributed Testing and Measurement
`Across the Atlantic Packet Satellite Network (SATNET),
`SIGCOMM ’88 Symposium Proceedings on
`Communications Architectures and Protocols (June 6,
`1988)
`
`v
`
`

`
`Exhibit 1028 A. Lyman Chapin, Open Systems Networking: TCP/IP
`and OSI (Addison Wesley Sept. 1993)
`
`Exhibit 1029 Leonard Kleinrock, Nomadic Computing – An
`Opportunity, ACM SIGCOMM Computer
`Communication Review, Vol. 25, Issue 1 (Jan. 1995)
`
`Exhibit 1030 William C. Fifer, The Low-Cost Packet Radio,
`Proceedings of the IEEE, Vol. 75, No. 1 (Jan. 1987)
`
`Exhibit 1031
`
`ITU H.261 MPEG-1
`
`Exhibit 1032
`
`ITU H.263 MPEG-3
`
`Exhibit 1033 Patent Owner Preliminary Response in IPR2016-00628
`
`Exhibit 1034 Kleinrock, L., Nomadic Computing, Proc. IFIP/ICCC
`Int’l Conf. Information Network Data Communication
`(Chapman & Hall, London 1996)
`
`Exhibit 1035 Randy H. Katz, Adaptation and Mobility in Wireless
`Information Systems (April 18, 1995)
`
`Exhibit 1036 Declaration of Lance McNally (Feb. 24, 2014),
`submitted by Patent Owner in Reexamination Nos.
`90/012,729 and 90/012,790
`
`Exhibit 1037 U.S. Patent No. 5,915,207 to Dao, et al.
`
`Exhibit 1038 U.S. Patent No. 5,533,097 to Crane, et al.
`
`Exhibit 1039 U.S. Patent No. 5,592,470 to Rudrapatna, et al.
`
`vi
`
`

`
`Exhibit 1040 PC Magazine (November 23, 1993) (excerpts)
`
`Exhibit 1041 Peter H. Lewis, NCR Introduces Its Version of Network
`Without Wires, New York Times (Sept. 23, 1990)
`
`Exhibit 1042 Tsong-Ho Wu, Emerging Technologies for Fiber
`Network Survivability, IEEE Communications
`Magazine (Feb. 1995)
`
`Exhibit 1043 Patent Owner’s Infringement Contentions in Advanced
`Media Networks, LLC, 15-cv-00410 (D. Del.) (June 9,
`2016)
`
`Exhibit 1044 U.S. Patent No. 5,175,867 to Wejke
`
`vii
`
`

`
`Pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. Part 42, Mercedes-Benz
`
`USA, LLC (“Petitioner”) respectfully requests inter partes review of claims 1, 2, 3,
`
`9, 10, 14, 15, 20, 28, 31, 36, 37, 42, 58, 73, 93, 103, 128, 129, 135-137, 146, 148,
`
`149, 153, 154, 157, 160, 161, 165-167, 169, and 171 (collectively the “Challenged
`
`Claims”) of U.S. Patent No. 5,960,074 (“the ’074 patent”). According to U.S.
`
`Patent and Trademark Office records, the ’074 patent is currently assigned to
`
`Advanced Media Networks, LLC (“AMN” or the “Patent Owner”).
`
`I.
`
`MANDATORY NOTICES
`
`A.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real parties-in-interest for this
`
`Petition are Mercedes-Benz USA, LLC, Daimler North America Corp. (“DNAC”),
`
`and Daimler AG (“DAG”).
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner provides notice that the
`
`’074 patent is the subject of a patent infringement lawsuit brought by Patent Owner
`
`against Petitioner in the United States District Court for the District of Delaware:
`
`Advanced Media Networks LLC v. Mercedes-Benz USA LLC, Case No. 1:15-cv-
`
`00410 (“-410 Litigation”). Neither DNAC, nor DAG, has been named as a party in
`
`litigation concerning the ’074 patent.
`
`The ’074 patent is also asserted in at least the following civil actions: (1)
`
`Advanced Media Networks (“AMN”) v. Cellco Partnership d/b/a Verizon Wireless,
`1
`
`

`
`1:14-cv-01495 (D. Del.); (2) AMN v. FCA US LLC, 1:15-cv-00405 (D. Del.); (3)
`
`AMN v. Sprint Corporation et al., 1:14-cv-00142 (D. Del.); (4) AMN v. T-Mobile
`
`USA Inc, et al., 1:14-cv-01518 (D. Del.); (5) AMN v. United States Cellular
`
`Corporation, 1:15-cv-00131 (D. Del.); (6) AMN v. Volkswagen Group of America,
`
`Inc., 1:15-cv-00420 (D. Del.); (7) AMN v. AT&T Inc et al., 3:15-cv-03496 (N.D.
`
`Tex.); (8) AMN v. Harris CapRock Communications, Inc. et al., 8:15-cv-00408
`
`(M.D. Fla.); (9) AMN v. ViaSat, Inc. et al., 3:15-cv-00143 (S.D. Cal.); and (10)
`
`AMN v. Emerging Markets Communications, LLC et al., 0:16-cv-60475 (S.D.
`
`Fla.).
`
`The ’074 patent is also the subject of IPR Cases Nos. IPR2016-00347,
`
`IPR2016-00349, IPR2016-00628, and IPR2016-00629.
`
`C.
`
`Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`
`Lead Counsel
`Scott W. Doyle (Reg. No. 39176)
`Fried, Frank, Harris, Shriver &
`Jacobson LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7326 (telephone)
`(202) 639-7003 (facsimile)
`scott.doyle@friedfrank.com
`
`Back-Up Counsel
`Jonathan R. DeFosse (pro hac vice to
`be requested)
`Fried, Frank, Harris, Shriver &
`Jacobson LLP
`801 17th Street, N.W.
`Washington, DC 20006
`(202) 639-7277 (telephone)
`(202) 639-7003 (facsimile)
`jonathan.defosse@friedfrank.com
`
`II.
`
`PAYMENT OF FEES (37 C.F.R. § 42.103)
`
`The USPTO is authorized to charge the filing fee for this Petition, as well as
`
`any other fees that may be required in connection with this Petition or these
`
`2
`
`

`
`proceedings on behalf of Petitioner, to the deposit account of Fried, Frank, Harris,
`
`Shriver & Jacobson LLP, Deposit Account No. 060920.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R. §42.104)
`
`A.
`
`Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’074 patent
`
`(Ex. 1001) is available for inter partes review and that Petitioner is not barred or
`
`estopped from requesting inter partes review.
`
`B.
`
`Identification of Challenge (37 C.F.R. § 42.104(b)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1))
`
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b), Petitioner respectfully
`
`requests that inter partes review be instituted on the following grounds:
`
`Ground Claims
`
`Reason for Invalidity
`
`1
`
`1, 2, 3, 9, 10, 14, 15, 20, 28,
`
`Obvious under 35 U.S.C. § 103 over
`
`31, 36, 37, 42, 58, 73, 93,
`
`U.S. Patent No. 5,915,207 to Dao, et al.
`
`103, 128, 129, 135-137,
`
`(“Dao) in view of U.S. Patent No.
`
`146, 148, 149, 153, 154,
`
`6,175,717 to Rebec, et al. (“Rebec”), and
`
`157, 160, 161, 165-167,
`
`Richard Binder, et al., Crosslink
`
`169, 171
`
`Architectures for a Multiple Satellite
`
`System, Proceedings of the IEEE, Vol.
`
`75, No. 1 (Jan. 1987) (“Binder”)
`
`3
`
`

`
`2
`
`1, 3, 9, 28, 31, 36, 42, 93,
`
`Obvious under 35 U.S.C. § 103 over
`
`128, 129, 135, 137, 148,
`
`U.S. Patent No. 5,533,097 to Crane, et
`
`149, 153, 160, 161, 165,
`
`al. in view of U.S. Patent No. 5,592,470
`
`166, 167, 169, 171
`
`to Rudrapatna, et al.
`
`The grounds of unpatentability are explained in detail in Section VI, below.
`
`This Petition is further supported by the Declaration of Jeff Fischer (“Fischer
`
`Decl.”) (Ex. 1009).
`
`IV.
`
`INTRODUCTION
`
`The ’074 patent, entitled “Mobile Tele-Computer Network for Motion
`
`Picture, Television and TV Advertising Production,” originally issued on
`
`September 28, 1999 from an application filed on September 23, 1996. The
`
`’074 patent is generally directed to a mobile wireless communications network.
`
`(Ex. 1001 at col. 1:7-8.) More specifically, the ’074 patent teaches “a wireless
`
`local area network (LAN)” that is able to access a “wireless wide area network
`
`(WAN)” through a “mobile hub,” as illustrated in Figure 1:
`
`4
`
`

`
`(See aslo id. at 2:40-48.) The “mobile hub” of the ’074 patent “may be in the form
`
`of a mobile vehicle (e.g., a van)” and can be “configured to transfer information as
`
`a single nomadic transmission/reception point between the microwave
`
`communication system (i.e., the wireless WAN) and the wireless LAN.” (Id. at
`
`2:11-15.) In one embodiment, the “mobile hub” uses an “omni-directional
`
`antenna” to “transfer information from a non-stationary position.” (Id. at 4:65-66.)
`
`In another embodiment, “the mobile hub station only transfers data from a
`
`stationary position.” (Id. at 4:67-5:1.)
`
`The ’074 patent also teaches that the mobile hub may use a variety of prior
`
`art protocols to transfer information. For example, the ’074 patent indicates that
`
`5
`
`

`
`“an ethernet packet switching protocol such as the IEEE 802.10 protocol or the
`
`TCP/IP protocol used on the World Wide Web” may be used. (Ex. 1001 at 2:51-
`
`53.) The ’074 patent further notes that the “present invention” can employ:
`
`[A]synchronous transfer mode (ATM), Internet Packet
`Exchange (IPX) protocol, Lotus Notes, SMNP, NNP, Multiple
`Internet Mail Exchange (MIME), IP (Internet protocol)—ATM,
`Web Network File System (WNFS), File Transfer Protocol
`(FTP), Fiber Distributed Data Interface (FDDI), Reliable Multi-
`cast Transfer Protocol (RMTP), and Multiprotocol OVER ATM
`(MPOA).
`
`(Id. at 3:4-10.)
`
`The ’074 patent originally issued with 40 claims. Through a series of ex
`
`parte reexamination proceedings, however, the owner of the ’074 patent added 131
`
`additional claims. (See Ex. 1001.) As a result, the ’074 patent currently has 10
`
`independent claims and 161 dependent claims.
`
`The independent claims of the ’074 patent follow largely the same pattern.
`
`Each of those claims can be broken-down into five elements (Elements [a] – [e]).
`
`Claim 1 is representative:
`
`1[a]. A telecomputer network system comprising:
`
`[b] a redundant digital microwave communication system;
`
`[c] a wireless local area network (LAN); and
`
`6
`
`

`
`[d] a mobile hub station configured to transfer information as a
`
`single nomadic transmission /reception point between the
`
`microwave communication system and the wireless LAN
`
`[e] using an ethernet packet switching protocol.
`
`The ’074 patent did not invent nor improve on any of the above elements.
`
`Redundant microwave communications systems, wireless local area networks,
`
`mobile hub stations, and “ethernet packet switching protocols” (e.g., TCP/IP) were
`
`each very well-known to persons of ordinary skill in the art (“POSITAs”) for many
`
`years prior to September 1996. (Ex. 1009 at ¶86-96.) Given this, the Patent
`
`Owner has taken the position that combining those known technologies to
`
`interconnect a mobile wireless LAN to a redundant microwave communication
`
`system was a novel and patentable concept. As the prior art illustrates, however,
`
`Patent Owner’s position is meritless. For example, U.S. Patent No. 5,915,207 to
`
`Dao, which was filed in January 1996, disclosed a mobile wireless LAN that is
`
`interconnected to both satellite and cellular communications systems through a
`
`“mobile base station” that acts as a single transmission/reception point between the
`
`networks. Further, U.S. Patent No. 5,533,097 to Crane, which was filed in
`
`December 1993, disclosed a portable hotspot in a briefcase that could establish a
`
`wireless local area network and interconnect that network with a wide area
`
`7
`
`

`
`communications system, such as a paging, data, or cellular system. (Ex. 1038 at
`
`2:23-37.)
`
`In the past, Patent Owner has sought to overcome prior art disclosures by
`
`arguing that a “mobile hub” capable of “nomadic” transmission and reception must
`
`transmit and receive while moving. Patent Owner’s position, however, is directly
`
`inconsistent with the specification of the ’074 patent, which unambiguously states
`
`that a hub station is “mobile” and “nomadic” so long as it can move and
`
`transmit/receive data from different locations, “even though the transmission of
`
`data occurs only from a stationary position.” (Ex. 1001 at 5:1-5.) Nonetheless,
`
`even if the claims of the ’074 patent were limited to systems capable of
`
`transmission from a non-stationary position, those claims would still be obvious.
`
`While not explicitly showing the “mobile base station” in motion, a person of
`
`ordinary skill in the art would understand that Dao teaches a mobile hub that can
`
`transmit and receive while moving since such functionality was well known in the
`
`art. For example, U.S. Patent No. 6,175,717 to Rebec explicitly discloses a “global
`
`satellite communications vehicle capable of receiving and forwarding information .
`
`. . from a remote location in real time even while the vehicle is moving.” (Ex.
`
`1023 at 1:17-21.) A POSITA would have been motivated to integrate the
`
`communications vehicle of Rebec, which is expressly transmitting and receiving
`
`on the move, with the mobile base station of Dao. This motivation to combine
`
`8
`
`

`
`(and the expected success in doing so) is apparent and easily met given the vast
`
`similarities between the two systems, which both disclose mobile wireless
`
`networks that are interconnected to a satellite communications systems for the
`
`purpose of transmitting multimedia information to a remote location.
`
`Patent Owner has also previously sought to distinguish prior art as failing to
`
`disclose use of an “ethernet packet switching protocol.” Both Dao and Crane
`
`disclose the use of wireless implementations of the Ethernet protocol – an
`
`“Ethernet type CSMA/CA (collision sense multiple access/collision avoidance)
`
`wireless network scheme” in Dao (Ex. 1037 at 5:40-42) and the “I.E.E.E. standard
`
`802.3” (i.e., Ethernet) protocol in Crane (Ex. 1038 at 2:15-17). This should
`
`eliminate Patent Owner’s oft-repeated argument. More fundamentally, however,
`
`Patent Owner’s efforts to distinguish the claims of the ’074 patent based on the use
`
`of an “ethernet packet switching protocol” are exceedingly meritless because the
`
`’074 patent states that an “ethernet packet switching protocol” includes, at the very
`
`least, the most widely used protocol for computer communications in 1996:
`
`TCP/IP. (Ex. 1016 at 1.) It is hard to imagine anything more obvious to a
`
`POSITA than using literally the most common and widely-used computer
`
`networking protocol in implementing a computer networking system such as the
`
`systems of Dao and Crane. (Ex. 1009 at ¶151-152.)
`
`9
`
`

`
`V.
`
`CLAIM CONSTRUCTION
`
`Because the ’074 patent will expire on September 23, 2016, before the
`
`statutory deadline for the Board to issue a final written decision in a proceeding
`
`based on this Petition, the terms of the ’074 patent must be accorded their ordinary
`
`and customary meaning pursuant to the standards expressed in Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005). Pursuant to 37 C.F.R. § 42.104(b)(3),
`
`Petitioner proposes that the following claim constructions be applied in this case.
`
`A.
`
`“digital microwave communication system” (Independent Claims
`1, 14, 128, 160)
`
`This term should be construed to mean “a network comprising one or more
`
`transceivers that operate to communicate digital data over the air via
`
`electromagnetic waves in the microwave frequency of 300 MHz to 300 GHz.”
`
`(Ex. 1009 at ¶32.) This construction is consistent with the construction the Patent
`
`Owner previously proffered during claim construction proceedings before the
`
`United States District Court for the Central District of California. (Ex. 1011 at 25-
`
`26.)
`
`B.
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`“redundant digital microwave communication system”
`(Independent Claims 1, 14, 128, 160)
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`This term should be construed to mean “a digital microwave communication
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`system that allows for the transmission of digital data in the event of a non-
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`functional communications path or device.” (Ex. 1009 at ¶39.) This construction
`
`is supported by the specification of the ’074 patent. (Ex. 1001 at 3:64-66.) The
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`Patent Owner also proffered this construction during prior claim construction
`
`proceedings. (Ex. 1011 at 27.)
`
`C.
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`“broadband information” (Independent Claims 28, 148)
`
`This term should be construed as “data that requires a broadband connection
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`with a carrying capacity sufficient for the transmission of video in real time.” (Ex.
`
`1009 at ¶43.) This construction is based on the specification of the ’074 patent,
`
`which indicates that the claimed invention “provide[s] a conduit infrastructure for
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`internet information system management interactive relay of broadband video in
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`real-time and at full workstation resolution.” (Ex. 1001 at 5:17-24.) The Patent
`
`Owner has previously taken the position that data rates of 200 kbps would have
`
`been sufficient to transfer “broadband information” at the time the application for
`
`the ’074 patent was filed. (Ex. 1011 at 30.)
`
`D.
`
`“configured to transfer [broadband] information as a single
`nomadic transmission/reception point between the microwave
`communication system [communication subsystem] and the
`wireless LAN” (Independent Claims 1, 14, 28, 128, 148, 160)
`
`This term should be construed as “configured to act as a single
`
`transmission/reception point between the microwave communication system [the
`
`communication subsystem] and the wireless LAN capable of transmitting
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`[broadband] information from different locations.” This construction includes
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`mobile hubs that move from place-to-place even if those mobile hubs only transmit
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`from a stationary position. In addition, this construction makes clear that claims 1,
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`14, 28, 128, 148 and 160 do not require a mobile hub to be configured to transmit
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`information while in motion.
`
`The specification of the ’074 patent expressly discloses that a mobile hub is
`
`“nomadic” if it can transmit from different locations, even if transmissions are only
`
`made from a stationary position:
`
`In one embodiment, the mobile hub station only transfers data from a
`stationary position. However, even though the transfer of data
`occurs from a stationary position, the mobile hub station is in fact
`a nomadic vehicle that may be driven anywhere and can still gain
`access to the wireless WAN of the present invention.
`
`(Ex. 1001 at 4:61-5:5 (emphasis added).)
`
`The claims of the ’074 patent also indicate that the “configured to transfer”
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`limitation does not require transmitting data while in motion. For example,
`
`dependent claim 58 adds the following limitation to claim 1: “wherein the mobile
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`hub station comprises an omni-directional antenna, wherein the omni-directional
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`antenna allows for the transfer of information from a non-stationary position.” If
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`claim 1 already required transfer of information from a non-stationary position,
`
`claim 58 would have been unnecessary (particularly given that claim 9 already
`
`adds the “omni-directional antenna” to claim 1). As the Federal Circuit has held,
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`“the presence of a dependent claim that adds a particular limitation raises a
`
`presumption that the limitation in question is not found in the independent claim.”
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`See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
`
`2004).
`
`Patent Owner has previously asserted that a “nomadic transmission /
`
`reception point” must be capable of transmitting and receiving information while
`
`in motion. During prior reexaminations of the ’074 patent, the Patent and
`
`Trademark Office (the “Office”) accepted this position. Petitioner respectfully
`
`submits that the construction proffered by Patent Owner is incorrect. It is
`
`inconsistent with the disclosures of the specification, which (as noted above) make
`
`clear that being “nomadic” can include, but does not necessarily require,
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`transmission from a non-stationary position. (Ex. 1001 at 4:61-5:5.)
`
`Despite the clear statements in the specification of the ’074 patent, the Patent
`
`Owner has previously resorted to extrinsic evidence in hopes of changing the
`
`meaning of “nomadic.” For example, the Patent Owner has previously cited the
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`Kleinrock and Katz articles, exhibits 1034 and 1035, respectively. Those articles,
`
`however, make clear that “nomadic” computing is not limited to non-stationary
`
`operations and more broadly encompasses computing from different stationary
`
`locations, as proposed by Petitioner. Kleinrock, for example, expressly states that
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`“nomadic” computing includes transmissions from different stationary locations:
`
`“when people travel across the country and check into a hotel, they have made a
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`nomadic move as they attempt to connect their laptop via a wireline analog
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`modem.” (Ex. 1034 at 3.) The Katz article similarly reflects that “nomadic”
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`computing occurs when a user accesses a network from different locations, but not
`
`necessarily while in motion. (Ex. 1035 at 3 (analogizing “nomadic” computing to
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`use of a local machine to make a remote connection).)
`
`Thus, the intrinsic evidence, as well as the extrinsic evidence cited by Patent
`
`Owner, supports Petitioner’s proposed construction. (See also Ex. 1009 at ¶47-52.)
`
`E.
`
`“wireless local area network (LAN)” (Independent Claims 1, 14,
`28, 128, 148, 160)
`
`This term should be construed as “wireless data communications network
`
`covering a local geographic area of up to several kilometers.” (Ex. 1009 at ¶53.)
`
`This construction is supported by both intrinsic and extrinsic evidence. First, the
`
`’074 patent discloses that a wireless LAN may be set up to service “the location
`
`telecomputing communication needs of a film or TV production unit, even when
`
`shooting on a stage or studio lot.” (Ex. 1001 at 4:39-41.) The ’074 patent also
`
`provides an example of a LAN covering a radius of ½ mile (i.e., a diameter of 1.6
`
`kilometers). (Id. at 4:35.)
`
`Clark, which is entitled “An Introduction to Local Area Networks,” also
`
`supports the proposed construction. Clark indicates that a LAN “is a data
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`communication network, typically a packet communication network, limited in
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`geographic scope.” (Ex. 1005 at 1497.) Clark notes that a LAN generally “spans
`
`distances from several meters to several kilometers in length.” (Ex. 1005 at 1497-
`14
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`

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`98.) Newton’s Telecom Dictionary similarly states that a LAN is a
`
`communications network that could cover a single building or a university campus.
`
`(Ex. 1017 at 669-670 (defining a LAN to be “[a] short distance communications
`
`network (typically within a building or campus) used to link computers and
`
`peripheral devices (such as printers, CD-ROMs, modems) under some form of
`
`standard control.”).)
`
`F.
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`“wireless wide area network (WAN)” (Independent Claim 14)
`
`This term should be construed as a “wireless data communications network
`
`covering a wide geographic area of more than several kilometers.” (Ex. 1009 at
`
`¶57.) Again, this construction is supported by the ’074 patent and extrinsic
`
`evidence. In particular, the ’074 patent indicates that a WAN can be comprised of
`
`multiple relay stations that are each separated by 10-25 miles. (Ex. 1001 at 3:40-
`
`54.)
`
`G.
`
`“intranet” (Claim 14) / “secured private intranet” (Claim 2) /
`“private intranet” (Claim 15)
`
`This term should be construed to mean “a private data network within a
`
`company or organization accessible only to members or employees.” (Ex. 1009 at
`
`¶72.) This construction is consistent with the disclosures of the ’074 patent. For
`
`example, the ’074 patent repeatedly refers to an Intranet as “private” or a “private
`
`computer network.” (Ex. 1001 at 1:30-31; 2:57-67.) The ’074 patent also notes
`
`that a network is “secure” if it “bar[s] unauthorized entry from the public Internet.”
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`(Id. at 3:12-13.) The proposed construction is also consistent with the ordinary
`
`meaning of “intranet,” which refers to an information network with content only
`
`available to employees or members of a company or organization. (See, e.g., Ex.
`
`1012 at 153 (“An internal communications network that allows all the people
`
`within a company or organization to access information and transmit documents in
`
`the same way that these tasks are done on the Internet and the World Wide Web.”);
`
`Ex. 1025 at § 2 (“The distinguishing feature of an Intranet is that access to
`
`information published on the Intranet is restricted to clients in the Intranet group.
`
`Historically this has been accomplished through the use of LANs protected by
`
`Firewalls.”).)2
`
`H.
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`“ethernet packet switching protocol” (Independent Claims 1, 28)
`
`For the purpose of avoiding unnecessary disputes, Petitioner is willing to
`
`adopt the construction for “ethernet packet switching protocol” offered by Patent
`
`Owner in IPR2016-00349: “a protocol for communication between devices over a
`
`2 In prior proceedings, the Patent Owner has taken the position that an “intranet” is
`
`merely any network that is “accessible by authorized users.” (Ex. 1011 at 25.)
`
`Petitioner opposes this definition because it would encompass public networks that
`
`are not even arguably “intranets,” such as the WiFi network at a hotel or coffee
`
`shop or a common carrier cellular network. (Ex. 1009 at ¶76.)
`
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`network via a shared, connectionless transmission medium in which data to be
`
`transmitted is divided into formatted packets for individual transmission and
`
`subsequent reassembly at the intended destination.” (Ex. 1010 at 11.)
`
`Notably, the “ethernet packet switching protocol” must at least encompass
`
`the TCP/IP protocol and the 802.10 protocol. This is reflected in the specification
`
`of the ’074 patent, which states that both protocols are examples of an “ethernet
`
`packet switching protocol.” (Ex. 1001 at 2:51-53; 3:1-10; see also id. at claim 3.)
`
`Moreover, the TCP/IP protoc